3rd Year

Trademarks and Brand Protection:

NAME: MUNTASIR RAHMAN

Department: School of Law
Paper Name: Intellectual Property
Semester: 5th
Student ID: 2111215001011
Registration No: 210010117807
What is Trademarks?

Trademarks are significant corporate assets, and while registration is not required by law, it
is recommended since unregistered trademarks receive little protection. If another firm tries
to use the same or a similar mark after registration, there will be a suitable legal procedure
to block it. A trademarked name distinguishes all of the proprietor’s products and services
from those of others, and it also protects the proprietor’s reputation from damage due to
counterfeit items.

Trademark rights in India are statutorily protected by the Trademark Act, 1999 and also
under the common law remedy of passing off. The administration of such protection under
the Act is done by the Controller General of Patents, Designs and Trademarks. The
Trademark Act, 1999 deals with the protection, registration and prevention of fraudulent
use of trademarks. It also deals with the rights of the holder of the trademark, penalties for
infringement, remedies for the damaged as well as modes of transference of the trademark.

Trademark is defined in the Trademark Act, 1999 as, “trademark 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 the shape of goods, their packaging and

combination of colours.”

Such a mark may include numerous things such as signatures, names, labels, headings etc.

To comprehend the legal definition of a trademark in India, we must first comprehend ‘The
Trade Mark Act, of 1999’. (Hereinafter the Act). A Trade Mark must be a ‘mark’ in addition to
possessing other basic features and being free of prohibited characteristics. As a result, the
legal definition of the mark as provided in Section 2(1)(m) of the Act is critical, which states
that a mark comprises a device, brand, heading, label, ticket, name, signature, word, letter,
numerical, form of products, packaging, or combinations of colours or any combination
thereof.

“Trademark” is defined under Section 2(1) (b) of the Act. It can be stated as follows:

1. The trade mark must be a mark. That is, nothing else than a mark as defined in
Section 2 (1)(m) of the Act is capable of being designated as a trade mark if
additional conditions are met.
 2. That such a mark is capable of being represented graphically. That is to say, if a mark
cannot be represented visually, it cannot be accorded trade mark registration.

3. Such a mark must be capable of identifying one person’s goods or services from
those of others. It implies that the mark must have certain distinguishing qualities,
either phonetically, structurally, or aesthetically, to allow consumers to associate a
product bearing that mark with a certain proprietor or authorised user without much
misunderstanding. Such differentiation can be innate, as in coined and created terms,
or learned.

Registration of Trademark

The registration process for trademarks, governed by Intellectual Property Rights (IPR) laws,
involves several key steps and considerations to secure legal protection and exclusive rights
to a mark. Here is an overview of the trademark registration process according to IPR:

 Trademark Search: Before filing an application, conducting a comprehensive

trademark search is crucial. This search helps identify existing trademarks that might
conflict with the proposed mark, minimizing the risk of refusal due to similarity with
pre-existing marks.
 Filing the Application: The application for trademark registration is typically
submitted to the relevant national or regional trademark office. It includes details
such as the applicant's information, a clear representation of the mark, and the
goods or services the mark will be associated with.
 Examination Process: Upon submission, the trademark office conducts an
examination to assess the eligibility of the mark for registration. This examination
ensures the mark meets specific criteria, such as distinctiveness, non-
descriptiveness, and compliance with legal requirements.
 Publication: If the trademark application meets all requirements and passes the
examination, it is published in an official gazette or trademark journal for a specified
period. This publication allows interested parties to oppose the registration if they
believe it infringes on their existing rights.
 Opposition Period: Following publication, a designated timeframe (often several
months) is provided for third parties to oppose the registration. Oppositions can be
based on prior rights or if the mark's registration could cause confusion with existing
trademarks.
 Registration and Issuance: If no oppositions are filed or if oppositions are
unsuccessful, and the application meets all requirements, the trademark office
proceeds with registration. A certificate of registration is issued, providing the
 trademark owner with exclusive rights to use the mark in connection with the
registered goods or services.
 Maintenance and Renewal: Trademark registrations have maintenance
requirements, such as paying renewal fees periodically and using the mark
consistently to prevent it from becoming vulnerable to cancellation due to non-use.

It's important to note that the trademark registration process can vary from country to
country, and in some cases, from region to region within a country. Additionally, seeking
legal advice or consulting a trademark attorney is often recommended to navigate the
complexities of the registration process and ensure a successful outcome.

