INTELLECTUAL PROPERTY RIGHTS-I

Ujjaleshwar Kumar
Kashyap
B.A.LL.B. (Self-finance)

8TH SEMESTER

STUDENTID:202004845

ROLL NO – 60

TOPIC:- TRADEMARK REGIME: PROTECTOR OF CONSUMER

INTEREST OR A COMMERCIAL ORIGIN ?

SUBMITTED TO: - PROF , NEHAL ARIF ABBASI

FACULTY OF LAW, JAMIA MILLIA ISLAMIA
 INDEX

1. INTROUCTION

2. HOW EFFECTIVELY TRADEMARK REGIME ACT AS A

COMMERCIAL ORIGIN

3. HOW EFFECTIVE IS THE TRADEMARK REGIME OF INDIA

4. HOW EFFECTIVE IS TRADEMARK REGIME TO SERVE THE

INTERST OF CONSUMERS

5. LIMITATIONS OF TRADEAMRK REGIME

6. CONCLUSION

7. REFERENCES
 INTRODUCTION

It is always wrong to come to conclusion by listing one side of the story. As every coin has
two faces in the same way every issue has two views. One will be always wrong when he or
she just listen one side of the issue. This is what happening with the trademark. Mostly
people have a conclusion in their mind that trademarks are just to protect the interest of
business class and it has no interest in serving the interest of consumers. But what they fail to
do is either intentionally or by mistake to look at how trademark acts as a protector of
consumer in this modern deceptive world. In this article I will explain HOW
EFFECTIVELY TRADEMARK REGIME ACT AS A PROTECTOR OF CONSUMER
INTEREST OR A COMMERCIAL ORIGIN trademark is both a commercial origin and a
protector of consumer interest.

Before we start our discussion about HOW EFFECTIVELY TRADEMARK REGIME

ACT AS A PROTECTOR OF CONSUMER INTEREST OR A COMMERCIAL
ORIGIN let us know about what actually a trade mark is.

As per World Intellectual Property Organization

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A trademark is a sign capable of distinguishing the goods or services of one enterprise from
those of other enterprises.

Let us first see how effectively trademark act as a commercial origin i.e. promote business
interest.

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www.wipo.int
HOW EFFECTIVELY TRADEMARK REGIME ACT AS A
COMMERCIAL ORIGIN
With evolving time trademark regime has evolved in order to cater to the demand of time so
that it could full fill its purpose but with some limitations. Let us first look at the steps taken
to full fill its purpose.

1. DEMAND OF HARMONISATION OF TRADEMARK LAWS: -With

evolving time business between countries have increased and now business have no
territorial limitations and now anyone can carry out economic activity in any part of
the world. So with easy access to the global market the need of protection to the
business in foreign territory arises. Here comes the demand of harmonization of
trademark laws as trade mark used to be territorial right i.e. the owner of the trade
mark has to register trade mark separately in all the countries wherever it wishes to do
trade. So it led to wastage of lot of time and money of the owner of the trade mark to
get it registered in many countries separately. In order to resolve this difficulty
various steps were taken. Let us discuss some of the them.

(a) Madrid System: -. Madrid Arrangement was adopted in 1989 and it came into force
in December, 1995.The Madrid Agreement which concerns with International
Registration Of Marks was the first attempt for devising an international system
which made registration of trademark in multiple jurisdiction around the world
possible. Before Madrid system trade mark used to be territorial right i.e. the owner
of the trade mark has to register trade mark separately in all the countries wherever it
wishes to do trade. So it led to wastage of lot of time and money of the owner of the
trade mark to get it registered in many countries separately. But all these problems
got resolved when Madrid system came into force because now the owner of the
trademark may get trade mark protected in all the Madrid arrangement countries
through one application form with his own national trademark office. An applicant
must be a citizen of a member country of Madrid system in order to take advantage
of the system. The applicant should first register the trade mark in his/her own
country which is known by the name of basic registration. After the basic registration
 it forwarded for international registration under the Madrid System. India is also
signatory to Madrid System.

