What is a Trade Mark ?
A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. The term “trademark” is often used to refer to both trademarks and service marks. Unlike patents and copyrights, trademarks do not expire after a set term of years. Instead, a trademark can last forever, so long as the owner continues to use the mark in commerce to indicate the source of goods and services.
Why we use Trade mark ?
A trademark is used for goods, while a service mark is used for services. A trademark: Identifies the source of your goods or services. Provides legal protection for your brand.
What Cannot be Registered As A Trademark ?
Section 9, simply put, disallows the following trademarks from being registered trademark :
Trademarks that do not have a distinctive character. This simply means that the trademarks that cannot distinguish the goods or services of one person from that of another cannot be registered. The whole purpose of trademark law is to enable distinction between brands. No mark that takes away from this purpose can be registered.
Trademarks that describe the good or service and give the consumer an idea about the quality, quantity or geographic origin of the particular good or service. Descriptive trademarks cannot be registered.
Marks that have become customary in the current language. For example, a consumer associates a restaurant with a chef.
Apart from this marks that are deceptive, hurt religious sentiments, are obscene or describe the shape of the good cannot be registered.
Section 11, disallows the following from being registered trademark:
Trademarks that may cause ‘likelihood of confusion’. This simply means that identical marks on similar goods and similar marks on identical/similar goods. A consumer views the trademark in its entirety. The test is to see if the consumer can distinguish between similar trademarks.
Well-known: Trademarks that people are familiar with cannot be registered even if the goods are not similar as this would affect the reputation of the person who owns the well-known trademark.
Put in a nutshell, trademarks that are not distinctive, that are descriptive or that give rise to a likelihood of confusion in the minds of the consumers.trademark is of extreme importance in the economy. For the consumer, a trademark reflects the source and quality of the goods or services.
Flow Chart from filing stage of application till Certificate stage
LANDMARK JUDGEMENTS IN TRADEMARKS LAW
1. Yahoo!, Inc. v Akash Arora & Anr [1999 (19) PTC 201 (Del)]
In what is known till date as a Landmark judgment in cybersquatting, the Delhi High Court held that a domain name served the same function as a trademark and was therefore entitled to equal protection. As the domain names of the plaintiff ‘Yahoo!’ and defendant ‘Yahoo India!’, were nearly identical and phonetically similar, there was every possibility that internet users would be confused and deceived into believing that the domain names had a common source or a connection.
The court further observed that the disclaimer used by the defendants was not sufficient because the nature of the Internet is such that use of a similar domain name cannot be rectified by a disclaimer, and that it did not matter that ‘yahoo’ is a dictionary word. The name had acquired uniqueness and distinctiveness and was associated with the plaintiff.
The Bombay High Court, in Rediff Communication v. Cyberbooth & Anr 2000 PTC 209 also observed that the value and importance of a domain name is like a corporate asset of a company.
The plaintiffs sought remedy of permanent injunction for obstructing the defendants from using the technology or invention prescribed in the patents of the plaintiffs; and for obstructing them from marketing, selling offering for sale or exporting 2/3 wheelers (including the proposed 125cc TVS FLAME motorcycle) that consisted of the disputed internal combustion engine or product that infringed the patent. Damages for infringement of the patent were also claimed by the Plaintiffs.
The Supreme Court of India by this landmark judgement directed all the courts in India for speedy trial and disposal of intellectual property related cases. In this two-year-old dispute involving two companies, which had been locked in a patent dispute over the use of a twin-spark plug engine technology, the Supreme Court observed that suits relating to the matters of patents, trademarks and copyrights are pending for years and years and litigation is mainly fought between the parties about the temporary injunction. The Supreme Court directed that hearing in the intellectual property matters should proceed on day to day basis and the final judgment should be given normally within four months from the date of the filing of the suit. The Supreme Court further directed to all the courts and tribunals in the country to punctually and faithfully carry out the aforesaid orders.
2. DM entertainment v Baby Gift House and ors. [MANU/DE/2043/2010] :-
Daler Mehndi, the most famous pop star hailing from Punjab has created a niche audience and is immensely popular amongst Punjabi-pop music lovers. The appellant company was incorporated in 1996 to manage the artist’s escalating career. The crux of the case is that the defendants had prolific businesses in selling miniature toys of Daler Mehndi and majorly cashed on to his popularity. Majorly aggrieved, the plaintiff company filed for permanent injunction from infringing the artist’s right of publicity and false endorsement leading to passing off.
