CHAPTER 1

INTRODUCTION

PROBLEM PROFILE

The concern of the present study revolves around the protection of Intellectual
Property in India and at international level. The special refence is made to protection
of Trademarks and that also Well-known Trademarks in India. Intellectual Property
is a product of human ideas or expression, which is protected by law. Ideas and
expression of human intellect can take different shapes as it can emerge in the form of
inventions, literature, artistic expression, method of doing business etc., and in legal
parlance they are called as intellectual property, which is classified in different forms
as patents, copyrights, industrial designs, geographical indications, trademarks, trade
secrets etc. They have the capacity to influence business course of any enterprise due
to which they are of immense economic value but they do not exist in physical nature
hence are termed as intangible assets. Another unique feature of the intellectual
properties is that they are not bound by any territories, thus require transborder
protection. The analysis of the present study ranges from understanding the meaning
of Intellectual Property and its rights. “Why there is necessity to protect Intellectual
Property?” and “How the Intellectual Property rights were recognized and developed
through centuries?”, is one of the fields of present research. The study also focuses on
the fact that the intellectual properties lack territorial jurisdictions boundaries and
requires global comprehensive protection. It has been observed that despite having
various international organisations working for overall development and protection of
intellectual properties but it is only through Paris Convention that some breakthrough
had come where consensus had arrived between various international powers for
protection of intellectual properties beyond territorial jurisdictions of member states.
The Paris Convention was established in 1883 and it still holds good after more than a
century and is conceptual force behind all the international treaties which had
formulated after it. The present research also intends to examine the impact of
international organisations and treaties on protection of intellectual properties. The
effect of World Intellectual Property Organisation (WIPO) on enforcing principles of
Paris Convention, WTO-TRIPS agreement (World Trade Organisation-Trade Related
Aspects of Intellectual Property Rights), Madrid Agreement and Protocol. These
international treaties have been identified as the binding forces which are actively
working for development and protection of intellectual properties in developed as
well as developing countries.

The present study further explores the dimensions of Trademark as Intellectual

Property. Signs and marks have existed since time immemorial to signify ownership
of products. Jewellery, ornaments, clothes, utensils, even arms used to have markings
of significance. Deception and deceit though have always been a part of the human
nature. Guided by greed, envy, desire and spite, man has certainly tried from times
immemorial to profit at others expenses through, stealing, piracy and other common
methods. This constantly increased desire to protect their own creations against the
whims of the others, who may take advantage. Further with development of literary
works, trade, print media, introduction of internet, consumerism, economic
developments and the growing population, the need for protection with legally
binding force was essential. Trademark as we presently know them, is resultantly one
such tool among other intellectual properties, for protection of owners and their
products from being taken advantage of in the current competitive market scenario.
Another arena of apprehension is rising instances of counterfeit marks, i.e. marks used
improperly by those who wished to trade on the reputation of the original genuine
manufacturer or trader. The object of doing so was to enhance the commercial
prospects of the improper user at the expense of the legitimate user. It has long been
held that attempts of this nature to secure a “free ride” or improper commercial
advantage are wrong. Originally such attempts generally involved an element of
dishonesty on the part of the perpetrator but nowadays, with very substantial
international trade in marked goods, dishonesty is not a necessary component. What
is; however, almost invariably present is an ability, if not an intention, to cause
deception or confusion among the purchasing public. This has for many years been
regarded as unacceptable. It can be curbed only through strong Trademark laws.

“Marks” developed gradually over the centuries and as they facilitate trading
hence are now termed as “Trademarks”. Markings may be indicative of attributes
other than source, such as quality, type, fitness of purpose, compliance with standards
or endorsements. They are widely used to identify a source of services and to
promote repeat business. Popularity of a trademark brings with it lot of business for
the enterprise but at the same time imitations/ replications of the famous marks throng
markets, which effect the sales. Having assisted a main Counsel for Heinz Italia for a
short time, in the dispute pertaining to trademark Glucon-D belonging to Heinz Italia
and Glucose-D by Dabur at Punjab and Haryana High Court. The dispute was that
Glucon-D was well established product having turn over of 50 crores but Dabur
launched phonetically similar Glucose-D with similar get up and colour combination
which adversely effected the market share of Heinz Italia. The interim injunction was
rejected by competent court at Gurgaon( now Gurugram) and then by Punjab and
Haryana High Court but it was allowed by Supreme Court in case no. Appeal (Civil)
2756 of 2007 but by that time Dabur had already discarded the pack. It created my
interest in the field which prompted me to research the status of trademarks in India.

The research aims to understand the development of Trademarks law in India since
British regime till now in order to understand as to how Indian law had kept pace with
changing business practices and international scenario. One of the area of concern at
international level was protection of Well-known Trademarks, which was
acknowledged way back in 1883, when Paris convention was adopted but at that time
India was under the British rule and was lacking independent identity. No statutory
recognition of intellectual properties was available in India. But problems like
violations in the form of infringement, passing off etc were prevalent in India also but
in the absence of any dedicated law for protection of Trademarks, the remedies were
resolved through Specific Relief Act, 1877 and provisions of IPC. Afterwards during
British rule, India had got comprehensive law in the shape of Indian Trademarks Act
1940. On independence, the Indian government took into account the modernised
business practices and Trademark and Merchandise Marks Act 1958 was enacted but
after accession to TRIPS agreement, India had enacted Trademarks Act 1999, which
came into force on 15 September 2003. It provided for definition as well as elaborate
protection for well-known trademarks. The obligations of Registrar to register Well-
known Trademarks is well defined in the Act along with the duty to protect well-
known trademarks from similarly deceptive trademarks by refusing their registration.
Through present study, the range and limits of protection of Well-known Trademarks
in India will be investigated. The research will also examine various judgements
passed by the authorities and judicial courts to understand as to how this protection is
interpreted in actual disputes.
OBJECTS OF THE STUDY

The researcher intends to examine the following issues.