(b) Trademark law treaty: -The trademark law treaty was adopted on October 27, 1994
at a diplomatic conference in Geneva which is effective from August 1, 1996.The
trademark treaty applies to marks for goods and services. Trademark law treaty is
administered by the World Intellectual Property which is based in Geneva,
Switzerland. The purpose of trademark law treaty is to simplify and harmonize the
administrative procedures with respect to national applications and the protection of
marks without dealing with the substantive parts of trademark laws covering the
registration of marks. The trademark treaty provides for duration of 10 years for the
initial period of registration of the trademark with a possibility for renewal for further
10 year period.

(c) Community trade mark system ( CTM) :-Community trade mark system was
adopted by European Union under which the registration of a trademark with the
“Office for harmonization in the Internal Market results in registration that is
effective throughout the EU as a whole. Community trade mark system is a regional
arrangement that has its roots in a draft of “Convention on European Trademark
Law” of 1964. The community trade mark system leaves the national trademark
system of member states unaffected. Business organizations are free to file national
trademark applications, a CTM application, or both.

2. WAYS TO PROTECT THE UNREGISRTERD TRADE MARK

At times a mark which is not registered as a trademark becomes subject of

infringement for a rival company such a mark is protected by common law remedy of
“passing-off”. Under the common law passing-off is a form of tort which is based on
principle that no man is permitted to use any mark, sign or symbol whereby without
making a direct false representation himself to a purchaser who purchases from him,
he enables such purchaser to tell a lie or make a false representation to somebody else
 who is the ultimate customer. The main objective of law of passing –off is to protect
the goodwill and reputation of a business from encroachment by dishonest
competitors.

3. DOMAIN NAME DISPUTES: -

Before we start our discussions about domain name dispute let us first know about
domain. Domain name on Internet serve as the primary identifiers of the internet
users. Consumers who do not know a company’s domain name type in company name
such as dell.com in hope of locating the company site. So domain name becomes
more than a mere Internet address as it also functions as a desgination of origin and a
symbol of goodwill. So in order to ensure uniqueness of Internet addresses,
registration of domain name is necessary. Before 1999 the registration services was
ensured by the Internet Network Information Center which was objected by the world
as the world thought United States is dominating the Internet and assignment of
domain name which resulted in formation of non -profit corporation, the Internet
Corporation for Assigned Names and Numbers(ICANN) IN 1999.
Now let us see what the domain name dispute all about is;-Registration of domain
name has been conducted by various registrar organizations on a first-come, first-
served basis. And in order to get domain name registered, person has to make an
application and pay certain amount of fees. The dispute arises as soon as one party
who is having a registered trademark finds that it cannot obtain its mark as domain
name on the grounds that such name has already been registered by the authorities to
a prior application which results in disputes between trademark owners and domain
name registrants, when the domain name uses another entity’s mark.
In order to deal with this problem ICANN adopted a policy on 24th October 1999,
Uniform Domain Name Dispute resolution policy (UDRP), which provides an
expedited administrative proceeding for trademark holder to contest ‘abusive
registrations of domain names and this may result in cancellation, suspension or
transfer of a domain name by the registrar.

Now let us see how effective the trademark laws of India are
 HOW EFFECTIVE IS THE TRADEMARK REGIME OF INDIA

A trademark can be protected on the basis of either use or registration. These two approaches
have developed historically but trademark protection systems of the current time generally
combine both elements. The Paris Convention for the Protection of Industrial Property of
March 20, 1893 ("the Paris Convention") places contracting countries under the obligation to
provide for a trademark register. Currently over one hundred States have adhered to the Paris
Convention. Mostly all countries over the world today provide for a trademark register, and full
trademark protection is properly secured only by registration. But there are exceptions too as
few countries have no trademark register at all, examples being Bhutan and the Maldives.

