Trademark: Click To Edit Master Title Style

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Trademark
D r. H a r s h a S u r yawa n s h i
A s s t . p ro f .
S h r i S h iva j i L aw C o l l e g e, Pa r b h a n i
1
Trademark
• Industrial revolution enabled large scale production and

distribution of goods.
• Competition in the market- multiple products
• Manufacturers-Identification of products by certain
symbols, marks or devices
2 2
Trademark
• Object-distinguish goods from others

• Advertising of goods by using trade mark on them
• Trademark acquired goodwill and reputation among
consumers of goods
• Competitors started copying well known Trademark to
market their products easily
• Need to protect the goodwill and reputation of trademark.
3 3
Meaning
Click andtitle
to edit Master definition-Trademark
style
• Section 2(zb) Trademark-
• 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.
4 4
Essentials
Click of title
to edit Master trademark
style
• Three essentials of trademark,
a.It should be a mark.
b.Mark should be capable of graphical representation.
c. It should be capable of distinguishing the goods or

services of one person from those of other.
5 5
It should
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to edit Master markstyle
• Mark according to section 2(m) means and includes

device, brand, heading, label, ticket, name, signature,
word, letter, numerical, shape of goods, packaging or
combination of colours or any combination thereof.
6 6
Mark
Click includes
to edit Master title style
• Brand-Mark which are branded on themselves for example

tortoise brand mosquito coil, Parle-G on biscuits
• Letters-LG, IBM, IFB

• Label-Composite mark containing various features like device,
words usually printed on paper and attached to the goods
themselves.
• Ticket-label attached to the goods by string, e.g. Pantaloon, Zodiac
garments
7 7
Mark
Click includes
• Numeral- 555 cigarette
• Symbol or logo-A visual depiction of manufacture or a

company.
• Generally, logos are used as service marks
• Container- may be in 3-D form
8 8
Mark
Click includes
• Packaging-
• Section 2(q)-means and includes any case, box,
container, covering, folder, vessel, receptacle,
casket, bottle, wrapper, label, band, ticket, reel,
frame, capsule, cap, cap-lid, stopper and cork.
9 9
Mark
Click includes
• Device-Mark which is not falling under any above

category may be called a device
• Shape of goods-unique shape of goods e.g. soap.
• Title of book or magazine e.g. India Today, Outlook
1010
Graphical
Click representation
• Graphical representation means representation capable

of drawing in paper form
• Sign must be presented in a way that is clear, precise, self-
contained, easily accessible, intelligible, durable and
objective
• Capable of putting on register in physical form
1111
Distinctiveness
• The trademark must be capable of distinguishing the

goods or services of one person from others.
• Some inherent qualities or characteristics in the mark

itself which makes it distinct.
1212
Functions
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• Goodwill of product reflects through trademark.
• TM indicates the manufacture or quality of good.
1313
Functions
Click of trademark
• 1. Identification of products
• TM identifies the goods of one trader and distinguish

them from goods of others
• Similarly, the trademark signifies that all goods wearing a

particular trademark come from a single source.
1414
Functions
Click of trademark
• 2. Guarantee of quality
• TM signifies that all goods wearing a particular

trademark are of equal quality.
• TM establishes that goods with particular trademark are

of that quality for which they are recognized
1515
Functions
Click of trademark
• 3. Advertisement of product
• 4. Creation of image of products
• TM creates an image of product in the mind of public
1616
Characteristics
Click to edit Master titleof trademark
style
• 1. TM-kind of property; entitled to protection under law;
• 2. Transmission of trademark includes transfer of

goodwill of the business;
• 3. Registration not mandatory for trademark protection;
1717
Characteristics
Click to edit Master titleof trademark
style
• 4. Trademark genus & collective mark, certification

trademark, well known trademark species;
• 5. Distinctiveness is basic quality of a trademark;
• 6. The word TM includes the trade name under which

