IPR QUICK NOTES
Trade Mark- In Laximikant Patel v Chetan Bhat Shah, it was
held that the definition of a trademark is very wide and means a
"mark capable of being represented graphically and which is
capable of distinguishing the goods and services of one person
from those of others".
Trade Mark- Section 2(1) (zb) of the Act.
The Trademarks Act, 1999 defines: a mark capable of being
represented graphically and which is capable of distinguishing
the goods or services of one person from those of others.
1. Distinctive character is the core feature of trademark
without which a mark could not be a valid trademark and
the same could not be protected. Distinctive character
requirements under the trademarks law serves the purpose
of novelty in case of patent laws, originality in case of
copyright laws.
2. Trademarks are protected through registration.
Registration is not compulsory for using a trademark, but
if one intends to prohibit others from using his or her
trademark then registration is required. The process of
registration could be listed as follows:
I: Filing of the application
– Coding of the application
– Number allotment to the application.
II: Scrutiny and examination of the application
– Search for identical or similar trademark
– Evaluation of the claimed mark to assess whether it could
be registered
– Objections by the trademark office.
III: Refusal/withdrawal/abandonment/Acceptance of the
application
– Refusal of the application
• Absolute grounds for refusal
• Relative grounds for refusal
– Withdrawal of the application by the applicant
– Abandonment of the application if there no response or
follow-up from the
applicant after filing the application
– Acceptance of the application
IV: Publication and Objections
– Publication of the application in the journal of the registry
– Invitation for objections/opposition
• Institution of opposition proceedings
• Hearing and disposal of the proceedings
• Opposition is allowed/application is refused- (review can be
sought)
• Opposition is not allowed/application is accepted-(review
can be sought)
V: Registration of the mark
– Entry in the registrar of trademark
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– Issue of certificate of registration
– Aggrieved party may appeal to IPR Appellate Board
Section 18 of the Act talks about the persons eligible to file
application. The following persons are eligible to file application for
trademark:
a. User of the trademark
b. Owner of the trademark
c. Authorized agent
d. Assignee
e. Licensee
There are certain universally recongnised requirements of
trademarks which form the essential conditions of registration.
The international conventions such as Madrid convention on
trademarks, Paris Convention on trademarks and the TRIPS
agreement recognize these requirements. In India, the
Trademarks Act, 1999 also recognize these requirements for the
registration of trademarks.
There are certain universally recongnised requirements of
trademarks which form the essential conditions of registration.
The international conventions such as Madrid convention on
trademarks, Paris Convention on trademarks and the TRIPS
agreement recognize these requirements.
In India, the Trademarks Act, 1999 also recognize these
requirements for the registration of trademarks. The following
are the requirements that the claimed trademark shall fulfill in
order to be registered.
– Graphical representation
– Distinctiveness
– Indication of the source/origin
– Capable of being applied on goods or services.
The mark shall be capable of being represented graphically, it
should have the capacity to distinguish the goods and services
on which it is applied or proposed to be applied. Further, the
mark shall be capable of being applied on goods and services.
GROUND FOR REFUSAL OF REGISTRATION
Section 9 of the Act talks about the absolute grounds for refusal of
registration. There are few grounds which are considered to be
absolute grounds for refusal of registration. These grounds are
classified in two groups, one Absolute Ground and second; Relative
Ground as follows respectively:
(1) Marks devoid of distinctive character
(2) Marks indicating nature/characteristics of goods/services
(3) Marks common to trade
(4) Generic marks, customary marks used commonly in the trade
(5) Marks of such nature to deceive the public
(6) Marks likely to hurt religious sentiments
(7) Marks containing obscene or scandalous material
(8) Marks prohibited under the Names and Emblems Act.
Absolute grounds provide prima facie reason to reject the application
without any further evidence or proof. Relative grounds do not
provide prima facie reason for rejecting the application but provide
for those reasons which on proof could form a ground for rejecting
the application. Under section 11 a mark shall not be registered if:
– It is identical/similar to an existing trademark
– There is any likelihood of confusion on the part of the public
– There is any likelihood of wrongful association with the earlier
mark.
INFRINGEMENT
Section 29(1) of the Trademark Act talks about infringement with
reference to a registered trademark. Precisely, infringement means the
use of trademark by the one who is not permitted to such use.
In the case of Indian Performing Rights Society Ltd v Sanjay Dalia it
was held that; section 134(2) of the Trademarks Act, 1999 provides to
ensure that the proprietor of the Registered Trademark does not have
to face the inconvenience in suing the infringer at the place of their
residence/business and can sue at the place and residence of the
Trademark owner. It would mean that the courts located in the
business place or residence of the owner of the trademark would have
jurisdiction to entertain the infringement suits. Other way round it can
be said that the owner who is alleging the infringement of his or her
trademark will have to file suit against infringement at the court
located in his or her place of residence or business place. Infringement
is a matter of fact as well as a matter of law.
In DM Entertainment v Baby Gift House, it was taken a view that;
section 29 of the Trademarks Act, 1999 (hereinafter the Act) lays
down the aspects of infringement of trademark. It elucidates that a
when a person is using, in course of trade any mark, which is identical
or deceptively similar to a registered mark and which he is not
entitled or licensed to use shall be deemed to infringe onto the rights
of the person who has the lawful right over the mark.
In Durga Dutt Sharma v Narayan Pharmacy Laboratories
determination of infringement was discussed. It was held that the test
of infringement was to assess and identify if there is any similarity
between the registered mark and the alleged mark by following rules
of comparison. The rules of comparison postulate for:
• Comparing the marks visually, phonetically and conceptually
• Comparing the exact words, letters and numbers used in the mark
• Comparing the business and goods of the parties
It is to be noted that infringement is an action against violation of
rights on a registered trademark and passing off is an action against
violation of rights on an unregistered trademark.
DEFENCES
The defendant in the infringement proceedings can have certain
defences. The Trademarks Act under section 30 to 35 talk about the
defences that are available for the defendant in the infringement
proceedings.
a) Fair use of the mark
b) Generic mark
c) Prior use of the trademark
d) Concurrent registration of trademark
e) Use is with the consent of the owner of the trademark
f) The use is bona fide use of the defendants own name
g) Defendant is innocent and unaware of the registration by the
proprietor
Owner of trademark may lose the proprietorship over a trademark by
non-use. Continuous non-use for 5 years makes a registered
trademark owner to lose proprietorship, since trademark is protected
on the basis of use.
PASSING OFF
Passing the goods and services by falsely representing them as the
goods and services of some reputed business man or trader is known
as passing off.
Misrepresentation
It must have been made by a trader in course of trade
To the customer or to the prospective customer
Which has caused some confusion or deception in the minds of
the consumers
Resulting in some injury or loss to the goodwill or reputation of
the trader
Making the trader to suffer some damage to his business