When it comes to India Trade Marks Act, 1999 is the current governing law rebating to the
registered trademarks. The act of 1999 was enacted to comply with the provisions of the TRIPS
(The agreement on Trade-Related Aspects of Intellectual Property Rights)

The Trade Mark Act of 1999 of India not only clearly states:-

(1) conditions for trade mark registration

(2) terms of trade mark
(3) Register of trade marks
(4) Procedure of trade mark registration

But also clearly states the remedies against trade mark infringement. As per the Section 29 of
The Trade Marks Acts, 1999 a registered trade mark is said to be infringed by a person who,
not being a registered proprietor, uses in the course of trade, a mark which is identical with or
similar to the Trade Mark in relation to the goods or services in respect of which the Trade
Mark is registered. Basically the infringement can be of three types:-

SITUATION 1

The infringed trade mark is identical to registered proprietor’s Trade Mark.

SITUATION 2

The Infringed trade mark contains complete or a part of registered proprietor’s Trade Mark
features combined with some other matter.

SITUATION 3

The infringed trade mark is deceptively similar to the registered proprietor’s trade mark.

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The remedies for infringement are;-

(1) INJUNCTION
(2) DAMAGES
(3) ACCOUNT OF PROFIT

Now let us discuss each of them separately: -

(1) INJUNCTION: - When it comes to the knowledge of the trade mark proprietor
that a third party is using the trade mark in an unauthorized way may approach the
court. The court on the basis of available evidence may issue an injunction order
restraining the third party from continuing with the wrong use. Injunction is basically
a form of immediate relief for the trade mark proprietor by restraining the third party
from doing any further damage till the final court judgment is given after hearing of
both the parties. And in case the trade mark proprietor wins the case the injunction
can be changed from temporary injunction to permanent injunction.

2
. Book :Intellectual property rights by Neeraj Pandey and Khushdeep Dharni
 (2) DAMAGE: - Damage is recovery of loss faced by the trademark owner through the
trademark infringement. The court decides the amount of damage after considering
the actual and anticipated loss of the owner die to the infringement.

(3) ACCOUNT OF PROFIT:-The remedy of an account of profit is not penal.

Account of profit is a mechanism by which the infringer is required to pay over to the
trade mark owner all the profit made due to the infringement. So a trade mark owner
who elects to accept n account od profits rather then damages has to take the infringer
as it found it,

But the responsibility of proving an infringement of trademark in a court of law lies with the
registered proprietor of the trade mark. It has to be proved by the registered proprietor that
there was an unauthorized usage of trade mark by deception or by some other way by the
third party for commercial gain. The registered proprietor also has the option of public notice.
So in order to stop or deter unauthorized usage of trade mark a public notice through trade
mark attorney may be published in the newspaper.

HOW EFFECTIVE IS TRADEMARK REGIME TO SERVE THE

INTERST OF CONSUMERS

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1. TRADEMARK REDUCES CONSUMERS SEARCH COST: - In the
modern capitalist world there are wide range of product available in the market which
differ along a wide range of quality characteristics. So, this leads to confusion in the
minds of the consumers and consumers, in turn, cannot always observe these
characteristics at the moment of purchase. A different way to think about information
asymmetry is to recognize that consumers spend time and money researching
different offerings before deciding which good or service to buy. This problem is
resolved by trademark as brand reputation helps consumers to reduce these so-called
search costs. Trademark enables consumers to draw on their past experience and other

3
The economics of trade mark WIPO publications
 information about specific goods and services – such as advertisements and third
party consumer reviews. However, the reputation mechanism only works if
consumers are confident that they will purchase what they intend to purchase.

2. The trademark system reduces consumers’ search costs in another way. It pushes
producers and sellers towards creating concise identifiers for specific goods or
services. For example, instead of asking for the location of a “coffee store belonging
to a firm headquartered in the US city of Seattle”, consumers can simply search for
“Starbucks” and will be perfectly understood. Trademarks thus improve
communication about goods and services.

3. Consumers will not be able to identify a better product without trademark protection
for the products of a particular producer. Due to trademark consumers market
information about the product is accurate, so that the purchaser can buy the desired
product and avoid products of lower or different quality.

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4. If in case the product produced under the brand turns out to be defective or lower
quality, then the consumer would have accurate information about the source of the
product and can return it to the manufacturer for a refund or repair. This is also one of
the main reasons why branded products are more expensive than generic ones as in
case of branded products consumer will be able to return defective products for refund
or replacement.

