Trademarks and it’s essentials

Intellectual Property Law I

FACULTY OF LAW

UNIVERSITY of LUCKNOW

SUBMITTED TO: SUBMITTED BY:

mrs. Sanjana Mittal name: - RITESH KUMAR

GUEST FACULTY Sec: - A

Faculty of law Roll no: - 180013015075

ll.b. (hons.) 7th semester

 TRADEMARKS AND IT’S ESSENTIALS

ACKNOWLEDGEMENT
I would like to express my special thanks of gratitude to my teacher Mrs. Sanjana Mittal who
gave me the golden opportunity to do this wonderful project on the topic Trademarks and It’s
essentials, which also helped me in doing a lot of Research and I came to know about so many
new things I am really thankful to them.

Secondly I would also like to thank my parents and friends who helped me a lot in finalizing
this project within the limited time frame.

I am overwhelmed in all humbleness and gratefulness to acknowledge my depth to all those

who have helped me to put these ideas, well above the level of simplicity and into something
concrete. I am really thankful to them. Any attempt at any level can’t be satisfactorily
completed without the support and guidance of my parents and friends.

I would like to thank my parents who helped me a lot in gathering different information,
collecting data and guiding me from time to time in making this project, despite of their busy
schedules, they gave me different ideas in making this project unique.

Thanking you,

RITESH KUMAR

7TH A

180013015075

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 TRADEMARKS AND IT’S ESSENTIALS

Table of Contents
INTRODUCTION...........................................................................................................................4

HISTORY OF TRADEMARK........................................................................................................5

DEFINITION OF TRADEMARK..................................................................................................6

KEY FEATURES OF TRADEMARK...........................................................................................7

CONCLUSION................................................................................................................................8

BIBLIOGRAPHY............................................................................................................................9

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 TRADEMARKS AND IT’S ESSENTIALS

INTRODUCTION
Trademark rights in India are statutorily protected by the Trademark Act, 1999 and also under
the common law remedy of passing off. The administration of such protection under the Act is
done by the Controller General of Patents, Designs and Trademarks. The Trademark Act, 1999
deals with the protection, registration and prevention of fraudulent use of trademarks. It also
deals with the rights of the holder of the trademark, penalties for infringement, remedies for the
damaged as well as modes of transference of the trademark. Trademark is defined in the
Trademark Act, 1999 as, “trademark 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 the shape of goods, their packaging and combination of colors.” Such a mark may
include numerous things such as signatures, names, labels, headings etc.

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 TRADEMARKS AND IT’S ESSENTIALS

HISTORY OF TRADEMARK
Although there was some use of trademarks or symbols in the Middle East and Far East several
centuries ago, contemporary (modern) trademark law can be traced back to use of trademarks
during the medieval period in Europe by merchants who sought to distinguish the goods they
sold from those sold by others by applying a mark or symbol to their goods. By viewing the
mark, purchasers would immediately be able to identify the craftsperson that made the goods
and make an informed decision about the quality of the material. The use of symbols by
medieval craftspeople to distinguish and identify their goods is the direct antecedent for the
modern use of trademarks. Before 1940 there was no law on trademarks in India. A number of
problems of infringement of registered and unregistered trademark arose which were resolved
under Section 54 of the Specific Relief Act, 1877 and registration was adjudicated under the
Indian Registration Act,1908. To overcome these difficulties, the Indian Trademark law was
enforced in 1940. After the enforcement of the trademark law, demand for protection of
trademarks increased as there was major growth in trade and commerce. The Trademark law
was replaced with the Trademark and Merchandise Act, 1958. It provides better protection of
trademark and prevents misuse or fraudulent use of marks on merchandise. The Act provides
registration of the trademark so that the owner of the trademark may get a legal right for its
exclusive use. This previous Act got replaced with the Trademark Act, 1999 by the government
of India by complying it with TRIPS (Trade-related aspects of intellectual property rights)
obligation recommended by the World Trade Organization. The aim of the Trademark Act is to
grant protection to the users of trademark and direct the conditions on the property and also
provide legal remedies for the implementation of trademark rights. The Trademark Act, 1999
gives the right to the police to arrest in cases of infringement of the trademark. The Act gives a
complete definition for the term infringement which is frequently used. In Trademark Act, it
provides punishments and penalties for the offenders. It also increases the time duration of
registration and also registration of a non-traditional trademark1.