Trademark infringement
Section 29 talks about the infringement of registered trademarks under the Act.
Infringement refers to the violation of someone’s rights. As a result, trade mark infringement
implies a breach of trade mark rights. Infringement of a trade mark occurs when an
unauthorised use of a trade mark or a substantially similar mark on goods or services of a
comparable type occurs. In such a scenario, the court will consider whether the use of the
trade mark would lead to consumer confusion about the genuine brand they are
purchasing. Thus, the following elements must be completed to categorise trade mark
infringement as provided under Section 29 of the Act:

1. If the trade mark is a copy of an existing trade mark with minor modifications or
changes.

2. If the infringing trade mark is printed or utilised in advertising.

3. If the infringing mark is employed in commerce

4. If the mark utilised is sufficiently similar to a registered mark a customer is likely to

be confused or misled when picking a product category.

Apart from this, Section 103 of the Act talks of the provisions for penalties for applying false
trademarks, trade descriptions, etc. According to this Section, a person is deemed to be filing
for a trade mark incorrectly under the following circumstances:

1. If a trade mark fabrication has occurred;

2. If a trade mark has been wrongfully applied to products or services;

3. Makes, acquires or disposes of any device with the intent to falsify a trade mark;
 4. Falsely represents the name of the nation or location where the items were
manufactured, as well as the name or address of the person responsible for their
production.

Opposing a Trademark Registration

The members of the public are given the opportunity to oppose the registration of a
Trademark during its registration process. The person filing the opposition of registration
maybe anyone, it could be a customer, competitor or any member of the public.

In the process of registration of a trademark, the mark will be advertised in the Trade Mark
Journal, upon this advertisement anyone can file an opposition to it during a period of three
months. This period of three months may be extended by no more than one month in
special cases. The filing of the opposition has to be done at the Trademark Registrar’s Office
and not at the Intellectual Property Appellate Board (IPAB). While filing an opposition, one
must include the following:

 Details of the trademark application against which opposition is being filed.

 Details of the earlier mark that the registering mark is infringing upon. It could be an
already registered mark or a mark that is still undergoing its registration.

 Details of the filing party.

 Grounds upon which such opposition is based on.

 Tampers with the origin indication that is applied or needed to be applied to a

product.

Infringement of trade marks as a consequence of falsification shall result in a penalty of not

less than six months, but not less than three years, and a fine of not less than fifty thousand
rupees, but not less than two lakh rupees. Provided, however, that the accused offender did
not perpetrate such deception on the following grounds:

 All reasonable efforts were taken to avoid the commission of such fabrication, and
there was no legitimate reason to doubt the legitimacy of the trade mark at the time
of the alleged violation.
 That he had done lawfully.
 On the prosecutor’s request, such relevant documentation about the way and person
from whom the products were received.

What is Brand Protection?

Brand protection is the strategic means to safeguard the Intellectual Property and non-
intellectual property assets of an entity and its associated brands against real and potential
infringers. The brand protection strategy plays a prime role in harnessing the economic value
of a brand along with its name, image, reputation, and overall value.

The protection is majorly sought against all kinds of brand abuse against which the entity
should remain vigilant at all times. These may include but are not limited to:

1. Brand Counterfeiting: It refers to the imitations or duplicates of a branded product

utilizing fake trademarks without authorization to deceive consumers. By the year
2022, the global counterfeiting industry is predicted to be worth $4.2 trillion.

2. Malicious Websites: Malicious websites are created by infringers to damage the

brand and may take the following different forms:

 Cyber-squatters

 Typo-squatters

 Imitation websites

3. Piracy of Copyright: Copyrighted articles like art, literature, computer programs are
often sold at cheaper rates by illegitimately utilizing proprietors’ rights for
unauthorized profits and gains. The same holds for books and DVDs.

4. Trademark Squatting: Squatters register names that are a sound-alike or look-alike of

authentic marks with bad faith attached.

5. Online Impersonation: It happens when the infringer poses himself to be the actual
proprietor of the brand by using its trademarked logos and copyrighted assets.

Role of IP in Protecting a Brand

IP plays a crucial role in devising the brand protection strategy. Different IP routes can be
taken in furtherance of the achievement of this goal. They are:

 Trademarks: To put it straight, trademarks and brands are not the same and hence,
cannot be used interchangeably. Where a trademark will help differentiate between
the goods of two proprietors and identify the source of origin, brands have more
complex features. The image building, status, value of the personality of the brand,
and consumer association are all the intrinsic features that constitute a brand. A
brand not only helps in consumer association but also develops the corporate
 existence of an entire company to fulfill a wide range of goals. However, both
trademarks and brands help in identification; they play different yet overlapping
roles.

