Background

• Evolution- Ancient World (local craftsman and

creative entrepreneurs)
• Trade across the border (marketing of goods
beyond local limits)
• Marks/Signatures attached to goods (Indian
craftsman engrave their signatures on artistic
creation; Roman pottery marks etc.)
• Use of signs to distinguish the goods of merchants
and manufacturers limited in economic
significance
 Background
• Industrialization- TM gained significance and have become
a key factor in international trade and market oriented
economies;
• Competing manufacturers and traders to offer consumers a
variety of goods in the same category;
• Without any apparent difference for the consumers, the
goods generally differ in quality, price and other
characteristics;
• Consumers need to be given the guidance that will allow
them to consider the alternatives and make their choice
between the competing goods;
• The goods must be named and the medium for naming
goods on the market is precisely the trademark.
 Trademarks: Nature and Scope
Objectives:
• To enable consumers to make their choice between
the various goods available on the market,
• To encourage trademark owners to maintain and
improve the quality of the products sold under the
trademark in order to meet consumer expectations by
such enablement,
• To reward manufacturer who constantly produces
high-quality goods,
• To encourage them with such reward to stimulate
economic progress
 Trademarks: Nature and Scope
Definition
• “A trademark is any sign that individualizes the goods of a given
enterprise and distinguishes them from the goods of its
competitors.”
• Individualize a product for consumer-TM must indicate its source
• Indicating the source-not informing the actual person who has
manufactured the product but giving such information that
enables a consumer to trust in a given enterprise
• Indicating the source presupposes that the TM distinguishes the
goods of a given enterprise from those of other enterprise;
• The distinguishing function and the function of indicating the
source are interdependent
 Service Marks
• Modern Trade- An increasing variety of services are being offered
to consumers on a national and even international scale.
• Need for signs that enable the consumers to distinguish between
the different services such as insurance companies, car rental firms,
airlines, etc.
• These signs are called service marks, and fulfill essentially the same
origin-indicating and distinguishing function for services as
trademarks do for goods.
• Service mark protection has sometimes been introduced by a very
short amendment to the existing trademark law, simply providing
for the application to service marks, mutatis mutandis, of the
provisions on the protection of trademarks.
 Collective Marks and Certification
Marks
• Trademarks generally identify individual
enterprises as the origin of marked goods or
services.
• Countries also provide for the registration of
collective and certification marks, which are
used to indicate the affiliation of enterprises
using the mark or which refer to identifiable
standards met by the products for which a
mark is used.
 Collective Marks
• A collective mark may be owned by an association which itself
does not use the collective mark but whose members may use the
collective mark
• The members may use the collective mark if they comply with the
requirements fixed in the regulations concerning the use of the
collective mark.
• The regulations concerning the use of the collective mark normally
have to be included in an application for the registration of the
collective mark and any modifications to the regulations have to
be notified to the Trademark Office.
• Collective marks play an important role in the protection of
consumers against misleading practices
• The Paris Convention contains provisions on collective marks in its
Article 7bis.
 Certification Marks
• The certification mark may only be used in accordance with the
defined standards.
• While the collective marks may be used only by particular
enterprises, for example members of the association which
owns them, the certification marks may be used by anybody
who complies with the defined standards.
• The entity which applies for registration of certification marks
must be “competent to certify” the products concerned.
• Thus, the owner of a certification mark must be the
representative for the products to which the certification mark
applies.
• This again, is an important safeguard for the protection of the
public against misleading practices.
 Signs used as Trademarks
• Virtually any sign that can serve to distinguish
goods from other goods is capable of constituting
a trademark.
• Trademark laws should not prescribe an
exhaustive list of signs admitted for registration.
• Limitations should be based on practical
considerations only, such as the need for a
workable register and the need for publication of
the registered trademark.
 Signs used as Trademarks
• Words: company names, surnames, forenames,
geographical names and any other words or sets of words,
whether invented or not, and slogans.
• Letters and Numerals: one or more letters, one or more
numerals or any combination thereof.
• Devices: fancy devices, drawings and symbols and also two
dimensional representations of goods or containers.