 To understand the concept of Intellectual Property Rights to the effect that

Trade Mark is an Intellectual Property?

 To find how effective is The Trademarks Act 1999 in protecting Indian

Trademarks?

 To find what was the necessity to enforce the Trademarks Act 1999?

 To find how do Trademarks 1999 recognize Well-known Trademarks?

 To find when do a Trademark is considered as Well-known Trademarks in

Indian legal prospective?

 To find what are the rights of Well-known Trademarks?

 To find what is Intellectual Properties Appellate Board and how is it working?

RESEARCH HYPOTHESIS

The Trademark law, which had evolved in India is in conformity with the obligations
imposed by Paris Convention and TRIPs. The Trade Marks Act 1999 is a major step
for protection of Indian trademarks as well as protection of well-known Indian and
International trade marks. Section 11 of the Act deals with Well-Known Trade Marks.
It provides for conditions under which a trade mark becomes a well-known trade
mark but it fails to take into account that in practical application the criteria of well-
known trademarks cannot be fitted in some air tight compartments. The question
whether the mark has achieved status of well-known trade mark is a fact-sensitive
inquiry which will depend upon facts of each case and would vary between industries,
products and service sectors as well as complexity of the markets. Some products
could have special circumstances, which need to be considered separately. Ambiguity
has also been added as Section 11 (10) provides that Registrar need to protect a well-
known trademark at his own, but section 11 (5) provides that registration cannot be
refused unless on the objections by the opposition. This, in turn, would mean that the
Registrar is confronted with a paradox of its own kind. Another field, which has
been left, untouched by the Trade Marks Act 1999 is in connection with domain
names. The operation of the Act is not extra-territorial and therefore it does not
provide adequate protection for domain name.

In India Intellectual Property Appellate Board has been constituted for protection and
regulation of Intellectual Properties, but Board cannot cater to the requirements and
settle disputes unless it comprises of technical experts from the specific field of trade
marks related with different kinds of products and services as the concept of trade
marks is subjective in nature. The need of the hour is an appraisal of the prevalent law
and procedure on trademarks so as to cater to the requirements of Indian markets and
Indian trademarks.

Based upon all of the above analysis, the researcher is acquainted with the scope and
areas of application of the trademark laws in India. After having this prior information
about the topic, the researcher is of the opinion that the possible conclusion to the
above analysis could be that the present laws related to Trademarks in India are not
adequate to provide a full-fledged protection to all kinds of marks or medium of
expressions and hence we need a more comprehensive law regarding it. Based upon
this opinion the researcher draws her hypothesis that :

The existing laws and legislations are not sufficient to give protection to a broad
spectrum of marks and hence Indian laws need reforms in order to incorporate new
concepts.

METHODOLOGY OF RESEARCH

For the purposes of this study, primary as well as secondary sources will be
used. The primary sources will include Data of Intellectual Properties Appellate
Board and Registrar Office, Legislative Acts, Newspapers of relevant years, Reports.
The secondary sources such as Books, Articles, Journals, Case Studies, personal
interviews with Trade Mark owners and consumers and material available at various
libraries. The proposed work is expected to be doctrinal methodology of research and
case study. The Research is both descriptive and analytical in nature i.e. it
incorporates both descriptive data and analysis of that data. Research is empirical as
well as it is based upon the observations of the researcher, from the society. The entire
study is divided into different chapters, each of which deals with an important concept
of Property Rights in India.

APPRAISAL OF LITERATURE

Before carrying out the research on the topic, the researcher had a faint idea about the
Trademarks and legislations protecting them. The researcher referred to numerous
sources which include books, bare provisions of legislations, newspaper articles,
online journals etc., detail of which shall be given below. Each of this sources has
added up to the knowledge of the researcher and has given an insight into the topic.
All these sources were very informative and enhanced the understanding of researcher
about the topic. In order to carry out a detailed research on the topic, it was necessary
to refer to these sources.
TRADEMARKS

Any sign that individualizes a particular good or service of any given

enterprise/business and distinguishes them from goods of its competitors in the
market is known as a Trademark. 1 By definition, it would be any symbol/sign/ mark
of distinction or a combination thereof that easily distinguishes a product from its
competitor in the market and helps in setting up a recognized customer base for its
owner/producer/vendor/ manufacturer.2

Trademark as an area of the Intellectual Propertyis purposed at protection of a product

or service by way of its personalized mark. Hence it is defined as a distinctive mark,
capable of being represented, graphically or otherwise to distinguish a good or service
from others in common market place in the eyes of their customers/purchasers or final
consumers. The distinction may be made in the form of a particular shape, size,
1
Introduction to Intellectual Property-theory and practice (Kluwer Law International,1997) pg184
2
Earnst Graft, Isreal Sam Sagrer, Isreal Saguy Food Product Development (Springer 1991) pg367
colour, packaging, sound, smell, or any combination thereof that may appeal to
different senses of the human mind.3 For instance, the brand puma has always been
recognized through the effigy of a puma, or how people have always recognized apple
through its Trademark. All the large techno-giants have a particular way in which
their titles/names/brands are written/printed/depicted in all forms in the market.

