INTELLECTUAL

PROPERTIES RIGHTS
(TRADEMARKS)
 What is Intellectual Properties ?
• Intellectual property (IP) refers to the creations of the human mind like inventions, literary and artistic
works,
• and symbols, names, images and designs used in commerce. Intellectual property is divided into two
• categories: Industrial property, which includes inventions (patents), trademarks, industrial designs, and
• geographic indications of source; and Copyright, which includes literary and artistic works such as
novels,
• poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and
• sculptures, and architectural designs. Rights related to copyright include those of performing artists in
their
• performances, producers of phonograms in their recordings, and those of broadcasters in their radio
and
• television programs. Intellectual property rights protect the interests of creators by giving them
property rights
Different types of Intellectual Properties
• Copyrights
• • Trademarks
• • Patents
• • Designs
• • Utility Models
• • Trade Secrets
• • Geographical Indications
 What is Trademarks ?
• A trade mark (popularly known as brand name in layman’s language) is a visual symbol which may be a
• word to indicate the source of the goods, a signature, name, device, label, numerals, or combination of
• colours used, or services, or other articles of commerce to distinguish it from other similar goods or
services
• originating from another. It is a distinctive sign which identifies certain goods or services as those produced
• or provided by a specific person or enterprise. Its origin dates back to ancient times, when craftsmen
• reproduced their signatures, or "marks" on their artistic or utilitarian products. Over the years these marks
• evolved into today's system of trade mark registration and protection. The system helps consumers identify
• and purchase a product or service because its nature and quality, indicated by its unique trade mark, meets
• their needs.
•A trade mark provides protection to the owner of the mark by ensuring the exclusive right to use it or to
• authorize another to use the same in return for payment. The period of protection varies, but a trade mark
• can be renewed indefinitely beyond the time limit on payment of additional fees. Trade mark protection is
• enforced by the courts, which in most systems have the authority to block trade mark infringement.
Historical Background
• The Indian Trade Marks Act, 1940 was the first statute law on trade marks in India. Prior to that protection of
• trade marks was governed by Common Law. Cases concerning trade marks were decided in the light of
• Section 54 of Specific Relief Act, 1877, while registration was secured by obtaining a declaration as to
• ownership under the Indian Registration Act, 1908. Some of the provisions of the first Trade Marks Act, 1940
• came into force on 11.3.1940 and the rest became effective on 1.6.1942 (Gazette of India Extraordinary,
• 1942. p.684)
• The said enactment was amended by the Trade Marks (Amendment) Act, 1941 and later by two other
• amendments. By the Trade Marks (Amendment) Act, 1943, the Trade Marks Registry, which was formerly a
• part of the Patent Office, Calcutta (now Kolkata) was separated from the Patent Office to constitute a
• separate Trade Marks Registry under a Registrar of Trade Marks at Bombay (now Mumbai). Thereafter, the
• Act was amended by the Trade Marks (Amendment) Act, 1946, to give effect to the reciprocal arrangement
• relating to trade marks between the Government of India and the then Indian States and further amendments
• introduced by Part B States Laws Act, 1951.
Definition of Trademark
the definition of "trade mark" under
Section 2(1)(zb) has been enlarged to
mean a mark capable of being
represented graphically and which is
capable of distinguishing the goods or
services of one person from others
and may include shape of goods, their
packaging and combination of colours
and covers both goods and services.
 What can be considered as trade ?
• Trade description under Section 2(1)(za) means any description, statement or other indication, direct
or
• indirect :
• (i) as to the number, quantity, measure, gauge or weight of any goods; or
• (ii) as to the standard of quality of any goods or services according to a classification commonly used
• or recognized in the trade; or
• (iii) as to fitness for the purpose, strength, performance or behaviour of any goods, being “drug”, as
• defined in the Drugs and Cosmetics Act, 1940 or “food”, as defined in the Prevention of Food
• Adulteration Act, 1954; or
• (iv) as to the place or country in which or the time at which any goods or services were made,
produced
• or provided, as the case may be; or
(v) as to the name and address or other indication of the identity of the manufacturer or of the
person
providing the services or of the person for whom the goods are manufactured or services are
provided; or
(vi) as to the mode of manufacture or producing any goods or providing services; or
(vii) as to the material of which any goods are composed; or
(viii) as to any goods being the subject of an existing patent, privilege or copyright, and includes –
(a) any description as to the use of any mark which according to the custom of the trade is
commonly taken to be an indication of any of the above matters;
(b) the description as to any imported goods contained in any bill of entry or shipping bill;
(c) any other description which is likely to be misunderstood or mistaken for all or any of the said
matters;
 Registration of Trademarks
The process whereby a trade mark is entered on the register of the trade marks is