• Combinations of any of those listed above, including
logotypes and labels.
• Colored Marks: words, devices and any combinations
thereof in color, as well as color combinations and color as
such.
 Signs used as Trademarks
• Three-Dimensional Signs: the shape of the goods or
their packaging; other three-dimensional signs such as
the three-pointed Mercedes star can serve as a
trademark.
• Audible Signs (Sound Marks): sound marks that can
be transcribed in musical notes or other symbols and
others (e.g. the cry of an animal).
• Olfactory Marks (Smell Marks): a company sells its
goods (e.g. writing paper) with a certain fragrance and
the consumer becomes accustomed to recognizing the
goods by their smell.
• Other (Invisible) Signs: signs recognized by touch.
 Signs used as Trademarks
• Countries may set limits on registrability for practical purposes.
• The majority of countries allow the registration only of signs that
can be represented graphically, since only they can be physically
registered and published in a trademark journal to inform the
public.
• Three-dimension signs: Many countries allow the registration of
three-dimensional trademarks, obliging the applicant either to
submit a two-dimensional representation of the
three-dimensional sign (drawing, picture or any other
representation which can be printed) or a description, or both.
• In practice, it is not always clear what is protected by the
registration of a three-dimensional sign.
 Signs used as Trademarks
• Audible Signs: A sequence of notes can be
registered as a device mark, but that registration
does not normally give protection to the actual
musical phrases so expressed.
• What is protected is the sequence of notes, as
registered, against the use of similar devices.
• U.S.A. allows the registration of sound marks. In
practical terms, this means that the sound must
be recorded and the cassette submitted to the
U.S. Patent and Trademark Office for registration.
 Signs used as Trademarks
Smell Marks:
• The United States of America is the first country to
have recognized the registrability of a smell
mark—fresh floral fragrance reminiscent of Plumeria
blossoms for sewing thread and embroidery
yarn—TTAB(1990)
• In a decision on 11 February 1999, the Board of Appeal
of the Office for Harmonization in the Internal Market
(Trademarks and Designs) of the European Community
supported the registrability of the smell mark “the
smell of fresh cut grass” for tennis balls (R
156/1998-2).
Essential Requirements for Protection
• Distinctiveness- a trademark must be
distinguishable among different
products/services.
• Possible harmful effects-the trademark must
not have misleading character/ it must not
violate public order or morality.
 Distinctiveness of Trademarks
• Distinctive character must be evaluated in relation to the goods to
which the trademark is applied. (The word “apple” or an apple
device cannot be registered for apples, but it is highly distinctive
for computers.)
• The test of whether a trademark is distinctive is bound to depend
on the understanding of the consumers, or at least the persons to
whom the sign is addressed.
• The distinctiveness of a sign is not an absolute and unchangeable
factor. Depending on the steps taken by the user of the sign or
third parties, it can be acquired or increased or even lost.
• Common words from everyday language can also be highly
distinctive if they communicate a meaning that is arbitrary in
relation to the products on which they are used (CAMEL
trademark for cigarettes).
• Lack of distinctiveness can be a ground for refusal of registration.
 Refusal of Registration for Lack of
Distinctiveness
• Generic Terms-A sign is generic when it defines a category or type
to which the goods belong. It is essential to the trade and also to
consumers that nobody should be allowed to monopolize such a
generic term. (“furniture” “chairs”, “drinks”, “coffee” and “instant
coffee”)
• These signs are totally lacking in distinctiveness, and some
jurisdictions hold that, even if they are used intensively and may
have acquired a secondary meaning, they cannot be registered
• In view of the absolute need of the trade to be able to use them,
they must not be monopolized
• The High Court of Delhi, India, in 1972 refused registration of the
JANTA trademark as in Hindi the word means cheap in price.
 Refusal of Registration for Lack of
Distinctiveness
• Descriptive Signs-Descriptive signs are those that
serve in trade to designate the kind, quality, intended
purpose, value, place of origin, time of production or
any other characteristic of the goods for which the
sign is intended to be used or is being used.