articles for goods are sold
1818
INFRINGEMENT OF
RTM
Dr. Harsha Suryawanshi
Asst. Prof.
Shri Shivaji Law College, Parbhani
1
INFRINGEMENT
• Registered proprietor is entitled to certain rights; right
to use, grant, license and assign the trademark.
• Trademark carries goodwill and reputation of the goods
or services for which it is used.
• Therefore, it is necessary to protect the rights of
trademark proprietor to protect reputation and goodwill
of TM.
2
2
INFRINGEMENT
• Infringement-violation of rights of registered
trademark proprietor & occurs if a person other than
the registered proprietor uses the same mark or
deceptively similar mark for same goods or services
for which the mark is registered & in the course of
trade.
3
3
ESSENTIALS OF INFRINGEMENT
• 1. Taking of essential features of mark or whole of mark
and then making few additions or alterations
• 2. Such mark must be used in the course of trade;
• 3. Use of infringing mark must be in some graphical
form;
• 4. Use of infringing mark should be as trademark.
4
4
FORMS OF INFRINGEMENT S. 29
• To prove infringement the registered proprietor has to
prove following objects of infringer,
• a. To cause confusion in the mind of customers or
consumers or
• b. To cause impression of association with registered
trademark.
5
5
1. Mark identical or deceptively similar

a. Deception or confusion as to goods
b. Deception or confusion as to trade origin
c. Deception or confusion as to trade
connection
6
6
2. Unauthorized use of registered trademark
i. Identity with registered trademark and similarity with
goods or services or
ii. Similarity with registered trademark and identity of goods
or services or
iii.Identity with registered trademark and identity of goods or
services.
7
7
3. Unauthorized use of Mark

4. Infringement of registered trademark also occurs
by use of registered trademark as trade name or part
of is a trade name or name of business concern.
8
a)Labelling o packaging goods
b)Use of registered trademark on business papers
c)Use of registered trademark for advertising goods or
services.
9
9
• 6. Infringement by advertisement of trademark

• Compaq vs. Dell
• 7. Infringement may occur by use of distinctive
element of a register trademark.
10
10
REFERENCES
• 1. Sony Corporation vs. Park Kwang Soo
• SONY.COM for computers and software & NEW SONY.COM having porn
films
• 2. Electrolux vs. Electrix
• Electrolux & Electrix

• 3. Jamna Products manufacturers of Kanmaie vs. Arvind Laboratories
• EYETEX & EYESEE

11
11
PASSING OFF OF TRADEMARK

Asst. Prof.
12
12
PASSING OFF
• Passing off is an actionable wrong in which a person passes
off his goods as the goods of another.
• Unfair trading practices which are injurious to goodwill of
trademark.
• Passing off is a civil wrong or tort whereby rights of uses of
trademark are violated thereby causing damages to the
person.
13
13
ESSENTIALS OF PASSING OFF
i. Misrepresentation
ii. Made in the course of trade
iii. Made to prospective customers for ultimate consumers
iv. Such misrepresentation injurious to the goodwill/reputation of

trademark
v. Actual damage to business or goodwill of the trader

14
14
MISREPRESENTATION
• Misrepresentation-using tricks to show that the mark is
relating to trademark.
• Misrepresentation does occur by two ways,
• Firstly, by using same mark as that of a trademark and
• Secondly, by using a deceptively similar trademark.
• Object-To create confusion or confuse or deceive the

customers. 15
15
ESSENTIALS OF PASSING OFF
• 2. In the course of trade
• 3. To prospective customers or ultimate consumers
• 4. Injure the business or goodwill of another
• 5. Actual damage to business or goodwill of the
trader
16
16
REFERENCES
• Sia James and Jewelry Private Limited vs. Siya
Fashions
• Sri Sai Agencies Private Limited vs. Chintala Rama Rao

• Cadila Laboratories Limited vs. Dabur India limited
17
17
REGISTRATION OF
TRADEMARK

Asst. Prof.
1
REGISTRATION OF TRADEMARK
• Trademark may be registered or unregistered.