In India, Section 2(zb) of The Trade Mark Act, 1999 defines Trade mark. It provides,

‘…“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: and—

(i) in relation to Chapter XII (other than section 107), a registered trade
mark or a mark used in relation to goods or services for the purpose of
indicating or so as to indicate a connection in the course of trade
between the goods or services, as the case may be, and some person
having the right as proprietor to use the mark: and

(ii) in relation to other provision 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 trade between the goods or
services as the case may be, and some person having the right, either as
proprietor or by way of permitted user, to use the mark whether with or
without any indication of the identity of that person , and includes a
certification trade mark or collective mark:’4

Ensuring distinction and an easy mode of identification, a Trademark thus acts as a

tool/device in the hands of a producers. It is why an increasing number of countries,
having realised its value, have developed laws around Trademarks, allowing
registrations of a variety of new forms of Trademarks all across the globe. Sounds,
smells, 3d/5d marks are can be seen catching pace among Trademarks these days in a
variety of global markets.5

3
Source http://www.businessgyan.com/content/view/623/220/ article written by Santhosh Vikram
Singh
4
Section 2(zb), TM Act 1999.
5
Making a Mark: An Introduction to Trademarks for Small and Medium-sized Enterprises, WIPO,
2003 ed., page 3
Having a designated Trademark makes for a lot of advantages for both the producer as
well the consumer in the market. It ensures for a healthy competitive market
environment that further adds to a thriving economy. Even marketing through means
of a Trademark becomes easier. Infact as an alternative to traditional means of
advertising, its way more cost friendly and effective, considering via means of a
Trademark, the consumers already recognize a product and are assured of its quality. 6
For the producers it promises an added advantage of consumer loyalty and continued
production. Distinctiveness and sales both are constantly maintained and there is a
higher chance of prevention of low quality goods to be supplied in the markets.
Further confusion amongst the buyers is avoided and the other producers in the
market are more aware and hence discouraged from producing/selling similar
products.7

Even though Registration of Trademarks is not mandated by the government in the

current scenario, it is highly advisable to ensure protection from the rising number of
infringement cases. There is also a rising need for Trademarks to be recognized and
protected globally in lieu of the digitization and markets becoming global. 8 Most
importantly it is important for the weaker/ smaller/ newer brands to have a tool for
protection against the large global giants previously existing in the market with high
market coverage and huge assets at their dispersal.

Therefore, a Trademark is seen as an essential business asset by the traders. Infact

since its value is impossible to be determined a tangible, it is calculated in intangibles
through its market reach and more often than not, it’s the largest own intangible asset
owned by a company. Especially now, with the increasing number of techno giants in
the market, the scope and possibility of increase in number of intangibles with a
company have also taken a front seat.

Most producers prefer to place their Trademarks on the packaging through various
labels, boxes, covers, shapes etc.9 The immense economic value and the recognition
provided by Trademarking a product/service is the reason why most producers

6
Carl W Battle, Legal Forms for Everyone(5th edition, Allworth Communications Inc,2006)pg143
7
Article 16, TRIPS Agreement (Trade Related Aspects on Intellectual PropertyRights)
8
P.K. Vasudeva, World Trade Organization: Implications for Indian Economy(Pearson
Education,2005)pg169
9
Carl W Battle, Legal Forms for Everyone(5th edition, Allworth Communications Inc,2006) pg145
normally prefer to register their marks. This is also the reason why most of the
jurisdictions have developed laws around its protection.

Even though Registration of Trademarks is not mandated by the government in the

current scenario, it is still highly advisable to ensure protection from the rising
number of infringement cases. There is also a rising need for more developed
Trademarks laws in lieu of the digitization and markets becoming global. 10 Most
importantly it is important for the weaker/ smaller/ newer brands to have a tool for
protection against the larger global giants previously existing in the market with high
market coverage and huge assets at their dispersal.

Trademark and Brand

“A brand is always a Trademark but a Trademark is not always a brand.”11

One common misconception that is ought to occur is the confusion between brand
names and Trademarks. A brand is not specifically a legal name. It is merely a name
selected to recognize the product/service with. It’s known as a “memory heuristic”,
with which a consumer can easily and conveniently remember the product/service.
Whereas, a Trademark is more of a commercial source of the product. It’s known as
the “badge of origin.” It’s the part of the brand that is legally protected and
recognized.

More often, a brand may be associated with the vision, personality, culture, repute of
the company as a whole. Whereas a Trademark is associated more with the
company’s product, its packaging, its colour, its utility to the consumer, etc. Further,
there is no limitation on the length of use of a brand name but for a Trademark to be
in continuous usage, needs to be registered and this registration period renewed from
time to time.

