— PART-II TRADE MARKS CHAPTER - 1 INTRODUCTION Trade mark isa sign, or symbol which is used by goods or articles from the goods or articles of oth amongst other similar goods. Itis defined as “a distinctive mark or device affixed to or accompanying an article intended for sale, for the purpose of indicating that it is manufactured, selected or sold by a particular person or firm” in Jowitt’s Dictionary of English law. It has been recognised as a very valuable form of intellectual property, because it associates with quality and consumer protection in a product or service, Y a person to distinguish his ers and to identity his goods Meaning of the term trade mark : The meaning and the scope of the term trade mark is explained in Firm Koonerji Bechari Lal Vs. Firm Adam Hazi Pir Mohammed ' as follows : “A trade mark is some symbol consisting in general, ofa picture, label, word or words, which is applied oF altached to goods of a trader so as to distinguish them as his from similar goods of other traders and to identify them as his goods or as those of his successors in the busitiess in which they are produced or put forward for sale. It is the adoption or use of a trade mark, which gives a title to it. As soon as a trade mark has been so employed in the market to indicate to purchasers that the goods to which it is attached are the manufacture of a particular firm, it becomes to that extent ° the property of the firm.” Thus a trade mark a property right and law protects thatright. A trade mark is a symbol which is applied or attached to goods offered for sale in the market? This is for the purpose of distinguishing it with similar other goods. Further it is with the object to identify his goods from others. 1 AIR 1944 Sind 21, 2 MR. Verma Vs. William Hollins and Company Ltd.-AIR 1947 Lah 29. Scanned with CamScannerTRAD rotection t Js for the legal Pre in adoption, long and con pl i in rotect his pani extensive use and addyertisements make a trade mare’ ty extensive use dwill and reputation among the customers ofthe hy and it helps to get 8 yetitors to COPY his mark, so as to deceive th con, compe ge. THs wll resul in economic loss he et right must be protected. Trade mark rights are protecteg in adopter. His rig! ts ii purposes: first to protect business Teputatio, a. Such a proetion y. to protect consumers from deception, to Preven ' goodwill nd secon inferior gods orserviessin the mistaken berg buying ble porchee provided by anather trader* No one should ena they ee will and reputation of the prior user. Reputation ot goodwit i st wpe ished in a day. It is gained over the years and at the huge ag advertisement? The growth of trad manufacturers and trader: made or sold by others. In ive teh, je mark : Trade marks have long been useq , § to identify their goods and distinguish their » Roman ins, twas common pottery to be ie ‘ ith a mark, for example, a representation of a dolphin or Fas a visit to the British Museum will testify. Mercham’s ma were used in commerce in Britain from the thirteenth century ; William Caxton wert the mark W74e and gold and silver articles were hallmarked as early g the fourteenth century. By the end of the sixteenth century, it was very common for shopkeepers to erect signs illustrating thei trade. Traders took tousing ers bearing their name and address, often. accompanied by adevice of some sort, a5 carly form of business card. The industrial revolution saw an enormous growh in the use of names and marks in advertising and the modern trade mark was bom! Functions of a trade mark A trade mark is essentially a product of competitive economy where more than one person competed for the manufacture of the same product which necessitated the marking of each manufacturer’s goods by a symbol which distinguished similar goods made by others.’ The modern trade mark law has three functions to perform. They are (1) origin function (2) quality or guarantee function (3) investment or advertising function. As pointed out earlier, a trade mark distinguishes over goods from those of goods of others. Trade mark is Vijay Grover Vs. Biocure Laboratories ~ 2002 (2) Raj 111. David Bainbridge, Intellectual Property, Fifth Ed. p. 532. Vijay Grover Vs. Biocure Laboratories ~2002 (2) Raj 111. David Bainbridge, Intellectual Property, Fifth Ed. p. 531. P. Narayanan, Intellectual Property Law, 3rd Ed, Revised, p. 147. Scanned with CamScannerINTRODUCTION essential adopted to advertise one’s Product and to make it archaser. It attempts t0 portray the nature and if posible ne Kew tothe oduct and over 8 period of time, the mark may become porn ha Of he indication tothe buyers or prospective buyers as tothe idemitn ot ger eae seauaity of goods or source (thats origin from which goneg aeaeet vanices the buyer about the unchanged quality Rea it . 