The plaintiff company had been assigned all the rights, titles and interests in the personality of the artist along with the Trademark, Daler Mehndi. It was contended by the plaintiff that the unauthorized or unlicensed use of or any part of the reputation of the artist, with respect to goods or services of any manner will lead to make an impression on the public that the goods or services are associated with the singer. And hence, it was submitted that such a use would lead to passing off. It was further averred by the plaintiff that such use was done for commercial exploitation without adequate permission from the person or any other authorized by him, shall constitute infringement of the person’s right to publicity.
Section 29 of the Trademark 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.
The Act does not give a specific description of passing off as a result it has been derived through judicial precedents drawn from common law. Put simply , passing off would occur when the mark is not only being used deceptively similar to the mark of another but it is being used to create confusion in the minds of the consumer that results in the damage or loss of business for the person or company who/which is the lawful owner of the trademark.
Character merchandising is an area of law which is unexplored in India. The first case that dealt with this was Star India Private Limited v Leo Burnett India (Pvt.) Ltd. The courts in India in these earlier cases, had not dealt with publicity rights. In this case the Court did so quite emphatically. The court meted out a compensatory amount to the tune of Rs. 1,00,000 to the Plaintiff. The intent of the judiciary is clear.
3. Milmet Oftho Industries & Ors v. Allergan Inc.[Civil Appeal No. 5791 of 1998]
First to enter the world Market/Protecting Trademark Law in India on Established Foreign Brands/Healthcare and medicine
In this landmark case, the Supreme Court extended the protection guaranteed under trademark law in India to a well-known foreign brand. The court restrained an Indian company from using the mark OCUFLOX. The court judgment was given irrespective of the fact that the U.S. company has neither used the mark in the Indian market, nor the mark was registered in India. The court held that the respondent in this case was the first to enter the market and adopt the mark. Also, the fact that the respondent has not used the mark in India is insignificant, if they were the first to enter the world market.
It was also laid down that in the fields of health care and medicine, all possibilities of deception and confusion should be prevented; keeping in mind that public interest is not jeopardized.
4. Milmet Oftho Industries & Ors v. Allergan Inc.[Civil Appeal No. 5791 of 1998]
The Maaza War
The Delhi High Court held that if the threat of infringement exists, then this court would certainly have jurisdiction to entertain the suit.
It was also held that the exporting of goods from a country is to be considered as sale within the country from where the goods are exported and the same amounts to infringement of trade mark.
In the present matter, the defendant, Bisleri by a master agreement, had sold and assigned the trade mark MAAZA including formulation rights, know-how, intellectual property rights, goodwill etc for India only with respect to a mango fruit drink known as MAAZA to Coca-Cola.
In 2008, the defendant filed an application for registration of the trade mark MAAZA in Turkey started exporting fruit drink under the trade mark MAAZA. The defendant sent a legal notice repudiating the agreement between the plaintiff and the defendant, leading to the present case. The plaintiff, the Coca Cola Company also claimed permanent injunction and damages for infringement of trade mark and passing off.
It was held by the court that the intention to use the trade mark besides direct or indirect use of the trade mark was sufficient to give jurisdiction to the court to decide on the issue. The court finally granted an interim injunction against the defendant (Bisleri) from using the trade mark MAAZA in India as well as for export market, which was held to be infringement of trade mark.
5. Milmet Oftho Industries & Ors v. Allergan Inc.[Civil Appeal No. 5791 of 1998]
Deceptive similarity in a passing-off action.
In this case the Supreme Court held that It is immaterial whether the plaintiff and defendant trade in the same field or in the same or similar products. It identified the following criteria in order to decide an action of passing off on the basis of unregistered trademark :
- The nature of the marks (i.e. whether they are word, label or composite marks);
- The degree of resemblance between the marks;
- The nature of the goods for which they are used as trademarks;
- Similarities in the nature, character and performance of goods of rival traders;
- The class of purchasers who are likely to buy goods bearing the marks;
- The method of purchasing the goods or placing orders; and
- Other circumstances that may be relevant.