A person may buy a product due to either of the two. Both the brand and Trademark
at the end of the day have a capacity of leaving an impression on its consumers and
hence determines the goodwill in the market. 12 Companies therefore work on both of
them in the market. For instance, Apple as a brand is preferred by the consumers in

10
P.K. Vasudeva, World Trade Organization: Implications for Indian Economy(Pearson
Education,2005)pg169
11
Ronald Hildret, Siegrun Kane Trademark Law(4th edition, Practising Law Institute,2002)pg2
12
Vinod Sople, Managing Intellectual Property(PHI Learning Pvt. Ltd,2006) pg104
India because it signifies a higher status, where as Apple as a Trademark is preferred
because of its distinct features such as an efficient IOS working surface or a fine
display as compared to other gadgets and its competitors in the market.

Trademark and copyright

Even though both are mainly purposed at protection of owners/producers interests,

there are certain differences between the two tools. A Trademark focuses at protecting
the brand of a product whereas a copyright secures creative creations, artistic works,
expressions and intellectual additions made by a person. The validity of each also
differs. Validity of a copyright in most countries is upto 60 years whereas the life of
Trademark registration generally lasts upto 10 years and then needs to be renewed.
Both the tools are protected under separate legislations all across the globe. Further
both the tools act as essential tools of legal protection in the hands of a the
owner/producer/manufacturer.

UTILITARIAN FUNCTIONS OF TRAKEMARKS

To understand the significance of a Trademark for an ordinary proprietor/trader, the

consumers in the market as well as the value contribution to the public and economy
at large, it is important to understand its functions and utility at both national as well
as international level.

a) Identification of the producer/ service provider

Creating an identity for a product is one of the most important functions as well as
features of a Trademark. It not only builds an easy recognition but also builds on a
consumer confidence in the products and services.13 To illustrate, the mobile and
internet service of JIO was brought in on the existing repute and identity of the
proprietor and supplier, Reliance.

One of the famous legal battles in this regard that went up to 20 years was Amul v.
Anul. Herein the court granted an injunction against Shri Shakti Dairy and Kuldeep
Enterprises for infringement of Trademark of Co-operative Milk Producers Union
Ltd. According to the reasoning used by the court, manufacturing of goods under the
titles “Anul Shakti” and “Anul Taaza” were greatly analogous to Amul’s original

13
Narayan. P, Intellectual PropertyLaw (3rd Ed. 2017, Eastern Law House, New Delhi), p.147.
trade names and were likely to cause confusion in the minds of consumers and hence
could not be allowed.14

b) Protection of Goodwill and Reputation

It is rather difficult for a genuine trader/producer to ensure that their standing,

reputation and goodwill is maintained in the marketplace without the use of a
Trademark. Whereas a Trademark ensures, that consumers can easily identify with the
brad-name established by the proprietor over the years of his business.

For instance, Tata is one of the most influential and successful companies in India
which has tremendous goodwill and trust of consumers in the market which has
ensured that consumers can blindly trust the products manufactured by them. This
would have been impossible to achieve without a protected Trademark.

c) Legal rights attached with usage

A registered user under any jurisdiction has a legal recognition attached with the
exclusive ownership and manufacturing of the said product or service. It further
secures the right legally giving the proprietor a legal remedy incase somebody
infringes upon this exclusive right.

The Supreme Court has on multiple occasions reiterated that exclusive rights are
attached with registration of the Trademarks, one only the registered user enjoys. One
such case is that of Ramdev Foods Products Pvt. Ltd. v. Arvind bai Rambai Patel
Pvt. Ltd.,15 wherein the Honourable Court noted the above in regards to exclusivity of
rights in relation to Trademarks under Section 28 of the Indian Trademarks Act.

d) Product guarantee and Quality insurance

Manufacturers shoulder the responsibility to ensure that the product maintains the
quality the Trademark attaches with a product. There are many quality standards and
systems followed in various jurisdictions to ensure that only best quality products are
provided to the customers. Some of the major brands like Apple, Samsung, Levis,

14
“India: 20-year-old legal battle between Amul and Anul finally concludes”, available at;
https://www.mondaq.com/india/Trademark/729150/20-year-old-legal-battle-between-amul-and-anul-
finally-concludes , accessed on 02.12.2020, 1504 hrs.
15
[Appeal (Civil) 8815-8816 of 3003. Civil Appeal no. 8817 of 2003 SCC]
PwC, etc spend significant amounts on R&D to ensure that these quality standards are
maintained.

