T TRADE RADE M MARK ARK L LAW AW IN IN I INDIA NDIA

S SUBMITTED UBMITTED T TO O: :
M MR R. A . AMRENDRA MRENDRA K KUMAR UMAR A AJIT JIT
(F (FACULTY ACULTY FOR FOR I INTELLECTUAL NTELLECTUAL P PROPERTY ROPERTY R RIGHTS IGHTS) )
S SUBMITTED UBMITTED BY BY: :
SHREYAS SHREYAS SHRIVASTAVA SHRIVASTAVA (R (ROLL OLL. N . NO O. 47) . 47)
6 6
TH TH
S SEMESTER EMESTER. .
S SUBMITTED UBMITTED ON ON: :
22
!
M"#$%& 2'('
H HIDAYATULLAH IDAYATULLAH N NATIONAL ATIONAL L LA) A) U UNIVERSITY NIVERSITY& & R RAIPUR AIPUR. .
A ACKNOWLEDGEMENT CKNOWLEDGEMENT
I feel highly elated to work on this dynamic and highly popular concept of writing a case
comment on Trade Mark Law in India which had played a pivotal role in the study of
Intellectual Property Law in India. As this topic drew my attention and attracted me to choose
this as a project topic and examine it.
o! I hope I have tried my level "est to "ring in new ideas and thoughts regarding the
"asics of this topic to lecturer. #ot to forget the deep sense of regard and gratitude to my
faculty adviser! Mr. Amrendra Kumar Ajit ! who has played the role of a protagonist! who
has always given me the courage and wisdom to march ahead with my topic and whose
presence have always given me the impression of a shady tree which is giving its shade to us
in the noon of life. Last "ut not the least$ I thank all the mem"ers of %.#.L.&. and all others
who have helped me! from the "ottom of my heart.

hreyas hrivastava
6
th
SEMESTER
*
S SCOPE COPE
'his article provides a critical reassessment the 'rade (ark law regime prevailing in India
especially after the coming into force of the 'rade (arks Act! )***.
R RESEARCH ESEARCH M METHODOLOG ETHODOLOG
'he researcher has followed the doctrinal method for research purposes. 'he research
is "ased on secondary and electronic sources. Literature review has "een done extensively in
order to make a comprehensive presentation. +lectronic media! i.e. the Internet also has "een
one of the main sources of research.
T TA!LE A!LE O" O" C CONTENTS ONTENTS
**
Li#t $% A&&re'iati$n# '
Intr$du(ti$n )
Trade Mark* C$n(e+ti$n and De%initi$n )
E'$,uti$n -
Indian Su&*($nte.t /
Trade Mark# A(t0 )111 2
Trade Mark C$m+ari#$n in India 3
E##entia,# 3
Remed4 5 Pr$te(ti$n 6nder Indian Law 7
C$n(,u#i$n 1
!i&,i$8ra+94 ):
***
L LIST IST O" O" A A!!RE;IATIONS !!RE;IATIONS
AI, All India ,eporter
-al -alcutta./olkata
-o. -ompany
edn. +dition
Id./Ibid Ibidem
Ltd. Limited
p.. pp. Page. Pages
para. Paragraph
,ep. ,eprint
upp upplement
vs./v. Versus
*+
Intr$du(ti$n
A trade mark is a sign that individualises the goods or services o a given enter!rise and
distinguishes them rom its com!etitors."
#
'o the common man the concept of trademark is a recent phenomenon. 0ut contrary to this
perception! they are of ancient origin. 'hey existed even as long as 1222 years ago when
Indian craftsmen used to engrave their signatures on their artistic creations "efore sending
them to Iran. Later on! over )22 different ,oman pottery marks were in use! including the
3ortis "rand that "ecame so famous that it was copied and counterfeited. 4ith the flourishing
trade in the middle5ages the use of trademarks increased. And now with the effect of
glo"alisation the awareness and importance of trademarks knows no "ounds. It is due to the
increased competitiveness of the companies operating in different countries of the world that
the trade marks has gained value more than any other form of intellectual property.
