Professional Documents
Culture Documents
Trademark - Meaning, History, Definition and Registration
Trademark - Meaning, History, Definition and Registration
Its Registration
It
It
It
It
identifies
guarantees
advertises
creates an
The origin of trademarks can be traced back as far as the beginning of the circu
lation of
goods. The history of marks is nearly as old as the histories of mankind and rel
igion.
Scientists have come across excavated artefact from places such as ancient Egypt
with
various symbols carved thereon for religious and superstitious reasons. "Potters
marks"
appeared in relics left from the Greek and Roman periods and were used to identi
fy the
maker (potter) of a particular vessel). Among those who specialize in researchin
g the
cultural heritage of marks, the studies surrounding "potters marks" are famous.
It would be
difficult, however, to say that these marks are trademarks in the sense of the m
odern
meaning.
Over time, different methods of identification and distinction developed. Loved
ones and
pets were given names. "Proprietary marks" (in the form of a name or symbol) wer
e affixed
to goods to enable one person to distinguish their own possessions from those of
others.
Craftsmen applied their names, unique drawings, or simple inscriptions to identi
fy goods
they created. Even though these marks surely helped in distinguishing goods, it
is difficult
to say that these marks were trademarks with distinctiveness in the modern sense
of the
word. Symbols on goods used in ancient Rome and other countries near the Mediter
ranean
sea had similar characteristics to the trademarks of today. Because this ancient
region is
To overcome the aforesaid difficulties the Indian Trademarks Act was passed in 1
940, this
corresponded with the English Trademarks Act. After this there was an increasing
need for
more protection of Trademarks as there was a major growth in Trade and Commerce.
The
replacement to this act was the Trademark and Merchandise Act 1958.This Act was
to
provide for registration and better protection of Trademarks and for prevention
of the use of
fraudulent marks on merchandise. This Law also enables the registration of trade
marks so
that the proprietor of the trademark gets legal right to the exclusive use of th
e trademark.
The objective of this act was easy registration and better protection of tradema
rks and to
prevent fraud.
The reappellation of the Trademarks and Merchandise Act gave rise to the Tradema
rk Act
1999; this was done by the Government of India so that the Indian Trademark Law
is in
compliance with the TRIPS obligation on the recommendation of the World Trade
Organisation. The object of the 1999 Act is to confer the protection to the user
of the
trademark on his goods and prescribe conditions on acquisition, and legal remedi
es for
enforcement of trademark rights. It will for the first time protect service mark
s and give
provision of registration for collective marks, it will also differentiate betwe
en well known
trademarks and trademarks in general, and also special treatment and rights are
envisaged
for well known trademarks. The act of 1999 also gives police the right to arrest
in case of
infringement. There are some points of changes that are present between the 1958
act and
1999 act, it can be said that the 1999 act is a modification of the 1958 act, it
has provided
exhaustive definitions of terms frequently used, enhanced punishment for offende
rs,
increased the period of registration, registration of non- traditional trademark
s. The rules of
this act are called as Trademark Rules 2002. Both the Act and its set of rules c
ame to effect
on September 15th 2003. The trademark act 1999 and its trademark rules 2002 pres
ently
govern Indian Trademark Laws in India. Laws of trademarks are based on distincti
veness
and deceptive similarity. If distinct signs are freely used the brand equity cre
ated by one
person will be freely used by another. The value of distinctive sign depends on
sales volume
and public association of sign with quality.
Madrid Protocol
India Parliament has passed the Trade Marks (Amendment) Act for enacting special
provisions relating to protection of trademarks through international registrati
on under the
Madrid Protocol. As per the Amendment Act, from the date of the international re
gistration
of a trademark where India has been designated or the date of the recording in t
he register of
the International Bureau about the extension of the protection resulting from an
international
registration of a trademark to India, the protection of the trademark in India s
hall be the
same as if the trademark had been registered in India.
