CONCEPT OF TRADEMARK IN INDIA

This article was written by Vishal Sharma, a student of Himachal Pradesh University Institute Of Legal Studies.

WHAT IS A TRADE MARK & Its FUNCTIONS?

• A trade mark is a symbol, word, or words legally registered or established by use as representing a company or product.
• A trade mark performs four basic functions :-

It identifies the goods / or services and its origin.

It guarantees its unchanged quality

It advertises the goods/services

It creates an image for the goods/ services.

TYPES OF TRADE MARKS IN INDIA?

• Product trademarks
• Service trademarks
• Certification trademarks
• Collective trademarks

WHAT ARE THE SOURCES OF TRADE  MARK LEGISLATIONS IN INDIA?

• (1) The Trade Marks Act,1999 and rules made there under
• (2) International conventions.
• (3) National treaties.
• (4) Regional treaties.
• (5) Decision of the courts.
• (6) Office practice and other rulings
• (7) Decision of Intellectual Property Appellate Board (IPAB).
• (8) Text books written by academicians and professional.

WHAT IS AN UNREGISTERED TRADE MARK?

• An “unregistered trademark” is one which does not possess legal benefits.
• u/s 27 of Trade mark act,1999 no action for infringement is allowed for unregistered trademarks, it can still be protected by means of common law tort of “passing off”.

WHAT IS A REGISTERED TRADE MARK?

• A “registered trademark” confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark in relation to the products or services.
• The Trade Marks Act, 1999 governs the whole process of registration, valid for 10 years.

-It identifies the origin of goods and services;

-Advertises goods and services;

-Guards the commercial goodwill of a trader; and

-Protects the innocent public from buying the second rate quality goods.

WHO CAN USE SYMBOL ® IN INDIA?

Only the proprietor of a trademark whose trademark has been registered in India can use the symbol ® in India. Using the symbol ® unless your mark has been registered in India is unlawful.

WHEN CAN THE SYMBOL ™ IN INDIA?

Using this symbol with your trademark simply implies that you claim to be the proprietor of the trademark. There is no prohibition on the use of the symbol ™ in India.

WHAT ARE LEGAL REQUIREMENTS FOR REGISTRATION OF TRADE MARK IN INDIA?

The legal requirements to register a trade mark under the Legislation are:

• The selected mark should be capable of being represented graphically (that is in the paper form).
• It should be capable of distinguishing the goods or services of one undertaking from those of others.

RIGHTS OF THE HOLDER OF A REGISTERED TRADE MARK?

• Section 28) Rights Conferred by Registration

(1) Exclusive rights to use the trade marks in relation to the goods or any services and to obtain relief in respect of infringement.

(2) Where there exists two or more trademarks, which are identical with or nearly resemble each other, the exclusive right to the use those trademarks shall not be deemed to have been acquired by any one.

CASE – Clinique Laboratories LLC and Anr. Vs. Gufic Limited and Anr. MANU/DE/0797/2009

WHO CAN APPLY FOR A TRADE MARK REGISTRATION?

• A person who claims to be the proprietor of the trademark.
• A person representing Foreign organisation.

For company under incorporation, anyone may apply in its name for subsequent assignment of the registration in the company’s favour.

TRADEMARK INFRINGEMENT?

(Section 29) Infringement of Registered Trade Marks

A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted uses in the course of trade, a mark which is identical with the trade mark in relation to goods or services in respect of which the trade mark is registered.

CASE – Tata Sons Limited V Greenpeace International and Anr.                 MANU/DE/0220/2011

CASE – The Coca-Cola Company V Bisleri International

           Pvt. Ltd    Manu/DE/2698/2009

CASE – Yahoo! V Akash Arora 1999 (19) PTC (Del)

(Section 27) No Action for Infringement of Unregistered Trade Mark

(1) No person shall be entitled to institute any proceeding to recover damages or to prevent the infringement of an unregistered trade mark.

(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person or the remedies in respect thereof.

CASE – Cycle Corporation of India Ltd v TI Raleigh Industries Pvt Ltd (AIR 1996 SC 3295)

WHAT DOES NOT AMOUNT TO TRADE MARK INFRINGEMENT?

• (Section 30) Limits on Effect of Registered Trade Mark 

(1) Nothing shall prevent the use of a registered trade mark provided the use is in accordance with honest practices

(2) It is not infringement where the use indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services.

(3) Where the goods bearing a registered trade mark are lawfully acquired the sale of the goods in the market or otherwise dealing in those goods is not infringement of a trade mark.

WHAT ISSUES ARISE IN A SUIT FOR INFRINGEMENT OF TRADEMARKS?

• The following issues arise in a suit for infringement of trademarks:
• Is the plaintiff entitled to file the suit in other words is he the owner of the trademark alleged to be infringed.
• Does trademark subsist in the scenario alleged to have been infringed.
• Does what the defendant has done or proposes to do constitute infringement of the trademark.
• Does the defendants do come within the scope of any of the exemptions to the infringement.
• What remedies the plaintiff is entitled to.

WHAT ARE THE REMEDIES FOR INFRINGEMENT OF TRADE MARK IN INDIA?

• Two types of remedies are available to the owner of a trademark :-

1) An action for infringement’ in case of a registered trademark(Statutory Remedy).

2) An action for passing off’ in the case of an unregistered trademark (Common Law Remedy).

CASE – DM entertainment v Baby Gift House and others. MANU/DE/2043/2010