Trademark Law in India – Modafinilyes

This article was written by Anushka Ojha and further updated by Soumya Lenka. It deals with trademark law in India and its various facets, starting from its origins to the concrete provisions of the country’s existing trademark legislation, the Trade Marks Act, 1999. The article is exhaustive and touches on every pertinent aspect of the country’s trademark law, making it a must-read.

Introduction

The trademark law relates to the protection of the rights of the trademark owners and their customer base in general. The trademark law aims to balance the rights of business entities and customers. It primarily ensures that the consumer market does not fall into a monopoly. It further provides that any business not so entitled to a particular customer base does not deceptively take the benefit of the consumer base based on the trademarks used by the bonafide owner. It ensures dynamism in the market and does not fall into the hands of deceptive businesses. It prevents businesses who want to make their market base stand on the prior base created by other entities by deceptively using their logos and marks in their goods.

The trademark law in India dates back to the enactment of the Trade Marks Act, 1940, which was replaced by the Trade Marks and Merchandise Marks Act, 1958, giving its way to the present Trade Marks Act, 1999. The trademark law has undergone rapid changes in the last few decades, with subsequent amendments and new rules coming to that effect. This article will cover all essential aspects of the trademark laws in India exhaustively. Now let us delve deeper into the meaning of trademark in more detail.

Meaning of trademarks

A trademark includes a name, word, or sign that differentiates goods from those of other enterprises. Marketing goods or services by procedure becomes much easier with a trademark because recognizing a product with the trademarks is assured and more straightforward. The owner can prevent using his mark or sign by another competitor.

A trademark is a marketing tool that increases the financing of the business. A trademark is not always a brand, but a brand is always a trademark. Sometimes there is confusion between trademarks and brands. A brand name can be a symbol or logo, but a trademark is a distinguishing sign or indicator in a business organisation as it has a broader implication than brands. People are more influenced by the distinctive trademarks that reflect the quality of the product. A trademark can also be a logo, picture mark, or slogan.

A trademark is a property right, and the law protects that right. It is the visual representation associated with goods and products referring to their trade origin. The use of a mark and its subsequent registration gives an owner the title over it. A trademark provides distinctiveness to a product. For example, the company’s use of the word Apple distinguishes its products from those of Samsung, One Plus, Apple, etc.

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Origin of trademark law in India

India did not have a trademark law until the 1940s. Issues involving trademark infringement or ancillary violations of one’s trade rights were dealt with under the Specific Relief Act, 1963, and the Registration Act, 1908. With the market’s growing complexity and vulnerabilities, legislation specifically addressing trademark law in the country was needed.
In 1940, the then British colonial establishment finally came up with the Trade Mark Act, 1940, which was a modified adoption of the Trade Mark Act of 1938, which was then in force in the English State.
The Trade Marks Act, 1940, was further replaced with the Trade Mark and Merchandise Act, 1958. This act provides better protection for trademarks and prevents misusing or fraud using marks on merchandise. The Act provides for registering trademarks so that the owner may get a legal right for its exclusive use.
The era of globalisation and privatisation began in the late 1980s and early 1990s of the 20th century.
Hence, a complete overhaul of the country’s trademark law was needed, as the 1958 legislation was unable to address the new complexities regarding trademark infringement and the ancillary rights attached thereto that arose due to the change in the market mechanism as an effect of globalisation.
Hence, the Trade Mark and Merchandise Act,1958, was replaced by the Trade Mark Act, 1999, by the Government of India in compliance with the Trade Related Aspects of Intellectual Property Rights (TRIPS) obligation recommended by the World Trade Organization.
The Trade Mark Act of 1999 is the current legislation in force in India. It deals with all the issues and complexities of trademark law in the country. The aim of the said Act is to grant protection to trademark users, direct the conditions on the property, and provide legal remedies for the implementation of trademark rights.
The Trade Marks Act, 1999, gives the police the right to arrest in cases of trademark infringement. The Act gives a complete definition of “infringement.” It also provides punishments and penalties for offenders. It also increases the time duration of registration and registration of non-traditional trade marks.

Sources of trademark law in India

Several international conventions and agreements, with TRIPS taking the central stage, are the sources of trademark law in India.

Trade-Related Aspects of Intellectual Property Rights (TRIPS)

Trade-Related Aspects of Intellectual Property Rights is the most critical convention relating to intellectual property rights. It was adopted by the World Trade Organisation in 1995. Articles 15 to 21 of the TRIPS agreement deal with trademark protection. Some of them are as follows:

Article 15(1) of TRIPS of the agreement states that any sign or combination of signs capable of adding distinctive character to goods of one undertaking from the rest constitutes a trademark;
Article 16 of TRIPS states the rights of the trademark owner and the registration of the trademarks shall be as per the Paris Convention, 1967;
Article 18 of TRIPS deals with the duration of trademark protection. It postulates that the duration should not be less than seven years;
Article 21 deals with the licensing and assignment of trademarks.

Other Treaties and Conventions

Readers, it is important that we know about some other important treatises and conventions so that we can get a wholesome idea of how the International regime related to trademark law evolved.

The Paris Convention for the Protection of Industrial Property was adopted in 1967. The treaty was initially signed in 1883 in Paris, France. It was the first to envisage an international law protecting Industrial property.

Madrid Agreement on the International Registration of Marks: It was adopted in 1891 and revised in 1967. This treaty was initially signed in the year 1891. It envisaged a uniform international law for the registration of marks.

The Vienna Agreement, 1973: This agreement was initially signed in 1973. It envisages an international law protecting figurative elements as trademarks.

Trade Marks Act, 1999

Object of Trade Marks Act, 1999

The Preamble of the Trade Marks Act, 1999, outlines the object of trademark law in India. It states that the legislation intends to consolidate the law relating to the registration and use of trademarks in the market. It further seeks to protect trademark owners and the damages they suffer from fraudulent usage of trademarks.

In the landmark case of Laxmikant V. Patel vs. Chetanbhat Shah & Anr (2001), the Hon’ble Supreme Court opined that the objective of the Trade Marks Act, 1999, is two-fold.

Firstly, it seeks to ensure honest and fair play in the market.
Secondly, it intends to protect the owner of a trademark from any legal and financial injury that may be caused by fraudulent and unauthorised use.

Salient features of the Trade Marks Act, 1999

Now, let’s deal with the salient features of the Trade Marks Act, 1999:

Service is included in the definition

In its definition, the Trade Marks Act, 1999 provides for goods and services. The businesses can apply not only for registering their trademarks on goods but also on services, thus widening the scope of trademark protection.

Absolute and relative grounds for refusal of trademark registration

The Trade Marks Act, 1999, divides the grounds for the refusal of registration into two types, namely:

Absolute grounds for refusal of registration; and
Relative grounds for refusal of registration.

Protection of well-known marks

The Trade Marks Act, 1999, provides for the recognition and better protection of well-known Marks. If a mark is widely used and recognised that if accorded to any entity that deals in any other category of goods, it will cause injury to the owner, then the same is a well-known mark. The concept of well-known marks protects trade marks falling under one category of goods and services and other categories of goods and services.

Registration of collective marks

Section 2 (1) (g) of the Trade Marks Act, 1999, provides for collective marks. Collective marks are marks associated with associations. The Act provides protection to these kinds of marks, thereby widening its scope.