Meaning and definition of Trademark:
A trademark is any word, name, symbol, or device capable of distinguishing the g
oods or
services of one person from those of others, and may include shape of goods, the
ir
packaging and combination of colours. Trade Mark includes a brand name, a house
mark,
and a service mark. A trademark may be an insignia, label, name, sign, logo, dev
ice,
signature, numerals, packaging, shape of goods, colour combination etc. In other
words, a
trademark is a visual symbol used in relation to any goods or services to indica
te some kind
of trade connection between the goods and services and the person using the mark
. It
usually identifies the product and acknowledges its unchanged quality and helps
to advertise
the product. This gives the consumer satisfactory assurance of the quality of th
e article he is
buying. Their duration is not limited and they may last forever, subject to rene
wals at proper
intervals. Priority of right is determined by who first used the mark within the
particular
geographic area. In those countries, which recognize common law rights, use of a
mark
commercially must be demonstrated before grant of registration of the mark. If t
hey are not
properly used and protected, it becomes difficult to be enforced against misuse.
Brands today are demonstrably the most powerful and sustainable wealth creators
in the
world. Therefore, a brand s future needs to address how to be better, stronger, mo
re
distinctive and more valued. The definition of a brand is probably more complex
today than
it has ever been. People have more choice today than they ever had before. So, t
he brand
must be, so to say, a bridge of trust to the consumer. Trust is undoubtedly the
future of a
brand. A brand has to be customer-friendly. There are many characteristics share
d by the
strongest brands today, the most critical of which are clarity, consistency and
leadership.
Around the world, millions of dollars are spent every year in building a strong
brand.
carried on and is augmented with the passage of time, and it is the mechanical q
uality of a
particular trade, which attracts the customers. Goodwill has become a component
of the
total value of an undertaking that is attributable to earn profits. Therefore, b
rand protection
becomes inevitable in the present day scenario.
mark includes a device, brand, heading, label, ticket, name, signature, word, lett
er,
numeral, shape of goods, packaging or combination of colours or any combination
thereof.
Section 2 (1) (zb) of the Trade Marks Act, 1999 defines,
trade mark
as follows:
trade mark means a mark capable of being represented graphically and which is capab
le
of distinguishing the goods or services of one person from those of others and m
ay include
shape of goods, their packaging and combination of colours; 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 to indicate a connection in the course of tr
ade between
the goods or services, as the case may be, and some person having the right eith
er as
proprietor or by way of permitted user to use the mark whether with or without a
ny
indication of the identity of that person , and includes a certification trade m
ark or collective
mark.
Thus, the definitions of mark and trademark list specific examples of marks which ma
y
be registered as trademarks. However, both these definitions are inclusive definit
ions and
not exhaustive.
To constitute a trade mark capable of being registered under the Trade Marks Act 1
999
the following conditions should be fulfilled:
i. it must be a mark as defined in Section 2 (1) (m);
ii. it must be capable of being represented graphically; and
iii. it must be capable of distinguishing the goods or services of one person fr
om those of
others;
Essentials of a trade mark
From the above definitions, the following essential ingredients emerge for const
ituting a
trade mark under the 1999 Act:
a. it must be a "mark";
a. the shape of goods that results from the nature of the goods themselves;
b. the shape of goods that is necessary to obtain a technical result; or
c. the shape that gives a substantial value of the goods.
The scope of the provision contained in section 9(3)(c) quoted above is really b
road. In the
case of Philips Electronic BV v Remington (1998 RPC 283), it was held that this
restriction
should apply to a shape which exclusively adds value to the goods (design or fun
ctional
appearance) and one should disregard a value attributable to a trade mark functi
on (ie.
source indication).
Combination of colours
Under the provisions of the Trade and Merchandise Marks Act 1958, a trade mark c
ould be
limited wholly or in part to one or more specified colours, and any such combina
tion had to
be taken into consideration by the tribunal having to decide on the distinctive
character of
the trade mark. Whether any colours or a combination thereof can be construed as
a trade
mark would depend upon whether it has acquired any secondary meaning or a de fac
to
monopoly in the market place.
The judgment of the Delhi High Court in the matter of Colgate Palmolive Company
and
Anr v. Anchor Health and Beauty Care Pvt Ltd 2003 (27) PTC 478 (Del), wherein it
was
held that if the get up of goods, size, shape and labels and wrappers is deceptiv
ely similar,
then the concept is identified as trade dress and if the goods are offered in such
dress to the
public, then such shape and size can be protected as an identifiable concept of
a trade
mark.
Well-known Trademark and Trans Border Reputation
India recognises the concept of the
Principle of Trans
e goods
or services in which the trademark appears.