• Registration offers prima facie evidence of
ownership of trademark.
• However, if trademark is unregistered, the user of
trademark has to establish prior use and passing off.
2
CONDITIONS AND GROUNDS FOR
REGISTRATION SECTION 6- 17
• Conditions to be satisfied by a trademark for
registration.
• Every trademark is not registrable.
• Grounds for refusal of registration
• 1. Absolute grounds for refusal of registration
• 2. Relative grounds for refusal of registration
3
3
ABSOLUTE GROUNDS FOR REFUSAL OF
REGISTRATION S. 9
• a. Trademark which is devoid of distinctiveness
• Distinct-mark capable of distinguishing the goods or
services of one person from others.
• Distinctiveness-inherent or acquired over a period of
time.
• Imperial Tobacco Company of India Limited vs. The
Registrar of Trademark
4
4
REGISTRATION S. 9
• b. A trademark which is descriptive in nature
• Descriptive trademark= imparts information directly;
• Describing the kind, quality, quantity, intended purpose,

values, geographical origin or the time of production of
the goods or rendering the services of the goods i.e any
characteristics of the goods or services.
5
5
REGISTRATION S. 9
• Hindustan lever vs. Kilts
• Word ‘Saffo’ for registration for cleaning powder and liquid; held
to be close to the word ‘saff’ meaning clean; registration refused.
• Chandra Bhan Agrawal vs. Arjun Das Agrawal
• Registration for word ‘DORA’ for hosiery items; ‘DORA’ means

thread or strips & feminine personal name. Registration was
allowed. 6
6
REGISTRATION S. 9
• c. Words which have become customary in current
language
• Grant of registration creates monopoly rights over
the registered trademark.
• Words or marks which have become very common in
current language or in trading, cannot be allowed to
be registered 7
7
REGISTRATION S. 9
• Geep Flashlight Industries Limited vs. The Registrar of
Trademark
• Trademark ‘Janata’ for registration for electronic
torches since products were cheap in price and for
common man.
• Application rejected on the ground that if ‘Janata’
word was allowed it would create monopoly. 8
8
REGISTRATION S. 9
• J.R. Kapoor vs. Micronix India
• Word ‘Micro’ was claimed for registration.
• Held word ‘Micro’ is descriptive of micro technology

used for many electronic goods. Hence no one could
claim monopoly. Application was rejected.
9
9
REGISTRATION S. 9
• d. Marks likely to deceive public or cause confusion
• Marks which are likely to deceive public are not

allowed registration. Similarly marks which are
likely to cause confusion in the mind of public are
also refused registration
10
10
REGISTRATION S. 9
• Tosiba Appliances Company vs. Kabushiki Kaisha Toshiba
• British India Corporation Limited vs. Khariti Ram
✓KASHGIRI & kash Giri, Nilgiri, Kailash Giri. Defendant was
prohibited from using the trademark.
• Jamuna Products Manufacturer vs. Arvind Laboratories
✓EYETEX & EYESEE
11
11
REGISTRATION S. 9
• e. Marks containing matters likely to hurt the religious feelings
are prohibited for registration of trademark.
• g. Marks which are prohibited under the Emblems and Names

(Prevention of Improper Use) Act, 1950 cannot be registered.
• President, Prime Minister, national anthem, Indian flag/tricolor,

Ashoka chakra, etc.
12
12
REGISTRATION S. 9
• h. Marks also cannot be registered if it consists of-
• i. Shape of goods and such shapes are natural;
• ii. Shape of goods necessary to obtain technical
result;
• iii. Shapes which give substantial value to goods.
13
13
RELATIVE GROUNDS FOR REFUSAL OF
REGISTRATION-SECTION 11
• 1. Identity with earlier trademark and similarity of goods or vice
versa
• Cadila Healthcare Limited vs. Cadila Pharmaceuticals Limited-
Zexate & Mixate
• 2. Identity with or similarity to well-known trademark
• 3. Registration prevented by other laws
• Khodey Khodey India Limited vs. the Scotch Whisky Association 14
14
PROCEDURE FOR
REGISTRATION
Asst. Prof.
15
15
PROCEDURE FOR REGISTRATION
• Application
• Contents of application
• 1. The class of goods or services or the class in respect of
which application is made;
• 2. Full name, occupation, calling and occupation of
applicant;
16
16
CONTENTS OF APPLICATION
3. Principal place of business in India;
4. Address for service in India;
5. Statement relating to colour combination;
6. If trademark is 3-D then statement about the same
17
17
ADVERTISEMENT OF APPLICATION-S. 20
• After acceptance of application,
• Registrar advertises the application of the trademark in
Trademark Journal.
• Why?
• To invite objections if any person whose interest is affected
by the proposed trademark
18
18
OPPOSITION TO REGISTRATION-S. 21
Notice Registrar to Answer/Counter