The registrar is the final authority

The Trade Marks Act, 1999, provides that the Registrar will be the final authority for the registration and certification of trademarks, diluting the role of State and central governments. This was done to streamline the process of registration and licensing trademarks by giving the task to a special authority.

Penalties for offenders

Sections 101 to 121 of the Trade Marks Act, 1999, provide for penalties for offenders. The Trade Marks Act punishes trademark infringement, passing off, and falsification with imprisonment, fines, or both.

Types of Trademarks

Trademarks are of two types, namely:

Conventional marks

Conventional marks are words, symbols, logos, and names used to identify and differentiate a product or service from others in the market. These are simple in their character and are widely used by market entities. In India, there are three kinds of conventional trademarks are as follows:

Certification trademarks

A certification trademark is a validation of the quality and standard of the product sold in the market on a commercial scale. It is defined under Section 2(1)(e) of the Trade Mark Act, 1999. It provides that a certification mark means a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services.

Collective mark

Section 2 (1)(g) provides for collective marks. As the name suggests, a collective mark is a trademark used by organisations for various goods and products and their differentiation from the other market players. A collective mark is generally used by organisations carrying on their business in the same industry and having identical characteristics. A collective trademark or mark helps the customer identify the product or the range of products indicated by the mark from other products. It hence adds distinctiveness to the market value of the organisations operating through the collective mark. A collective mark can be of two types:

Firstly, it can be a mark of recognition or identification of persons from a particular industry. For example, A Company Secretary (CS) is a mark that lets the customer know that the person belongs to the CS industry and is certified by the Institute of Company Secretaries of India (ICSI); and
Secondly, it serves as an indication of the source of origin of the goods or services.

Service mark

Section 2(1)(z) of the Act provides for service marks. A service mark is a symbol, sign, or word used by market entities to differentiate their services. Service marks are used for several purposes, including marks in the entertainment industry, hotel industry, and management institutions. These service marks are seen as the brand marks of the industry players and play a pivotal role in establishing goodwill and brand value among customers.

It provides that services offered by different players in different industries can also be registered as trademarks if they are distinctively associated with the brand or industry.

Unconventional marks

Unconventional marks are generally complex trademarks that market entities do not use widely. These are of many types, namely:

Product mark

A product mark is a trademark used only for products and goods, not services. It is generally an identifying mark that makes customers aware that the same belongs to a particular company or organisation. Customers typically tend to buy more of a specific company’s products because of its product mark, and thus, this is directly connected to the company’s market value and reputation.

Shape mark

Many companies and corporate entities are trying to encash this visual appeal for their products and establish their dominance in the market. This phenomenon gave rise to a new trademark called “shape marks”. Section 2 (1) (zb) of the Trade Marks Act, 1999, provides for a shape mark. The mark must have the capacity to have a differentiating effect, i.e., make customers distinguish between products of different businesses.

Pattern mark

A pattern mark is a form of trademark that generally uses specific visual patterns as the distinguishing feature. In pattern marks, customers identify a particular company product by the pattern enshrined in the product. In India, the Trade Marks Act, 1999, has not explicitly mentioned pattern marks as a specific form of trademark in its containment. However, a pattern associated with a particular product may be registered by market entities under Section 2 (1) (zb) of the Trade Marks Act, 1999.

Sound mark

Sound is another phenomenon that distinguishes products and services from one another. According to reports, sound appeals the most as a medium of advertisement and branding, and the main reason is that it dilutes the visual and linguistic barriers between the company or the brand and the consumer.

Sound trademarks are not explicitly mentioned in the Trade Marks Act, 1999, and no definition whatsoever has been mentioned in the concerned enactment. The scenario changed after the advent of the Trade Mark Rules, 2017, which laid down the process for registering sound trademarks in the country. The determination of the validity of a sound mark is also governed by Section 2 (1) (zb) of the Act.

Colour mark

Colours always act as distinguishing features of goods and products and help the customer distinguish goods and brands. Colour trade marks are based on this distinction. Colour trade marks are widely used unconventional trademarks that are mentioned in Section 2 (1) (zb) of the Trade Marks Act, 1999, but are implicitly contained within the provisions of the Act, making them nevertheless registrable under the legislation. Colour trade marks involve using specific colours or colour combinations to identify the source of goods or services.

Domain name

Every company on the Internet has a domain name with a different address in cyberspace where the website is located. Nowadays, companies have internet pages as the producer and consumer are far away, and every company is going global. The other purpose is that the Internet has become an essential tool in marketing. The rule came to be revealed as IP numbers are hard to remember, so they came up with the domain name system.

Well-known marks

Section 2(1)(zg) of the Trade Marks Act, 1999, defines a well-known trademark as a mark that has gained enough recognition among a significant portion of the public who utilise such goods or obtain such services that the use of the mark about other goods or services is likely to be interpreted as denoting a connection between those goods or services and the person using the mark in connection with the first mentioned goods or services. The trademarks are generally guaranteed to the customers and the purchasers of a certain standard by the brand.

A trademark generally establishes or represents the goodwill of a market entity. A well-known trademark generally has a great deal of leverage and a large customer base in the market, and hence, its protection is given higher priority and emphasis in comparison to other trademarks.

One of the most distinguishing features of well-known marks against other trademarks is that they are infringed even if they are used by market entities in a completely different category of goods and products.

Thus, the pertinent rule is that when a trade mark is deemed to be well-known, the value of its goodwill is such that even when it is used by a market player or entity in an ultimately market, the mark has the potential to gain a market value and customer base rapidly only based on its goodwill.

The landmark verdict of Sunder Parmanand Lalwani vs. Caltex (India) Ltd. (1969) serves as a pertinent precedent that sheds light on the scope of well-known trademarks. In the impugned case, the Hon’ble Bombay High Court held that when a mark has established a monopoly and brand value in the market, it is debarred from being used by any other market entity, even if the other player deals with a completely different product segment.

Grounds for refusal of registration of trademarks

There are two types of grounds for the refusal of registration of trademarks, namely, absolute grounds for refusal and relative grounds for refusal of registration. Let us now discuss them in detail:

Absolute grounds for refusal of registration of trademarks

The trademarks that do not meet the criteria of distinctiveness under Section 9 of the Trade Marks Act, 1999, and can cause confusion in the minds of the consumers are not qualified to be registered in India. Apart from this, many other criteria render otherwise registrable trademarks unregistrable. A trademark can be disqualified from being registered despite having the potential and the requirements under the following circumstances:

Devoid of distinctive character

Section 9(1)(a) provides that any mark devoid of distinctive character cannot be granted trademark protection.

Geographical locations

Section 9(1)(b) provides that geographical locations cannot also be used as trademarks. The rationale behind such a postulation is that the same does not pass the distinctiveness test under Section 9 of the Act. When a geographical location is used as a mark or logo before a product, it signifies that the product or the said goods belong to that location. Still, it adds no specific or distinctive value to the brand.

Geographical names are generic, and hence, every other market entity is free to use them in their products. If any of these kinds of trademarks are granted, it will be against the freedom of trade granted to the traders under Article 19(1)(g) of the Indian Constitution.