5. If in a case an unidentifiable manufacturer uses a famous mark on a similar product,

the purchaser will have inaccurate (and even deceptive) information. The information
is merely inaccurate (although misleading) if the Suppose in a case product which the
consumer purchases is of equal quality to the product of the original manufacturer
then there is no direct injury to the individual consumer if the goods are identical;
however, the brand owner has lost a sale, and the unidentified company is “free-
riding” on the fine reputation which the brand owner has struggled to establish. A
brand manufacturer cannot justify the higher cost of quality production if a competitor
can use the brand without paying for the cost of marketing which created demand for

4
The role of trademarks in economic development and competitiveness article by Professor William
O.Hennessey
 the product. And so the mass of future consumers is injured even if the individual
consumer who purchased the product is not.

6. If the quality of the product sold by the unidentified manufacturer is lower than the
quality of the product manufactured by the brand owner then in this situation, the
market information of the purchaser is not merely inaccurate or misleading but
deceptive, because the purchaser probably bought the product relying on the accuracy
of the market information. Not only is the direct consumer cheated, but he may be
injured.

LIMITATIONS OF TRADEAMRK REGIME

Following are certain limitations of trademark regime: -

1. FUNCTIONALITY LIMITATION: -Trademark cannot be granted to everything

as there are certain things that cannot be granted trademark. So a person can protect only
certain things with trademark registrations. Any factor which increases usability or
functionality usually does not get trademarked but if someone sells a product under a
particular packaging that is just to make it different then it is possible for him to get his
product trademarked. The purpose of not granting trademark to things that increases
functionality is to assist in managing a healthy competition among the competitors.

2. GEOGRAPHICAL TRADEMARK LIMITATION: - Another limitation of

trademark regime is its territorial limitations. In trademark regime geographical boundaries
play a very important role in deciding in which country the trademark will be valid. So when
a mark registration is done in Bangladesh then the enforcement of trademark right will be
only valid within Bangladesh Territory. If one needs protection in more than one country , a
separate international application is necessary in that country.
3. DOCTRINE OF FAIR USE LIMITATION: -There are various trademarks that
have multiple commonly used terms. But in this case the owner cannot claim exclusive rights
to such terms if his trademark is used in different context. So if trademark is used in the non-
commercial use of trademarks in comparative advertising, parody and academic articles,
media reports, etc. then the owner will not be permitted to claim exclusive rights to the
trademark if a third party uses your trademark in accordance with the fair use doctrine Does.
Let us take the example of Super Nirma then the owner stop anyone from using the world
super in his trademark.

5 4. IMPORT TRADEMARK LIMITATION

The goods are often sold in different countries, sometimes with different packaging and pricing.
In the United States, a trademark owner may not refer to something as “parallel import” when
one imports the goods without the consent of the trademark owner in that country. For example
Let us say you a trademark in the US and the European Union, and you sell your product in the
European Union for less money.

If someone else buys your goods in the European Union, imports them into the US, and then
remodels them for less money, you probably can’t use trademark law to fight it. However, if
the goods are being imported from a country where the goods are not trademarked, the
trademark owner can stop this illegal import of the goods.

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Corpbiz.io
CONCLUSION

The one special characteristic which makes any pace of legislation sail through difficult times
is its dynamic nature so that it could change with changing time and serve the purpose for
what it was made. This is what with the trademark. Trademark regime has evolved with
passing time so that it could full fill its purpose but there are areas where attention needs to
given. There is no doubt that trademark regime has fulfilled its role up to the expectations and
served the interest of both the consumers and business class but it would be in interest of both
consumers and business class if attention is given to the limitations so that it could full fill its
purpose effectively.

REFERENCES
1. www.wipo.int

2. Book :Intellectual property rights by Neeraj Pandey and Khushdeep Dharni

3. The economics of trade mark WIPO publications

4. The role of trademarks in economic development and competitiveness article by Professor

William O.Hennessey

5. Corpbiz.io