4. The duration and geographical area of any registration of any publication for
registration of that trademark under this Act to the extent that they reflect th
e use or
recognition of that trademark.
5. The record of successful enforcements of the rights in that trademark, in par
ticular
the extent to which the trademark has been recognized as a well known trademark
by
any Court or Registrar under that record.
6. The number of actual or potential consumers of the goods or services
7. The number of persons involved in the channels of distribution of the goods o
r
services.
8. The business circle dealing with the goods and devices to which the trademark
applies
Whereas a trademark has been determined to be well known in at least one relevan
t section
of the public in India by any court or Registrar, the Registrar shall consider t
hat trademark
as a well-known trademark for registration under this Act.
In addition to this there are several facts that are not to be taken in to consi
deration by the
Registrar in determining the well-known trademark.
These are as follows:1. The Trademark has been used in India
2. The Trademark has been registered
3. The application for registration of the Trademark has been filed in India.
4. The trademark is well known in or has been registered in, or in respect of wh
ich an
application for registration has been filed in any jurisdiction other than India
or
5. The trademark is well known to the public at large in India
Section 11(10) deals with various aspects in relation to the Protection of well
known
trademarks. It states:While considering an application for registration of a trademark, and opposition
filed in
respect thereof, the Registrar shall:
1. protect a well known trademark against the identical or similar trademark, an
d
2. take into consideration the bad faith involved either of the applicant or the
opponent
affecting the rights relating to the trade mark.
However, it is also stated that if a trademark has been registered in good faith
disclosing the
material information to the Registrar of where right to a trademark has been acq
uired
through use in good faith before the commencement of the Trade Marks Act, 1999,
then the
validity of the registration of the trademark or right to the use of that tradem
ark will not be
prejudiced on the ground that such mark is identical or similar to a well known
trademark.
Section 11 of the Trade Marks Act provides for facts to be considered while esta
blishing a
well known trademark, protection of a well known trademark and protection of mar
ks
registered in good faith viz. a viz. well known trademarks.
Non-traditional trademarks
. Appearance: Depending on the jurisdiction, this type of mark may include the c
olor
or combination of colors applied to the products themselves or to the packaging
in
which they are sold. In the case of services, it could include the visual appear
ance,
externally or internally, of a store or restaurant or, for instance, the design
of a menu.
The appearance of products, packaging or services is frequently referred to as t
rade
dress.
. Moving Images, Holograms and Gestures:
This type of mark includes moving images, which can combine colors, sounds and
aspects of product designs. In certain jurisdictions, the motion of the Lamborghi
ni
car door has been given protections as a motion trademark, because of the unique
movement of the door as it is opened or closed.
The moving image can be a film clip, video, moving logo for TV shows, etc. The U
K
has registered a moving mark for Kraft Foods UK Ltd. The mark has a description
which says: "The mark consists of the three-dimensional shape breaking apart, as
shown in the sequence of still pictures attached to the form of application"
. Sound: This type of mark may be a jingle or a piece of music or other sound, s
uch as
the roar of the MGM lion or the Tarzan yell. It may be a short extract from a
composition or an entire musical piece. In some cases, it may be a reproduction
of an
everyday sound, perhaps in an unusual circumstance.
For sound marks, there have been alternate methods for the graphical representat
ion
of sounds. These include depictions by oscillogram, spectrum, spectrogram, and
sonogram.
The first sound mark was registered in August 2008 by Yahoo! Inc. for its famous
"yodel". The mark was filed under Class 35 (advertising, business management,
business administration, office functions); Class 38 (telecommunications) and Cl
ass
42 (providing for food and drink; temporary accommodation; medical, hygienic and
beauty care; veterinary and agricultural services, legal services, scientific an
d
industrial research; computer programming; services that cannot be classified in
other classes) for its range of email, business and internet services.
Smell/Scent: Although specific smells may be associated with particular goods or
services, not all of them are protectable as trademarks, because they are functi
onal.
For example, the scent of perfume is considered functional. In other cases, a sc
ent is
applied or added to a product, and it is not the natural smell of the product it
self and
does not serve a functional purpose. For instance, in the United States, a cherr
y scent
for synthetic lubricants for high-performance racing and recreational vehicles i
s
registered on the Principal Register.
