Online Certificate Course on IPR

By Law Statistics

Trademarks
Introduction:
• We recognize people by their qualities so does we recognize products by their
manufacturing companies. Different types of people prefers different types of
products from different companies.

• But the manufacturer cannot represent their products to each of their

consumers. For this purpose, they let their trademarks represent their
company.

• In layman language, trademarks are brand name which can be words, letters,
symbols, signature, labels, numbers, logos and even color speaks.

• Trademarks is so significant because it gives trust to their customers. So, it

must distinguish the product from the competing product.

Historical background:
• Since ancient period, trade exist in India so does trademarks. Indian craftsmen
used to put their marks on their works before sending it to foreign nations like
Rome, Iran etc.

• Increasing trade activities in medival period, usage of trademarks also

increased. Today trademarks are essential due to the increasing competitions
among companies who are having branches worldwide.

• For those worldwide brands, trademarks becomes tool of communication

between manufacturer and the consumer.
Definition of trademark:

• Section 2(zb) of trademark act,1999 stated that “trade mark” means 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 colour.

• Section 2(m) defines ‘mark’ as device which may include brand, labels,
heading, tickets, name, words, letters, signs, colours and combination of
colours.

• In the Anglo Dutch Paint and Colour Works and Warmish (P) Limited v. India
Trading House AIR 1977 PTC 429 it was held that mark in reference to
trademark may or may not be a combination of letters, figures, signs and
colours.

Four main functions of trademarks:

• 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

Key features of trademark:

• Trademark must be distinctive

• Trademark must be used in commerce

• Trademark must guarantee its product

• Trademark must identify the product and its origin

Essential of trademark:
• Easy to understand

• Capable of being described in a single word

• Capable of being spelt correctly and written legibly

• It should be short and attractive

• It should be capable of distinguishing one good from another

• Should be easy to pronounce

• It should be capable of denoting a particular company, brand or organization.

Functions of trademark:

• Distinguish one's goods from those of another: Allow consumers to

distinguish my goods from another's by affixing a trademark to the goods.

• Indicate the Origin: Inform consumers that products with the same trademark
originate from the same source.

• Guarantee Quality: Guarantee consumers that all products with the same
trademark have the same quality.

• Advertising: Remind consumers of the goods associated with a trademark as

a promotional method in commercial transactions.
Legislations for trademarks:

• The Madrid Agreement, 1891

• The TRIPS Agreement of Trade Marks, 1995

• The Paris Convention, 1991

• The Trade Marks Act, 1999

• The Trade Marks Rules, 2002

Trade Description [Sec. 2 (za)]

Any information, description or statement of a product or service related with:
• Quantity, weight, standard

• Weight, quality and its contents

• Fitness and suitability

• Place and country

• Name and address of registered office

• Mode of manufacture

• Any other information required as declaration is known as ‘trade

description.’
False Trade Description [Sec. 2 (i)] – Any description which is misleading or which
is similar to other trademark in the form of deceptive similarity is known as false
trade description.

Deceptive Similarity [Sec. 11]

• It is a problem of trademark in the name of deception, confusion, resemblance.

• Whenever a trademark is similar to other trademark with the intent to deceive

or
Cheat the customer by way of similar mark or visual description it is known
as deceptive similarity.

• There are two types of factors which is to be examined for the purpose of
Confusion, deception and resemblance

• Phonetic similarity

• Visual similarity

Types of trademark:

• Product mark
• Service mark

• Collective mark

• Certification mark
• Shape mark

• pattern mark

• Sound mark
• label:

• letter mark:

• Brands:

• Color mark:
 • Numerals:

• Packaging mark:

The mark itself can show us what kind of mark is the product, we can see the below
mentioned sings in anywhere near the mark which talks about the nature of mark.
Procedure to get trademarks:

Application:

The application should be filed in triplicate with the following particulars –

• Graphic representation of the trademark.

• Five Additional representations are to be provided corresponding exactly with one

another.

• In the case of three dimensional mark, the reproduction of the mark should consist
of a two dimensional or photographic reproduction.

• Where the trade mark contains a word or words in scripts other than Hindi or
English, a transliteration and translation of each word in English or in Hindi should
be given indicating the language to which the word belongs, at the time of filing the
application to facilitate completion of data entry at the initial stage itself.

• The application may contain a declaration claiming priority as per the Paris
Convention.