 Trade Dress – A brand can also be identified by the use of a distinct trade dress. The
way a trademark helps identify the source of a product, a trade-dress serves an
identical purpose. Trade dress often takes the form of labels and designs of packages
like the Coca-Cola bottle (Tm. Reg. No. 1,057,884). The dress is composed of the look
and feel of the product with distinct yet consistent specificity. A functional feature or
a design aiding the function of a product cannot be protected. Other brands that
have considered trade dress protection include Converse for its ‘hi-top’ shoes,
Hershey’s for its ‘Hershey Kiss’ chocolates, Burberry for its check pattern, Christian
Louboutin for its red sole, and the list goes on.

 Design Patent: A design patent is granted for the ornamental features of a product,
which are non-functional. It is for this reason why the court decided to invalidate two
of Ford’s design patents covering the automotive-body parts for its F-150 truck (Auto.
Body Parts Ass’n vs. Ford Global Techs., LLC, 293 F. Supp. 3d 690 (E. D. Mi. 2018)). The
pre-requisite is that such a design should be new and non-obvious to the existing
craft. It plays a crucial role in branding since the design forms the element that
gathers the attention of the eye before actually using it. It helps appeal and lure
consumers towards buying some specific product, and over time, it reduces the
search-cost when the consumers adopt the product and absorb the brand image that
comes with it.

 Copyright: Seeking Copyright Protection is a good strategy in furtherance of brand

protection where the product involves original works of authorship, such as visual
art, music, and literary works. It goes beyond the simple creation of works and can
help in brand promotion and protection by safeguarding distinctive and original
logos/emblems, labels, product-use manuals, and even advertisements. For example,
in Maple and Co. vs. Junior Army and Navy Stores, an illustrated catalog for
advertisement, which was not for sale, was held to be a subject matter of copyright.

 Trade secret: Brand protectionists can undertake to choose an alternative to

mandatory disclosure, which is required for all other kinds of IP except trade secrets.
The same is more prevalent in the food & beverage industry.

Case Laws
 1) Kaira District Cooperative Milk Producers Union Ltd and Anr. Vs. Maa Tara
Trading Co. and Ors (Calcutta High Court on 22nd March, 2021)

In this case, the Calcutta High Court passed an interim order against the Defendants,
restraining them from using the trademark ‘Amul’ in connection with their products. The
case was instituted by Kaira District Cooperative Milk Producers Union Ltd., who are the
proprietors of the trademark ‘Amul’. It was contended in the plaint, that the Defendants
incorporated the ‘Amul’ trademark with a deceptively similar font in the labels of candles
marketed by them, which was alleged to be an act of trademark infringement. The Plaintiffs
pointed out that the ‘Amul’ trademark was recognised as a well-known mark by the
Trademark Registry, and as the Defendant’s products were being sold at cake shops and
confectionaries, there exists a high likelihood that consumers would associate such infringing
products with the Plaintiff. The Calcutta High Court passed an order of temporary injunction
restraining the Defendants from using the ‘Amul’ mark until the disposal of the suit.

2) Sony Corporation vs. K. Selvamurthy (Bangalore District Court on 18th June,

2021)

In this case, Sony Corporation filed a trademark infringement suit claiming dilution of its
well-known SONY trademark against a sole proprietor running a tours and travels business
under the name, Sony Tours and Travels. After analyzing the facts before it, the District Court
came to the conclusion that the Defendant did not take unfair advantage of, or cause
detriment to the distinctive character or repute of the Plaintiff’s SONY mark. The Court came
to this conclusion as Sony Corporation’s business is limited to electronics and media, which
could be differentiated from the tours and travels business of the Defendant. The Court also
noted that the use of the word, Sony by the Defendant did not cause any confusion among
the consumers. It also took note of the inordinate delay of the Plaintiff in approaching the
Court, and granted Defendants Rs. 25, 000/- as costs.

3) Sun Pharmaceutical Industries Limited vs Cipla Limited ( Madras High Court in

May, 2021)

In this case, the Respondent/Plaintiff filed a suit for a permanent injunction before the
Madras High Court against the Applicant/Defendant for infringement of its copyright and
trademark. The Court herein, granted an interim injunction in favour of the
Respondent/Plaintiff. Henceforth, the Applicant/Defendant filed three applications with a
plea to vacate the interim relief granted on grounds of urgency. The plea was based on the
fact that the drugs were of a huge amount, carried an expiry date of 1 year, and were in
demand because of the ongoing pandemic as they helped in relieving the Covid-19
symptoms. The Court held that the Respondent/Plaintiff had made out a prima facie case for
continuance of the interim order as the balance of convenience continued to be in their
favour. While holding so, the Court pointed out that they cannot allow a party to violate
another person’s IPR, notwithstanding the fact that the country was facing an
unprecedented medical emergency. The Court upheld the interim order and held that it shall
continue to remain in force subject to the final decision of the suit.

