Trademark: History, Scope, Objects & Future Vision

I. INTRODUCTION

The term Intellectual Property although lacks a concrete definition is referred to as a result or
a product of human intellectual creative activity such products could be the trade name
“McDonalds”, database of food recipes, inventions, or a simple design of the restaurant. 1
Thereby, the creation or invention that transpires as an intangible property of the specific
person is granted with the legal or monopoly rights to harvest the economic benefits
accordingly; which further sustains societal development and motivates skill.

Intellectual property rights [herein “IPR”] are territorial rights, the owner has the right to
buy, sell or license their Intellectual Property similar to tangible physical property. In
accordance to the type of invention/creation with the application mechanism the IPRs are
categorized into i) patents ii) copyright iii) trademark iv) industrial design v) geographical
indications and vi) layout design of semiconductor integrated circuit. For the purpose of this
article, we would only delve into the aspects concerning trademark in addition to the
prospective vision and the world-wide impact.

II. HISTORICAL BACKGROUND OF TRADEMARK LAW IN INDIA

The evolution of trademark law can be reflected back to the advent of industrial revolution
and competitive market economy which primarily channelled wide-scale manufacturing and
distribution of goods, leading to the identification of products based on certain symbol,
device or marks making them distinguishable from similar goods manufactured by others.
Advertising the goods based on the trademark was also incorporated by the manufacturer due
the acquired economic value in them. Nonetheless, the competitors had an ulterior motive to
deceptively adopt reputed trademarks to secure the profits collaterally and the necessity for
protecting the goodwill and reputation of trademark was a dire priority resulting in the
adoption of trademark laws. At international level, the first multilateral convention was the
Paris Convention for the Protection of Industrial Property adopted in 1883.

India borrowed the British Trademark Act, 1938 and drafted the first legislation in respect to
trademark as Trade Marks Act, 1940, prior to the Indian Merchandise Act, 1889. The 1940
act introduced the system of registration and rendered statutory protection to register
trademarks. In 1958, the Trade and Merchandise Marks Act was adopted, which repealed

1
https://www.asil.org/sites/default/files/ERG_IP.pdf
Indian Merchandise Marks Act, 1889 and Trade Marks Act, 1940 and indoctrinated section
129 which rendered to declare the ownership or title of a person to a trademark other than a
registered trademark. For the further development in trading and commercial practices,
enhanced globalisation and to encourage investment flow, India became a Party to the
Agreement on Trade-Related Aspects of IPR [herein “TRIPS”] and the Trade Marks Act,
1999 was adopted in conformity to the provisions of TRIPS.

III. SCOPE AND OBJECTIVES OF TRADEMARK LAW

A trademark essentially extends over,

a) Identifying the goods of one trader and distinguishes them from goods sold by other
traders.
b) Signifies that all goods upholding a specific trademark are derived from a single
resource.
c) Signifies that all goods upholding a specific trademark are equivalent of quality, and
d) Acts as a vital instrument in advertising and selling the goods.2

The trademark law primarily necessitates two prominent objectives,

a) Identification of source and origin of particular mark in order to protect the public
from confusion and deception from distinguishable similar products.
b) Protection of trademark owner’s trade and business in relevance to the trademark.3

In the case of Cadbury India Limited v. Neeraj Food Products, Delhi High Court stated that
the sole purpose of the trademark legislation is to protect the trader and consumer from
malicious adoption of one’s trademark by another with the motive of capitalizing the attached
reputation and goodwill.

IV. ESSENTIALS OF TRADEMARK

A trademark includes any word, name, symbol, configuration, device shape of goods,
packaging, combination of colours or any combination thereof which one adopts and uses to
identify and distinguish his goods from those of others

Three essentials of trademark are,

i. It should be a mark

2
J.T. McCarty, TRADEMARKS AND UNFAIR COMPETITION (New York, 1973), Vol. 1, p.86.
3
Mohan Lal v. Dona Paint & Hardware
 ii. It should be capable of being represented graphically
iii. It should be capable of distinguishing the goods or services of one person from those
of others.4

V. TYPES OF MARKS

1) Trademarks - marks which are used to distinguish certain goods produced by a specific
enterprise.
2) Service marks - marks which are used to distinguish certain services rendered by a
specific enterprise.
3) Collective marks - marks which are used to distinguish the goods or services of a
person or an association of persons who is the proprietor thereof from those of others.
4) Certification marks – marks which are used to distinguish the goods or services that
comply with a set of standards and have been certified by a certified authority.
5) Well-known marks - marks that are considered to be well-known in the market and as
result benefit from stronger protection.

VI. FUTURE PROSPECTS OF TRADEMARK

Unconventional marks such as sound, shape, colour and motion are currently gaining traction
in India, however the Act’s requirement of being graphically representable is a limitation in
terms of registration of the unconventional marks.

The possibility of registration for smell and taste marks could be attempted but nonetheless
this registration acts as a barrier. Furthermore, touch/texture and hologram marks are
naturally not categorized under graphical representation as these marks can only be perceived
by human touch. Hologram marks necessitates to be seen from certain angles to comprehend
the distinctive character hence lacking the depiction under the trademark applications.
Consequently, with the evolution of technology, the above mentioned phenomenon can be
substantially possible which the establishment of advanced tools, bridging the gaps resulting
in receptive registrations, examinations and recordings of unconventional marks. Thereby,
amendment of the prevailing tools or trademark law is prominent, approach to widened terms
such as “represented graphically” under Section 2(1) (zb) of the TradeMarks Act, 1999 must
be considered.
4
Laxmikant V. Patel v. Chetanbhat Shah, AIR 2002 SC 275.