What is trade mark? State its Function and Object?

Introduction & Meaning

A trade mark is a visual symbol in the form of a word, a device, or a label applied to articles of
commerce with a view to indicate to the purchasing public that they are the goods manufactured or
otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt in
by other persons. A person who sells his goods under a particular trade mark acquires sort goods. Such a
right acquired by use is recognized as a form of property in the trade mark.
Statutory definition of trade mark-section 2(1) of the 1999 act
 Trade mark must be a mark which includes a device, brand, shape of goods, packaging or
combination of colors or any combination thereof— s. 2(1) (m).
 The mark must be capable of being represented graphically.
 It must be capable of distinguishing the goods or services of one person from those of others.
 It may include shape of goods, their packaging and combination of colours.
 It must be used or proposed to be used in relation to goods or services.
 The use must be for the purpose of indicating a connection in the course of trade between the goods
or services and some persons having the right as proprietor to use the mark.
 The right to proprietorship of a trade mark may be acquired by registration under the Act or by use
in relation to particular goods or services.
 The right of proprietorship acquired by registration is a statutory right which requires no actual user
but only an intention to use the mark.
Function of a trade mark
Under modern business conditions a trade mark performs four functions: (1) it identifies the product and
its origin, (2) it guarantees its unchanged quality, (3) it advertises the product, and (4) it creates an
image for the product.
The object of trade mark law
The object of trade mark law is to deal with the precise nature of the rights which a person can acquire in
respect of trade marks, the mode of acquisition of such rights, the method of transfer of those rights to
others, the precise nature of infringement of such rights, and the remedies available in respect thereof.
A trademark is typically a name, word, phrase, logo, symbol, design, image, sound or a
combination of these elements. There is also a range of non-conventional
trademark comprising marks which do not fall into these standard categories, may
therefore be visible signs (e.g. colors, shapes, moving images, holograms, positions),
or non-visible signs (e.g. sounds, scents, tastes, textures).
What is a good trade mark?
Apart from distinctiveness or capable of distinguishing a good trade mark should possess the following
attributes:
 It should be easy to pronounce and remember, if the mark is a word.
 In the case of device mark the device should be capable of being described by a single word. -.
 It must be easy to spell correctly and write legible.
 It should not be descriptive but may be suggestive of the quality of the goods,
 It should be short,
 It should appeal to the eye as well as to the ear.
 It should satisfy the requirements of registration.
 It should not belong to the class of marks prohibited for registration. In general a manufacturer of
goods is free to adopt any mark to distinguish his goods.
TRADEMARK REGISTRATION
WHAT ARE THE TYPES OF TRADEMARKS THAT CAN BE REGISTERED ?
 Under the Indian trademark law the following are the types of trademarks that can be registered:
 Product trademarks: are those that are affixed to identify goods.
 Service trademarks: are used to identify the services of an entity, such as the trademark for a
 broadcasting service, retails outlet, etc. They are used in advertising for services. In modern
trade, consumers are confronted not only with a vast choice of goods of all kinds, but also with
an increasing variety of services.
There is therefore also a 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.
This type of trademark is used to identify and distinguish the services rather than the products
provided by any enterprise. 
Service marks can be registered, renewed and canceled in the same way as trademarks; they can
moreover be assigned and licensed under the same conditions.
Service marks are also applicable for the routine maintenance or repair work.
The Service marks have their particular symbol which is SM and not TM. A very
prominent example is McDonald's, which is a service mark for restaurant services, ), Wal-Mart
(retail business services), and AT&T (telecommunications services).
 Collective trademarks: are registered in the name of groups, associations or other
organizations for the use of members of the group in their commercial activities to indicate their
membership of the group. A collective trademark, collective trade mark, or collective mark is
a trademark owned by an organization (such as an association), used by its members to identify
themselves with a level of quality or accuracy, geographical origin, or other characteristics set
by the organization.
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.
Producers of traditional regional products often use collective marks to promote the products
and help market them internationally. These initiatives help local producers cooperate and are
important tools for local growth.
In several countries (for e.g., the Federal Republic of Germany, Finland, Norway, Sweden and
Switzerland), the registration of a collective mark may be canceled if that mark is used contrary
to the provisions of the regulations or in a manner which misleads the public.
Examples are like "CA" device is used by the members who fall under Institute of Chartered
Accountants; another example is "CPA" which denotes members of the Society of Certified
Public Accountants.
 Certification Marks-
The certification mark may only be used in accordance with the defined standards.
The main difference between collective marks and certification marks is that the former may be
used only by particular enterprises, for example, members of the association which owns the
collective mark, while the latter may be used by anybody who complies with the defined
standards.
An important requirement for the registration of a certification mark is that the entity which
applies for registration is “competent to certify” the products concerned.
The certification mark identifies the origin, material, and most importantly, the quality of the
goods and services that separates a particular brand/company from the competitors in the
market. These marks are used to access the worth of labor in manufacturing goods and services.
In brief, Certification marks are used to define "standard" of goods and
services. Example: Woolmark, which is certified for the fabrics on clothing, Agmark, and ISI.
 Well known trademark-in relation to any goods or services, means a mark which has become
so to the substantial segment of the public which uses such good or receives such services that
the use of such mark in relation to other goods or services would be likely to be taken as
indicating a connection in the course of trade or rendering of services between these goods or
services. Eg- BATA, COLGATE, PONDS.
 A trademark may be designated by the following symbols:
TM-for an Unregistered Trademark, that is, amark used to promote or brand goods.
SM-or an unregistered Service mark, that is, a mark used to promote or brand services
R-for a registered trademark