Customary words and marks

Section 9(1)(c) provides that words or marks that have become customary in the contemporary market cannot be trademarked. The rationale is that the same dilutes the distinctive character of the mark or logo.

For example, suppose X company has the word ‘laptop’ in their logo or mark. In that case, they are barred from claiming a trademark right on the same as the word laptop has become generic in the market and is a part of the customary discourse in the contemporary market. If the same is allowed to be trademarked, the other market dealers will face heavy repercussions. Hence will go against their right to trade under Article 19 of the Indian Constitution.

Concept of acquired distinctiveness

The concept of acquired distinctiveness is a peculiar concept ingrained in Section 9(1)(c) proviso, which allows generic marks and logos to be registered as trademarks on meeting specific criteria. The trademarks obtained via acquired distinctiveness are known as secondary trademarks. The doctrine of acquired distinctiveness is hence known as the doctrine of secondary meaning”.

This doctrine postulates that even if a mark or logo is generic and at its initial stages, it may not be liable to be registered as a trade mark. However, with the passage of time and extensive use of the mark, the mark may have acquired a certain level of distinctiveness, which may enable it to meet the distinctive criteria stipulated under the trademark law to be recognised as a valid trade mark. These trademarks lack inherent distinctiveness but have attained distinctiveness in the consumer market for the extent of their use and exclusiveness.

Deceitful

Section 9(2)(a) provides that any deceitful logo or mark cannot be registered as a trademark in India under the existing law. To elucidate, if the use of a mark or logo dilutes or creates confusion in the minds of customers, then it can hamper the market value of the actual trademark owner and is, hence, deceitful.

For example, if one uses Parle C and tries to register it as a trademark, then the same cannot be granted as it would be deceitful and could create confusion in the minds of customers with the existing biscuit manufacturing giant Parle G. There are many cases in this regard.

Hurts religious sentiments

Section 9(2)(b) provides that trademarks that hurt the religious sentiments or belief system of any community in India are not registrable as they contravene Article 25 of the Indian Constitution.

Obscenity

Section 9(2)(c) provides that if a trademark so applied for being registered is based on or contains scandalous or obscene material, then the same is not registrable. For example, In cases of obscenity, if a mark used on a product has some brand value, but the same qualifies under the obscenity criteria under Section 294 of the Bharatiya Nyaya Sanhita, 2023, then the same, despite having a brand value, cannot be granted a trademark. Granting such a trademark would be against public order and constitutional morality.

Symbols and signs prohibited from commercial use.

Section 9 (2) (d) provides that if trade marks so applied for being registered is a symbol that has been prohibited from being used by the Emblems and Names (Prevention of Improper Use Act), 1950, for instance, the Indian National Emblem Lioned Capital, the Indian Flag etc, then the same cannot be registered. The motive behind the clause was to debar commercial and profit-making entities from using marks and symbols of national pride for commercial purposes. Even if they are so used, all other entities are equally entitled to use them; hence, such trademarks have no registrability.

Shape of the goods/products

The shape of the goods and products cannot be registered if the same falls under any of the three categories stated under Section 9(3) of the Trade Marks Act, 1999. Section 9(3) provides that a shape is not registrable as a trademark in the country if the same has:

The shape of goods resulting from the nature of the goods themselves for this section, the strict language of the said provision is to be considered. The provision opines that if the shape of a product is inherent to the nature of the good, then the same is not registered as a trademark. To elucidate, can any company not claim or register a cardboard box or A4 size paper as a trademark?
The shape of goods necessary to obtain a technical result To elucidate, the clause pertinently sheds light on the fact that a particular shape is often required to obtain a specific result in a category of goods. Hence, nobody can claim a trademark right on the same. For example, knives are supposed to be sharp; therefore, no one has the right to claim a trademark on the sharpness of the product as it is a necessary characteristic of a knife.
The shape that gives substantial value to the goods in this clause of Section 9(3) of the Act is an amalgamation of the above two clauses or postulations. The clause states that if a shape gives substantial value to the products and is not leveraged and is intrinsic to its usage, then the shape cannot be claimed to have any distinctiveness. Hence, such a shape will not be registered in India. For example, in the case of a knife, the sharpness is intrinsic to the product and gives substantial value to the goods.

Relevant case laws on absolute grounds for refusal of registration of trademarks

Hindustan Development Corporation Ltd. vs. The Deputy Register of Trademarks (1954)

In this impugned case, the Hon’ble Bench of the Calcutta High Court held that the mark “RASOI” for edible oils cannot be used as a trademark and cannot be registered because the name indicates the nature of the product. It opined that the nature of the product cannot be used as a trademark, and if so permitted, the right accrued so by the registered owner will violate the rights of the other businesses in the category.

Imperial Tobacco. Of India Ltd. vs. Registrar of Trademarks & Anr (1968)

This is a landmark case in which the Calcutta High Court Bench clarified that a trademark should be distinctive. Using a specific geographical location of the product does not add any distinguishable character; hence, such trademarks cannot be granted.

SBL Ltd vs. Himalayan Drug Company (1997)

In the impugned case, the Delhi High Court division bench held that Liv-T used by the respondent cannot be deceptive or considered violative of the trademark of the owner, Himalayan Drug Company, i.e, Liv-52. It held that Liv is a general acronym or abbreviation in the medicine industry, symbolising that the medicine is used to treat liver ailments. Hence, such a word cannot fall under the category of exclusivity guaranteed by trademarks.

Relative grounds for refusal of registration of trademarks

Section 11 of the Trade Marks Act, 1999, provides relative grounds for refusal in the case of trademarks. Let us now discuss the grounds in detail:

Registrability of the trademarks is barred by copyright law

Section 11(3)(a) provides that if the registrability of the mark is barred or prohibited by the country’s Copyright law, then it cannot be registered. The provision emphasises the basic principle of nonoverlapping Intellectual Property Rights. For instance, if the Copyright Law protects a particular mark, it cannot simultaneously be claimed to be protected by the trademark law.

Knowledge or recognition of that trademark in the relevant section of the public, including knowledge in India obtained as a result of the promotion of the trademark

The basic principle on which a well-known trademark relies is that it must have a vast customer base. The name suggests that the trademark recognition must be substantial to ascertain it as a famous trademark. Section 11(6)(1) provides that before granting the well-known mark recognition, the registrar must ascertain whether the said mark is well known and recognised among a relevant section of the Indian public.

Duration, extent, and geographical area of any use of those trademarks

Section 11(6)(iii) provides that for a trademark to be registered as a well-known trademark, the duration, extent, and geographical area of such use must be considered. This postulation is based on the rationale that if the trademark is a well-known mark, it has to have a wide popularity spanning a large geographical area, and its use must span a reasonable number of years.

Record of successful enforcement of the rights in that trademark

Section 11(6)(v) provides another essential criterion to be considered by the registrar of trademarks. It postulates that previous enforcement of the rights of the trademarks can serve as potential evidence of its popularity and enforceability to be granted the recognition of a well-known mark under Section 2(1)(zg).

Number of actual or potential consumers of the goods or services

Section 11(7) acts as an appendage to subsection 6 and further clarifies the position. It holds that a well-known mark must have a potential base of customers, which has to be taken subjectively and depends on different facts and circumstances. The word actual refers to the mark’s existing customers, and the potential refers to the mark’s ability to volumize or increase its base in the future.