Pharmaceuticals particularly undergo higher standardization to ensure prevention of

confusion in the market for the end consumer. The same principle was also upheld by
the highest Court of Appeals in Syntex laboratories Inc. v. Norwich Pharmacal
Co.16

e) Advertising and Image building and Representation

Inherently, Trademarks have the quality of advertising for he said product. Since it’s
the mark through which customer recognises the brand name/the product/ the service
provided, mere pictorial representation is sometimes enough to advertise in the
market. For eg. The rings of audi have been registered Trademark for the company.
Similarly the specific shade of blue has been registered by dairy milk for chocolate
wrappers.

f) Rights of a Trademark owner

A registered owner has the following main righst:

1. Exclusive usage-sale/transfer of the Trademark

2. Assignment/ License in whole or in part

3. Right to seek legal remedies incase of infringements

4. Right to seek correction in registration if any.

Designation[edit]

A Trademark may be designated by the following symbols:

 ™ (the "Trademark symbol", which is the letters "TM" in superscript, for

an unregistered Trademark, a mark used to promote or brand goods)

 ℠ (which is the letters "SM" in superscript, for an unregistered service mark, a

mark used to promote or brand services)

 ® (the letter "R" surrounded by a circle, for a registered Trademark)

16
[315 F. Supp. 45(S.D.N.Y.1970) June 30, 1970].
NEED AND IMPORTANCE OF TRADEMARKS

a) Building Repute in the marketplace- Trademarks play an important role in

establishing goodwill of a business. It gives an identity to the earlier
established eminent businesses who can easily establish the same goodwill for
their other branches. For example Mc Donald’s logo M is its main identity and
which makes it stand out amongst others. Goods attached with a Trademark
has more demand and thereby more valuable in this highly competitive
market. Trademarks also stand as a testimony to the quality of the goods as by
attaching the goodwill of a Trademark to all the products it is used for, it also
increases the value of those goods by creating more demand for them.

b) Effective decision making- The Trademarks influence the decision making

power of consumers as well. It is commonly observed in the economies that
few consumers or a class of consumers are inclined towards a particular
Brand. This Brand value is identifiable by the way of company’s Trademarks.
Thereby Trademarks play an important role in influencing purchasing
decisions of the customers in an open competitive market. A brand which has
a good name is more probable to benefit from the Trademarks as this might
earn them more Royalties along with more demand of their product. This
effect could be seen mostly in the consumer goods but is significant in
international trade and E-Commerce as well. Trademarks have always shaped
the preferences of the consumers, who get attracted towards a particular
commodity just by looking at a sign or symbol that represents the Brand of
their preference.

c) Effective communication- Trademarks, as we have already discussed,

establishes an Identity of a product and relate it to a brand. In many cases,
Companies get the tag lines of their advertisements registered as Trademarks
while some companies themselves carries a particular title as something
associated to their brand only, for example “I am Lovin It” of Mc Donalds,
“Just Do it” of Nike etc. These tag lines or phrases speak for their brand and
hence for the quality of the product. This is how the identity of a brand is
conveyed to the consumers in a unique manner. Various companies design
 their products in such way that their structure or appearance gives indication
that it is of a particular product of a particular brand for example if you look at
a blue bottle of Parachute oil, you will easily recognise that it contained oil
that was manufactured by Parachute, similar example could be given for Coca-
Cola and Pepsi too. This is how Trademarks play an important role in
communicating the identity of brands and hence the broader idea of
superiority of the product.

d) Ease in finding- Trademarks by setting up a unique identity of a product also

makes it easier for the customers to find the source of the product or to know
about its quality from there. As every product carries a Trademark of their
brand, consumers can easily find which product belongs to a particular brand.
Moreover, consumers have a perception of quality of goods attached to the
goodwill of a brand, so whenever they see a product carrying a Trademark of a
company, they assume the quality of a product. In other words it makes it easy
for customers to make a choice between similar products belonging to
different brands.

e) People connect- In today’s era of globalization and widespread usage of

Internet, Trademarks are an easier way to present yourself to the people
everywhere by the way of advertisements like on hoardings and online. Few
software applications use a specific logo that displays on our phone screens
and other places as well, these logos are actually registered Trademarks that
establish identity of these applications. They help a person to connect to a
particular band by the way of just looking at their logo. Moreover they
facilitate the E-commerce as well. Visual Pictoral or Graphical Trademarks
have a wider reach than the texts as even a layman can understand what they
stand for and hence they connect a larger section of people to the products.

f) Valuable assets- Material tangible property has always been in the centre of
an individual’s concern and history of human civilisation is of its struggle for
property. Valuable assets for individuals have been Land, Home, money etc.
but now with coming up of the concept of Intellectual Property, it has been
observed that it is amongst the most precious possession of a person.
Trademarks not only have a creative value attached to it, they are highly
 economic in nature and are backbone commercial competitive economy. They
are the key to the prosperity of a business, Licensing the Trademarks, earning
Royalties, expansion of businesses, optimum use of goodwill in a business etc.
are few activities that have modernised the economic sphere and raising value
of these Trademarks and making them one of the most valuable assets of an
Individual.

g) Perpetuity of life: The ownership of a Trademark can be continued till

perpetuity, once it is owned by an owner, his right over it remains absolute and
undisturbed. It is an exclusive right of an owner can renew from time to time
by payment of prescribed fees. It gets protection from the offences like
passing off and Infringement even if it is not registered by following the
common law principles and hence giving a perpetual claim over it to the
proprietor.

h) Uniqueness and Distinction- A Trademark gives uniqueness to a Brand, it sets

it apart from others, making it identifiable between other same products
belonging to other brands. This plays an important role in a competitive
market as uniqueness of a product makes it more commercial and preferable.
Consumer’s preference , as we have discussed earlier in this chapter, is much
affected by these Trademarks and hence their purchasing decisions are
reflective of their this choice. Trademark is testimony of the trust that the
consumers place in a particular brand for either its prolonged existence or
qualities attached to it. Here Trademarks become a motif of quality itself.

