Trade, Commerce and Sale form important aspects of any economy. In order to protect such aspects from unfair competition and to preserve its identity, Trademark, a branch of Intellectual Property Rights becomes essential. Trademark refers to various signs, symbols or any distinctive image that is capable of distinguishing the goods and services of one, from the goods and services of another and establishes ownership.
In India, prior to 1940 the law with regard to Trademarks was based on the common law principles of equity and passing off as followed in England. The Trade Marks Act, 1940 was the first statutory law in India with regard to Trademarks which had similar provisions as the United Kingdom Trade Mark Act, 1938. This Act was then replaced by the Trade And Merchandise Marks Act, 1958 which was a consolidation of all the laws related to Trademarks as provided in the Indian Penal Code, The Sea Customs Act and the Criminal Procedural Code. However, the statutory Act that governs TradeMark in India presently is the Trade Mark Act of 1999.
Definition of Trademark
As per section 2(1) (m) of the Trade Mark Act of 1999, the term ‘mark’ includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combinations of colours or any combination thereof. Thus, in short, anything can be considered a mark as long as it is capable of being graphically represented either in a one dimensional, two dimensional or three-dimensional space. The Nike swoosh symbol along with its famous tagline “Just Do it “ is an apt example of a mark that has a combination of a symbol, tagline and a brand name.
Section 2 (zb) of the Trademark Act, 1999 defines “trade mark” as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours etc. For example, the packaging of kinder joy chocolate and it’s round shape is a specific trademark that is different from the purple packaging of dairy milk chocolate. Such distinct differences make a brand stand out and etch itself in the minds of the public.
The trademarks have been classified into different classes according to Section 7 of the Trademark Act 1999. They are classified into 34 classes of goods and 11 classes of services. Class 1 to 34 comprise the specification of the goods, and classes 35 to 45 comprises the specifications of the services. For example, Class 1 deals with Chemical, Resins and Plastics. Class 2 deals with Varnishes, Paints etc whereas class 35 deals with Advertising, Business and Administration which comes under services.
Different types of Trademarks
- Word Marks – Such marks consist of only words, letters or numerals. An example of word marks would be Coca- Cola, Google, Adidas etc.
- Device Marks – These marks consist of a unique representation of words plus a logo. For example, the mermaid graphic along with the starbuck font on the cup is a device mark.
- Service Marks – Such marks are utilised only for services and not for goods and are dealt with from class 35 to 45. It represents the service which the business or company deals with. For example, FedEx.
- Collective Marks – Such marks are used by a group of companies collectively and are not one single product or business. For example, Sony as a company utilises Bravia, Xperia etc.
- Certification Marks – Such marks are used to define standards of quality, quantity etc that is produced. For example, The Food Safety And Standard Authority of India is a certification mark for the quality of packaged food products.
- Well-Known marks – Such marks are marks that are recognised amongst a large percentage of a population and as the term suggests that such marks are well known by the public.
- Unconventional Trademarks – Such marks are characterised by their innate distinctive feature. Such as –
- Colour trademark – The red colour of the KitKat chocolate packet
- Sound Marks – The ringtone of the Airtel
- Shape Mark- The shape of the Kinder joy chocolate package
Registration Of TradeMarks ( Section 18-23 )
Section 18 – This section states that application for registration of trademark is to be made to the Registrar and such an application must be a single application under which registration for different categories can be made with a fee payable for each category. For example, Class 33 deals with wines and spirit and Class 35 deals with advertising. Thus, supposing the brand is Kingfisher a registration for trademark with regard to these two classes will be filed in a single application.
The registrar has the power to refuse the application but must record the reason for such refusal.
Section 19 – As per this section, the registrar can withdraw the application after it has been accepted but before the registration has taken place and must mention the reasons for doing so.
Section 20 – In this section, advertisement of such applications of Trademarks are dealt with.
Section 21 – If there is any opposition with regard to the application of any Trademark such opposition may be recorded under this section within 3 months of the date of advertisement.
Section 22 – This section deals with the correction and amendment of the application of the Trademark.
Section 23 – This deals with the registration of the trademark. Such trademark is said to be registered provided it has not been withdrawn as per provisions of section 19 or has been opposed as per section 21 but the ruling is in favour of the applicant. Once the registration of application has been approved by the registrar a certificate of registration along with a seal of the Trade Marks Registry is presented.
In cases where the process of registration does not happen within a time period of 12 months from the date of application owing to default on part of the applicant, such applications will be treated as abandoned after a notice is issued and the applicant does not abide by such notice.