(Written & in inform statement by
4 months) Applicant applicant
Answer by
Hearing by
applicant to
Registrar opponent
19
19
REGISTRATION OF TRADEMARK
SECTION 23
• Registrar of trademark would register the trademark in
following cases,
i. When no opposition is raised by any person after

advertisement of application,
ii.Application was opposed & was disposed of at hearing.
20
20
EFFECT OF REGISTRATION
• After registration the registered proprietor is
entitled to following rights
• i. Right to use
• ii. Right to license
• iii. Right to transfer trademark by any other way.
21
21
DURATION, RENEWAL, REMOVAL AND
RESTORATION OF RTM
• Registered trademark does not vest in the registered proprietor
for perpetuity & available for limited period
• 10 years; to renew for further 10 years and so on.
• If the proprietor does not renew within time, RTM may be

removed from the register.
• After showing sufficient grounds for non-renewal and payment of

fees the Registrar of trademark may restore the trademark. 22
22
Remedies Against Infringement of
RTM
DR. HARSHA SURYAWANSHI
Remedies
• Civil remedies
• Criminal remedies
• Administrative remedies
Civil Remedies
• Injunction
• Damages
• Account of Profits
Criminal Remedies
1.S.103-of the Act-Contravention of the trademark-
Punishment: six months to 3 years imprisonment
2.S. 104-Trangression of trademark-fine of fifty
thousand rupees up to two lakhs
3.S. 105-Enhanced penalty for repetition of offence: S.
104-1 year to 3 years + fine of Rs. 1 lakh to 3 lakh
Administrative Remedies
• Opposition to registration of trademark
• Rectification of TM if already registered
• Restrictions on import and export of goods
The Trademarks
Act, 1999
A s s t . P ro f .
1
Salient
Click to editFeatures of Trademarks
Master title style Act,
1999
2 2
Salient
1999
• Providing for registration of trademark for services in
addition to goods
• Prohibit registration of trademarks which are imitation

of well known trademarks
• Amplification of factors to be considered for defining a

well known trademark
3 3
Salient
1999
• To provide only a single register with simplified
procedure for registration and with equal rights;
• Doing away with the system of maintaining registration of

trademark in Part A and Part B with different legal right;
• Simplifying the procedure for registration of registered

user and enlarging the scope of permitted use;
4 4
Salient
1999
• Providing for an appellate Board for speedy disposal of
appeals and rectification of applications which were
instituted to the High Court;
• Providing for registration of collective marks owned by
association etc.
• Prohibiting the use of someone’s else TM as part of corporate
names or names of business in concerned countries and
intergovernmental organizations
5 5
Salient Features of Trademarks Act,
1999
• Increasing the period of registration and renewal from 7
years to 10 years as required by trips
• Filing of single application for registration in more than

one class
• Making trademark offence cognizable
6 6
Types of TM
A s s t . P ro f .
1
Collective Mark
2 2
Collective
Click Mark
to edit Master section 2(1)(g)
title style
• Trademark distinguishing the goods or services of

members of an association of persons (and not a
partnership firm), which is the proprietor of the mark for
those of others. Marks used by professionals such as
doctors, advocates, chartered accountants etc.
3 3
Examples
4 4
Certification Trademark
5 5
Certification trademark S. 2(1) (e)
• It is mark capable of distinguishing the goods or services
which are certified by the proprietor of mark about
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 for those goods or services in the name as
proprietor of the certification trademark of that person.
6 6
Certification
Click Trademark-Example
7 7
Characteristics of Certifying mark:
1. A certification mark does not indicate commercial source
2. A certification mark does not distinguish goods of one person

from other
3. A certification mark guarantees about quality of goods or

services.
4. Regular audit is conducted for certification of such marks

8 8
Certification Trademark
9 9
Well known trademark s. 2(1)(zg)
• Mark which has become well known to the substantial segment of

