Trademark

• Trademarks already existed in the ancient world

• caveat emptor
• Donogue v. Stevenson
• need for
• the identity of the producer of a product
• the promise of quality
• Trademark indicates a connection between
manufacturer and his good

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Indian Trademark Law

• India has one of the most well advanced

trademarks law
• The Trade Marks Registry in India in 1940
• Trade Marks Act, 1999 (TradeMarks (Amendment)
Act, 2010)
• Trademark Rules 2017
• Party to Madrid Protocol
• ™(the trademark symbol)
• ®(the registered trademark symbol)

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Service mark

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Collective mark

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Certification mark

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Trademark

• Section. 2 Clause (1)(zb) of the Trade Marks

Act,1999 defines trademark as: “trade mark” 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 colours
• WIPO: “A trademark is any sign that individualizes
the goods of a given enterprise and distinguishes
them from the goods of its competitors.”
• Functions of trademark
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What can be used as Trademark

• As per Indian Trade Marks Act 1999, "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
• 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: eg. 555, 777, 99, 3M, 7up

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Devices

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Combinations, including
logotypes and labels

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Colored Marks

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Three-Dimensional Signs

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Other signs

• Audible signs
• Smell
• Invisible signs

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Trademarks Law 1999, section 9

• describes gives absolute grounds for refusal of

trademark registration
• 1 (a) which are devoid of any distinctive character
• Examples:
• Geep Flashlight Industries Ltd. vs The Registrar
Of Trade Marks
• Jeryl Lynn Trade Mark Application
• American Online Corp. Application
• Colgate-Palmolive company
or

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Section 9, Clause 1

• 1 (b): 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
• Procter & Gamble v. Office for Harmonization in
the Internal Market
• Imperial Tobacco Company of India Ltd v.
Registrar of Trademarks
• 1 (c): customary in the current language or in the
bona fide and established practices of the trade

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Section 9, Clause 1 Exception

• Acquired a distinctive character

• Section. 2 Clause (1)(zg): well-known trade
mark
• Kamal trading Co. vs. Gillette UK Limited
• D.M. Entertainment .v. Baby Gift House and
Ors
• Celebrity brands

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Doctrine of prior use

• Priority in adoption and use prevails over

priority in registration
• According to Section 34 of the Trademarks
Act, 1999
• Section 47 allows for a registered trademark
to be taken off the register for lack of use
• Neon Laboratories Ltd. v. Medical
Technologies Ltd. & Ors.

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Distinctiveness

• Invented word and lack of similary

• Similarity can be phonetic, visual, in idea, or in
nature of the mark
• Win -Medicare Ltd V. DUA Pharmaceuticals Pvt
Ltd
• Smithkline Beecham Ltd vs Apar Pharma
• Calida Lab v. Dabur Pharma Ltd
• Biofarma V. Sanjay Medical Store
• Lion and Tiger

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Section 9, Clause 2

A mark shall not be registered as a trade mark if

(a) it is of such nature as to deceive the public or
cause confusion;
(b) it contains or comprises of any matter likely to
hurt the religious susceptibilities of any class or
section of the citizens of India;
(c) it comprises or contains scandalous or obscene
matter;
(d) its use is prohibited under the Emblems and
Names (Prevention of Improper Use) Act, 1950.

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Section 9, Clause 3

A mark shall not be registered as a trade mark if it

consists exclusively of
(a) the shape of goods which results from the nature
of the goods themselves; or
(b) the shape of goods which is necessary to obtain
a technical result; or
(c) the shape which gives substantial value to the
goods

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Relative grounds for refusal

• Indian Trademarks Law 1999, section 11

• Society Des Products v V.M. confectionary
limited
• British Sugar PLC vs James Robertson and
Sons Ltd.
• Pramod Kumar Garg vs M/S Punjab Tractor
Limited

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Honest and concurrent use
• Indian Trademarks Law 1999, section 12
• In the case of honest concurrent use or of other special circumstances which in
the opinion of the Registrar, make it proper so to do, he may permit the
registration by more than one proprietor of the trade marks which are identical
or similar (whether any such trade mark is already registered or not) in respect
of the same or similar goods or services, subject to such conditions and
limitations, if any, as the Registrar may think fit to impose.
• London Rubber co. v. Durex Products
• Club Europe Holidays Ltd vs British Airways PLC

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Trademark becomes generic

• It should be noted that unless a trademark is

carefully protected it will lose its significance.

• This essentially means that the trademark will

degenerate in status to a generic word.

• Eg. Asprin, Refrigrator, GripeWater, Xerox

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Infringement and Passing off
• Section 29 deals with infringement of trademark
• Section 27 Clause 1: No person shall be entitled to
institute any proceeding to prevent, or to recover
damages for, the infringement of an unregistered trade
mark
• Clause 2: Nothing in this Act shall be deemed to affect
rights of action against any person for passing off goods
or services as the goods of another person or as
services provided by another person, or the remedies in
respect thereof
• Passing off someone else’s goods as its own is not right

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Infringement and Passing off

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Other cases

• Cadila Healthcare Ltd. v/s Cadila Pharmaceuticals

• Bata vs Batafoam
• Hamdard National Foundation v. Abdul Jalil
• Raymond Ltd. v. Raymond Pharmaceuticals
Private Ltd.
• Milmet Oftho Industries & Ors v. Allergan Inc.
• Yahoo!, Inc. v Akash Arora & Anr
• Rediff Communication v. Cyberbooth & Anr

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Work flow for processing
applications

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