Number of persons involved in the channels of distribution of the goods or services

Section 11(7) postulates another condition for registering well-known marks. It postulates that the number of employees and individuals involved in the distribution networks of the so-called product must be considered before trademarks are awarded. Hence, the distribution channel and its extent are significant factors before granting well-known trademarks.

Where a trademark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trademark as a well-known trademark for registration under this Act

Section 11(8) postulates that the same does not need to be recognised in several markets or segments of goods and products for well-known trademarks. It is enough to be recognised by a particular section of customers to be considered well known.

Relevant case laws on the relative grounds for refusal of registration of trademarks

Shaw Wallace Company and Co. Ltd vs. Superior Industries Ltd (2003)

In the impugned case, decided by the Hon’ble Delhi High Court, the Shaw Wallace company successfully defended its trademark as a well-known mark because of its previous enforcement.

Amritdhara Pharmacy vs. Satya Deo Gupta (1962)

In this case, to determine the connection in two words related to an infringement action, the Supreme Court stated that two words must be taken that are deceptively similar and judged by their appearance and sound. There must be considered the goods to which they are to be utilised. The nature and kind of customer likely to buy those goods must be considered.

It must consider the surrounding circumstances and what is likely to occur if each of those trademarks is used in common ways as a trademark for the goods of the particular owners of the marks.

After considering all those circumstances, they concluded that there would be confusion. This is to say that, not significantly, one man will be injured, and the other will gain the illegal benefit, but there will be a mess in the public’s mind, which will lead to confusion about the goods, and then there may be the refusal of the registration.

Trademark registration

Any person claiming to own trademarks must apply in writing to the appropriate registrar in a prescribed manner, as enshrined under Sections 18 to 26 of the Trade Marks Act,1999.

Procedure for registration of trademarks in India

The procedure for registration of trademarks in India is governed by the Trade Marks Act, 1999, in consonance with the Trade Mark Rules of 2002 and 2017. Particularly, Chapter III of the Trade Marks Act, 1999, postulates the procedure regarding the registration of all kinds of trademarks in India. Sections 18 to 26 lay down the exact procedures for registration and the ancillary issues. Let us have a quick glimpse of the provisions-

Application for registration

Section 18 of the Trade Marks Act, 1999, provides for the application for registration of trademarks. Section 18(2) provides that a person claiming to be the proprietor of a trademark must file a single application for registration before the registrar of trademarks. A single application is to be filed for a different class or segment of goods and products, and the fees will be subject to segments in which the applicant claims his trademarks to be registered.

The application would be filed in the trademark Registry Office (before the Registrar of Trademarks) within whose jurisdiction the application carries on his or her business.

If the business is carried on jointly by more than one member, the principal or the first applicant’s address must be considered when determining the jurisdiction of the registry office under which the application will be filed.

Further, the Registrar has discretion after due scrutiny and perusal of the application’s claim to direct any amendments or modifications to the claimed trademarks. In some cases, it can refuse the mark to be registered. However, in case of refusal or conditional acceptance, the Registrar is obliged to explain the reasons for the same.

Categories of trademark application in India

In India, as per the Trademarks Act, 1999, and the accompanying rules, there are five primary types of trademark applications. The same are discussed here as follows-

Single trademark application

This is a simple trademark application that allows an individual or a startup to file a trademark application to register its trademark. As the name suggests, the trademark application is for the registration of a single trademark by either the proprietor or the start-up. Form TM-A is used to file a single trademark application.

Collective trademark application

As the name suggests, a collective trademark application is not filed by a single entity but rather a collective group. When an association or a trust files a trademark application for the registration of a trademark, it is known as a collective trademark application. Generally, Form TM A is used if the application is for a single trademark, but in cases of certification marks or collective marks, Form TM-M is to be complied with.

Multiclass trademark application

A multiclass trademark application allows businesses to register a single trademark across multiple classes. Such a trademark will enable entities to register their trademark in various market segments. Form TM-A is to be com; lied with to register a multiclass trademark application.

Series trademark application

A series trademark application allows businesses or entities to register a single trademark for related trademarks. A single application is to be given to the concerned registrar’s office. It has to be satisfied and proved before the office that the set of trademarks has a common distinguishing factor and should be liable to be registered under a single market entity’s name. Form TM-A is used for filing series trademark applications.

Certification trademark application

Entities file a certificate trademark application to ensure the quality of their goods and services. Unlike traditional trademarks, these are obtained to provide and satisfy the consumer that a basic quality standard has been maintained. Form TM-A is used to file such trademark applications. Popular examples are Agmark, Hallmark, etc.

Withdrawal of acceptance

Section 19 of the Trade Marks Act, 1999, provides for the withdrawal of acceptance by the registrar in some instances. It provides that when the registrar has accepted to register a mark but before the registration of the said mark realises that he has made an error in judgment, he can withdraw his acceptance to register the mark under the trademark law.

Further, Section 19 provides that the Registrar has the power to withdraw the acceptance if the applicant calls for it voluntarily condition to the reasons being laid down for the same by the applicant.

Advertisement of application

After the application was accepted by the registrar, it had to be advertised in a local daily or the state’s gazette. Section 20 of the Trade Marks Act, 1999, is to give other bonafide market entities a chance to know about such registration before it is made, allowing them to challenge it if it hampers their business.

Opposition to registration

Section 21 of the Trade Marks Act, 1999, provides for opposition to the registration. It provides that any erosion or market entity can, within four months of such advertisement or re-advertisement (in cases of prior conditional acceptance by the Registrar), file a written complaint in the form of a notice to the Registrar. The Registrar shall serve a copy of the complaint to the applicant within two months of its receipt.

If the applicant files a counter-statement, the registrar is obliged to send a copy to the complainant within a reasonable time period from receipt of the counter-statement. The Registar can conduct a hearing in which, after perusing the arguments, contentions, and evidence from the birth parties, the Registar can ascertain whether the objection is valid.

Correction and amendment

Under Section 22 of the Trade Mark Act, 1999, the Registrar has the discretion to permit the applicant to make corrections or amendments to the application claiming trademarks at any time before registering the trademarks but not after that.

Registration

Section 23 of the Trade Mark Act, 1999, provides that a trademark will be registered on an application made under Section 19 if the following circumstances and conditions are satisfied:

Any market entity has not opposed the application or that the opposition has been decided in favour of the applicant;
The registrar, on the fulfilment of the conditions mentioned above, registers the mark within twelve months from the date of such application; and
Following the registration of the mark, the registrar shall issue a certificate of registration to the applicant.

Jointly owned trademarks

Section 24 of the Trade Mark Act, 1999, postulates that the registration of the trademarks so claimed by joint proprietors shall be jointly accorded. The trademarks hence will be awarded to the persons as joint proprietors. Registration of a trade mark used independently by the proprietors cannot be claimed except when such registration is declared by a person who will be charged to use it on behalf of both or all of the proprietors and about an article or service with which both or all of them are connected in the course of trade.

Duration, renewal, removal, and restoration of registration

Section 25 of the Trade Mark Act, 1999, provides that the duration of such registration will be ten years but is subject to be renewed for ten years on an application of renewal from the applicant or the trade mark’s owner.