i) Protection of Product name- Trademarks are the very identity of a product,

whenever a new product is launched, its it Trademark that forms the face and
name of it, these Trademarks act as both name and a parent of a product which
does not have a distinct identity of it apart from the Trademark attached to it.
This Product name is protected under the Trademarks only therefore the laws
protecting Trademarks not only protect them from infringement but also
protects the very name of the product and the very identity of a product from
their illegal use and passing off. Product name, as we have already discussed
is an essential feature of an entities economic presence, it becomes important
 to therefore, protect it and to keep it intact. Every Law made for the protection
of Trademark thus aims at protecting the product name as well.

j) Growth of business- Trademarks have made, even the smallest of start-ups as

a multi-millionaire projects for example Microsoft, Google, Apple etc. all
started in a garage and went on to become one of the largest Multi- National
companies now. It was because of their unique identity which was very much
protected under the Trademark laws, which made it possible to stand out of the
crowd and make space for them. Now, since their Brand name is established,
they are capable of earning royalties. We have already discussed Trademarks
make such situations that lead to ultimate prosperity of the business.

k) Global economic advantage- With growing awareness regarding the

Trademarks, businesses of number of international companies and other local
companies have boosted which has further lead to overall Global economic
growth. In this time of increased global mobilisation, Trademarks have played
a significant role in expansion of businesses throughout the world with the
similar goodwill, leading to increased demand of commodities which has
further lead increased value of goods and ultimately increased Domestic
product of each nation which further aggregates into world economy, with
coming up of Trademarks protection, global economy has multiplied
significantly.

l) Confidence of purchaser- Trademarks gives confidence to a retailer and a

producer to enter the market and to assert his presence in the market. With the
quality of uniqueness attached to a Trademark, a proprietor is confident about
the increase in demand of his product as a new thing always attract the
attention of the consumers while giving protection to this uniqueness from use
by others, the proprietor is satisfied about the success of his product and has
freedom to make decisions regarding it independently and hence it also
protects the economic security of proprietors.

m) Encourages healthy competition- With one company registering a Trademark

over a certain product, or an idea which is unique and profitable, it encourages
other competitors to take similar step and produce a commodity which can
compete with this new idea. This is how protection of Trademarks always
 encourages the proprietors to come up with something new, this leads to a
healthy competition that ultimately leads to a technological development of
the nation and constant exercise of formulation of new ideas.

n) Commercialisation- Trademarks also facilitate the process of

commercialization and helps in smooth exchange of commodities. With
distinct qualities of every product, an exchange between them becomes
possible which ultimately benefits the commerce of a nation as a constant
activity of exchange in an economy keeps it alive and stabilises it by
preventing the reduced demand or deflation. It keeps the supply of income
constant and hence further leading to growth of GDP of a nation.

o) Customer base- As already discussed, few consumers have an inclination

towards a particular brand, a Trademark thus seals that class of customer in
their favour and forms a customer base of a company for example apples
unique features have glued its customers to it who call it difficult to use any
other product than of Apple, this is the soft power of a Trademark to shape the
psychological faculty of a consumer in favour of a particular product of a
particular brand. It also further leads to expansion of the customer base by
incorporating changes in the xisting system and further by protecting these
changes also. This is how Appke, Google, Microsoft became the major Giants.

p) Prevention of unfair trade practices- Trademarks put an end to unfair trade

practices as no one can now sell the adulterated low quality products bearing
same name as the good ones. They give customer an incentive to choose the
correct product based upon their knowledge and goodwill of a brand which is
identifiable by the way of a Trademark.

q) Quality products- every time a new idea appears, it becomes more commercial
and profitable which makes it important for others to come up with new ideas
as well. The new idea always focus towards improving the quality of product
so that more and more consumers are attracted towards it, thereby the entire
exercise leads to improvement of quality of products which becomes
beneficial for the consumers in the long run as now they start getting products
with improved quality at the same price.
 r) Essential Advertising- Trademark when gets advertised by means of different
platforms form a link between the manufacturer of the product and the actual
service provider. The consumers also become a part of this chain after getting
the knowledge of a product from these advertisements. All of this becomes
beneficial for the brand that owns the Trademark as now by way of
advertisement and use of Trademark in this advertisement their Trademark
becomes known to large section of society, they don’t have to now advocate
about the features of their product. The Trademark itself ensures the increase
in popularity of the product.

A BROAD CLASSIFICATION OF TRADEMARKS

TRADEMARKS

TRADEMARK FOR COLLECTIVE

CERTIFICATION
GOODS SERVICE MARKS
MARKS
REPRESENTED BYMARKS

WORD LOGO NAME DEVICE LETTERS NUMERALS SYMBOLS MONO

S
CLASSIFICATION

CONVENTIONAL NON-CONVENTIONAL
TRADEMARK TRADEMARK

GENERIC FANCIFUL DESCRIPTIVE SHAPE SOUND COLOUR

ARBITRARY SUGGESTIVE
TASTE HOLOGRAM MO

ORIGIN AND HISTORICAL SIGNIFICANCE

As mentioned earlier, marks were used by human civilizations from the very
beginning of time to signify ownership in one form or another. Whereas one of the
first instances of its remains can be found amongst the Roman and Greek
civilizations. Early documentation by historians depicts clay pots and utensils were
amongst a few other articles that were most commonly marked by the hands of the
potter making them. More often than not were marked by “x” or stars which were
eventually in time replaced by marks recognized with the regions, their monarchs,
their tribes, etc. Even initial civilizations to settle in the Indian subcontinent were
known to follow these practices.