referred to as registration. Any person, claiming to be the proprietor of a trade mark
used or proposed to be used by him, can apply for registration of a trade mark to the
Trade Mark Registry under whose jurisdiction, the principal place of the
• business of the applicant falls, in the prescribed manner for the registration of his
trade mark. In case of a
• company about to be formed, anyone may apply in his name for subsequent
assignment of the registration in
• the company's favour.
• The provisions contained in Rules 25 to 31 and 33 to 36 of the Trade Marks Rules, 2002
prescribe the
• procedure for application of trade marks.
 Procedure for registration of Trade mark
The different steps that are involved in the registration process in India are as follows:
Trade Mark Search
Who May Apply for Trade Mark ?
Company
Firm
Trust
Government
Joint Applicant
Filing and Prosecuting Trade mark Applications
Review by the Trade Marks Office
Preliminary Approval and Publication, Show Cause Hearing or Rejection of the
Application
GROUNDS FOR REFUSAL TO
REGISTRATION
•
Absolute Grounds
• Section 9(1) to (3) of the Act lists the absolute grounds for refusal of registration.
• Section 9(1) prohibits the registration of those trade marks-
• (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the
goods
• or services of one person from those of another person;
• (b) which consist exclusively of marks or indications which may serve in trade to designate the
kind,
• quality, quantity, intended purpose, values, geographical origin or the time of production of the
• goods or rendering of the service or other characteristics of the goods or services; or
• (c) which consist exclusively of marks or indications which have become customary in the
current
• language or in the bona fide and established practice of the trade.
• Relative Grounds (Section 11)
• Section 11 of the Act stipulates that where there exists a likelihood of confusion on the part of the public
• because of the identity with an earlier trade mark or similarity of goods or services, the trade mark shall not
• be registered. The registration of a mark which is merely reproduction or imitation of a well-known mark is
• also prohibited. Sub-section (3) prohibits the registration of a trade mark if or to the extent that, its use in
• India will be prevented by law of passing off or under the law of copyright unless the proprietor of the earlier
• trade mark consents to such registration.
• The term “earlier trade mark” as per the Explanation appended to this Section means a registered trade mark
• or an international registration or a convention application which has a date of application earlier than the
• trade mark in question, or a trade mark, which on the date of application for registration or on the date of
• priority claimed was entitled to protection as a well known trade mark
INFRINGEMENT OF REGISTERED TRADE
MARKS
• Infringement, very broadly means taking unfair advantage or being detrimental to the distinctive character or
• reputation of a trade mark.
• Under the Trade Marks Act, 1999 the meaning of infringement has been enlarged as more actions shall be
• taken as constituting infringement which are listed in Section 29.
• Section 29 dealing with infringement of trade marks explicitly enumerates the grounds which constitute
• infringement of a registered trade mark. This section lays down that when a registered trade mark is used by
• a person who is not entitled to use such a trade mark under the law, it constitutes infringement. This section
• clearly states that a registered trade mark is infringed, if the mark is identical and is used in respect of similar
• goods or services; or the mark is deceptively similar to the registered trade mark and there is an identity or
• similarity of the goods or services covered by the trade mark; or the trade mark is identical and is used in
• relation to identical goods or services; and that such use is likely to cause confusion on the part of the public
• or is likely to be taken to have an association with the registered trade mark.
Case law on Infringement

• In M/s J K Oil Mills v. M/s Adani Wilmar Ltd., 2010 (42) PTC 639 (Del.), the Delhi High Court held that in
• order to constitute infringement under the provisions of Section 29 of the Trade Marks Act, it would be
• necessary to show that impugned trade mark (label) is identical or deceptively similar to the registered
trade
• mark. And once the plaintiff is able to establish that the impugned trade mark (label) is identical or
• deceptively similar to the registered trade mark (label) then, it matters little whether the defendant is
using
• the impugned mark/label in respect of the goods and services which are not similar to those in respect
of
• which the trade mark is registered
Conclusion
• The entire Trademarks Act, 1999 eliminates the inconvenient provisions of
the old act and of course has fostered the rights of the traders and other
service providers significantly. It is a kind of a warning to the infringers.
Positively, this new Indian Trademarks act caters to the developments in
trading and commercial practices, increasing globalization of trade and
industry, the need to encourage investment flows and transfers of
technology, need for simplification and harmonization of trademark
management systems which further gives effect to relevant judicial
decisions. It was the much-awaited legislation by the legal as well as the
business community. Ultimately, the long lingering desire has been satiated.
Thank you

By Laxmi Sadashiv Sankeshwari