Effect of removal from register for failure to pay fee for renewal

Section 26 of the Trade Mark Act, 1999 postulates that where a trade mark has been removed from the register in case of failure on the part of the applicant or the trade marks owner to pay the fees on time, the same will be deemed to be a trade mark for one year from such non-payment of fees.

In cases of filing of an application for the registration of similar trademarks, the trademark will not be granted for a period of one year because the values of trademarks still subsist but the same will cease to be considered as a trademark if the Registrar or the High Court opines that:

there has been no bona fide trade use of the trademarks which has been removed during the two years immediately preceding its removal from the register of trademarks;
The proposed application will not deceive or confuse customers and will not hamper the rights of the trademark owner.

No action for an unregistered trademark

Section 27 of the Trade Mark Act, 1999 defines no infringement with respect to unregistered trademarks. Still, it recognises the common law rights of the trademark owner to take action against any person for passing off goods as the goods of another person or services provided by another person or the remedies thereof.

Rights conferred by registration

A trademark gives the trademark owner a level of protection or shielding by giving him the exclusive rights to use the mark for a certain period. The owner is also vested with the right to vest such a right of trademark usage by authorising any other person or company to use the trademarks in consideration of some remuneration.

Section 28 of the Trade Marks Act, 1999 confers the following rights on the owner by registration:

The owner has the exclusive right to use the trademarks concerning the goods and services and also has the power of authorising other persons or entities to use the said mark; and
The trademark owner has the right to bring a suit for infringement or passing over and claim an injunction, damages, and accounts for profits.

Infringement of trademarks and action against infringement

Infringement of trademarks

A registered trademark is infringed by a person who is not a registered proprietor or a person using by way of permitted use in the course of trade, a mark which is identical with or deceptively similar to the trademark about goods or services in respect of which the trademark is registered.

After infringement, the owner of the trademarks can initiate civil legal proceedings against a party who infringes the registered trademarks. Basically, trademark infringement means the unapproved use of a trademark regarding products and benefits in a way that is going to cause confusion or difficulty about the trader or potential benefits.

Infringement of tradmarks on the internet

The expansion of the web is also leading to an expansion of inappropriate trademark infringement allegations. A company will probably assert trademark infringement each time it views one of its trademarks on a third party’s online page.

For example, an individual who develops an online website that discusses her expertise with Microsoft software could use Microsoft’s trademarks to consult exact merchandise without worrying about infringement. However, she would no longer be competent to use the marks in this kind of means to intent viewers of her internet web page feel that she is affiliated with Microsoft or that Microsoft is sponsoring her net web page. The honour could simplest be analysed upon seeing how the marks are sincerely used on the web page. In this way, there is an infringement of trademarks on the internet.

Infringement means the unauthorised and deceptive use of a trademark, which damages the owner’s rights. It is a statutory remedy available to the owner or the proprietor of the trademarks about the goods and services to bar the unauthorised entity from using the mark to its benefit and any damages incurred by such deceptive use.

According to Section 29 of the Trade Marks Act, 1999, when a person who is not a registered owner of the mark or somebody authorised to use that mark for commercial purposes, an identical mark or a deceptively similar mark about the goods and services for which the trademarks subsist, the same is deemed to be an infringement of the said trademarks.

Section 29(2) of the Act provides that a registered trade mark is considered to be infringed if the said mark is identical or similar to the trademarks and is likely to create confusion in the minds of the consumers and a false impression that the goods and services have some association with the registered trademarks.

Section 29(4) of the Act provides that a registered trademark is considered to be infringed in case the mark used by the proprietor is

Identical or similar to the registered trademarks;
Used a different segment of goods and services; and
Causes harm to the distinctive character of the trademarks.

Passing off

Passing off is a common tort that can be used to enforce unregistered trademark rights. The regulation of passing off prevents one man or woman from misrepresenting other items or services. The inspiration for passing off has changed over time. In the beginning, it was restricted to representing one person’s goods to another.

Later, it was elevated to business and non-trading activities. Therefore, it used to be additionally accelerated to professions and non-trading movements. Today, it is applied to many types of unfair trading and unfair competitors where one person’s activity causes damage to another person. The fundamental question on this tort turns upon whether the defendant’s conduct is such as deceiving or misleading the general public to the confusion between the industry activities of the two.

Distinction between passing off and infringement

The measures for passing off are different from the measures of infringement. Whereas the former is a legal remedy and varies across jurisdictions, the latter is a common law remedy. Hence, the evidence sought is simple to establish that an infringement has taken place. It requires the claimant to verify that the trademarks are similar or deceptively similar, whereas in the latter case, the burden of proof is high. The claimant has to prove that the trademarks are identical and deceptive and can create confusion in the minds of the consumers.

In the case of infringement, no damage to the plaintiff’s goodwill may be caused, but in the case of passing off, real damage or injury to the plaintiff’s goodwill is necessary to maintain such a suit. This position was made clear by the Hon’ble Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories (1964). Further, in the case of American Home Products Corp. vs. Lupin Laboratories Ltd(1995), the Court reiterated that in a suit of passing off, the burden of proof is high on the part of the plaintiff. In contrast, in the case of infringement, the burden of proof is low.

In Satyam Infoway Ltd. vs. Sifynet Solutions Pvt. Ltd. (2004), it was held by the Hon’ble Supreme Court that to proceed with an action for passing off, three elements are required to be established, which are as follows:

In a trial for passing off, as the expression passing off itself suggests, is to restrict the defendant from passing off its goods or services to the public which of the plaintiff’s. It is a claim not only to preserve the plaintiff’s status but also to protect the public. The defendant must have traded its goods or given its services in a manner that was deceived or would be likely to mislead the public into thinking that the defendant’s goods or services are the plaintiff’s;
It must be established by the plaintiff that there is a misconception by the defendant to the public and what has to be placed in the possibility of confusion in the public’s minds that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the possibility of such confusion, the court must allow for the ‘imperfect recollection of a person or ordinary memory’; and
There is a loss or the possibility of it.

Notwithstanding, trademark registration under the Act only has effect in India. To get trademark rights and protection in other countries, it is required to register the trademarks in those countries. Trademark protection is regional in nature. A single registration must be made in every country where protection is wanted. To get protection outside India, it is required to file applications in the respect of the countries individually.

In enhancement, there should be registration in a country before you begin using the trademarks in that country. In some countries such as China, Japan, Continental Europe, and Indonesia, the first person who applies for registration will get the rights of a trade mark, rather than the person who first uses the trademarks. Hence, the different party could legitimately take the trademarks by applying for registration even if the first person is using the trademarks.

Case laws on infringement and passing off

Wander Ltd. And Anr. vs. Antox India P. Ltd (1990)

In this case, the Apex Court held that the offence of passing off is constituted when the proprietor uses the trademarks of another registered owner fully knowing that doing so can harm the registered trademark owner’s goodwill.

Hearst Corporation vs. Dalal Street Communications Ltd. (1995)

In the impugned case, the court held that a trademark is infringed when a character in the course of trade uses a mark that is the same as or deceptively similar to the trademark in terms of the goods in which the trademark is registered. The mark’s use by such a man or woman needs to be in a manner that is more likely to be taken as being used as a trademark.