Registration:

section 15 (3) makes provision for registration of trade mark as series in respect of
the same or similar goods /services where the marks, while resembling each other in
the material particulars thereof and yet differ in respect of –
1. Statement of goods or services in relation to which they are respectively used or
proposed to be used

2. Statement of number, price, quality or names of places

3. Other matter of a non-distinctive character which does not substantially affect the
identity of the trade mark

4. Colour

Procedure for registration:

• An application for registration of trademarks is received at the Head office of

Trademark Registry, Mumbai and its branches according to territorial
jurisdiction.

• Applications are then examined mainly with regard to the distinctiveness,

possibility of deceptiveness and conflicting trademarks.

• The registrar on consideration of the application and any evidence of use or

distinctiveness decides whether the application should be accepted for
registration or not, and if accepted, publishes the same in the official gazette
i.e. Trade Marks Journal (published in CD-ROM).

• Within a prescribed period any person can file an opposition, a copy of which
is served to the applicants who is required to file a counterstatement within
two months failing which the application shall be treated as abandoned.
 • Thereafter, the opponent leads evidence in support of his case by way of
affidavit followed by the applicant’s evidence also by way of affidavit in
support of the application.

• After that the opponent files evidence by way of rebuttal. On completion of

evidence, the matter is set down for a hearing and the case is decided by a
Hearing officer. The registrar’s decision is appealable to the Intellectual
Property Appellate Board.

• Almost all functions of the Registry have now been decentralized and
executed by respective offices except publication of journal, issuance of
Registration Certificate and post registration activities including renewal
which is done at TMR, Mumbai (Head Office)

Correction in application:

• An applicant for registration of a trade mark can before the registration of the
mark, apply in Form TM-16 for correction of any error in connection with his
application.

• But the correction should not alter the trade mark that has been applied for or
substitute a new specification of goods or services not included in the
application.

Penalties for offences:

• Falsification of Trademark

The punishment for the above shall not be less than 6 months imprisonment
which may extend to three years and a fine which shall not be less 50,000/-,
but may extend to Rupees Two Lakh. Wherever the court proposes a lower
punishment than the minimum, it has to record, adequate and special reasons
for the same.
 • Falsely applying the trademark to goods or service

Offences shall be more severely punished. There shall be an Imprisonment of

not less than one year which may extend to three years and a fine which shall
not be less Rupees One lakh, but may extend to Rupees Two Lakh. The court
can propose a lower punishment than the minimum, only after recording
adequate and special reasons for the same.

Renewal of registration:

• The period of registration which was 7 years until recently under 1958 Act,
has been increased to 10 years under the present Act.

• The 10 year period of registration is reckoned from the date of

making of the application which is deemed to be the date of registration.
Registrations can be renewed by payment of prescribed renewal fees in all
cases (trademark/collective marks/certification marks) on form TM-12.

• The application is filed by the proprietor of the registered trade mark or his
agent.

• If there is any change in the proprietorship of the mark,

and it has not been brought on record, proof of title should be filed in the first
instance.

E-filing of Trademark application:

E-filing is the service provided by the Trademark Registry in order to enable

customers to apply for a Trade Mark on-line allowing from the applicant’s browser
to:
 • Complete an electronic application form

• Provide the associated attachments

• Complete the necessary payment detail

In order to submit an electronic application form, following steps should be followed

-
• Acquire Class 3 Digital Signatures from (n) Code Solutions or Tata
Consultancy Services (TCS) or SafeScrypt from Sify .

• The Procedure for getting the Digital Signature and the location of their
Offices is available at their website.

• For users (Proprietors/Agents or Attorneys), already registered with TMR

(Trademark Registry) Office India can complete online registration by
providing a desired User ID, their User Type (Proprietor/Agent/Attorney) and
User Code.

• For Users who are not registered as Proprietor / Attorney with TMR Office,
they can search and fill online form to obtain User code (Party Code).

• Secure Login into the system with created User Id and the Digital Signatures.

• Obtain a New Reference Number for New Application. Use this option when
the applicant wants to apply for a new Trademarks Application.

• Update Application Details: Use this option to edit / update the application
details along with relevant images and attached documents. Final Submission
 to TMR-India with Digital Signature is included in this option after which
application cannot be edited.
• The Cases which are Digitally Submitted to TMR, India are available for
online payment.