The main motive behind all these marks were basically commercial interests and easy
in trade, since economies more or less depended mainly upon barter systems. Having
marks on products ensured that products could be traced back to their originators and
their values could be determined better for purposes of exchange.

Bakers Law Precedent

In documentation, the Trademark law may be traced back in origin to 1266, usually
known as the Bakers Marking Law. The law required bakers to place a mark on the
loaves of bread that was sold, identifying the baker by their bread. 17 Any bread sold
unstamped was confiscated and was not allowed to be sold. An officer known as the
“officer of abundance” was specifically designated for this purpose and would fine
defaulting bakers with heavy damages that were then paid to the state.18

Since bread and bear were most commonly used food items in gatherings and
breaking bread together was known as a sign of hospitality and camaraderie, the laws
surrounding food items like beer and bread were one of the most important in the
history of Trademarks. They laid down uniform standards acceptable in the societies.

For instance, in old England, there existed a common measures of king by which the
entire realm did trades. These were further tradable in English pennies/ sterlings on
previously decided prices. For example, one sterling pound could buy two wheat
corns without clipping. Similarly, eight pounds made a gallon of wine. 19 Other such
measurements and price ranges were fixed by the king for other food products as well.
Barter was allowed too on pre-decided values. One could exchange farmed goods for
other essentials.

One of the earlier enactments hence revolved around food and essentials. Section 38
of Usages of Winchester, (antedating to 1275), required every baker and brewer to

17
Aaron Schwabach, Intellectual Property(ABC-CLIO,2007) p.9.
18
E Stalley,The Guilds of Florence(2nd edition) pg.440:G Lastig pg28
19
Davies, Charles. The Metric System, Considered with Reference to Its Introduction Into the United
States. A. S. Barnes and Company. 1871.
stamp his bread and wine barrels. 20 These marks were generally recognized by the
local officer and were made with items easily found like wood, metal, etc and were
easily recognizable designs, markings or simple names.

Fulfilling a similar purpose as that of modern day Trademarks, these markings

facilitated easy recognition and standardisation of the qualities supplied by the
producers. If any inferior goods were seen to be circulated in the market, severe action
could be taken by officers against the fraudulent bakers and fines could be imposed.

EVOLUTION OF TRADEMARK LAWS

Human creations and innovations have existed from the starting of the time. Their
forms may have developed and changed over time, but to own, create and protect its
own is the basic human instinct. Initially humans created basic necessities such as
ornaments, utensils, vessels, hunting arms, etc. Eventually with developing societies
and emergence of religion and spirituality, figurines of god also began to come in
production. All this while each of these things were marked in some form or the other
by the producers for various purposes ranging from ownership, identification to
differentiation and protection.21 Even though the mode or marking and types of marks
and their products changed overtime with development of mankind, the purposes of
affixing these marks has more or less remained the same throughout across the history
of all cultures.

As is common in principle even till date, the more a Trademark comes to be known
among people, the more it inspires confidence in the goods and services of that
particular seller in the market22. When a mark is placed over a product, it signifies
ownership and it is meant that any other third party other than the manufacturer does
not have any right over it unless until it is granted specifically. In a large way that also
helps deter people with other vested interests.

In the middle ages one could variably find two basic kinds of marks:-

1. Merchants Mark

20
J S Furley ,City Government of Winchester from the records of xiv and xv centuries, p82
21
Michel SOLIS, Votre PME et le Droit, 2e éd., Les Éditions Transcontinental inc.,
Montréal, 1994, 136 p., p. 96.
22
Siegrun D. KANE, Trademark Law, A Practitioner Guide, 1989, Supplement, Practising Law
Institute, New York, 1989, p. 9-10.
Ownership was indicated through “Merchants Mark” whereas the “Production Mark”
signified the origin of the said product. Mostly, production marks were commonly
used by huge traders’ guilds to guarantee quality, product standardisation and to
control new entry into a particular trade.23 One of the first widely recognized use of
Trademarks were in the form engraving used to names ships. So that in case of ship
wreckages, identification would be possible. Other than that only the people doing
businesses in guilds started asserting Merchants mark on their goods as a way of
status symbol. For obvious reasons it provided them with the much needed leverage
over the market.

Merchant Marks were found to be in existence in the 10th century, was affixed to
goods to enable the owner to distinguish his goods besides proving ownership rights
on goods which were found missing from acts of piracy, shipwrecks and other natural
calamities. Besides, as a measure to curb defective goods, sword manufacturers were
required to use certain marks on their goods to identify defective weapons. Marking
on the goods served dual purpose, both of ownership as well as punishment, for
defective goods.24

2. Production Mark

During the 14th and 15th century, production marks were affixed by merchant and
craft guilds in their goods to differentiate inferior low quality ones. A repository of
goodwill among Guilds was created, who would do policing to remove defective
goods in the market. With the help of production marks, the consumers could easily
identify and assign responsibility for inferior goods, such as goods that may have
lacked in weight, quality materials, inferior craftsmanship etc. 25 This served a dual
purpose, to prevent counterfeiting of goods and remove defective goods.

