The law related to trademark was governed by the Trade and Merchandise Act, 1958, 1958 until the trademark’s act of 1999 came in force. Any infringement of the trademark, gave entitlement of legal remedies like an injunction, delivering up of injunction labels, etc. The marks registered had to be distinctive. If the mark remains unregistered, it would amount to the action of passing off. Passing off is used to enforce unregistered trademark rights. In general, the law of passing off prevents one person from misrepresenting his goods or services as that of another.
The Trademarks Act, 1999 came into force to simplify the law and meet the international obligations of India under the Trade-Related Aspects of Intellectual Property Rights (TRIPS).
What is a trademark?
Any word, phrase, symbol or design that helps to distinguish one from another. It is protected by Trademarks act, 1999 and also under common law remedy called passing off. The trademark act is used for the protection, registration, and prevention from fraudulent use of a trademark. Additionally, it deals with penalties for fraud, remedies for the same, etc. Trademark is an effective tool to identify the companies easily and is a valuable asset and in fact, the registration is not even necessary.
“Trademark is defined in the Trademark Act, 1999 as, “trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colours.”
Such a mark may include numerous things such as signatures, names, labels, headings, etc.”
Types of Trademarks
- Generic marks: Generic marks are the marks that cannot be qualified as a trademark. Generic marks cannot be considered as trademarks until they have more specific characterization and description of the mark. E.g. ‘The Ice Cream shop’ is a generic mark as it can stop the other ice cream shops to sell the ice creams.
- Descriptive marks: The descriptive marks are the marks that describe one or more characteristics and has a primary and secondary unique element. The primary element talks about the mark being unique and the secondary element talks about the length, volume, size and other characterizations of the mark. The descriptive mark evolves from what the brand represents to who the brand represents.
- Suggestive marks: Suggestive marks are the marks which suggest something about the product. These marks do not have a secondary meaning and they are just the creation of a person’s imagination. E.g. Jaguar, Ninja and Trip Advisor. These names suggest something about their company.
- Fanciful marks: Fanciful marks are the marks which are different and unique and they don’t compete with any other marks. They don’t affect any other company or mark or infringe the trademark of anyone and they don’t have a specific meaning. E.g. Kodak, Nokia, Adidas.
- Arbitrary marks: These are the marks that do not resemble their name and product. E.g. Apple, Blackberry, Orange company, Alphabet and Co.
- Service marks: It is the same as a Trademark, but different because it provides services rather than the product. E.g. McDonald’s, Domino’s, etc.
- Trade Dress: Trade dress is an identifying element that helps to identify the product. E.g. Bottle cap of Listerine.
Registration of a trademark
To register a trademark, a person has to adhere to section 18 of the act. The person has to apply in writing in the prescribed manner to register followed by the name of the mark, good and services, class of goods and services, required period and personal details of the applicant respectively.
Advantages of registration of a trademark
It protects the common goodwill of the company or services and helps to find the origin of goods and services. Moreover, prevents anyone else to use your mark.
The trademark shall be: –
- Distinctive in nature
- No sentiments of any community shall be hurt.
- No obscene materials to be used in the mark
- Not to be prohibited by the emblems act, 1950.
Procedure for registration of a trademark
The procedure is given in Section 21-26 of the Act where the application is written to any office of the Commerce and industry. The forms for the distinctiveness and inquiry to be filled along with the prescribed fees. Further, the registrar will book it in the Trademark Journal for the third-party objections. Once cleared, the trademark will be renewed every ten years. If after that, not renewed from 5 years and 3 months, it will be struck out of the trademark journal.
Classification of Trademarks
Section 7 of the Act requires the classification of the trademark according to the international classification of goods and services. There is a total of 45 classes under this classification. The international classification which is called ‘Nice classification’ under the nice agreement in 1957. There are 45 classes of nice classification under goods and services. The classification from 1 to 34 is for goods and 34 to 45 is for services.
Opposing a trademark registration
While opposing a trademark registration, any member can oppose the registration. When the trademark is added in the trademark journal, anyone can oppose the trademark within 3 months and an extension of one month can be given in special cases and the opposition has to be filled in the registrar’s office and not in the Intellectual property appellate board.
Grounds for refusal of Trademark (Absolute and Relative)
Section 9 and 11 of the Act talk about absolute and relative grounds respectively for refusal of registration of the trademark.
The Absolute grounds for refusal can be: –
- Marks that are devoid of any distinctive character;
- Marks which serve to designate the kind, quality, intended purpose, values, geographical origin or the time of production of goods;
- Marks which have become customary in the current language or the established practices of trade
Marks devoid of distinctive character: The marks which stand devoid of distinctive character are the ones standing for the refusal of registration for the trademark as they do not have any distinctive qualities as the other marks and cannot be differentiated.
Section 9(1) (a) talks about the inherent and acquired rights.
Section 11 talks about the relative grounds for the refusal for registration of Trademark:
- If it creates confusion in public.
- If it is identical to the other mark.
- If it is liable to be presented by passing off or the copyright law.
Passing off in Trademarks act, 1999
Section 27 of the act talks about the passing off in Trademarks act, 1999. It means that no action would be taken for the infringement of an unregistered trademark.
Although, this section recognizes the common law rights of the trademark owner to take action against any person or as provide by any other person thereof.
Infringement of Trademark
Section 29 of the Act deals with the infringement of the trademark. One would be liable for the infringement of a trademark: –
- When a person is deceptively using a trademark of another person.
- When a person has not registered his mark and therefore causing confusion in the minds of the General Public.
- When a person not being a registered proprietor and uses a registered trademark for the goods and services.
- When an unregistered proprietor uses it for the business advantage or any unfair advantage.
Difference between Infringement and passing off
| Infringement | Passing off |
|---|---|
| 1. Infringement is a statutory remedy. | 1. Passing off is a common law remedy. |
| 2. The proprietor claims the ownership of his own good. | 2. The owner has to establish that his goods are being used by someone else when the other party is not even holding the ownership of the goods. |
| 3. Registration of a trademark is required. | 3. Registration of a trademark is not a pre-requisite. |
“The distinction between passing off and infringement was examined by Judge Clauson in the case of Listen Ltd. V. Harley, wherein he opined that if you are restraining the infringement of a registered mark, you can restrain the man from using the mark; but, restrain him from selling the articles under the label containing that word without clearly distinguishing his goods from the goods of the Plaintiff is quite a different thing.”
(This article has been written and submitted by Mr. Prakhar Agnihotri during his course of internship at B&B Associates LLP. Mr. Agnihotri is a fourth year law-student at University of Petroleum & Energy Studies, Dehradun, Uttrakhand.)
