UNIT-II:

Trademarks
(The Trademarks Act, 1999)
a) Introduction to Trademark Law
b) Brief Introduction to related International Treaties and
Conventions
c) Definitions (s2), Registration of Trademarks, Procedure,
Grounds of Refusal and Well Known Trademarks (ss9-
12, ss18-23 and s33)
d) Passing Off, Infringement and Exceptions to
Infringement Actions, Remedies (ss27-30, s34, ss134-
135)
e) Assignment and Licensing (ss48-53)
f) Intellectual Property Appellate Board (ss83-100)
g) Conflicts of Trademarks with Domain Name
h) Unconventional Trademarks
 Origin of Trade Mark
• The law of trademark in India before 1940 was based on the
common law principles of passing off and equity as followed
in England before the enactment of the first Registration
Act, 1875.
• The first statutory law related to trademark in India was the
Trade Marks Act, 1940 which had similar provision like the
UK Trade Marks Act, 1938.
• In 1958, the Trade and Merchandise Marks Act, 1958 was
enacted which consolidated the provisions related to
trademarks contained in other statutes like, the Indian Penal
Code, Criminal Procedure Code and the Sea Customs Act.
• The Trade and Merchandise Marks Act, 1958 was repealed
by the Trade Marks Act, 1999 and is the current governing
law related to registered trademarks. The 1999 Act was
enacted to comply with the provisions of the
TRIPS(Agreement on Trade Related Aspects of Intellectual
Property Rights).
• Though some aspects of the unregistered trade marks
have been enacted into the 1999 Act, but they are
primarily governed by the common law rules based on the
principles evolved out of the judgments of the Courts.
• Where the law is ambiguous, the principles evolved and
interpretation made by the Courts in England have been
applied in India taking into consideration the context of our
legal procedure, laws and realities of India.
 Meaning
• A trademark or trade mark is a distinctive sign
or indicator of some kind which is used by an
individual, business organization or other legal
entity to uniquely identify the source of its
products and/or services to consumers, and to
distinguish its products or services from those
of other entities.
 Features
• It should be distinctive
• TM should preferably be an invented word. Eg: ZEN
• It should be easy to pronounce and remember if it is
word mark.
• In case of a device mark -should be capable of being
described by a single word.
• It was be easy to spell correctly and write legibly.
• It should not be descriptive.
• It should be short.
• It should not belong to the class of marks prohibited for
registration.
• It should satisfy the requirements of registration.
 Objectives
• Developments in trading and commercial
practices
• Increasing globalization of trade and industry
• The need to encourage investment flows and
transfer of technology
• Need for simplification & harmonization of
trade mark management systems and
• To give effect to important judicial decisions
 Objectives u/ Act
• To provide for registration of trade mark for services, in addition to goods;
• Registration of trade marks, which are imitation of well known trade marks,
not to be permitted, besides enlarging the grounds for refusal of
registration;
• Amplification of factors to be considered for defining a well known mark;
• To provide only a single register with simplified procedure for registration
and with equal rights;
• Providing for registration of “collective marks” owned by associations;
• Providing an Appellate Board for speedy disposal of appeals ad rectification
applications;
• Providing enhanced punishment for the offences relating to trade marks;
• Prohibiting someone else’s trademark as part of corporate names, or name
of business concern;
• Provision for filing a single application for registration in more than one
class;
• Increasing the period of registration and renewal
 Signs which may serve as TM
• Words:
This category includes company names, surnames, forenames,
geographical names and any other words or sets of words, whether
invented or not, and slogans.
• Letters and Numerals:
Examples are one or more letters, one or more numerals or any
combination thereof.
• Device mark:
It includes any label, sticker, monogram, logo or any geometrical figure
other than word mark.
• Colored Marks:
This category includes words, devices and any combinations thereof in
color.
• 3D Signs:
A typical category of 3D signs is the shape of the goods or their
packaging.
 Definitions
• Sec. 2(1) (e)"certification trade mark" means a mark
capable of distinguishing the goods or services in
connection with which it is used in the course of trade
which are certified by the proprietor of the mark in
respect of origin, material, mode of manufacture of
goods or performance of services, quality, accuracy or
other characteristics from goods or services not so
certified and registrable as such under Chapter IX in
respect of those goods or services in the name, as
proprietor of the certification trade mark, of that person .
Examples: Agmark for all agricultural products, ISI mark ,
For industrial product, BIS hallmark certifies the purity of
gold jewellery, SILK Mark, Wool Mark etc.
• Sec. 2(1)(g) "collective mark" means a trade
mark distinguishing the goods or services of
members of an association of persons (not being
a partnership within the meaning of the Indian
Partnership Act, 1932) (9 of 1932) which is the
proprietor of the mark from those of others .
• Examples: CS, CA, TATA Sons
• Sec. 2(1)(h) “deceptively similar” A mark shall
be deemed to be deceptively similar to another
mark if it so nearly resembles that other mark as
to be likely to deceive or cause confusion.
• Sec. 2(1)(i) “false trade description” means—
(I) a trade description which is untrue or misleading in a
material respect as regards the goods or services to which
it is applied; or
(II) any alteration of a trade description as regards the goods
or services to which it is applied, whether by way of
addition, effacement or otherwise, where that alteration
makes the description untrue or misleading in a material
respect;
(III) any trade description which denotes or implies that
there are contained, as regards the goods to which it is
applied, more yards or metres than there are contained
therein standard yards or standard metres; or
 Sec. 2(1)(i)…..
(IV) any marks or arrangement or combination
thereof when applied—
• (a) to goods in such a manner as to be likely to
lead persons to believe that the goods are the
manufacture or merchandise of some person
other than the person whose merchandise or
manufacture they really are;
• (b) in relation to services in such a manner as to
be likely to lead persons to believe that the
services are provided or rendered by some
person other than the person whose services
they really are; or
 Sec. 2(1)(i)…..

