Unit 4

Trademarks
A Trademark is a type of intellectual property. It can be a word, device, name, symbol or any
combination which is acquired by any institution or company to show the difference between
their product and the products of other companies. It can also be known as the brand name.
Trademark can be owned by any business organization, individual or any legal entity.

History of Trademarks

Initially, Trademarks were governed by the common law which means trademarks were
registered under the Indian Registration Act, 1908 by signing a declaration for ownership. In
1940, The Trademark Act came into existence and it was the first law ever on Trademarks in
India which was amended by the Trade Marks Amendment Act, 1943. The trademark registry
was covered under the patent office which was later separated to the trademark registry office. It
was again amended by the Trade Marks Amendment Act, 1946. On 25th November 1959, the
Trademark Act, 1940 was replaced by the Trade and Merchandise Act, 1958. The Trade and
Merchandise Act, 1958 was revised by the latest Trademark Act of 1999. The main purpose of
this act was to improve trading and commercial practices and develop the globalization of trade
and industry. The Trademark Act, 1999 was governed by the Trademark Rules of 2002.

Types of Trademarks

Various types of trademarks are registered under the Trademarks Act, 1999:

Product Mark

A product mark is a type of trademark which is used on a business good rather than on service.
This trademark is mainly used to identify the origin of the product and helps in maintaining the
reputation of the business. For example, Nestle, Amul, etc.

Service Mark

A service mark is quite similar to the product mark but service marks are used to identify the
services of the entity rather than a product. These are used to identify the proprietors from the
owners of other services. For example, the trademark for network and broadcasting services as
they help the service provided. Applications that are filed under trademark class 35-45 represent
the service mark. For example, Apple, Google, etc.

Collective Mark
A collective mark is registered in the name of groups or organizations. These are used to inform
the public about the group during commercial activities. When a group of individuals protects a
service or goods collectively, this mark is used. Any association or any public institution or a
Section 8 Company can be a mark holder. A common example of a collective mark in India is
the Chartered Accountant designation. For example, Reliance Communications, Tata Sons, etc.

Certification Mark

This mark is a sign which shows the origin of the product, quality, material or any other specific
details of the product issued by the proprietor. The main use of this mark is to standard and
worth of the product. Certification marks are commonly seen on packed foods, toys, and
electronics. For Example, ISI, ISO, etc.

Difference between Property Mark and Trademark

Property mark as per the Indian Penal Code (Sec. 479)?

A mark used for denoting that movable property belongs to a particular person is called a property mark.
It means that marking any movable property or goods, or any case, package or receptacle containing
goods; or using any case, package or receptacle, with any mark thereon.

Practical example: The mark used by the Indian Railway on their goods may be termed as a Property
Mark for the purpose of easy identification of the owner.

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.

Documents required for Trademark Registration

Through the process of trademark registration, various documents are needed. They are:

1. Applicant details: Name, address, and nationality

2. Business type and its objectives
3. A copy of the brand/logo/slogan name
4. Identity and business proofs
5. Signed Form 48 by the applicant
6. Class of trademark must be filed under the application
7. In the case of a company or LLP, the incorporation certificate is needed
How to Register Trademarks

The registration process of a trademark in India is by ‘first come first serve’ basis. Therefore, it
is important for every person to apply for registration as soon as possible. Generally, a trademark
usually takes around 2-3 years to get registered unless it is not opposed by any third party.

Steps to register a trademark in India are:

 Trademark Search

The first step in the process of registration is the trademark search. The search is necessary to
check for similar trademarks on the intellectual property website. In case any similar trademark
is found, go through its description to check about the product or service it represents.

 Select a Trademark Agent in India

In India, only the proprietors are allowed to file a trademark application. If any proprietor is not
present, the right holder must file the application through an agent or attorney. Usually, the agent
takes care of all the responsibilities like searching, filing, preparing, and prosecution of the
trademark.

 Determination of the Eligibility and Availability of the Trademark

Initially, the agent starts the process by checking the eligibility for registration of the trademark
and a complete search to check for any similar trademark present in the office of the controller
general.

 Completing the Application Form and Filing

The right holder can give his power of attorney to the agent to complete the process and file an
application on his behalf. The form requires every bit of detail such as name, address of the
proprietor, a brief description of services and goods linked with the trademark, whether any
similar mark is present and a copy of the trademark.

 Review by the Trademark Office

After the completion of the form, the trademark office reviews the application to check for errors
and then gives the application number. If the trademark is approved, the application number
becomes the registration number.