Laxmikant V. Patel vs. Chetanbhat Singh & Anr. (2002)

In the impugned case, the Apex court held that for passing off, three elements have to be fulfilled: damage to the reputation of goods and services, the possibility of deception, and the likelihood of damage to the goodwill of the business.

Renaissance Hotel Holdings Inc. vs. B. Vijaya Sai (2023)

In the impugned case, the Supreme Court held that the use of an identical mark for identical services (in the case of hotel services) constitutes trademark infringement under Section 29 (2) of the Trade Marks Act, 1999.

Himalaya Wellness Company & Ors. vs. Abony Healthcare Limited. (2023)

In the impugned case, the plaintiff was Himalaya, and the defendants were accused of using deceptively similar trademarks. Himalaya’s medicine product LIV 52 bears a trademark, and the defendants were using marks like Liv 55 and Liv 999, which most likely can cause deception in the minds of consumers. The Delhi Court held that the same is a clear case of trademark infringement and granted a permanent injunction against the use of such marks.

International Society for Krishna Consciousness vs. Iskcon Apparel Pvt. Ltd. & Anr. (2023)

In this case, the plaintiff, the International Society for Krishna Consciousness (ISKCON), claimed a permanent injunction against the use of its name by a clothing company, Iskcon Apparel. Iskcon Apparel, the defendant, was not authorised to use the name in its products but was doing so knowing fully well the brand value of ISKCON and the fact that it is a well-known mark.

The Bombay High Court, after a strict perusal of the facts and circumstances of the case, held that the same can cause deception in the minds of the consumers and most likely deceive them to perceive that the clothing company ISKCON Apparel is a branch of ISKCON and hence qualifies as a trademark infringement. Hence, the court granted a permanent injunction preventing ISKCON Apparel from using the said name.

Remedies available for infringement of trademarks

Civil remedies

Civil remedies for trademark infringement and passing off are generally available in the form of injunctions, permanent injunctions, damages and/or rendition of accounts, Anton Piller orders, Mareva injunctions, John Doe orders, and Norwich Pharmacal orders.

Injunction

An injunction is a common civil remedy that provides for either halt and maintenance of the status quo over any ancillary facet of the dispute or any diffraction which mandates the other party to do something by the court. They are generally of two types: perpetual and temporary injunction. The perpetual injunction is granted depending on the suit concerned and when the same is supposed to be decreed and, therefore, is permanent. In the case of a temporary injunction, an interim order is passed for a specified time frame provided under Order 39 Rules 1 and 2 of the Code of Civil Procedure.

Damages

The aggrieved party can claim damages because the exclusive right to use the trademark he owns has been ceased, which subsequently led to him or his enterprise suffering losses. A civil remedy that is often claimed is handling the profit accounts along with a command for delivery or removal of the products that have been infringed.

Anton Piller Order

Section 135 of the Trade Marks Act, 1999, provides for the Anton Piller Order. Under this remedy, the court appoints a local commissioner to seal the goods and services of the defendant in the suit it considers infringing in nature.

Mareva injunction

Mareva Injunction as a civil remedy provides for the freezing of disputed assets of the defendant to prevent any further infringement of the plaintiff’s trademark. The principle of Mareva injunction is not alien to India’s legal system and is sometimes seen as an attachment before judgment under Order XXXVIII Rule 5 of the Code of Civil Procedure, 1908 (“CPC”). The injunction is based on the anticipation that there is a fair chance that the defendant may remove all its assets, which are the subject matter of the dispute, from the court’s jurisdiction and hence will make a successful judgment infructuous. Thus, a Mareva injunction freezes the defendant’s assets and prevents any such mischief on the part of the defendants.

John Doe Orders

Order 30 Rule 1 of the Code of Civil Procedure provides that if there is a reasonable apprehension that the trademark is likely to be infringed in the future by the registered trademark holder, the owner can approach the courts to pass a John Doe order. A John Doe order is a peculiar concept of civil law in which a court may pass an order against any anonymous party prohibiting the same from using the trademark in the future.

Norwich Pharmacal orders

The Norwich Pharmacal Order is granted against a third party to force them to disclose relevant information and documents if they have been innocently mixed up. By bringing such individuals to notice, the possibility of revealing the records and information required is increased, if not definite. When an applicant initiates legal proceedings against others believed to have been a part of wrongdoing detrimental to the Applicant, these documents help the Court decide its verdict.

Criminal remedies

Chapter XII provides offender penalties under Sections 103 to 109 of the Trademarks Act, 1999. One of the most pertinent concepts of the Indian trademark regime to note is that the legislation does not draw a distinction between civil and criminal penalties/remedies; both penalties are parallel.

Penalty for applying false trade marks, trade descriptions, etc

Section 103 states that if any person falsifies any trademark (provided under Section 139 of the Act) and tries to gain undue advantage from such falsification or intended identicality between trademarks shall be punished with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees. The proviso to the Section also postulates that if the court is satisfied that the offence is grave, it can impose imprisonment of a term that may extend to less than six months or with a fine of less than fifty thousand rupees.

Penalty for selling goods or providing services to which false trade marks is applied

Section 104 postulates that any person who sells and indulges in commercial profit about goods and services to which the false or identical trademark (u/S 139 of the Act) is applied shall be punished with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees. The proviso to the provision provides that the court, for adequate reasons, may impose an imprisonment term of less than six months and a fine of less than fifty thousand rupees.

Enhanced penalty on subsequent conviction

Section 105 of the Act provides that in case an offender who has been convicted u/s 103 and 104 of the Act commits the offences so committed for a second or subsequent time. The court will construe the same as a more grave offence and will impose a punishment of imprisonment for a period which shall be a minimum of one year but may extend up to three years. After providing special reasons in its impugned judgment, the Court may grant imprisonment for less than one year and a fine of less than one lakh rupee.

Penalty for removing piece goods

Section 106 of the Act postulates that any person who attempts to remove any piece or bundle of goods containing the false trademark will be punished with a fine of up to one thousand rupees.

Penalty for falsely representing a trademark as registered

Section 107 of the Act provides that any person who tries to represent a trademark to be registered falsely is punished with imprisonment, which may extend to three years with a fine or both.

Penalty for improperly describing a place of business as connected with the Trade Marks

Section 108 postulates that if any person uses his place of business or commercial office in a way that would in all possible manner lead to a common man believing that the said place is the trademark office, he shall be punished with imprisonment, which may extend to two years, or with fine or with both.

Penalty for falsification of entries in the register

Section 109 of the Act postulates that if any person makes or causes to be made any false entry in the official register of trademarks, then the offender is to be punished with imprisonment, which may extend to two years or with a fine or with both.

Limitations on the rights of the trademark owner

Effect of acquiescence

Section 33 states that if a registered trademark owner has accused or let other entities use the trademarks for about 5 years without any suit or complaint to that effect, the registered trademark owner is barred from exercising the right to ascertain his exclusivity.

He is also barred from initiating a suit for infringement and damages against unauthorized users. This provision provides for an imitation period and creates prescriptive rights for unauthorised users.

Vested rights

Section 34 postulates that the proprietor of a trademark shall not be barred from registering such trade marks which seem to be identical or similar to a trademark if the same has been in continuous use:

For a period more beyond the use of the mentioned trademarks so claimed to be infringed;
From a date before the registration of the mentioned trademarks; and
The Registrar shall not bar such a proprietor from registering the trademarks if the conditions mentioned earlier are fulfilled.