'he use of modern trade mark as a distinctive sign to indicate the origin or source of the
product! carrying with it an association of high 6uality! goes "ack to the eighteenth century
+ngland! as in the case of cutlery trade. 'he real "oost to trade mark came with &nilever. It
marketed its soap under the "rand unlight! emphasising not the product as such "ut the
"rightness that its use will "ring to the clothes cleaned with it. 'he similarity of the products
in the same market has necessitated the marking of goods "y a sym"ol! which could
distinguish one7s products from similar goods made "y others.
In the language of the law! "rand names are known as trademarks. everal products! of the
same category or of different categories! can "e marketed under one "rand name. In this!
study we will "e dealing with the "asic concept of trademark in India so as to move ahead
and have the grasp of the structure and function of the 'rademark law in India including its
evolution! and a comparison with other nations.
Trademark 5 C$n(e+t and De%initi$n
A trademark is any sign that individualises the goods of a given enterprise and distinguishes
them from goods of its competitors.
8
(arketing of a particular good or service "y the
(
4orld Intellectual Property 9rgani:ation.
8
I#',9;&-'I9# '9 I#'+LL+-'&AL P,9P+,'<5'%+9,< A#; P,A-'I-+! )**=! /luwer Law
International! p.)>?.
(
producer is much "etter off as "y trademark "ecause recognition "ecomes easier and 6uality
is assured. 'he owner of the mark can prevent the use of similar or identical signs "y
competitors if such marks can lead to confusion.
1
0y this way similar low 6uality su"stitutes
will "e prevented from replacing good 6uality ones.
'he 'rade (arks Act! )***! s. 8 @:"A defines trade mark as a mark capa"le of "eing
represented graphically and which is capa"le of distinguishing the goods or services of one
person from those of others and may include shape of goods! their packaging and colours.
Also! s. 8@mA defines mark as including a device! "rand! heading! la"el! ticket! name!
signature! word! letter! numeral! shape of goods! packaging or com"ination of colours or any
com"ination thereof$ 3or instance 3ord 5 named after %enry 3ord! is a name! then I0( B an
a""reviation! Apple for computers 5 is a word! etc. 'hey may also "e figurative elements like
that of the hell oil company.
A trademark is a word or sym"ol or com"ination thereof used "y manufacturer or vendor in
connection with a product or service.
?
'he distinctiveness is maintained as well as sales are
much smoother as people are a"le to identify with that particular commodity or service.
'he 'rade (ark Act! )*** defines well /nown 'rade mark as a mark in relation to any
goods and services which has "ecome so to the su"stantial segment which uses such goods or
receives such services that the use of such mark in relation to other goods or services would
"e likely to "e taken as indicating a connection in course of trade or rendering of services
"etween those goods or services and a person using the mark in relation to the first mentioned
goods or services.
C
'rademark is one of the areas of intellectual property and its purpose is to protect the mark of
the product or that of a service. %ence a trademark is defined as a mark capa"le of "eing
represented graphically and which is capa"le of distinguishing the goods and services of one
person from those of others and may include shape of goods! their packaging and
com"ination of colours !they include a device !"rand! heading !la"el ticket !name !signature!
1
Article )D! 'rade ,elated Aspects on Intellectual Property ,ights@',IPA.
?
+arnst Eraft! Isreal am agrey! and Isreal aguy! 399; P,9;&-' ;+F+L9P(+#'! )**)! pringer! p.
1D=
C
P./. Fasudeva! 49,L; ',A;+ 9,EA#IGA'I9#H I(PLI-A'I9# 39, I#;IA# +-9#9(<! 822C! p.
)D*
2
word !letter !numeral !shape of goods! packaging or com"ination of colours or any
com"ination thereof.
D
,egistration of trademark is not mandatory "ut in the present day
scenario there is increasing infringement and a lot of cases are challenged so it is advisa"le to
register 'rademarks. 'here is also a need for trademarks to "e glo"ally protected. 'his is said
"ecause most have regional or local name "rands and most constantly push these weak names
while struggling to get glo"al clearance.
A trademark can thus "e called a device that gives distinctiveness and a mode of
identification to a particular product or service. An increasing num"er of countries also allow
for the registration of less traditional forms of trademarks such as single colours! three
dimensional signs @shapes of product packagingA! audi"le signs @soundsA or olfactory signs
@smellA.