The United Kingdom.s first smell mark was granted to Japan.s Sumitomo Rubber
Co. in 1996 for a floral fragrance of roses as applied to tyres . The mark was late
r
transferred to Dunlop Tyres. A Dutch company.s tennis balls with the scent of ne
wly
mown grass, and Unicorn Products. (a London-based maker of sports equipment)
smell mark for darts with the strong smell of bitter beer , are some examples where
smell marks have been successfully registered.
Taste: Some jurisdictions permit the registration of taste as a mark, but they o
ften
require that the taste be represented graphically and, of course, that it serve
the
purpose of a trademark. In many cases it will be difficult to distinguish betwee
n the
natural flavor of a product and the recipe adopted by a manufacturer to distingu
ish its
goods from those of competitors. Even when the taste is not protected by a trade
mark
registration, such recipes often are closely guarded trade secrets. Taste marks
are also
referred to as gustatory marks.
Registration of Trademark
A person who claims to be the proprietor of the trademark can apply for the regi
stration of
its mark for goods as well services.
A person may apply for registration of a trade mark to the Trademark office unde
r whose
jurisdiction the principal place of the business of the applicant in India falls
.
In case, the principal place of business is outside India, then the application
can be filed in
the Trademark office under whose jurisdiction the office of the lawyer appointed
by you is
located.
In case of a company about to be formed, anyone may apply in his name for subseq
uent
assignment of the registration in the company's favour.
Before making an application for registration it is prudent to conduct a tradema
rk search in
the Trademark office in context of the already registered trademarks to ensure t
hat
Grounds of Refusal
Trade Marks Act, 1999, Section 9 and Section 11 give the grounds for refusal of
the
application. Where Section 9 mentions the absolute grounds, Section 11 provides
with the
relative grounds of refusal of the application.
Unless in (i) (ii) and (ii) hereinabove, the mark has acquired a distinctive
character as a result of the use made of it or is a well-known trade mark before
the
date of application for registration. [Proviso to Section 9(1)]. For the sake of
ready reference, the definition of
2(1)(zg) is set out below:
contained in Section
a) which is the commonly used and accepted name of any single chemical element
or any single chemical compound (as distinguished from a mixture) in respect of
a chemical substance or preparation, or
b) which is declared by the World Health Organisation and notified in the prescr
ibed
manner by the Registrar from time to time, as an international non-proprietary
name or which is deceptively similar to such name. [Section 13].
xiii) Where an application is made for the registration of a trade mark which fa
lsely
suggests a connection with any living person, or a person whose death took place
within twenty years prior to the date of application for registration of the tra
de
mark. [Section 14].
Honest Concurrent User
The trademark law allows the trademark of an honest and concurrent user to coexi
st with
another similar mark. The defense of honest concurrent user came into being thro
ugh the
cases of Dent v. Turpin and Southorn v. Reynolds.
In John Fitton & Co. the following five factors were laid down in order to have
success in
honest concurrent user defense.
1.
2.
ch
to
3.
4.
5.
The extent and use in time and quantity and the area of the trade.
The degree of confusion likely to ensue from the resemblance of the marks whi
is
a large extent indicative of the measure of public inconvenience.
The honesty of the concurrent use.
Whether any instances of confusion have in fact been proved, and
The relative inconvenience which would be caused if the mark were registered,
eement.
Opposition proceedings
After advertisement of a trademark in the Trade Marks Journal, (which is availab
le online at
the website of Office of Registrar of Trademarks) an opposition challenging the
application
for registration can be filed by any person within a period of 3 months (which m
ay be
extended by a period not exceeding 1 month).
Renewal of registration
The trademark is initially registered for a period of 10 years, which is calcula
ted from the
date of filing of the application and in case of convention application, from th
e date of
priority. The registration is required to be renewed within 6 months before the
date of expiry
of the registration, i.e., 10 years from the date of the application or subseque
nt renewals.
The failure in renewing the trademark within the stipulated period of time and a
grace
period of maximum 1 year granted for restoration of the trademark, automatically
leads to
removal of the trademark from the Register of Trademarks.
Rectification of Trademark
An aggrieved person may file an application before the Registrar of Trademarks o
r to the
Intellectual Property Appellate Board (IPAB) for cancellation or varying the reg
istration of