• The applicant can pay for more than one application in a single transaction.
Once the payment is realized as confirmed by the Payment Gateway, an
acknowledgement receipt for the fees paid is generated by the system
indicating the Receipt Number, Application Number and Date of Filing.

• An applicant can also view online History and status of the applications filed
by him / her by clicking Status of Filed Application.

• An applicant can also view the online status of e-Payment.

Important cases:
• Bombay Oil India (P) Limited v. Ballarpur India (P) Limited AIR 1989 it
was held that when a trademark is phonetically similar with other trademarks,
(SAFOLA – SAPOLA) such trademarks can’t be registered.

• In the case of Ess Corporation Sanitation Delhi v. Mascott India Limited AIR
1982 it was held by the court that for registration of a trademark, the words
deception, confusion and resemblance must be defined in the following
context:

✓ When it is related with similar product and services

✓ According to the nature of mark,

✓ According to the gravity of similarity

✓ Class of purchasers
 ✓ Surrounding circumstances
• In the case of Paton & Co. v.Snelling Lampard & Co. it was held by Justice
Romer that in case of deception, confusion and resemblance, if the ignorance
of the buyer is involved, such factors can’t be determined.

• In the case of S. N. Dychtm Ltd. v. Cadbury India (P) Ltd. AIR 2000 PTC
392,it was held by the Hon’ble Supreme Court held that phonetically
resembling trademark deceiving the consumers like PICNIC and PIKNIK
can’t be registered.

• In the case of Pidilite Industries (P) Ltd. v. Mitter Corporation Limited AIR
1989 Del. 1157 it was held that if two trademarks are visually similar and
identical (Fevicol and Trevicol) then such marks shall not be registered.

International Procedure of registration:

Indian procedure:
Infringement of trademark:

Infringement of trademarks have been incorporated under section 29 of The

Trademarks Act, 1999 and it states that infringement occurs when:
• The trademark is used or exercised by a person other the registered user or
proprietor.

• The trademark causes harm to the consumer as well as its user.

• The trademark is made with the intention to confuse, deceive or mislead the
consumer

• The trademark is of deceptive similarity with the registered trademarks

Remedies for Infringement:

Civil Remedies:

In case of infringement of trademarks, the following civil remedies are available for
the user of trademarks:

• File a suit against the infringer

• Restrain the defendant from using infringing goods or services

• Injunctions:

✓ Anton Pillar Injunction

 ✓ Manerva Injunction

✓ Perpetual Injunction

✓ Interlocutory Injunction

• Injunctions are passed when search and seizure of infringed goods are
required and the aggrieved party with their Counsel or inspector, is directed
to introduce into the premises and to search and seizure of infringes goods is
known as Anton Pillar Injunction.

• Manerva Injunction is a kind of order of attachment. Under this, the whole

property of the infringer is seized with the infringed goods.
• There can also be an order to deliver the infringing goods to the trademark
user and proprietor.

Criminal Remedies:

These remedies are available when a trademark is misused or excessively used by a

person other than its user:

• When it is done to mislead or deceive consumers intentionally

• When it is done for the purpose of causing monetary loss or loss related to
goodwill and prestige of an organization

• When it is falsely represented to misguide the consumers.

Administrative Remedy:

The undermentioned administrative remedies are available in case of infringement

of trademarks:
• To correct or modify the information required for the purpose of trademarks.

• To amend the trademark application if required.

• To renew the trademark when required.

• To hear the appeal which is against the order of the trademarks.

• To register the trademark

Authorities under the act:

• The Registrar of Trademark is appointed through a notice in the Official

Gazette and is known as the Controller General of Patents, Designs and
Trademarks and is entrusted with the duty to design and register trademarks.

• The Central Government is empowered to establish an Appellate Board by

notification in the Official Gazette known as Intellectual Property Appellate
board.

• This appellant board consists of,

✓ Chairman
✓ Vice chairman
✓ Other members as the central government may appoint from time to
time
MCQs
1. Which act of law in India protects Trademark
a) Trademark act,1996
b) Trademark act,1999
c) Trademark act,1997
d) Trademark act,1998

2. Trademark can be used as domain name

(a) Yes
(b) No
(c) Yes in some cases
(d) None of the above

3. Who administer UDRP?

(a) WTO
(b) WIPO
(c) Supreme Court
(d) High court

4. Certification mark can be registered in

(a) Trademark Registry
(b) Certification Board
(c ) Quality Control Board
(d) MHRD