Trademarks That Can’t Be Registered
Section 9 of the Trade Mark Act, 1999 states that the following Trademarks that can not be registered –
- Trademarks that do not have any distinctive features and thus do not serve the purpose of distinguishing one good or services from another. In Keystone Knitting Mills Ltd.’s the court held that the mark should not be analyzed by simply looking at the word in a strict sense but to consider what it represents itself as to the public at large when they are to look at it and form an opinion as to what it connotes. Various factors are taken into account while determining the distinctiveness of the mark such as length of time in use, the volume of goods marketed, the extent of service provided, use of an advertising slogan etc and such burden of proof lies on the plaintiff.
- Trademarks that are deceptive in nature and likely to cause confusion in the eyes of the public.
- Trademarks that are scandalous or obscene in nature
- Trademarks that are likely to hurt religious sentiments of people
- A mark prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950
- The shape of goods which results from the nature of the goods themselves; or
- The shape of goods which is necessary to obtain a technical result; or
- The shape which gives substantial value to the goods
Section 11 of the Trade Marks Act, 1999 deals with relative grounds for refusal of registration.
- Such Registration of Trademarks will not be accepted wherein there exists an identity or similarity to an already existing trademarked goods or services. For instance, in the case of M/S Hitachi Ltd. v Ajay Kumar Agarwal, Hitachi was an already registered trademark and the defendant wanted to register a trademark by the name of ‘Hitaishi’ which was extremely similar to ‘Hitaichi’ and was likely to cause confusion and thus, such trademark was refused.
- If the mark is likely to cause confusion in the minds of the public. In the case of Amritdhara Pharmacy v Satya Dev Gupta, a test for the likelihood of confusion was laid down wherein the court held that two important questions were to be determined- (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. The question has to be approached from the point of view of a man of average intelligence and it is to be seen if it is likely that he would be deceived by the overall similarity of the trademarks in dispute which in this particular case was in relation to medicines with similar names that were likely to cause confusion.
- If the mark’s use in India is liable to be prevented by law of passing off or copyright law.
Section 12 of the Trade Mark Act, 1999 states that similar trademarks may be allowed in case of honest concurrent use. For instance in the case of Goenka Institute of Education and Research v. Anjani Kumar Goenka and Another , both the applicant and respondent had “Goenka” as a predominant part of their trademarks. One went by the trademark of “Goenka Public School” and the other by the name “G.D. Goenka Public School”. The court held that such similarity in trademarks was honest and concurrent use because it was established that both parties started using the word “Goenka” around the same time and moreover, one institution was located in Delhi and the other in Rajasthan so the appellant could not have known of the respondent’s mark when he started using the same, Therefore, the Registrar allowed both marks to be registered with certain conditions, such as the appellant was directed to insert the name of their trust in brackets below the name of their school in order to clarify and differentiate between the two marks.
Section 13 of the Trade Mark Act, 1999 states that registration of trademarks that consist of chemical elements or compounds which have been declared as an international non-proprietary name or similar to such name is not possible.
Section 14 of the Trade Mark Act, 1999 states that in order to use a person’s name who is living or dead for the past twenty years as a trademark will require the person or his legal representative’s consent.
As per Section 27 of the Trade Marks Act, 1999 Passing off refers to the act of selling goods or services as that of another person. The act of passing off is applicable only in enforcing the rights of trademarks that are unregistered. Though registration of trademarks has its benefits is not mandatory. Thus, in order to protect the rights of people who have not registered their trademarks but have been utilising one for a certain period of time, such an enactment proves to be beneficial.
As mentioned in the case of Reckitt and Coleman Ltd v Borden Inc. there are three basic elements involved in considering an act to be Passing off which is referred to as the classical trinity. They are as follows-
- The mentioned Trademark has a reputation and is well known amongst consumers
- Misrepresentation of product or service in a way that is deceptively similar to the plaintiffs hence confusing the consumers
- As a result, it causes the plaintiff damage, loss and injury to the business of the company.
In the case of Honda Motors Co. Ltd. v. Mr. Charanjit Singh and Ors, the plaintiff owned a well-known company by the name of “Honda” and was involved in the automobile business. It was well-established fact that the plaintiff’s business had acquired a good reputation and such trade name had become distinctive of his goods and the public at large associates the plaintiff’s name with the brand. The defendant on the other hand was selling pressure cookers under the name of Honda as well even though their application for the trademark of Honda was rejected. Thus, the court held that using the brand name Honda for selling pressure cookers was not an honest adoption and is likely to cause confusion in the minds of the public and thus, it amounts to passing off.