Marking on the goods was made mandatory and as the marks were affixed out of
compulsion (as against self-interest), they came to be known as Police marks. Guilds
using false marks on their products were punished. Thus marks served an important
economic function: they enabled manufacturers to develop reputations for quality and

23
Ashwani KR Bansal, Law of Trademarks in India, Commercial Law Publishers(2001)pg 21
24
Plasticolor Molded Products v. Ford Motor Co., 713 F. Supp. 1329 (C.D. Cal. 1989)
25
Srinivasan Sruthi; Evolution of Trademark laws in India;
http://www.altacit.com/pdf/evolutionofTrademarklawsin_india.pdf accessed on 18.11.20 at 16:50 hrs
assured customers that products sold under the manufacturer’s brand will live up to
that reputation.

During the East India Company regime, the guild system started to disintegrate and
free trading was recognized. Marks which used to designate ownership became
‘symbol of quality’ and compulsion soon got replaced with ‘necessity’ to affix
Trademarks on the goods and served dual purpose, i.e. ownership and also prevention
of counterfeit. One of the earliest cases/legal conflicts on improper use of a
Trademark occurred in 1618 in Southern v. How26, where a Trademark on clothing
was deceived to a customer who bought defendant’s truncated grade clothing on the
pretext that it was the plaintiff’s brand. This case was the start of the journey on the
law on passing off as known in modern law. Due to increase in the cases of deceit,
armorers’, metal workers, papermakers, printers, weaves, smiths and all others used
Trademarks in their goods.

As compared to before, nowadays the decision of whether or not to use a mark

completely rests upon an individual producer instead of an entire guild. Trademarks
nowadays do not merely aim at identifying ownership unlike the case with proprietary
marks common in middle ages. These are an asset for the producer now whereas in
earlier times they were a liability.27 Many of the laws till date like the aforesaid laws
relating to food like bread and beer have fought to bring about a mode of
standardization and measurement as well as to protect the consumers so that they do
not get cheated with adulterated goods.

It is this quality of Trademarks which attracted me to do research in this field. Being a

female, I also loved to dress up and as a youngster I started experimenting with cosmetics
but with time I realized that they don’t always make you look good, they can also harm you.
My mother told me to go for good brands and I stared using cosmetic brands which my
mother was using since long. All my worries ended. Then I realized the trust one consumer
puts in a brand and it can percolate from one generation to another. This reputation of
quality compels the end user to purchase the product time and again. While studying law, I
realized that area of intellectual properties is relatively new in India and need to be explored
and Trademarks became my preferred field.

26
Tort on Passing Off; Project Assignment for Law of Torts. | Law Teacher;
http://www.lawteacher.net/business-law/essays/tort-of-passing-off-project-assignment-lawessays.
php#ftn21 accessed on 19.11.2020 at 11:20 hrs
27
UNCTAD, on Trademark, pg2
Trademark makes a reputation with the consumer who make his choice after
continuous use of the product and therefore assume that this is the quality of the
product and hence expects the same standard for each product, irrespective of the fact
that where the product is made or by whom. Hence, a Trademark creates a “phantom
manufacturer” who through assembly-line production and modern technology ensures
that goods of uniform quality are made available to the consumer time and again,
unfailingly. But this perception is notional as Trademark law does not require the
proprietor to maintain any particular or declared quality but to maintain the quality is
itself in the interest of the firm as it will effect the goodwill of the brand. The concept
of Trademarks is based on goodwill. The immense economic value of a successful
Trademark is the primary reasons for its protection under Trademark law. The success
of a Trademark can be judged through goodwill and goodwill is built on the notion of
the consumer which is developed by his experience and knowledge of the product and
for building goodwill it requires heavy investments and marketing but goodwill pay
backs heavily and therefore of immense importance.

The major function played by Trademark is acquisition of monopoly to use brand

name in as many countries and for as many products for which it is used or registered.
The Trademark rights are required by owners simultaneously with the use of
Trademarks on specific goods or services. The Trademark owners by powerful
advertising campaign create brand loyalty and establishes product differentiation. This
results in creating a goodwill and market power, which bars others from entering that
particular field of activity.

Trade Marks perform many functions in present economy and these functions are
double edged as it helps the owner of the business as well as the consumers. Trade
Marks not only help in identify one seller’s good or services but it also distinguish
them from goods or services sold by others. Trade Marks perform unique function in
signifying that all goods or services bearing the Trade Mark come from a single,
albeit anonymous source not only this, it also creates impression in the mind of the
consumer that all goods bearing the Trade Marks are of an equal level of quality. It
serves as prime instrument in advertising and selling the goods or services. Not only
Trade Mark performs the abovementioned functions but it also make base for renting
the Trade Mark by way of licensing or franchising. It also protects the public against
confusion and deception by identifying the source of origin of particular products as
distinguished from other similar products. In modern time Trade Mark has become an
asset to the owner of the Trade Mark and therefore it helps in protecting the goodwill
of Trade Mark owner’s trade and business, which is attached to the Trademark.