public which uses such goods or receives services that the use of such
marks in relation to other goods or services would be likely to be taken
as indicating a connection between those goods or services and a
person using the mark in relation to the first mentioned goods or
service.
• Example-Coca-cola, Bata, BENZ, Maggi, etc.
1010
Examples
1111
Conditions for well-known mark-
i. The trade mark is used in India
ii. The trade mark has been registered;
iii. Application for registration of TM has been filed in India;
iv. That the trade mark is well known to the public at large in
India.
1212
Conditions for well-known mark-
That the trade mark is,
a. Well known in; or
b.Has been registered in; or
c. In respect of which an application for registration has been

filed in, any jurisdiction other than India;
1313
Service
Click to editMark- section
Master title style 2(1)(z)
• Service of any description that is made available to any potential users
and includes the provision of service in connection with business of any
industrial or commercial matters such as banking, communications,
education, financing insurance, chit funds, real estate, transport,
storage, material treatment, processing, supply of electrical or other
energy, boarding, loading, entertainment, amusement, construction,
repair, conveying of news or information and advertising.
• A trademark used in connection with services is called service mark.
Service marks are used by hotels, restaurants, airlines, tourist agencies,
laundries, cleaners etc.
1414
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1919
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• Industrial revolution enabled large scale production and

• Object-distinguish goods from others

• Section 2(zb) Trademark-

• Mark capable of being represented graphically and which

• Three essentials of trademark,

a.It should be a mark.

b.Mark should be capable of graphical representation.

c. It should be capable of distinguishing the goods or

• Mark according to section 2(m) means and includes

• Brand-Mark which are branded on themselves for example

• Letters-LG, IBM, IFB

• Numeral- 555 cigarette

• Symbol or logo-A visual depiction of manufacture or a

• Generally, logos are used as service marks

• Container- may be in 3-D form

• Device-Mark which is not falling under any above

• Shape of goods-unique shape of goods e.g. soap.

• Title of book or magazine e.g. India Today, Outlook

• Graphical representation means representation capable

• The trademark must be capable of distinguishing the

• Some inherent qualities or characteristics in the mark

• Goodwill of product reflects through trademark.

• TM indicates the manufacture or quality of good.

• TM identifies the goods of one trader and distinguish

• Similarly, the trademark signifies that all goods wearing a

• TM signifies that all goods wearing a particular

• TM establishes that goods with particular trademark are

• 4. Creation of image of products

• TM creates an image of product in the mind of public

• 1. TM-kind of property; entitled to protection under law;

• 2. Transmission of trademark includes transfer of

• 3. Registration not mandatory for trademark protection;

• 4. Trademark genus & collective mark, certification

• 5. Distinctiveness is basic quality of a trademark;

• 6. The word TM includes the trade name under which

1. Mark identical or deceptively similar

3. Unauthorized use of Mark

5. Unauthorized use of registered trademark

• 6. Infringement by advertisement of trademark

• Electrolux & Electrix

• EYETEX & EYESEE

PASSING OFF OF TRADEMARK

Dr. Harsha Suryawanshi

ii. Made in the course of trade

iii. Made to prospective customers for ultimate consumers

iv. Such misrepresentation injurious to the goodwill/reputation of

v. Actual damage to business or goodwill of the trader

• Object-To create confusion or confuse or deceive the

• Sri Sai Agencies Private Limited vs. Chintala Rama Rao

Dr. Harsha Suryawanshi

• Trademark may be registered or unregistered.

• Descriptive trademark= imparts information directly;

• Describing the kind, quality, quantity, intended purpose,

• Chandra Bhan Agrawal vs. Arjun Das Agrawal

• Registration for word ‘DORA’ for hosiery items; ‘DORA’ means

• Word ‘Micro’ was claimed for registration.

• Held word ‘Micro’ is descriptive of micro technology

• Marks which are likely to deceive public are not

• g. Marks which are prohibited under the Emblems and Names

• President, Prime Minister, national anthem, Indian flag/tricolor,

• 2. Identity with or similarity to well-known trademark