4) Reliance Industries Limited And Anr. Vs Ashok Kumar ( Bombay High Court on
23rd August, 2021)

In this case, Reliance Industries Limited, the Plaintiff, found a hardware fittings and
bathroom accessories retailer using their well-known mark ‘JIO’ and hence filed a trademark
& copyright infringement suit before the Bombay High Court. The Defendant on 11th June,
2021 had filed two applications for registration of the mark JIO and pirated artwork which
were advertised, claiming use since 16th December, 2016. The court noted that the
Defendant not only copied Plaintiffs’ mark, logo and artwork but also added an image of a
leaping jaguar which violated Jaguar Land Rover’s intellectual property as well. The Plaintiffs
filed an interim application praying for injunction against Defendant’s use of its copyright
and trademark until the final disposal of the suit. The Court was of the opinion that an
overwhelming prima facie case and balance of convenience lied in Plaintiffs’ favour, and
irretrievable prejudice would be caused if the reliefs sought were denied. Hence, the court
granted a temporary injunction and gave the Defendant the liberty to apply for a variation,
modification or recall of the order after 7 days’ notice to the Plaintiffs’ Advocates. Finally, the
court listed the matter hearing on further ad-interim relief on 30th September, 2021.

5) Guccio Gucci. Vs Intiyaz Sheikh (District Judge (Commercial Court), Tis Hazari
Court, Delhi on 27th August, 2021)

In this case, the Plaintiff, Guccio Gucci S.P.A. filed a suit for permanent injunction against
Defendant, Intiyaz Sheikh so as to restrain him and persons claiming under him from
infringing its trademark, copyright, passing off, unfair trade competition, rendition of
accounts, delivery up, etc. The Plaintiff had been advertising its products bearing its IP,
registered in many countries, through various printed media including newspapers,
magazines, internet and trade journals, leaflets and other promotional literature. Plaintiff in
its course of market survey came to know that the Defendant was illegally manufacturing
socks using Plaintiff’s registered “green and red stripes” logo and mark “Gucci” in its entirety.
The Court had passed an ex-parte ad-interim injunction. At the later stages of the suit the
Court noted that the Defendant deliberately chose not to participate in the proceedings
despite the pendency. The Court reasoned that a civil case proceeded on the doctrine of
preponderance of probabilities and not on proof beyond reasonable doubt. Although mere
non−appearance of Defendant could not be inferred against him, but in view of overall facts,
coupled with the evidence on record along with the report of local commissioner, the
Plaintiff was successful in establishing the case in its favour. The Court decreed a permanent
injunction against the Defendant and directed him to handover all the infringing goods to
the Plaintiff as well as pay ₹2,00,000/- and ₹1,66,000/- as costs and damages respectively.

CONCLUSION
In conclusion, trademark and brand protection within the realm of Intellectual Property
Rights (IPR) constitute critical elements for businesses aiming to establish and safeguard
their identity, reputation, and market presence. Trademarks serve as the foundation of
brand identity, enabling consumers to distinguish and associate products or services with
specific sources. Robust trademark protection ensures the maintenance of brand integrity,
trust, and recognition in the market. Trademark protection, businesses can maintain
consumer trust by preventing confusion or deception caused by unauthorized use of similar
marks. This protection safeguards consumers from counterfeit or misleading products and
ensures they can rely on consistent quality and origin. Strong trademark and brand
protection contribute to a company's overall value and market advantage. Brands with
effective protection mechanisms often experience increased market share, consumer loyalty,
and competitive advantage over imitators or infringers. With businesses operating across
borders, securing trademark protection internationally presents challenges and
opportunities. Effective protection involves proactive monitoring, enforcement against
infringements, and adaptation to technological advancements. Strategies to combat online
infringement, counterfeiting, and emerging threats in digital spaces are crucial for
comprehensive brand protection. Legal frameworks offer recourse against infringement,
including seeking injunctions, claiming damages, and pursuing criminal charges in severe
cases. Utilizing legal mechanisms and staying informed about changes in trademark laws are
essential for effective protection. Trademark and brand protection encourage innovation by
incentivizing businesses to invest in building unique brands while fostering fair competition
and enhancing market efficiency.

In a dynamic and global marketplace, the effective safeguarding of trademarks and brands
through robust IPR measures is essential. Businesses that prioritize trademark and brand
protection establish a solid foundation for growth, trust, and longevity, ensuring their brands
remain valuable assets in a competitive landscape.