DIFFERENT TRADEMARKS
Conventional Trademarks.
it include letters, numerals, words, pictures.

Unconventional trademarks.
Color trademarks.
Sound marks and olfactory marks
Packaging trademarks
Devices, Drawings
Shape of goods.
WORDS-This category includes company names, surnames, forenames, geographical names
and any other words or sets of words, whether invented or not, and slogans.Eg-sony, yahoo,
Google, nokia, burger king.
LETTERS AND NUMERALS-Examples are one or more letters, one or more numerals or any
combination thereof. LG, KFC, 303 capsules, 555 cigarettes.
DEVICES-This category includes 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. Eg- DISNEY
COLOUR TRADEMARKS-
Single Color-Very unusual and peculiar in trade and can be recognized by traders and
consumers.Eg- Cadbury, nivea, Coca-Cola
Combination of colors-Depends on uniqueness and what they are applied to. Eg-PAYTM,
PEPSI, TOMMY.
THREE-DIMENSIONAL SIGNS-A typical category of three-dimensional signs is the shape
of the goods or their packaging. For example, it can be a perfume or liqueur bottle. In order for
protection to be approved, the shape must be significantly different from what is common in the
market.
AUDIBLE SIGNS (SOUND MARKS)-
Two typical categories of sound marks can be distinguished , namely those that can be
transcribed in musical notes or other symbols and others. Depends on whether sound has
become distinctive sign. Eg. The Intel logo composed by walter werzowa(audio).
Harley Davidson for its distinctive v-twin engine sound.
Musical tone of Kingfisher.
OLFACTORY MARKS (SMELL MARKS)- Imagine that 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.E.g.. Johnson &Johnson scents etc.

Explain the procedure for Registration of Trade Marks?