Use of name, address, and description of goods and services

Section 35 postulates that if a proprietor uses his name, address, or description of goods and services for commercial benefit and such mention and use is bonafide, then the proprietor of the registered trademarks shall not bar such bonafide owner from using the same.

Words used for the name or the description of an article or substance or service

Section 36 provides that no registered trademark owner shall be barred from using any word for the name or description of an article, substance, or service by any other market entity or business. It further provides that the same can be barred only when it is established that the word has become so associated with the articles and services that the same has with the use acquired distinctiveness or is a well-known mark.

Assignment and transmission of a trademark

Sections 37 to 45 of the Trade Marks Act, 1999, deal with the assignment and transmission of trademarks. They contain postulations regarding the assignment and transmission of trademark rights in India.

Power of registered proprietor to assign and give receipts

Section 37 states that the proprietor of the trademarks or the owner of trademarks has the right to assign the trademarks to any other person and authorise him or her to use the trademarks.

Assignability and transmissibility of registered trademarks

Section 38 sheds light on what kinds of ‘registered’ trademarks can be assigned and are transmissible. It postulates that any type of registered trademarks can be transferred (with or without the goodwill of the business entity) with the consent of the trademarks owner for all the set of goods and services for which the trademarks persist or for a limited segment of goods and services to the discretion of the trademarks owner.

Assignability and transmissibility of unregistered trademarks

Section 39 postulates that an unregistered trademark can be transmitted or assigned to any other business entity by the trademark owner with or without the business’s goodwill.

Restriction on assignment or transmission where multiple exclusive rights would be created

Section 40 acts as a bar against the transmission of trademarks and their authorisation if such transmission eventually creates multiple exclusive rights in relation to different persons or business entities.

Restriction on assignment or transmission when exclusive rights would be created in different parts of India

Section 41 acts as an appendage to Section 40. It can be well said that this provision is the species, and Section 40 is the genus. The provision bars such transmission, creating exclusive rights for multiple owners in different parts of India. For example, if a business entity X has the right in Karnataka, Y will get the right in Benga, and Z in Kerala. This kind of situation will lead to heavy monopolies in the market and confuse the minds of the consumers. Hence, the same is barred under the said provision.

Conditions for assignment otherwise than in connection with the goodwill of a business

Section 42 provides the conditions for the assignment of a trademark other than the goodwill of the trademark’s owner. It provides that when an assignment of a trademark is made otherwise than in connection with the goodwill of the business in which the mark has been or is used, the assignment shall not be considered to have taken place:

Unless and until the assignee allies to the registrar within six months from such assignment regarding advertisement of the same in the local daily and the gazettes;
Further, the provision states that the said period of six months can be extended for a further period of six months.

Assignability and transmissibility of certification trade marks

Section 43 provides that certification trade marks make can be assigned only with the following conditions:

Consent of the Registrar;
By an application in writing in the prescribed manner.

Assignability and transmissibility of associated trademarks

Section 44 clearly states that associated trademarks can be assigned only as a whole and not in part; thus, the provision acts as an exception to Section 38 of the Act.

Registration of assignments and transmissions

Section 45 provides that the assignee shall apply to the Registrar to register his title, and the Registrar shall register him as the proprietor of the trademarks subject to the other conditions, including whether the transmission was in all segments of goods and services or in art. The provision provides that the Registrar shall require the applicant to furnish substantial evidence to prove the claim of assignment and transmission. In case of any ongoing dispute between the validity of such transmission and assignment between the parties, the registrar shall refuse to register the same until and unless the dispute subsists.

Different types of forms under trademark law in India

Before the advent of the Trade Marks Rules 2017, there were around 74 forms in the Trade Marks Act, but after the advent of the Trade Marks Rules 2017, a massive overhaul of the entire system took place, streamlining the forms. The eight forms under the trademark law have been discussed herewith:

Form TM-A

Form TM-A form is generally meant for a comprehensive application of the registration process which takes into account individual as well as certification, collective trademarks and serious marks into account. Thus, the form is amicable for goods and products falling within more than one class and is a comprehensive application form. Individual registration of trademarks is provided under Section 18, collective marks under Section 63, certification marks under Section 71, and series marks under Section 15.

Form TM-O

The Form TM-O form is meant to provide notices regarding opposition to registering a trademark under Section 21 and the allied provisions.

Form TM-R

The Form TM-R is meant for trademark renewal by trademark owners. The form applies when the trademark owner allies for renewal of the trademarks under Section 25 and the allied provisions, including surcharge under Section 25 (3) and restoration under Section 25 (4).

Form TM-P

Form TM-P serves the purpose of assigning and transmitting trademarks. If the trademark owner or proprietor seeks to transfer the trademarks of his goods and products on a wider or narrower scale as outlined under Section 45 of the Trade Marks Act, 1999, the trademark owner has to file the same under Form TM-P.

Form TM-U

The Form TM-U form serves the purpose of cancellation of the registration of trademarks under Section 49 and Section 50 as well as in case of intervention in proceedings related to variation or cancellation of entries under Rule 95 (2) of Trade Marks Rules, 2017.

Form TM-C

The applicant uses Form TM-C to inquire about issuing a certificate under Rule 22 of the Trademarks Rules, 2017.

Form TM-M

Form TM-M serves three functions:

It is used when the applicant is inspecting for documents relating to the registration process;
It is used for amendments to the said applicant by the applicant; and
The applicant uses it to extend time.

Form TM-G

Agencies use Form TM-G to register themselves as trademark agencies.

Case laws relating to trademark law in India

Parle Products (P) Ltd. vs. J.P and Co. Mysore (1972)

Facts of the case

In the impugned case, the appellant is the manufacturer of the biscuit company and giant manufacturer Parle. It was selling its products with the registered trademarks on its wrapper “ Parle Glucose Biscuits”. The respondent was also selling its products with a deceptively similar trademark on its biscuits, which gave rise to an infringement suit by the appellant. The respondent used a wrapper for its biscuits with a picture of a girl with certain elements resembling the symbol of Parle products. The issue was taken before the District court, which ruled in favor of the respondent, which was later confirmed by the Madras High Court and thus was challenged in the Supreme Court of India.

Issues raised

Is the wrapper used by the respondent deceptively similar to the Appellant?
Is there an infringement of the appellant’s trademarks?

Judgement

The Apex Court held that in case of adjudication on whether there has been infringement based on deceptively similar trademarks, the court is not required to consider every bit of the trademarks with the registered one to find their similarity. The only test is the overall similarity of the trademarks. If the trademarks create reasonable confusion in the minds of the consumers, then the same constitutes infringement. The court reversed the verdict of the trial and the Madras High Court. It held that there is a reasonable similarity between the appellant’s and respondent’s trademarks and will constitute infringement.

Vishnudas Trading As Vishnudas vs. The Vazir Sultan Tobacco Co. Ltd. (1996)

Facts of the case

This case is also regarded as the Charminar Case. In this case, the respondent was engaged in a cigarette manufacturing business named Charminar. The appellant was involved in the company of Zarda and quiwam with the same name, Charminar, and applied for the mark’s registration before the registrar’s office. The respondent objected to such a registration application because the same is already registered and directly conflicts with his trademarks. The proceedings took place before the Registrar’s office and the Madras High Court, where the respondent’s contention was upheld, and hence, the same was challenged in the Hon’ble Supreme Court.