=
It is said that a trademark is a valua"le "usiness asset and a marketing tool which could help
in financing of the "usiness in a way. A "rand is always a trademark "ut a trademark is not
always a "rand.
>
'his is 6uoted "ecause there is often confusion "etween trademarks and
"rands! a "rand is simply a name! logo or sym"ol whereas a trademark is a distinctive sign or
indicator of some kind in a "usiness organisation! "ecause of these trademarks has a wider
connotation than "rands. A trademark may also function to sym"oli:e or guarantee the 6uality
of goods which "ear the trademark.
*
People are often induced to "uy a particular product due
to its distinctive trademark that denotes 6uality .'rademark sym"olises the value or goodwill
associated with the goods and which can "e assessed "y the extent to its perception in the
pu"lic mind with regards to its 6uality and specific source.
)2

'rademarks are generally placed in any manner on the goods! their containers! and displays
or on tags or la"els attached to the goods or service.
))
'he immense economic value a
successful trademark has is the primary reason for their protection under the law. 'rade mark
owners "y powerful advertising campaigns in colla"oration with licensees create a "rand
loyalty and esta"lish product differentiation.
6
httpH..www."usinessgyan.com.content.view.D81.882. article written "y anthosh Fikram ingh as on )Cth
#ov!8221!accessed on ?
th
(arch! 82)2.
7
Making a Mark$ An Introduction to Trademarks or Small and Medium%si&ed Enter!rises b' (I)*+ 822, edn.!
p. 1.
,
,onald %ildret! iegrun /ane! ',A;+(A,/ LA4! ?th edn.! 8228! p.8.
-
-arl 4 0attle! L+EAL 39,( 39, +F+,<9#+! Cth edn.! 822D! p. )?1.
('
Finod ople! (A#AEI#E I#'+LL+-'&AL P,9P+,'<! 822D! p. )2?.
((
-arl 4 0attle! L+EAL 39,( 39, +F+,<9#+! Cth edn.! 822D! p. )?C.
.
'his results in esta"lishing an envia"le goodwill and market power so as to nip competition
in the "ud and place a "arrier to the entry of new firms in that particular field of activity.
-inds
If a su"stantial segment of pu"lic associates a trade mark with a particular class of goods and
services! and if this trade mark is used for other goods or services! and the pu"lic is inclined
to associate the new goods.services with the earlier goods.services! then the mark is a well
known trade mark. If the proprietor of a trade mark is an association o !ersons! who do not
make a partnership within the meaning of the Indian Partnership Act! )*18! the trade mark is
called a ($,,e(ti'e mark. A special class of trade marks is termed as (erti%i(ati$n trade
mark#. 'hese trade marks do not indicate the origin of the goods! "ut are certified "y the
proprietor of the mark as conforming to certain characteristics! like 6uality! ingredients!
geographical origin etc. Agmark used for food items in India is a certification mark. A trade
mark is a sign used on! or in connection with the marketing of goods. aying that the sign is
used on the goods means that it may appear not only on the goods themselves "ut also on the
container or wrapper of the goods. aying that the sign is used in connection .ith the
marketing of the goods refers mainly to the appearance of the sign in advertisements @in
newspaper! on television! etc.A or in the windows of the shops in which the goods are sold.
4here a trade mark is used in connection with services! it may "e called #er'i(e mark! e.g.
service marks used "y hotels! restaurants! airlines! tourist agencies.
E'$,uti$n
3rom ancient times human "eings have "een under the process of creating and innovating
things! during pre5historic period man had made stone! jewellery! hunting materials! vessels
etc! when spirituality started to sprout up he made figurines of gods and goddesses.
9riginally! marks were placed on o"jects to identify ownership and to deter would "e
thieves.
)8
0y this way the ancient people tried to control low 6uality goods! and as the maker
of the product was identified automatically the infringers were punished.
'he more a trademark came to "e known the more it inspired confidence in the goods and
services to potential clients.
)1
4hen a mark was placed it meant that any other third party
)8
ruthi rinivasan! Evolution o Trademark /a. in India! httpH..www.altacit.com.pdf.evolutionoftrademark
lawsin Iindia.pdf! as accessed on 1
rd
(arch! 82)2.