In the case of Sayed Moideen v P. Sulochana Bai, the court held that a right over a registered trademark is not absolute and is subject to the rights of prior users for passing off. In this case, the dispute was regarding the brand of a Halwa Shop from Tirunelveli in Tamil Nadu called ‘Iruttu kadai Halwa’. The respondent had been selling halwas under such brand name since the 1900’s which was originally started by her father-in-law and recently noticed that the appellant was using the same brand name to sell his halwa. The appellant, as well as the respondent, had their trademarks registered thus the court had to decide the effect of the validity of the appellant’s trademark. The Supreme Court held the following observations –
- Rights that are conferred by registration are subject to the rights of the prior user of the trademark.
- Passing off rights are considered to be superior than that of registration rights.
- Registration merely recognizes the rights which were already pre-existing in common law and does not create any rights.
- The latter use of the mark/name or in the business cannot misrepresent his business as that of business of the prior right holder.
Thus, the prior right of the respondent was considered as the true owner and the registered trademark of the appellant was considered as passing off.
The use of a mark, by any unauthorised person who is not the registered proprietor, in a manner that is identical or deceptively similar to the trademark in relation to the goods or services of another is known as infringement. Section 29 and 30 deal with infringement under the Trade Mark Act, 1999.
Section 29 states when a Trademark is infringed. They are as follows –
- When a person using such trademark is not authorized to do so.
- Using a particular registered trademark after making small alteration or additions.
- Using trademarks that are deceptively similar to an already registered trademark as a result likely to cause confusion in the minds of the public. For instance, in the case of Cadila Health Care v Cadila Pharmaceutical Ltd, both companies were involved in the medical sector and were likely to cause confusion in the minds of the public and thus, resulting in infringement.
- Such infringing trademark must be published, written etc and can not be solely oral.
- Such infringing trademark should exist and be used in the course of trade in which the registered trademark owner is involved in.
Section 30 states when a Trademark is not infringed. They are as follows-
- When such trademark is used in accordance with honest practices.
- When such use does not involve taking unfair advantage of a reputed registered trademark.
- When such a trademark is used to identify goods or services as those belonging to the proprietor. For instance, when other brands are displayed on a supermarket for sale, such acts will not be considered infringement.
Remedies to protect trademarks under the Trade Mark Act, 1999 are as follows –
1. Criminal Remedies
As per section 103 and 104 of the Trade Mark Act, 1999 first time offenders makes the person liable for a fine ranging from 50,000 to 2 lakhs and a term of Imprisonment ranging from anywhere around 6 months to 3 years.
In case of subsequent offenders as per Section 105, a person is liable to pay fine ranging from 1 lakh to 2 lakhs and a term of imprisonment ranging from 1 year to 3 years based on the severity of the offence.
2. Civil Remedies
Civil remedies can be enforced by filing a suit for infringement or passing off in a competent court having jurisdiction. The following reliefs are available –
(a) Injunctions – Such relief refers to a judicial process restraining further use of the infringing trademark. Injunctions may be of the following types –
- Anton Piller Order – Theses are ex-parte orders i.e without the presence of the defendant wherein permission is provided to check the premises of the defendant in cases wherein the defendant is likely to destroy or get rid of materials that consist of such infringed trademarks of the plaintiff. Such order is made when there is a strong prima facie case in the favour of the plaintiff or if such order is not granted then irreparable damage will be caused to the plaintiff.
- Mareva Injunction – In this order, the court has the power to freeze the defendant’s assets wherein there exists a probability that such assets in possession are being disposed of in order to get rid of evidence against the defendant.
- Interlocutory Injunction – Interlocutory injunction is an order to prevent the defendant from using the trademark, any further.
- Perpetual Injunction – It is an order that restraints the defendant completely from participating in any act which would infringe the rights of the proprietor of the Trade Mark and is usually granted after the case is settled.
(b) Damages and Accounts Of Profits – The plaintiff may either be compensated for the damages or be granted an account of profits. The damages would amount to monetary benefits that the defendant made by misuse of the plaintiff’s trademark. Whereas accounts of profit refer to the profit that the defendant made by utilising the plaintiff’s trademark.
(c) Destruction of Infringed goods – In this order the court prohibits the defendant from delivering goods or products that are labelled with the infringed trademark and as a consequence directs the return of related material accounts and to destroy such goods that the defendant possesses
In such a fast-paced, competitive world with inventions happening by the minute it becomes imperative to understand Intellectual Property Rights and its growing importance. The primary goal of a trademark is to legally protect and safeguard the interests of not just the owners but also the consumers. Trademarks are intangible assets that allow us to build trust and understanding by keeping consumers informed, aware and diligent while acting as a shield of protection from all sorts of frauds and deception.
 Keystone Knitting Mills Ltd. TM [(1928) 45 RPC 193]
This article has been written by Shivani S, 3rd year, BA.LLB (Hons.), ICFAI Law School, Hyderabad.