Trade marks registry- sections 5 and 6
An office called the Trade Marks. Registry has been established for the purpose of registration of trade
marks, maintenance of the register and matters incidental thereto. The Head Office of The Registry is at
Mumbai. It has branch office at Kolkata, Delhi, Chennai and Ahmadabad. The Trade Mark Registry has
a seal.
The Trade Mark Registry is under the charge of the Registrar of Trade Marks who is also the Controller
- General of Patents, and Designs. He is assisted by a joint Register, Deputy Registers, Assistant
Registrars, Examiners of Trade Marks and a Complement of Clerical staff.
Procedure for registration
The procedure for registration of trade marks is contained in sec. 18-24 of the Trade Mark Act 1999.
Step 1: Preliminary advice and search
Before or after applying for registration he may also request for the Registrar's opinion as to the
distinctive-character of the mark. The Registrar's search report or opinion is not, however, binding on
him.
Step 2: Examination and objections
The Registrar will cause the application to be examined and communicate to the applicant any objection
to the mark which mainly relates to distinctive character and similarity with already registered marks.
The applicant can put forward his case either in writing or at a hearing. If the application is accepted, it
will be advertised in the Trade Marks Journal. If refused, the applicant may go on appeal to the
Appellate Board.
If the application is refused on the ground of lack of distinctive character, the applicant may, after some
years of use, make a fresh application.
Step 3: Opposition to registration – section 21
Every application accepted will be advertised in the Trade Marks Journal (an official publication.) any
person may object to the registration by following the procedure for the prescribed purpose. The
Registrar may either accept-the application; with or without condition or limitations or refuse the
application. Conditions are in the form of disclaimer of certain parts of the mark or as to mode of use.
Limitations may be in the form of amendment of the goods or as to area of the use of the mark or as to
mode of use.
Step 4: Onus
The onus of establishing a case for registration is on the applicant.
Step 5: Duration and renewal of registration- sections 25 and 26
If the application for registration after its advertisement is unopposed; or if opposed decided in favor of
registration the mark will be registered as of the date of the application for registration. The first
registration is for a period of ten years which can be renewed from time to time by paying the renewal
fee. Although registration is antedated to the date of application, no infringement action can be
instituted before the mark is actually entered on the register. If the mark is not renewed, it will be
removed from the register but can be restored if a request is made to that effect within one year from the
date of expiry of registration or last renewal.
Step 6: Certification trade mark- sections 69-78
Trade marks indicate trade sources or trade connection. There is a class of marks the purpose of which
is to indicate that the goods on which it is impressed have been certified by some competent person in
respect of some characteristic of the goods like origin, composition, mode of manufacture or quality.
Explain the provisions relating to Infringement of Trademarks?
Infringement of trade marks- section 27 and 29(1)
 A registered trademark will be infringed if the person in course of the trade, in relation to the
same goods for which the mark is registered, uses without authority the same mark or
deceptively similar mark. if the whole of the registered mark is taken the addition of the other
matter will not affect the issue. Fraudulent intention is not necessary to prove infringement.
 The mark must be used in the course of trade as a trade mark and use must be of a printed or
other visual representation of the mark. Use on advertisement, invoices or bills would be
infringement.
 Use of the mark as part of the trading style of the defendant is also an infringement. Use on
reconditioned or second hand articles will infringe the registered mark even if it is made clear
that the goods are not original but only reconditioned.
  Where the mark registered consists of a descriptive word, surname or geographical name, any
bonafide use of that word or name by others for descriptive purposes is protected and will not
be an infringement.
Infringement under section 29(2) to (9)
Under s. 29(2) & (3) the following uses of the registered trade mark which are likely to cause confusion
or likely to have an association with the registered mark also constitute infringement of the registered
trade mark:
 marks identical and goods or services similar;
 marks similar and goods or services identical or similar;
 Marks identical and goods or services identical.
Section 29(4)
Marks identical or similar, and goods or services not similar; and the registered trade mark has a
reputation in India: and the use of the mark without due cause takes unfair advantage of or is
detrimental to the distinctive character or repute of the registered trade mark.
Section 29(5)
Mark used as a trade name or part of trade name or name of business concern dealing in the goods or
services in respect of which the trademark is registered.
Section 29(6)
For the purpose of this section (i.e.s.29) a person uses a registered trade mark if, in particular he-
a. Affixes it to goods or to the packaging thereof;
b. Offers or exposes goods for sale, puts them on the market, or stocks them for there purposes under
the registered trade mark;
c. Imports or exports goods under the mark; or
d. Uses the registered trade mark on business papers or in advertising.
It would appear that this sub-section will apply to all kinds of infringement where the marks are similar
and/or the goods are similar.
Section 29(7)
Unauthorized application of the registered trade mark to a material intended to be used for labeling
packaging goods as a business paper, or for advertising goods or services, provided that such person
when he applied the trade mark knew or had reason to believe that the application of the mark was not
duly authorized by the proprietor or a licensee.
Section 29(8)
Any unauthorized advertisement of the registered trade mark if such advertisement.
a. takes unfair advantage of and is contrary to honest practices in industrial or commercial matters, or
b. is detrimental to its distinctive character; or
c. Is against the reputation of the trade mark. This refers to comparative advertisement.
Section 29(9)
Unauthorized spoken (oral) use of words, which constitute distinctive elements of a registered trade mark.
The various types of infringement listed under s.29(2) to (9) involves expressions like similar mark,
similar goods or services, use of the mark without de cause, taking unfair advantage, detrimental to
distinctive character or repute, contrary to honest practices in industrial or commercial matters, against
the reputation of a trade mark, and distinctive elements of a registered trade mark.
Trademark Infringement( Example Case) It was concluded that Utterly Butterly Delicious Amul's
name cannot be used by any other proprietor even if the company is selling goods other than that sold by
the proprietor, who has registered the trademark. In a significant judgment, the Gujarat High Court has
ruled that a registered trademark user has the right to restrict others using their trademark for different
class or goods. 
HC's judgment was in connection with a case where the Kaira District Co-operative Milk Producers'
Union popularly Amul Dairy and the Gujarat Co-operative Milk Marketing Federation (GCMMF) had
filed trademark infringement cases against two local shop owners, Amul Chasmaghar and Amul Cut
Piece Stores in the district court. While Kaira Union owns brand Amul, GCMMF manages the brand. 
It was on April 25, in 2007 year that the district court had passed an order that it was a clear case of
infringement and restrained the two from using Amul trademark. Amul Chasmaghar however had
challenged the district court's interim injunction in the HC, where justice D N Patel upheld ruling of the
district court. 

Conclusion

 The trade mark is for protecting the name of the product or services rather the product itself;
 Trade mark assures the customer about the source of a product, though the quality of the product
is not assured by the trade mark;
 The trade mark should be distinctive;
 Deceptively similar marks, geographical names etc. can not be registered as a trade mark;
 In India, the Trade Mark Act of 1999 is presently in force;
 The term of trade mark protection is 10 years, which can be renewed from time to time,
indefinitely;
 Trade mark can be assigned or transmitted;
 Using deceptively similar marks, falsifying the mark or using unregistered mark cause
infringement under Trade Mark Act; and
 The penalties against offences related to trade mark can range from fine to imprisonment.