5. Collective Mark is registered by

(a) Partnership firm
(b) Association of person
(c) Individual
(d) Company

6. Hall Mark is
(a) Trademark
(b) Certification Mark
(c ) Collective Mark
(d) Both (a) and (b)
 7. Khadi is
(a) Trademark
(b) Certification Mark
(c ) Collective Mark
(d) Both (a) and (b)

8. A document can be filed by a person or his duly authorized agent at the

appropriate office of the Trade Marks Registry U/s 18
a. Yes
b. no
c. yes but under sec 18 Rules 4, 8 & 15
d. none of the aove

9. -For the purpose of making an application of Trademarks, “Person”

includes:
A Natural Person,
A Body Incorporate,
A Partnership Firm, HUF, Association of Persons
(in case of collective Trademarks),
A Trust,
A Society, or
A Government Authority/Undertaking
Choose the answer
a. a society can not ask for Registration
b. a Trust can not ask for registration
c. A govt Can not ask for registration
d. All a-b-c are false
10. Two or more persons may apply for registration of a trade mark are set out in
Section 24 (2) of the Act
a. Yes
b. The correct section is 25
c. The correct section is 23
d. The correct sentence is 26
11. India has never ratified the Paris Convention for Protection of Industrial Property
1998.

a. India is a Convention Country

b. The proposition is false
c. India Partially accepted the convention
d. none of the above
12.world intellectual property day celebrated on
a. Every year, april 23
b. Every year, april 24
c. Every year, april 25
d. Every year, april 26
13. A company wishes to ensure that no one else can use their logo.
(a). Copy rights
(b). Trade mark
(c). Patent
(d). Industrial designs
14. A company has decided to invest in outer shape design of bottle in which they
would fill the perfume produced by them, and which is distinctive, and they wish
to ensure that they have sole use.
(a). Copy rights
(b). Trade mark
(c). Patent
(d). Industrial design
15. A company decides to use a logo that has the same shape as its competitor but
with a different color. It is a violation of:
(a). Copy rights
(b). Trade mark
(c). Patent
(d). Industrial designs
16. Which of the following is not an intellectual property law?
(a). Copyright Act, 1957
(b). Trademark Act, 1999
(c). Patent Act, 1970
(d) Customs Act, 1962

17. A trademark is represented by several key characteristics. Which of the

following is one of them?
(a). A trademark identifies a product's origin
(b). Slogans are not covered under trademark law
(c). Trademarks are never an indicator of quality
(d). Trademarks are "shorthand" for retailers to use in determining pricing strategy

18. Which of the following statements is true?

(a). Trademark registrations can be renewed for an unlimited number of tenyear
periods
(b). Trademark law is intended to protect the owner’s original work
(c). To qualify for federal protection, a mark must be distinctive and have a
"secondary meaning."
(d). Surnames alone can be trademarked

19. Trademark law protects…

(a). Words, symbols or devices that differentiate goods or services from one another.
(b). Only brand names
(c). Names of specific people and places
(d). Inventions that feature some sort of utility function
20. Which of the following principles is applicable to trademarks?
(a). A trademark should be distinctive
(b). A trademark should be capable of distinguishing goods or services
(c). A trademark should not cause confusion with previous trademarks
(d). All of the above
Big questions:
1. What do you mean by the word 'Trade Mark'? Who can file an application for
registration of a trade mark under the Trade Marks Act' 1999? Innumerate in brief
the complete Procedure for registration of a trade Mark with reference to the
particular section & rules under the Trade Marks Act & Rules.
2. What is an assignment of a trade mark? Prescribe the procedure to bring on the
record the subsequent proprietor of registered trade mark on the register. Is an
unregistered trade mark assignable without goodwill of business under the Trade
Marks Act, 1999?
3. Define "Deceptive similarity of trade marks. What are the tests laid down for
determining whether the two ‘marks are deceptively similar or not and give reference
to reported cases
4. Who can file notice of opposition and within what period of advertisement of
trade mark in the Trade Marks Journal it can be filed? State the procedure in an
opposition proceeding and state whether the hearing officer can dismiss in default
an opposition proceeding where neither the opponents nor applicant attends the
hearing.
5. What is the function of a trademark?
6. How to select a good trademark?
7. Who can apply for a trademark and how ?
8. What are different types of trademarks that may be registered in India?
9. What are the formalities and government fees for major trademark transactions ?
10. What are the benefits of registering a trademark?