1
https://blog.ipleaders.in/trademark-law-in-india/

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 TRADEMARKS AND IT’S ESSENTIALS

DEFINITION OF TRADEMARK
A trademark is a visual symbol which may be a word signature, name, device, label, numerals
or combination of colors used by one undertaking on goods or services or other articles of
commerce to distinguish it from other similar goods or services originating from a different
undertaking.

WIPO - A trademark is a sign capable of distinguishing the goods or services of one enterprise
from those of other enterprises2.

TRIPS – A trademark is –

a. A sign or collection of signs

b. Capable of distinguishing between goods of one enterprise from another

c. Sign includes, any word, letter, name, numbers, figurative elements or colour combinations.3

Section.2 (zb) of Trademarks Act, 1999 - “Trademark” 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 provisions of
this Act, a mark used or proposed to be 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, 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

2
https://www.wipo.int/trademarks/en/
3
https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm
4
The Trade Marks Act, 1999

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KEY FEATURES OF TRADEMARK

An ideal trade mark should be attractive to sound and appearance and suggest the quality of the
product. Most importantly an ideal trademark should be made in such a manner that it can be
distinctive from other trademarks of the same class and should be able to be registered and
protected. The following are the few attributes of a good trademark that should be considered
before Trademark Registration.

 A trademark must be a mark which includes a device, heading, brand, label, ticket,
signature, word, letter, name, numeral, packaging or combination of colors or any
combination of the above attributes.
 It should be easy to speak and spell. A good trademark is such that the public can easily
spell and speak.
 It should be easy to remember. A good trademark that is easy to speak and spell can be
easily remembered as well.
 It should not be too lengthy and complicated to be forgotten easily. If it is lengthy or
complicated, people will not bother to take the effort to memorize it and ultimately it
will be forgotten.5
 It must be distinctive. It can be natural distinctiveness or acquired distinctiveness. In,
Imperial Tabacco v. Registrar Trademarks (2015), it was held that distinctiveness
means any quality of the mark which distinguishes the goods for which it is used from
others. Distinctiveness may be dependent on the class of goods.6
 The best trademarks are invented words or coined words or unique geometrical designs
 It can only be suggestive of the quality of the products, but not descriptive
 A good trademark should not be barred under the Trade Marks Act under the Prohibited
lasses of trademarks.7

5
https://ebizfiling.com/blog/the-trademark-essentials-and-attributes-of-a-good-trademark/
6
https://indiankanoon.org/doc/451537/
7
https://ebizfiling.com/blog/the-trademark-essentials-and-attributes-of-a-good-trademark/

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CONCLUSION
Ultimately a trademark should be easy to remember whether it is a word, or any other feature
like color combination, labels, etc. It should not be too lengthy and complicated to be forgotten
easily. It can only be suggestive of the quality of the products, but not descriptive; as it is
against the law to include words like pure, excellent, best, perfect, etc. A good trademark should
not be barred under the Trade Marks Act under the Prohibited classes of trademarks.

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BIBLIOGRAPHY

Bare Act – The Trade Marks Act, 1999

Online sites –

1. https://ebizfiling.com/blog/the-trademark-essentials-and-attributes-of-a-good-
trademark/
2. https://indiankanoon.org/doc/451537/
3. https://ebizfiling.com/blog/the-trademark-essentials-and-attributes-of-a-good-trademark/
4. https://www.wto.org/english/tratop_e/trips_e/intel2_e.htm
5. https://www.wipo.int/trademarks/en/
6. https://blog.ipleaders.in/trademark-law-in-india/

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