Chapter 4 Trademarks

Definition : A trademark can be defined as a mark which can be represented graphically and that mark is capable of distinguishing goods and services of a person/company with their competetors.

To be able to register a trademark it should be distinctive and should be capable of representng graphically.


Different types of Trademarks:

Logo: Logo is a pictorial representation of objects such as animals, birds etc…

Letter: Mark which contains letter of english alphabets or alphabets of some other languages. Ex: I.B.M. L.G.

Numerals: Marks which can be numerals, can be registered upon evidence of user. Ex 555

Symbol: It provides visual identity to a manufacturer. Ex BMW, audi rings.

Brand: It implies to symbol which contitutes the trademark. Ex Cycle brand

Label: Its a composite mark on the good’s label. Ex Coco cola label on its bottle.

Name: A name can also be registered as trade mark. Ex: Nokia.

Color: A trademark can be granted over a color or combination of color.

Sound: musical sequence can be trademarks.

Smell: This is debatable. But smell is being granted to Sumitomo tyres as trademark.


Different form of Trademarks:

  • Collective marks
  • Certification marks

Collective marks:

Collective mark distinguishes the goods or services of members of association which owns the marks from others. Members of association are authorized users of the mark. Use of mark by members are cosidered as use by the proprietor. Collective mark cannot be registered if it is likely to deceive public or it may confuse public. Association which registered a trademark can file a suit for infringement. A coolective mark is being removed from register if that mark is used to mislead public or its proprietor has failed to observe or secure the observence of regulations governing the use of the mark.


Certification marks:

These marks certify the goods with respect to origin, meterial, mode of manufacture, quality, accuracy, or some other characteristics which goods possess. They distinguish goods so certified from the other goods which do not possess them. It helps the consumer to identify the product. Some examples are ISI, AGMARK, Woolmark. Certification marks are different from other trademarks because they distinguish a good from the other producer/trader. Several provisions of Trademark act 1999 do not apply to these marks. A certification mark cannot be distinctive for registration.


Well known marks:

Some company’s mark are well known to most of the people such that they can easily distinguish their goods and services, quality of their product easily. Such marks are called as well known or famous marks. Example: Sony, LG, Lenovo, TATA and so on.


Good Charecteristics of a Mark:

  • The mark should be distinctive.
  • If mark is a word then it should be short and easy to spell, pronounce and remember.
  • If the mark is a word then it should be invented word.
  • Mark should not decieve public.
  • Mark should not hurt one’s religion, caste, race.

Registrability of a Trademark

Trademark consisting of atleast one of the characteristics can be registered:

  • The name of a company, individual or firm represented in a particular or special manner.
  • Signature of the applicant.
  • One or more invented words.
  • One or more word having no direct reference to the nature of goods.
  • Any other distinctive marks.
  • Trademark which is distinct, unregistered and used by a person or a company.

Non-Registrable Trademarks

If a mark consisting any one characters mentioned below then it cannot be registered.

  • A mark which is identical or deceptively similar to a mark which is already registered.
  • A mark which may contrary to law.
  • A mark consisting of scandalous or obsene matter.
  • Mark which is likely to hurt one’s religion, caste, race.
  • A word which is declared by WHO (World Health Organization) and notified as International non-proprietory name, or a word which is similar to such name.
  • If mark is result of the nature of goods. ex apple shape is used for a company which packages and sells apples.
  • A word of a single chemical element or a chemical compound.
  • Geographical name, surname, or personel name.

Precedure for Registration of a Mark:

Any person who claims to be a proprietor of a mark can apply to the Registrar of
Trademarks
for registration. The application may be made in the name of an individual,
partners of a firm, a Corporation, any Government Department, a trust or joint applicants
claiming to be the proprietor. For registration the nature of goods or services in relation to which the trademark is to be used has to be specified.

Steps for registration are as follows:

  • Application: Application in the prescribed form has to be filed in the office of the Trademark Registry within whose territorial limits. A single application is sufficient for registration of a trademark for different classes of goods and services. Application is accepted, rejected, subjected to amendments.
  • Advertisement: Soon after the acceptance it is advertised in Trademarks journal. It provides opportunity to public to oppose registration of that mark. Any person within three months of advertisement or within such period not exceeding one month may give notice in writing to Registrar of opposition to registration. If the person who is not residing in India or he is not caarying his business in India then Registrar may require him to give security deposits.
  • Time Period: The registration of a trademark is for a period of ten years, but it may be renewed on the payment of the prescribed renewal fees.

Deceptively Similar marks:

  • The nature of the marks.
  • The degree of resemblance.
  • The nature of goods in which they are likely to be used as trademarks.
  • The similarity in nature, character and nature of goods in which it is used.
  • The nature of the potential class of consumers.
  • The visual and phonetic similarity.

Rights of Trademark Owner:

  • Exclusive right to use the trademark on the goods and services for ehich the mark is being registered.
  • The proprietor of the mark can obtain relief for infringement.
  • Others cannot register the same mark or similar mark.
  • Propreitor can allow others to use mark with an agreement or permission.
  • Import of goods which possess mark can be restricted by proprietor.
  • Registration gives the right to transfer of marks.

Infringement

Infringement is violation of rights of the mark owner, It can be unauthorized use of that mark, possessing similar marks, importing goods which has similar or the same mark on it. The proprietor of the mark may commence legal proceedings against the person who is infringing theat mark.

Passing off:

This occurs in case of unregistered brand names, here the owner of the mark is using the mark from a long period of time. He has the right over his brand by owning it for continuous use though the brand is being unregistered, infringement action cannot be initiated. But passing off action can be brought by the original owner of the mark against the another who is infringing the mark.

Juridiction:

Under the section 134 of Trademarks act, 1999 suit for infringement can be instituted before district/high court within local limits of whose juridiction by the proprietor of the mark.

Remedies:

In case of infingement/passing off trademark, criminal complaint can also be filed. Courts can grant injuction and direct custom authorities to withhold infinging meterial/ its shipment/ its disposal. Legal preposition can be enforced with/without involving the authorities as a party in the suit.

The relief a court may usually grant in infringement or pasing off includes permanent and interim injuction, damages or account of profit, destruction of infringing goods .


Further Reading