(V) any false name or initials of a person applied to goods or

services in such manner as if such name or initials were a
trade description in any case where the name or initials—
(a) is or are not a trade mark or part of a trade mark; and
(b) is or are identical with or deceptively similar to the name
or initials of a person carrying on business in connection with
goods or services of the same description or both and who
has not authorised the use of such name or initials; and
(c) is or are either the name or initials of a fictitious person
or some person not bona fide carrying on business in
connection with such goods or services,
and the fact that a trade description is a trade mark or part
of a trade mark shall not prevent such trade description
being a false trade description within the meaning of this Act
• Sec. 2(1)(m) "mark" includes a device, brand,
heading, label, ticket, name, signature, word,
letter, numeral, shape of goods, packaging or
combination of colours or any combination
thereof.
• Sec. 2(1)(v) “registered proprietor”, in
relation to a trade mark, means the person for
the time being entered in the register as
proprietor of the trade mark .
• Sec.2(1) (z) "service“ means service of any
description which is made available to potential
users and includes the provisions of services in
connection with business of any industrial or
commercial matters such as banking,
communication, education, financing, insurance,
chit funds, real estate, transport, storage, material
treatment, processing, supply of electrical or
other energy, boarding, lodging, entertainment,
amusement, construction, repair, conveying of
news or information and advertising.
• Sec.2(1)(zb) "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 shape of
goods, their packaging and combination of coloursand—
(i) in relation to Chapter XII (other than section 107), a registered trade
mark or a mark used in relation to goods or services for the purpose
of indicating or so as to indicate a connection in the course of trade
between the goods or services, as the case may be, and some person
having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed
to be used in relation to goods or services for the purpose of
indicating or so as to indicate a connection in the course of trade
between the goods or services, as the case may be, and some person
having the right, either as proprietor or by way of permitted user, to
use the mark whether with or without any indication of the identity
of that person, and includes a certification trade mark or collective
mark
• Sec. 2(1) (zg) "well-known trade mark" in relation to
any goods or services, means a mark which has become
so to the substantial segment of the public which uses
such goods 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 those
goods or services and a person using the mark in
relation to the first-mentioned goods or services.
• Ex: Ponds, Reliance, Bata, FORD etc.
 Functions of a Trade Mark
 It identifies the product and its origin.
 It guarantees its quality
 It advertises the product
 It creates an image of the product in the mind
of the consumer.
Brief Introduction to related
International Treaties
and
Conventions
 Paris Convention
• The Paris Convention for the Protection of Industrial Property (1883)
contains various important provisions for trademarks. The most
important one is a priority right. This means that one can apply for a
trademark in one country that is a member to the Paris Convention,
and then within six months file subsequent applications in other
member countries and claim the priority date. Key points:
• The later registrations will then receive the registration date of the first
registration. This can be a great benefit if in the mean time someone
else had filed for the same trademark in those other countries.
• TM duly registered in the country of origin shall be accepted for filing
and protected as is in the other countries of the Union. The only
reasons under which the trademark offices of those other countries
may refuse the registration is when the trademark infringes rights
acquired by third parties in those countries, where the trademark is
devoid of any distinctive character, or when the trademark is contrary
to morality or public order or may deceive the public.
• Special protection is given to so-called well-known
marks. The registration or use of a trademark which
constitutes a reproduction, an imitation, or a
translation liable to create confusion, of a mark
considered to be well known in a country is
prohibited. If the holder of the well known mark
finds that such an other mark has been registered,
he can request a cancellation of that registration
within 5 years. If the registration of the other mark
was done in bad faith, there is no restriction on the
time in which the holder of the famous mark can
request cancellation.
 Madrid Agreement
• The Madrid Agreement concerning the International
Registration of Marks (1891) is a special treaty
designed to ease the acquisition of TM rights in
various countries. indicating the member countries
in which After an initial registration in his own
country, an applicant for a TM can make a so-called
international registration at the International
Bureau (IB) of the WIPO in Geneva, he would like to
have trademark protection. The IB then makes the
registration and passes it on to all the designated
member countries of the Madrid Agreement. These
then have one year in which to refuse the
registration in their country.
• The international registration can be annulled if the
original national registration is refused, annulled or
dropped in the first five year after the first registration
date. An annulment resulting from a legal action
started after the original registration is more than 5
years old cannot affect the international registration.
So, if you want to get rid of an international mark
established under the Madrid Agreement, you should
try to get the original national registration annulled by
starting a legal procedure to that end within five years
after the first registration. This is known as a central
attack on the international registration
 The Madrid Protocol