 Preliminary Approval and Publication, show cause hearing or rejection of the

Application
The application further goes to the association for examining the application is barred from
registration on any grounds described under the Trademarks Act, 1999. Later, an examination
report is prepared by the association through which the registrar of the trademark association
decides the future of the application, whether accepted, rejected, or put up for ‘show cause’. In
the case of show cause, the application can be accepted, rejected and accepted with some
restrictions.

 Registration

The registration certificate can be issued within three months if not opposed by any third party.

Trademark Registration Process Flowchart

Conditions for Registering a Trademark in India

There are certain conditions or requirements to be fulfilled before filing a trademark application
in India. They are:

1. The name, nationality, and address of the applicant are necessary. If there is any sort
of partnership, details of every partner must be submitted with mentioning any minor,
if present.
2. Details of the goods and services linked with the registration must be submitted.
3. A soft copy of the trademark came for registration.
4. Translation of all the non-English words is required.
5. Date of the initial use of the trademark.
6. If the application submitted is to claim authority for an earlier-filed application, details
of that application are also required.

Who can apply for a Trademark?

1. Any person who shows the authority on the trademark can apply for the registration of
its mark for goods as well as services.
2. Any person whose business lies under the jurisdiction of India can apply for
registration of a trademark.
3. In case, the principal place of business is outside India, the lawyer associated with the
proprietor present in India can file an application in the trademark office.
4. In the case of a company, anyone can apply the application but it should be in the
company’s benefit.

Checklist for Trademark Registration

1. The selected trademark must be able to represent in the paper form or graphically.
2. The trademark must be different in every way, which means it must be able to
differentiate its goods and services from others.
3. It should be used to create a connection between the people and the goods or services
the person is offering. It means trademarks are used to promote the business.

Benefits of Trademarks

There are many benefits to registering a trademark.

1. Trademarks differentiate your goods and services to that of your competitors which
means that trademarks help consumers to identify you.
2. Trademarks help to increase the goodwill and brand awareness of the product or
services.
 3. Trademarks help in avoiding confusion in the market as a source of products and
services.
4. Trademarks help in creating the brand value in the market to give an upper hand
against the competitors.
5. Trademarks provide credit to the source of the goods or the service and it also
guarantees its quality.
6. It helps in the proper advertisement of the product.
7. Trademark provides legal protection as the person who registered the trademark
becomes the legal owner and he can take some legal against the person who uses your
registered trademark without your permission.
8. Trademark helps in establishing a unique identity of the company which means no
other company can use your trademark for similar goods or services.

Different Trademark Symbols

‘TM’ Symbol

This symbol denotes the brand name when your trademark is not registered and the
application status is pending. This shows his authority over the brand and the claim
depends on the result of trademark registration.
‘SM’ Symbol
It helps in identifying the source of the service rather than a product. Which means TM is
for product and SM is for a service.
‘R’ Symbol
This symbol denotes that the trademark is registered and shows that the Certificate of
Registration is issued by the Registrar.
Trademark Application Allotment
When the application is received by the Trademark Registrar, a trademark application
allotment is given by the registrar to the applicant. This number is given within one or
two working days. This number helps the applicant to track the status of the trademark
application. But mainly, the trademark application allotment number gives access to the
applicant to attach the TM or SM symbol to the logo.

Legal Remedies against Infringement and/or Passing off

Under the Trade Marks Act, both civil and criminal remedies are simultaneously available
against infringement and passing off.

Infringement of trademark is violation of the exclusive rights granted to the registered

proprietor of the trademark to use the same. A trademark is said to be infringed by a person,
who, not being a permitted user, uses an identical/ similar/ deceptively similar mark to the
registered trademark without the authorization of the registered proprietor of the trademark.
However, it is pertinent to note that the Indian trademark law protects the vested rights of a prior
user against a registered proprietor which is based on common law principles.
Passing off is a common law tort used to enforce unregistered trademark rights. Passing off
essentially occurs where the reputation in the trademark of party A is misappropriated by party
B, such that party B misrepresents as being the owner of the trademark or having some
affiliation/nexus with party A, thereby damaging the goodwill of party A. For an action of
passing off, registration of a trademark is irrelevant.

Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action

against violation of trademarks in India. In India, a combined civil action for infringement of
trademark and passing off can be initiated.

Significantly, infringement of a trademark is a cognizable offence and criminal proceedings can

be initiated against the infringers. Such enforcement mechanisms are expected to boost the
protection of marks in India and reduce infringement and contravention of trademarks.

Relief granted by Courts in Suits for Infringement and Passing off

The relief which a court may usually grant in a suit for infringement or passing off includes
permanent and interim injunction, damages or account of profits, delivery of the infringing goods
for destruction and cost of the legal proceedings.