'y of goods. Apa the fourth function of the trade mark is, it ereates an image forthe these, ‘Trade marks are quite a: significant in modem times in. economic terms pions eS mi and copyright and its impact is globally recognised, Trade mark must be used or proposed to be used to in relation to good: services which are the subject of trade or manufacture or rendering ofa “i it should have a visual representation of the mark. The use must be forthe purpose of indicating or so as to indicate connection in the course of trade of goods or providing services. The proprietor need not be a manufacturer of the goods. He may get the goods manufactured by others. Essentials of a trade mark A Trade mark must be used or intended to be used in relation to certain ds or services. A fundamental principle is that there is a connection between atrader and the goods or services in question. It is pointed out in Indo-Pharma Pharmaceutical Works Lid. Vs. Citadel Fine Pharmaceuticals Ltd that a trade mark is a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right to use the mark. In Hindustan Lever vs. Registrar of Trade Marks, (IPLR 2005 96) the appellant had registered their corporate name “Lever” as a trade mark in respect of their goods. Toothbrushes were among their several products. However, they never used that registered trade mark but applied the name of “Signal” or “Close-up Confident” in toothbrush business. The second respondent, who used the ‘Lever’ inrespect of brushes of other than toothbrushes, later applied for its registration for the same business. The appellant registered its registration. It was held that party pleading confusion must first establish the prior use of its trade mark in respect of his goods. Having failed to do so, he cannot plead later confusion of its trade mark with the use of a similar or same trade mark by another. Trade mark is a kind of property and is entitled to protection under the law, irrespective of its value in money so long as it has some business on commercial value, Not merely the interest of public but also the interest of owner are the subject concern of trade mark legislation? 1 Cadila Health Care Lid. Vs. Cadila Pharmaceuticals Ltd.—[2001 (3) Scale 98}. 2 AIR 1988 Mad 347 at 350. 3° London Rubber Co; Ltd. Vs. Durex Products and Another ~ AIR 1959 Cal 56. Scanned with CamScannerTRADE MARKS ina trade Itmust distinct g i sere must be dint be eapable of being represen hy products. ape of goods, their packaging and comp. ca 00 of sh : e by the way oF figure, label letter, form or devi ™binatg, There shou! ce MWopregnt pe manufacturer: ang Is bea name, nt: Trade mark and patents are belong vty. Both are tes of intellectual TB 10 the . various aspects. Patent is basica ly concermey Petty, 2 ile oF reas ade mark fused in promoting thst production © i symbol or sigh OF name applied to goods offered fo, % or services. I nit from similar other goods. The patent is not like hee Jusive right to use it for certain duration onl ly. Buta ea : k can be protected in perpetuity subject to periodical renewal. ed trade marl jstered oF cnregistered. A registered trade mark will pet stage : i fringement. But unregistered trade mark may be fea) protection a Le oft 3 | snly by means of an action 0 pai RIPs and Trade mark ‘Trade Related Aspects of Intellectual Property Righy rights. Articles 15 to 21 of Section 2 of the Agreemen, Agreement on T The Agreement on protects the trade mark deal with trade marks. Article 15 (1) sayss “Any sign, or any combination of signs, capable of distinguishing the goods, or service of one undertaking ‘one ee 4 crher undertakings, shall be capable of constituting a trade mark, Such signs, in particular words, including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs shall be eligible for registration as trade marks.” The Agreement on TRIPs imposes an obligation on its participant States to apply the Paris Convention standards relating to trade marks. It also extends the Paris Convention provision on the protection of well-known marks to service marks! and to cases of dilution by use for different goods and services where that use is damaging. Article 18 speaks about the term of protection. “initial regisiration, and each renewal of registration of a trade mark shall be for a term of not less than seven years. The registration of trade mark shall be renewable indefinitely.” The question of licensing and assignment is dealt with undet 1 Article 16 (3) of the Agreement on TRIPs, Scanned with CamScannerINTRODUCTION et article 21- ‘Members may determine conditions on the licensing and ‘assignment of trade marks, it being understood that the compiler) eens of wade marks shall not be permitted and that the owner of a regist red trade ‘marks shall have the right to assign his trade mark with oretiou the transfer of the business to which the trade mark belongs.” OTHER INTERNATIONAL CONVENTIONS / TREATIES ON TRADE MARKS: ‘ 1. Paris Convention for the Protection of Industrial Property, 1967. 2. Nice Agreement concerning the International Classification of Goods and Services for the purposes of Registration of Marks, 1957. Amended on September, 1979. 3. Madrid Agreement concerning the International Registration of Marks of April 14, 1891 and revised at Stockholm on July 14, 1967. 4, Protocol Relating to the Madrid Agreement concerning the International Registration of Marks, 1989. | 5, Trade Mark Law Registry, adopted at Geneva on October 27, 1994. | 6. Regulations under the Trade Mark Law Treaty adopted at Geneva on October 27, 1994. 7. The Vienna Agreement established an International Classification of the Figurative Elements of Marks, 1973. ‘The Indian law on trade marks is governed by the Trade Marks Act, 1999 which replaced the Trade and Merchandise Marks Act, 1958. Indian law is in sonformity with the provisions ofthe Agreement on TRIPs. Scanned with CamScanner