Issues raised

Whether the trademarks in direct conflict with the respondent’s mark?
Do the trademarks fall under a different business category and not within the non-registration scope?

Judgement of the case

After a strict perusal of the facts and circumstances of the case, the Apex Court held that it is clear that the respondent has no intention of expanding its business to any sector other than cigarettes. Hence, the Appellant should not be barred from registering its trademarks as he deals in a different class of goods, though falling within the same category.

Procter & Gamble Company vs. Joy Creators & Others (2011)

Facts of the case

In this case, the global consumer goods company, Procter & Gamble (P&G) owned the registered trademark “OLAY TOTAL EFFECTS”. The plaintiff owned the trademarks and had registered the same since 2007. In 2008, the plaintiff saw an advertisement in the name “JOY ULTRA LOOK TOTAL EFFECTS” concerning cosmetics by the defendants. The defendants claimed that they had been using the mark since 2001. Aggrieved by the same, the plaintiff initiated an infringement suit against the defendants on the ground that their mark is deceptively similar to that of the plaintiff’s and can create confusion in the minds of the consumers. The Plaintiff demanded the grant of a permanent injunction and damages from the defendant.

Issues raised

Is the mark “JOY ULTRA LOOK TOTAL EFFECTS” deceptively similar to the plaintiff’s “OLAY TOTAL EFFECTS”?
Did Joy Creators’ use of the mark confuse consumers and result in trademark infringement?

Judgement

The Delhi High Court ruled in favour of P&G, holding that ‘total effects’ is indeed an integral part of the plaintiff’s trademarks and can create confusion in the minds of the consumers. The Court held that the use of such a trade mark by the defendant constitutes infringement and thus granted a permanent injunction against the defendant.

Mondelez India Foods Pvt. Ltd. And Anr. vs Neeraj Food Products (2022)

Facts of the case

In the impugned case, Cadbury India Pvt. Ltd filed an infringement suit in the Delhi High Court against a defendant who was selling its products using a deceptively similar trade mark in the form of “James Bond.” The plaintiff claimed this was similar to their recognised trademark “GEMS BOND.”

Issues raised

Whether the “James Bond” mark used by the defendant is a deceptively similar trademark?
Whether the plaintiff entitled to a permanent and mandatory injunction?

Judgement of the case

The Delhi High Court, relying on the Parle Products case, held that using JAMES BOND as a mark can create confusion in the minds of the consumers and is a deceptively similar trademark. The Hon’ble Delhi High Court granted a permanent and mandatory injunction against the use of such a trademark by the defendant.

Conclusion

Intellectual Property means that its subject is the product of the mind or the intellect. It’s the product of a productive and creative mind. It can be traded, purchased, given, and reserved. In India, the law was introduced in a comprehensive manner for the first time by the Britons in the form of the Trade Marks Act, 1940. After independence, in the wake of new changes in the market, the old Act was replaced with the Trade Marks and Merchandise Act, 1959.

The Act comprehensively provided for registration and non-registration of marks and was way more comprehensive than its previous legislation. Then came the era of globalisation, and there was a complete overhaul of the market dynamics. There was a dire need for a complete overhaul of the law, and then came the Trade Marks Act, 1999, which is still in force in consonance with the TRIPS Agreement and other international conventions. It provided for a wide variety of marks, introduced the concept of well-known marks, placed service as a trademark mark, and provided a more structured and facilitative framework for the country’s trademark law.

The Act has undergone several modifications, with the addition of new rules. Indian trademark law seems to be ever-evolving and welcomes changes in market dynamics. In the coming years, India’s law is highly anticipated to welcome a more diverse range of marks to be registered as trademarks and make its law more inclusive.

Frequently Asked Questions (FAQs)

What is a trade dress?

Trade dress refers to the features of a product or its packaging that market entities use to build their customer base and differentiate their products from other products and companies. Trade dress is based on the packaging of the products and goods. This packaging is what is encashed and helps customers distinguish the products of one company or entity from the other.

How are trademarks designated?

Trademarks are designated mainly by three symbols, which are as follows:

™ (™ is used for denoting an unregistered trademark);
℠ (used for denoting an unregistered service mark).;
R (letter R is surrounded by a circle and used for denoting a registered trademark).

Is registration of trademarks compulsory?

Trademark registration is not compulsory, but it has its own benefits and creates material evidence in favour of the proprietor. In the case of registered trademarks, a suit of infringement and passing off can be instituted, whereas in the case of unregistered trademarks, in rare cases, a suit of passing off can only be instituted.

Which part of the Trade Marks Act, 1999, provides for the international registration of trademarks?

Sections 36A to 36G of the Act deal with the international registration of trademarks. The trademark law of India is not global in applicability. The law and its postulations apply only within India’s territorial limits.

The trademarks registered in India have applicability only in India and not abroad and hence cannot be enforceable in any of the courts abroad. The registration of international trademarks can, however, be affected by the postulations of the Madrid Protocol, which will enable such protection in about 110 countries. For example, India’s MICROMAX company and its trademarks are protected by the Madrid Protocol in around 110 countries. There are two methods by which an international trademark application can be filed:

Application in every jurisdiction abroad: This is a manual way of filing international applications and availing trademark protection. In this system, one entity has to file trademark applications multiple times depending on the number of jurisdictions and countries it wants its trademarks to be protected. To protect a trademark in any foreign country, an international application must be filed to the trademark office by following the rules and regulations of that country.
Application under the Madrid Protocol: The Madrid Protocol enables and facilitates the easy registration of trademarks internationally. When a trademark office of any nation receives an application under the said protocol, after a preliminary examination and finding it to conform with the Madrid Protocol and the enshrinements thereto, it transfers the same to the WIPO (World Intellectual Property Organization), which further transmits it to the situation overseas. Every software is thus examined, and an international trade mark is henceforth granted if the application passes the distinctiveness in all the jurisdictions.

Which case discusses the pivotal concept of deceptive similarity in trademarks?

The case of Starbucks vs. Sardarbuksh (2018) discusses the concept of ‘deceptive similarity in trademarks’ and trademark infringement on such grounds. In the impugned case, the coffee outlet giant Starbucks filed a suit against one Sardar Buksh, who was also a coffee outlet chain, for using a defectively similar trademark under Section 11 of the Act. The Delhi High Court held that the same constitutes a deceptively identical trademark and ordered the defendant to use a different name for its business.

Which Section of the Trade Marks Act,1999, deals with appeals to High Courts?

Section 91 of the Trade Marks Act, 1999 postulates that if an applicant is aggrieved by the decision of the trademark registrar, he or she has the right to file an appeal before the High Court.

Which Section provides for the powers of a registrar?

Section 127 of the Trade Marks Act, 1999, provides for the powers of a registrar. It postulates that a registrar will have all the powers of a civil court while adjudicating any dispute brought before the registrar’s office. It further provides that the orders and decrees of a registrar are executable in the same manner as those of the civil courts. The office will also have the power to review its decisions in case any application for review is filed before the office on any valid grounds.

References

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