The order of interim injunction may be passed ex parte or after notice. The Interim reliefs in the
suit may also include order for:

a. Appointment of a local commissioner, which is akin to an "Anton Pillar Order", for

search, seizure and preservation of infringing goods, account books and preparation of
inventory, etc.
b. Restraining the infringer from disposing of or dealing with the assets in a manner which
may adversely affect plaintiff's ability to recover damages, costs or other pecuniary
remedies which may be finally awarded to the plaintiff.

IN the case of Cadbury India Limited and Ors. V. Neeraj Food Products, the High Court of
Delhi explained the difference between passing off action and an action for trade mark
infringement as under:

 An action for trade mark infringement is a statutory remedy and on the other hand, an
action for passing off is a common law remedy.
 The use of the trade mark of the plaintiff, by the defendant, is also a prerequisite in the
case of an action for infringement while it is not a necessity of an action for passing off.
 In an action for infringement of the plaintiff's trade mark, it is immaterial that the outfit,
outer covering and other written marks on the goods originate from a different source
than that of a registered proprietor's trade mark. The liability of the defendant in such a
case may be absolute. However, in case of passing off of trade mark, the defendant may
escape liability if he can show that the material added by him is sufficient to distinguish
his goods from that of the plaintiff's goods.
  In an action for infringement, the Plaintiff on account of it being a registered trade mark
in dispute claims to have an exclusive right to use the mark concerning those goods.
However, a passing off by a person of his goods as those of another, in essence, is an
action of deceit.

In another case of S. Syed Mohideen v. P. SulochanaBai, the Apex Court of the country stated
that passing off right is a wider remedy than that of infringement. This is because the passing off
doctrine operates on the general principle that no person is entitled to represent his or her
business as the business of another person. The said action of deceit is maintainable for diverse
reasons other than that of registered rights which are allocated rights under the Act.

S. No. Infringement Passing off

1. Type of The statutory remedy under Section Common-Law remedy
remedy 29(1) of the Trade mark Act, 1999
2. Registration It is a pre-requisite It is not required
3. Proof Plaintiff is only required to show Apart from proving deceptive
deceptive similarity, as there is a similarity, the Plaintiff is also
presumption of confusion required to prove confusion in
public and the likelihood of
injury to the plaintiff's goodwill
4. Jurisdiction The registered proprietor or registered Section 20 of the Civil
user of the trade mark can institute the Procedure Code, 1908 would
suit where they actually and voluntarily apply
resides or carries his business or
personally work for gain

Offences and Penalties

In case of a criminal action for infringement or passing off, the offence is punishable with
imprisonment for a term which shall not be less than six months but which may extend to three
years and fine which shall not be less than INR 50,000 but may extend to INR 200,000.

Convention Applications

In order to fulfill the obligations of any treaty, convention or arrangement with a country or
countries that are members of inter-governmental organizations, which accord to Indian citizens
similar privileges as granted to their own citizens, the Central Government notifies such
countries to be Convention Countries. In case of an application for registration of a trademark
made in any of the Convention countries, a priority date can be claimed with regard to the
application in India, provided that the application is made within six months of the application
having been filed in the Convention country. The Government has notified and extended this
privilege of priority to the members who have ratified the Paris Convention on Protection of
Industrial Property.

Madrid Protocol

India Parliament has passed the Trade Marks (Amendment) Bill, 2009 for enacting special
provisions relating to protection of trademarks through international registration under the
Madrid Protocol. As per the Amendment Bill, from the date of the international registration of a
trademark where India has been designated or the date of the recording in the register of the
International Bureau about the extension of the protection resulting from an international
registration of a trademark to India, the protection of the trademark in India shall be the same as
if the trademark had been registered in India. The Amendment Bill is yet to be notified.

Classification of goods and services

For the purpose of classification of goods and services for registration of trademarks, India
follows the International Classification of Goods and Services (Nice Classification) published by
World Intellectual Property Organization (WIPO). For the purpose of classification of the
figurative elements of marks, India follows the Vienna Agreement.

Opposition proceedings

After advertisement of a trademark in the Trade Marks Journal, (which is available online at the
website of Office of Registrar of Trademarks) an opposition challenging the application for
registration can be filed by any person within a period of 3 months (which may be extended by a
period not exceeding 1 month).

Renewal of registration

The trademark is initially registered for a period of 10 years, which is calculated from the date of
filing of the application and in case of convention application, from the date of priority. The
registration is required to be renewed within 6 months before the date of expiry of the
registration, i.e., 10 years from the date of the application or subsequent renewals.