(.
iegrun ;. /ane! ',A;+(A,/ LA4! A P,A-'I'I9#+, E&I;+! )*>*! upplement! pp. *5)2.
4
other than the manufacturer did not have any right over it! in a large way it helped deter
people with vested interest. In the middle ages two "asic kinds of marks could "e foundH5
o Mer(9ant# Mark
o Pr$du(ti$n Mark
'he (erchants (ark indicated ownership whereas the Production mark indicated the 9rigin.
Production marks were used "y guilds to guarantee 6uality and to control entry to particular
trade.
)?
People also started engraving their names in ships this was the first widely recognised
method of using trademarks! where in case of ship wreckage! identification would "e
possi"le. 'he other people who started using trademarks were people doing "usiness or in
guilds started asserting it as a mark on their goods. 'his made the manufacturer responsi"le
for the 6uality of the goods that are "eing produced and to retain their customers.
#owadays it is up to a seller to use or not use a mark. (odern marks do not aim at
identifying ownership as was the case with the proprietary marks of the (iddle Ages.
(odern marks are an asset for the producer whereas in earlier times the trade marks were a
lia"ility.
)C
(any of the laws like the aforesaid law of "read and "eer assi:es fought to "ring
a"out a mode of standardisation as well as protect the consumers so that they do not get
cheated with adulterated goods. A specific mode of measurement was fixed.
Indian Su&*($nte.t
4hile some form of proprietary protection for marks in India dates "ack several millennia!
India7s statutory 'rademarks Law dates "ack to )>D2.
)D
Prior to )*?2 there was no official
trademark Law in India. #umerous pro"lems arouse on infringement! law of passing off etc
and these were solved "y application of section C? of the specific relief act )>== and the
registration was o"viously adjucated "y o"taining a declaration as to the ownership of a
trademark under Indian ,egistration Act )*2>.
'o overcome the aforesaid difficulties the Indian 'rademarks Act was passed in )*?2! this
corresponded with the +nglish 'rademarks Act. After this there was an increasing need for
more protection of 'rademarks as there was a major growth in 'rade and -ommerce. 'he
replacement to this act was the 'rademark and (erchandise Act )*C>.'his Act was to
provide for registration and "etter protection of 'rademarks and for prevention of the use of
fraudulent marks on merchandise. 'his Law also ena"les the registration of trademarks so
that the proprietor of the trademark gets legal right to the exclusive use of the trademark.
)=
(4
Ashwani /.,. 0ansal! LA4 93 ',A;+(A,/ I# I#;IA! 822)! p. 8).
(/
&#-'A;! on trademark! p. 8.
(6
Paul Eoldstein! I#'+LL+-'&AL P,9P+,'< I# AIA! 822*! p. =1.
(7
P./. Jalan! I#;&',IAL +-'A, ,+39,( I# EL90ALIA'I9# +,A! 822?! p. 11.
/
'he o"jective of this act was easy registration and "etter protection of trademarks and to
prevent fraud.
'he reappellation of the 'rademarks and (erchandise Act gave rise to the 'rademark Act
)***$ this was done "y the Eovernment of India so that the Indian 'rademark Law is in
compliance with the ',IP o"ligation on the recommendation of the 4orld 'rade
9rganisation. 'he o"ject of the )*** Act is to confer the protection to the user of the.
Trade Mark A(t0 )111
*b0ects and Reasons
'he 'rade and (erchandise (arks Act! )*C> has served its purpose over the last two
decades. It was felt that a comprehensive review of the existing law is re6uired in order to
provide a "etter coverage in the light of developments in trading and commercial practices!
increasing glo"alisation! need to encourage investment flows and transfer of technology! need
for simplification and harmonisation of law and to give importance to judicial decisions.
)>
'o achieve all the a"ove discussed purposes the )*** Act came up with the following
o"jectives
)*
B
Providing for registration of trademark for services! in addition to goods.
Providing for omission of provisions for defensive registration of trademarks.
Amplification of factors to "e considered for defining a well5known trademark.
;oing away with the system of maintaining registration of trademarks with different
legal rights! rather providing with simplified procedures for registration with e6ual
rights.
