Trademark

Trademark Act, 1999

 Trademark is a visual symbol which may be a word to indicate the source of the goods, a
signature, name, device, label, numerals, or combination of colors used, or services, or other
articles of commerce to distinguish it from other similar goods or services originating from
another.
 It is a distinctive sign which identifies certain goods or services as those produced or provided by
a specific person or enterprise.
 A trade mark provides protection to the owner of the mark by ensuring the exclusive right to use
it or to authorize another to use the same in return for payment.
 The salient features of the Trade Marks Act, 1999

 (a) Providing for registration of trade mark for services, in addition to goods.
 (b) Amplification of definition of trade mark to include registration of shape of goods, packaging and combination
of colors.
 (c) All 42 international classification of goods and services (as earlier used) now applicable to India as well.
 (d) Recognition of the concept of “well-known trade marks”.
 (e) Increasing the period of registration and renewal of trade marks from 7 to 10 years, to bring it in conformity with
the accepted international practice.
 (f) Widening the scope of infringement of trade marks. For instance, use of a registered trade mark as trade name
or as a part of a trade name or use of a mark which is identical or deceptively similar to a registered trade mark.
 (g) Creation of an “Intellectual property Appellate Board” for hearing appeals against orders and decisions of the
Registrar of Trade Marks for speedy disposal of cases and rectification applications which hitherto lie before High
Courts.
 (h) Criminal remedies in case of falsification of trade marks.
 (i) Recognition of use of trade mark by even an unregistered licensee.
 (j) Expeditious examination of a trade mark application on payment of five times the application fee.
 Objective of the Act:

 The object of trade mark law has been explained by the Supreme Court in:
 Dau Dayal v. State of Utttar Pradesh AIR 1959 SC 433, in the following words:
 “The object of trade mark law is to protect the rights of persons who manufacture and sell
goods with distinct trade marks against invasion by other persons passing off their goods
fraudulently and with counterfeit trade marks as those of the manufacturers. Normally, the
remedy for such infringement will be by action in Civil Courts.
Kinds of Trade marks
 Trademark

 Sumat Prasad Jain v. Sheojanam Prasad and Ors. (AIR 1972 SC 413)
 The Apex Court held: “…Thus, the distinction between a trade mark and a property mark is that
whereas the former denotes the manufacture or quality of the goods to which it is attached,
the latter denotes the ownership in them. In other words, a trade mark concerns the goods
themselves, while a property mark concerns the proprietor. A property mark attached to the
movable property of a person remains even if part of such property goes out of his hands and
ceases to be his.”
 “Whirlpool case” [N. R. Dongre v. Whirlpool Corporation, 1996 (16) PTC 583]
 The Court held that a rights holder can maintain a passing off action against an infringe on the
basis of the trans-border reputation of its trade marks and that the actual presence of the
goods or the actual use of the mark in India is not mandatory. It would suffice if the rights holder
has attained reputation and goodwill in respect of the mark in India through advertisements or
other means.
 Advantages of trademark

 Exclusive Rights
 Builds Trusts and Goodwill
 Differentiates Product
 Recognition to product’s quality
 Creation of Assets
 Use of symbol
 Protection against infringement
 Protection for 10 years at low cost
 Attract Human Resources
 Types of Trademark Infringement

 Direct Infringement:
A. Use by unauthorized person
B. Identical or Deceptively similar
C. Registered Trademark
D. Class of Goods and Services

 Indirect Infringement:
1. Vicarious Liability
2. Contributory Infringement
(Some examples of contributory infringement include:
• The supply of Component A with instructions to connect it to a generically available Component B, where A+B is a
patented product.
• The supply of Component X which has no other reasonable use except for in the Process Y, where Y is a patented
process.
• The supply of a kit-of-parts which the end user assembles to produce a patented product.)
 Penalties/ Remedies

 The infringement of a trademark is a cognizable offence

 In the case of a criminal proceeding, the court dictates the following punishment:
1. Imprisonment for a period not less than six months that may extend to three years
2. A fine that is not less than Rs. 50,000 that may extend to Rs. 2 lakh

 Remedies:
 Temporary injunction
 Permanent injunction
 Damages
 Account of profits (damages in the amount of the profits gained from the infringement)
 Destruction of goods using the infringing mark
 Cost of legal proceedings