The failure in renewing the trademark within the stipulated period of time and a grace period of
maximum 1 year granted for restoration of the trademark, automatically leads to removal of the
trademark from the Register of Trademarks.

Rectification of Trademark

An aggrieved person may file an application before the Registrar of Trademarks or to the
Intellectual Property Appellate Board (IPAB) for cancellation or varying the registration of the
trademark on the ground of any contravention or failure to observe a condition entered on the
Register in relation thereto.
The application for rectification can also be filed for removal of an entry made in Register,
without sufficient cause or wrongly remaining on the Register and for correction of any error or
defect in any entry in the Register.

Assignment, Transmission and Licensing of Trademarks in India

"Assignment" means an assignment in writing by an act of the parties concerned. While in case
of licensing, the right in the trademark continues to vest with the proprietor, the assignment of
the trademark leads to a change in the ownership of the mark. A registered trademark is
assignable with or without the goodwill in respect of all or only some of the goods/services for
which the mark is registered. India is a member to TRIPS and Article 21 of the TRIPS dealing
with Licensing and Assignment mandates that "... the owner of a registered trademark shall have
the right to assign the trademark with or without the transfer of the business to which the
trademark belongs." Section 39 of the (Indian) Trade Marks Act, 1999 allows for the assignment
of an unregistered trademark with or without the goodwill of the business concerned.

Indian law contains embargo on the assignments of trademark, whether registered or

unregistered, whereby multiple exclusive rights would be created in more than one person which
would result in deception/confusion. However, the assignment with limitations imposed, such as
goods to be sold in different markets, i.e., within India or for exports are valid. The Registrar is
authorized to issue a certificate of validity of the proposed assignment on a statement of case by
the proprietor of a registered trademark who proposes to assign the mark. The said certificate as
to validity is conclusive unless vitiated by fraud.

Well-known trademark

The Trademarks Act, 1999, defines well-known trademark as, "a mark which has become so to
the substantial segment of the public which uses such goods or receives such services that the use
of such mark in relation to other goods or services would be likely to be taken as indicating a
connection in the course of trade or rendering of services between those goods or services and a
person using the mark in relation to the first mentioned goods or services."1

Unlike other trademarks whose goodwill and reputation is limited to a certain specified
geographical area and to a certain range of products, well-known trademarks have its goodwill
and reputation protected across the nation and across categories of goods and services. It is law
that restricts the Trade Mark Registry to allow and register any mark as a trademark which is
deceptively similar to any of the well-known trademark. For instance, Google has been
registered as a well-known trademark of Alphabet Inc., which thereby means only Alphabet Inc.
can register the term 'Google' for any category of goods and services. Even if the service is not
related to the Internet industry, no other company but Alphabet Inc. can register 'Google' as its
trademark.

In the case of Daimler Benz v. Hybo Hindustan [AIR 1994 Del 2369], the defendant had been
using the plaintiff's logo and the word 'Benz' for which the plaintiff sought injunction against
such use of his logo. The court while recognizing plaintiff's logo as a well-known trademark on
the ground of trans-border reputation and goodwill granted injunction against the impugned use
of logo by the defendant.

In another case of Rolex Sa v. Alex Jewellery Pvt. Ltd. &Ors. [2009 (41) PTC 284 (Del.)], the
defendants were using the trade name "Rolex" of the plaintiff while dealing in artificial jewellery
for which the plaintiff brought an action against the defendant in order to prevent him from using
his trade name further. The court held that the plaintiff's business dealt with watches, and the
section of public using watches recognizes the trade name Rolex, for which it is a well-known
trademark. The same segment of people if finds artificial jewelleries with the same trade name
might assume the artificial jewellery to be from plaintiff's business. For the same reasons, the
court considering Rolex to be a well-known trademark granted injunction against the acts of
defendants.

Provisions related to well-known trademarks

1. Rule 124 of Trade Mark Rules 2017

This rule permits the trademark owners to file a request for grant of "well-known" trademark to
the Registrar in form TM-M. Before the coming up of this rule, a mark was declared well-known
only after proceedings, rectification and opposition held before the Hon'ble courts. With the
advent of this rule and the procedure laid thereof, a trademark owner can request for a well-
known trademark without getting into any proceedings or rectifications. Rule 124 ensures a
trademark to be granted the tag of "well-known" merely by an application of request to the
Registry.