Providing an Appellate 0oard for speedy disposal of appeals and rectification
applications which lie on a usual course! "efore %igh -ourts.
3inal authority relating to certification trademark in the hands of ,egistrar instead of
-entral Eovernment.
+xtension of application of convention to include inter5governmental organisations
and other countries.
9ther provisions relating to amendment in the previous Act! like change of
definitions! powers of courts! offences! renewal! etc.
'hus! with this o"jective and purpose the 'rade (arks Act! )*** has "een "rought into force
with effect from )C
th
eptem"er! 8221.
(,
0. L. 4adhera! LA4 ,+LA'I9# '9 I#'+LL+-'&AL P,9P+,'<! ?
th
edn.! 822*! p.)1).
(-
Ibid.
6
Trademark C$m+ari#$n in India
'rademark recognition in Indian context is a complex phenomenon! where there is no single
common language! large percentage of population is illiterate and a small fraction of people
know +nglish. In such situations application of +nglish 'rademark law is illogical and a near
impossi"ility. 'hus! in order to make 'rademark law applica"le in India law has to adapt
according to Indian scenario.
4hile examining such cases in India! it has to "e kept in mind that the purchaser of goods
may not have a"solutely any knowledge of +nglish or the language in which the trademark is
made. 'o such a person slight difference in the letters of the words might sound phonetically
same. 'hus! in cases of passing of the principle to "e adopted is that that whether there has
"een a misrepresentation made "y the defendant of such nature as to cause an ordinary
consumer to confuse one product for another due to similarity of maker and other
surrounding factors.
82
E##entia,#
In the light of afore5going discussion it is very clear that the kind of trademark to "e granted
in India is very tricky issue to deal with. 'here must "e some set standard whicha trademark
must meet in order to "e registered for its protection under the law. A few important essentials
of 'rademark areH
1istinctiveness
In Im!erial Tobacco v. Registrar+ Trade Marks
2#
the court discussed the meaning and scope of
the word Kdistinctiveness7 and held it to "e some 6uality in trademark which earmarked the
goods as distinct from other product or such goods.
It may "e class dependant and what is distinct for one class may not "e so for another. Also!
this distinctiveness means that the mark or the get up is distinct in itself from others and no
one can claim it. 'his is inherent distinctiveness while a distinctiveness ac6uired through use
may "e known as ac6uired distinctiveness.
88
*ther essentials
0esides distinctiveness there are other 6ualities upon which a trademark is "ased. A
trademark should prefera"le an invented word. It should not "e deceptive in nature and thus!
must not use the identity of another product to use its goodwill. It should "e easy! spelt
2'
0. L. 4adhera! LA4 ,+LA'I9# '9 I#'+LL+-'&AL P,9P+,'<! ?
th
edn.! 822*! p.)11.
2(
AI, )*== -al ?)1.
22
0. L. 4adhera! LA4 ,+LA'I9# '9 I#'+LL+-'&AL P,9P+,'<! ?
th
edn.! 822*! pp..)1C5D.
7
correctly! legi"le! short and appealing to eyes and ears. 0ut ultimately the most essential
re6uirement is that it must meet the re6uirements of registration.
81
Remed4 5 Pr$te(ti$n under Indian Law
'he law under which a trademark is registered is provided for protection of the trademark.
'hus! whenever there is an infringement of a trademark this law must provide for some
remedy to the person whose right has "een infringed over a registered trademark. 'he Indian
Law! that is! the 'rade (arks Act! )*** provides for three type of remediesH
3ivil Remedies
4hen instances of infringement or passing off occur! the court of competent jurisdiction
@court not lower than ;istrict -ourtA can "e moved for grant of interlocutory injunction!
damages and accounts of profits.
8?
3riminal )roceedings
&nder -hapter LII of the Act it is provided for the offences! penalties and other procedures
relating to infringement. A complaint may "e made against a person causing infringement.
0oth the actions! under the -ivil Law and criminal law proceedings can "e initiated
simultaneously.
Administrative Remedies
9pposing the registration of a deceptively similar trademark when the 'rademark registry is
in the process of considering the grant of a trademark can protect trademark.
8C
'he registry
can also "e moved for removal of a deceptively similar trademark when registered.