• The Protocol relating to the Madrid Agreement concerning

the International Registration of Marks (1989) contains
basically the same provisions as the Madrid Agreement
itself. There are some important differences. The first
difference is that not only countries, but also regions, such
as the European Community, can be a member.
• Second, under the Protocol one can ask for the international
registration based on only the application of a trademark,
rather than the registration. Registration often means that
the trademark office has to accept the application. If this
takes more than six months, it is no longer possible to use
the Madrid agreement to get an international registration
for the trademark.
 The Madrid Protocol
• Third, if the so-called central attack results in the annulment of
the original trademark (or application) the holder of the
international registration under the Protocol can in all of the
countries ask for a conversion. The trademarks in question are
then converted to national trademarks and treated as if they
were applications filed on the filing date of the (rejected)
national application. This way, the holder of the international
registration still has a chance to get national trademark rights
in at least some of these countries.
• If the country of origin is a member of both the Agreement
and the Protocol, and the countries in which the international
registration should have a fact is also a member of the
Agreement and the Protocol, then the provisions of the
Agreement take precedence over the provisions of the
Protocol in these countries.
 Community Trademark Regulation

• As a result of Council Regulation 40/94 (1993) and Regulation

3288/94 (1994), it is now possible to obtain one single
Community Trademark that is valid in all countries of the
European community. Applications for Community
Trademarks are handled by the Office for the Harmonization of
the Internal Market (OHIM).
• A Community Trademark is valid in the European Community
as a whole. It is not possible to limit the geographic scope of
protection to certain member states, and as a consequence an
invalidation, refusal or expiry of a Community Trademark
necessarily applies for the whole of the European Community.
Everyone is still free to apply for national trademarks instead
of Community TMs, and one can in theory even have
Community Trademarks and national trademarks for the same
mark.
 Nice Agreement
• The Nice Agreement concerning the International
Classification of Goods and Services for the purpose of
the Registration of Marks (1957) is not a trademark
treaty like the other treaties mentioned in this chapter.
• Rather, it provides an internationally accepted
definition of the various types of goods and services
for which one might want to obtain TMs. In a
trademark application the applicant must indicate for
which goods or services protection is desired. By
referring to the class numbers as defined in the Nice
agreement, it is clear to everybody what the trademark
protects.
• The Nice Agreement defines 34 main classes for goods
and 11 classes for services. They may be accompanied
by explanatory notes which describe in greater detail the
type of product or service for which protection is
desired. There is also an alphabetical list of goods and
services, which comprises about 10,000 indications
referring to goods and 1,000 indications referring to
services that can be used for this purpose. This way, an
applicant can indicate for example that his registration
applies only to computer keyboards and not to mice or
other peripherals.