2. Trademarks Act, 1999

i. 11 (2) Protection of well-known marks across all classes

The provision of this section extends the ambit of protection provided to the well-known
trademarks. According to this clause, well-known trademarks are to be recognised and protected
across all the classes of goods and services. Relevant portion of the section has been reproduced
herein:

"A trade mark which—

(a) is identical with or similar to an earlier trade mark; and

(b) is to be registered for goods or services which are not similar to those for which the earlier
trade mark is registered in the name of a different proprietor, shall not be registered, if or to the
extent, the earlier trade mark is a well-known trade mark in India and the use of the later mark
without due cause would take unfair advantage of or be detrimental to the distinctive character
or repute of the earlier trade mark."

ii. 11 (6) Factors taken into consideration while determining the trademark as well-known
A Joint Resolution Concerning Provisions on the Protection of Well-Known Marks was adopted
by WIPO in the year 1999 in order to protect the well-known marks from misuse and
infringement, wherein various factors to determine a well-known trademark was enlisted. India
being a member of World Trade Organization adopted these factors and enshrined it in clause 6
of Section 11 of the Trademarks Act. These determining factors includes

a. Knowledge about the mark in relevant sections of the public;

b. the duration, extent and geographical area in which the trademark is used;
c. the duration, extent and geographical area in which the trademark is promoted with
respect to the goods and services to which it applies;
d. registration or application for registration of the trademark to the extent they reflect the
use or recognition of the trade mark;
e. the record of successful enforcement of the rights in that trade mark including the record
stating that the trademark has been recognized as well known by any court or Registrar.

iii. 11 (9) – Conditions not required for well-known trademark registration

The section specifically mentions certain conditions which need not be required for the purpose
of granting of well-known trademark. These conditions are-

a. That the TM has been used in India;

b. That the TM has been registered;
c. That the application for registration of the trade mark has been filed in India;
d. That the trade mark is well known in or registered in any other jurisdiction other than
India;
e. That the trademark is well-known to the public at large in India.

It can thus be stated that for a trademark to be granted protection in India, it is not necessary that
the mark owner has his business in India or its trademark is registered within India, nor is it
required that the trademark is known to the masses as a whole. Thus, the particular provision
provide for the concept of trans-border reputation of trademark.

iv. 11 (10) –Obligation on the Registrar

It is an obligation on the registrar that in case of a dispute and/or infringement the registrar must
protect the interest of the well-known trademark against the identical ones and also must take
into consideration and notice the ill intention and malafide motive of the complainant or the
opponent.

Filing of a well-known trademark

With the incorporation of the new Trademark Rules 2017, a trademark owner can directly file an
application for a well-known trademark to the Registrar. The said application of request should
be accompanied with a statement of case, relevant documents, evidence and a fee of Rs.
1,00,000/- which has already been prescribed. It is also mandatory that the application is to be
filed online through comprehensive e-filing services of trademark. Once the application is
received, the application shall be considered in accordance to the documents submitted.

Documents needed to be submitted while filing application

 Statement of case – mentioning the claimant's right on the trademark and describing the
claim of trademark to be a well-known trademark.
 Details of successful enforcement of rights in case the trademark has been recognised as
well-known by the court in India or TM Registrar.
 Copy of judgment of any court or the Registrar wherein the trademark has been
recognised as well-known.
 Evidences showing the claimant's right and justifying his claim. Such evidences shall
include data/documents showing-

o Use of trademark, or any application filed for registration of trademark, or
registration obtained.
o Annual sale turnover of the business of the claimant.
o Actual or potential number of customers under the said trademark.
o Publicity and advertisement of the said trademark along with the expenses
incurred thereof.
o Knowledge or recognition of the trademark in relevant section of public across the
globe.

All the documents along with the evidence is needed to be submitted in a PDF format with
resolution of 200 X 100 dpi on A4 size paper and the total size of the documents not exceeding
10 MB.

Remedies available for the trademark owner on misuse or infringement of well-known trademark

1. Prevent registration of similar and deceptive similar trademark in respect to all class of
goods and services.
2. Request removal of infringing mark.
3. Prevent incorporation of the trademark in the name or logo of any organization or
corporate name.
4. Punitive damages- Judiciary has opined in several cases that punitive damages shall
prevent the infringers from using and causing dilution of well-known trademarks. In case
of Time Incorporated v. Lokesh Srivastava [2005 (30) PTC 3 (Del.)], the court held that
in IP cases the court shall grant both punitive and compensatory damages. In the instant
case, the court granted Rs. 5 lakh as punitive damage and Rs. 5 lakh as compensatory
damage to the plaintiff for the reason of infringement.

Remedies for trademark infringement

Whenever, a registered trademark is infringed, in order to protect it, the following remedies are
available:

1. Civil remedies;
2. Criminal remedies;

3. Administrative remedies;

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