8D
C$n(,u#i$n
Intellectual Property reflects the idea that its su"ject matter is the product of the mind or the
intellect. As it7s the product of a creative and artistic mind it is "ound to changes. It can "e
sold! "ought! "e6ueathed and owned. As all this can "e done there are "ound to "e issues
related that have to "e dealt. 'rademarks and Patents are very important aspects of
Intellectual Property. 'rademark Protection has "ecome important in present day competitive
world "ecause! every producer of a good or service will want his mark to "e uni6ue! eye
catching as well as it should "e easily distinguisha"le from others. -reating a mark like this is
2.
-hapter II of the Act deals with conditions of registration while -hapter III deals with the procedure and
duration of registration.
24
ection )1? and )1C! 'rade (arks Act! )***.
2/
ection 8)! 'rade (arks Act! )***.
26
ection 8C! 'rade (arks Act! )***.
,
6uite difficult and after all this when infringing of the mark takes place it will case utmost
difficulty to the manufacturer.
4ith the ever expanding scope of Intellectual Property it is inevita"le that the scope of
'rademarks is going to increase. 3rom the very fact that the field of trademarks is going to
open up to new spheres like sound! shape and smell! the extent of development of law can "e
imagined. 'he law relating to domain names is already reaching heights and covering the
areas which no one had thought it would reach.
'hus in the light of the ever expanding scope of 'rade (ark Law in India I would like to
conclude with famous American historian and educator ;aniel J 0oorstein7s 6uoteH
4An image is sim!l' not a trademark+ a design+ a slogan or an easil' remembered !icture. It
is a studiousl' crated !ersonalit' !roile o an individual+ institution cor!oration+ !roduct or
service5.
! !I!LIOGRAPH I!LIOGRAPH
!$$k#
Ashwani /.,. 0ansal! LA4 93 ',A;+(A,/ I# I#;IA! 822).
0. L. 4adhera! LA4 ,+LA'I9# '9 I#'+LL+-'&AL P,9P+,'<! ?
th
edn.! 822*.
-arl 4 0attle! L+EAL 39,( 39, +F+,<9#+! Cth edn.! 822D.
+arnst Eraft! Isreal am agrey! and Isreal aguy! 399; P,9;&-'
;+F+L9P(+#'! )**)! pringer.
I#',9;&-'I9# '9 I#'+LL+-'&AL P,9P+,'<5'%+9,< A#; P,A-'I-+!
)**=! /luwer Law International.
P./. Fasudeva! 49,L; ',A;+ 9,EA#IGA'I9#H I(PLI-A'I9# 39,
I#;IA# +-9#9(<! 822C.
Paul Eoldstein! I#'+LL+-'&AL P,9P+,'< I# AIA! 822*.
P./. Jalan! I#;&',IAL +-'A, ,+39,( I# EL90ALIA'I9# +,A! 822?.
,onald %ildret! iegrun /ane! ',A;+(A,/ LA4! ?th edn.! 8228.
-
iegrun ;. /ane! ',A;+(A,/ LA4! A P,A-'I'I9#+, E&I;+! )*>*!
upplement! pp. *5)2.
Finod ople! (A#AEI#E I#'+LL+-'&AL P,9P+,'<! 822D.
Ta&,e $% Ca#e#
Im!erial Tobacco v. Registrar+ Trade Marks AI, )*== -al ?)1
Mi#(e,,ane$u# S$ur(e#
4orld Intellectual Property 9rgani:ation.
'rade ,elated Aspects on Intellectual Property ,ights@',IPA.
Making a Mark$ An Introduction to Trademarks or Small and Medium%si&ed
Enter!rises b' (I)*+ 822, edn.! p. 1.
&#-'A; on trademark! p. 8.
Internet S$ur(e#
httpH..www."usinessgyan.com.content.view.D81.882. article written "y
anthoshFikram ingh as on )Cth #ov!8221!accessed on ?
th
(arch! 82)2.
ruthi rinivasan! Evolution o Trademark /a. in India!
httpH..www.altacit.com.pdf.evolutionoftrademarklawsin Iindia.pdf ! as accessed on 1
rd
(arch! 82)2.
('