• Other Signs Lacking Distinctiveness: A relatively long
advertising slogan recommending the goods to the
consumer which, even when reproduced on the
packaging, would be much too complex to be
understood by consumers as a reference to the origin
of the product
 Refusal of Registration for Lack of
Distinctiveness
Reference to Geographical Origin:
• References to geographical origin (as opposed to the origin of the
goods in the sense of the origin-indicating function) are basically not
distinctive.
• They convey to the consumer an association with the geographical
name, indicated either as the place of manufacture of the goods in
question or of ingredients used in their production, or—depending on
factual circumstances—with certain characteristics of the goods
attributable to their origin.
• Signs referring to practically unknown localities are therefore
distinctive. References to areas where nobody would expect the
goods concerned to be manufactured are also distinctive.
• Letters, Numerals and Basic Geometrical Shapes: These signs are
often regarded as being indistinctive and therefore unregistrable.
However, they can become registrable through use/if they are used in
fanciful device.
 Refusal of Registration for Lack of
Distinctiveness
Foreign Script and Transliterations
• They are in principle distinctive, except where the
sign has no more than an ornamental effect,
depending on its graphic presentation.
• Colors: The use of words and/or devices in colors
or combined with colors generally increases their
distinctiveness.
• Names, Surnames: Company names and trade
names are registrable, except where they are
deceptive or not distinctive.
 Exclusions from Registration: Public
Interest
• Deceptiveness: Trademarks that are likely to deceive
the public as to the nature, quality or any other
characteristics of the goods or their geographical
origin do not, in the interest of the public, qualify for
registration.
• Reference to Geographical Origin: Signs that are
descriptive or indicative of geographical origin are
false for products that do not come from the region
described or indicated. In such cases the consumer will
be deceived if the reference to the geographical origin
has the wrong connotations for him. (particularly,
when the region/locality has a reputation, e.g.
“Champagne” and “Swiss Chocolate”
 Exclusions from Registration: Public
Interest
• Signs Contrary to Morality or Public Policy:
Trademark laws generally deny registration to signs
that are contrary to morality or public policy.
• Signs Reserved for Use by the State, Public
Institutions or International Organizations: A country
generally protects its national flag, its official name
and the names of official institutions in its own
interest. Furthermore, countries are obliged by Article
6ter of the Paris Convention also to protect the
notified signs of other member States and
international intergovernmental organizations (such as
the United Nations Organization).
 Modes of Acquiring Trademark
Protection
• A trademark can be protected on the basis of either use or
registration.
• Both approaches have developed historically but current
trademark protection systems generally combine both the
elements.
• The Paris Convention places contracting countries under the
obligation to provide for a trademark register.
• Nearly all countries today provide for a trademark register, and
full trademark protection is properly secured only by registration.
• Use does still play an important role in countries that have
traditionally-based trademark protection on use, the registration
of a trademark merely confirms the trademark right that has
been acquired by use.
• Consequently, the first user has priority in a trademark dispute,
not the one who first registered the trademark.
 Infringement and Passing Off
• An action for passing off is Common Law remedy, based on
principles of natural justice (i.e. First Adopter and User will
survive in case of conflict); while an infringement action is a
statutory remedy (which is based on a right granted or
created by virtue of registration under the Trade Marks Act,
1999).
• Issue in a passing off action is: "Is the defendant selling
goods in the market so marked as to be designed or
calculated to lead purchaser to believe that they are the
plaintiff's goods?
• Issue in an infringement action, on the other hand will be:
"Is the defendant using a mark which is the same as or
which is colourable imitation of the plaintiff's registered
trade mark?
 Infringement and Passing Off
• In an infringement action, the statutory
protection is absolute in the sense that once a
mark is shown to offend, there being imitation
phonetically, visually or otherwise to lead the
purchaser to believe and purchase goods of
another as that of plaintiff, no further evidence of
violation of plaintiff's statutory right is necessary.
• But in a passing off action, the defendant may
escape liability if he can show that the added
matter is sufficient to distinguish his goods from
those of the plaintiff.