Dissertation

EVOLUTION OF TRADE MARK IN INDIA
WITH SPECIAL REFERENCE TO SMELL

MARK: AN ANALYSIS
A
A DISSERTATION
Submitted in partial fulfillment of the requirement
FOR THE AWARD OF THE DEGREE OF
MASTERS OF LAWS
In
DEPARTMENT OF LEGAL STUDIES
(2016-18)
Prof. (Dr.) Preeti Saxena Dr. Vikas Kumar Upadhyay

(Supervisor) (Co-Supervisor),
Head, Incharge
Department of Human Rights Department of Legal Studies
School for Legal Studies Centre for Voc. and Intg Studies
BBAU, Lucknow BBAU, Satellite Campus, Amethi
SUBMITTED BY:
HABIB UR REHMAN
ROLL NO. ASC16008
ENROLLMENT NO- AC151/16
DEPARTMENT OF LEGAL STUDIES
CENTRE FOR VOCATIONAL AND INTEGRATED STUDIES
SATELLITE CAMPUS
BABASAHEB BHIMRAO AMBEDKAR UNIVERSITY
(A CENTRAL UNIVERSITY)
TIKARMAFI, AMETHI- 227413
DECLARATION
I Habib Ur Rehman, hereby declare that research work embodied in this LL.M.
dissertation titled “Evolution of Trade Mark in India with Special Reference to Smell
Mark: An Analysis” has been carried out by me under the supervision of Prof. (Dr.) Priti
Saxena, Head Department of Human Rights, School for Legal Studies Babasaheb Bhimrao
Ambedkar University, (A Central University) Lucknow and Dr. Vikas Kumar Upadhyay
(Incharge Department of Legal Studies Centre for Voc. and Intg. Studies, BBAU, Satellite
Campus, Amethi). This Research work is an original work and it has not been previously
submitted in part or full any other degree in this University or any other University.
Date:
Place:
HABIB UR REHMAN
LL.M. 4th Semester
Enrollment No AC151/16
Roll No. ASC16008
Department of Legal Studies,
Centre for Voc. & Intg Studies,
BBAU Satellite Campus, Amethi.
URKUND
Urkund Analysis Result

Analysed Document: ssecond draft of rehman p.docx (D38558596)
Submitted: 5/11/2018 2:06:00 PM
Submitted By: gbl.bbau@gmail.com
Significance: 3%
Sources included in the report:
Bhatnagar Sir (2).docx (D29604665)

GIs Dessertation by - Shakti Singh.docx (D38295250)
https://helda.helsinki.fi/handle/10138/191361
http://www.dhirassociates.com/images/Trade-marks-in-the-Pharma-Sector-A-Ready-
Reckoner.pdf
http://ijlt.in/wp-content/uploads/2015/09/Trademark-Rules-2002.compressed.pdf
http://ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf
https://vdocuments.site/documents/paper-5-trade-marks-act-1999.html
http://www.myipo.gov.my/wp-content/uploads/2016/09/Trade-Marks-Act-1976-Act-175.pdf
http://www.jipo.gov.jm/sites/default/files/PDF_Files/TrademarkAct.pdf
http://www.indianscholar.co.in/downloads/105-pooja-malhotra.pdf
http://manuals.ipaustralia.gov.au/trademarks/Part_20.pdf
Instances where selected sources appear:
18
SATELLITE CAMPUS
BABASAHEB BHIMRAO AMBEDKAR
UNIVERSITY
(A Central University)
Tikarmafi, Amethi – 227413
Letter No…………
Date………………
CERTIFICATE
This is to certify that this dissertation “Evolution of Trade Mark in India with
Special Reference to Smell Mark: An Analysis” submitted by Habib Ur Rehman, Roll
No. ASC16008, Enrolment No.AC151/16 as a part of the partial fulfillment of the
requirement for the Degree of Master of Law in Department of Legal Studies is forwarded
for evaluation.
Prof. (Dr.) Preeti Saxena Dr. Vikash Kumar Upadhyay

Supervisor Co- Supervisor
Department of Human Rights Department of Legal Studies
School for Legal Studies Centre for Voc. and Intg. Studies
BBAU, Lucknow BBAU Satellite Campus, Amethi
Acknowledgment
Any accomplishment required the arduous efforts of many people and same is true
about my dissertation also. This dissertation has been the fruition of over four months hard
research work. It is a result of collective efforts. Although this dissertation has been solely
prepared by me with the purpose of fulfilling the requirements of the course of LL.M., there
are in numerous helping hands behind it, who had guided me on my way.
First and foremost I express my deep sense of gratitude to almighty who is guiding
me in this world with precious knowledge and direction. Without his blessing this work
could not have been completed. I feel proud to acknowledge the able guidance of my sincere
gratitude goes to my guide and supervisor, Prof. (Dr.) Priti Saxena, Head Department of
Human Rights, School for Legal Studies Babasaheb Bhimrao Ambedkar University, (A
Central University) Lucknow. Whom I am deeply indebted to, for not only because she had
guided me while understanding the topic but also provide me encouragement and
convenience. I also would like to thank the LL.M. program developer, who creating such
an opportunity for the students to broaden their frame of skill. I am gratified with their
efforts.
I am also extremely thankful and deeply indebted to my co- supervisor and teacher
Dr. Vikas Kumar Upadhyay (Incharge Department of Legal Studies Centre for Voc. and
Intg. Studies, BBAU, Satellite Campus, Amethi) whose keen interest and constant support
during research work helped me to the completion of this dissertation. Throughout the
process, he offered his valuable advised, patiententl guided and supervised me in the right
direction.
I would like to extend my sincere and heartfelt gratitude to Mr. Ahmar Afaq (Asst.
Professor Symbiosis Law School, Hyderabad), who helped me in not only choosing the
topic but also to limit myself to the relevant subject matter, explained me various complex
legal issues related to my topic and helped in all possible manner in getting over different
types difficulties.
It would never have been possible to complete this study without an untiring
support, care and love at each step of my life from my elder brother Dr. Ateeq Ur Rehman
(Asst. Professor, Ethiopian Civil Service University, Addis Ababa, South Africa).
Acknowledgement
This research work bears testimony to the active encouragement, kind behavior and
technical support of my friend and well-wisher Ms. Sneha Tiwari, who have come up with
ideas every time when I needed.
I express my deep sense of gratitude towards all staff of central Library of BBAU
Satellite campus, Amethi, for their generous and support through their best possible scope,
which certain helped to increase the comprehensiveness and quality of my dissertation. I
am greatly indebted to the various writers, jurists and all others from whose writing and
work I have taken help to complete this dissertation.
Above all, I would like to thanks my parents Mr. Ayoob Ali and Mrs. Shabiran
Begum who have always been by my side and have supported me and unconditional love
at every walk of my life.
Date:
Place:
Habib Ur Rehman
LL.M (2nd Year)
Roll No. ASC16008
Enrollment No- AC151/16
Preface
Creation, enjoyment and accumulation of property has been a central activity of

human life. Out of four objects of human life, i.e. Artha, Kama, Dharma and Moksha the
first object is i.e. money. It is a fundamental requirement of sustaining material life. The
topic of my dissertation is Evolution of Trade Mark in India with Special Reference to
Smell Mark: An Analysis. Therefore, in forthcoming pages the development law of trade
mark and smell mark will be discussed in a comprehensive manner.
Human beings are superior from other living creatures because they possess
intellect. Creative genius of human being creates intellectual property; which in turn, when
properly exploited, can earn wealth. Since it is essentially a creation of mind, therefore, it
is called intellectual property: inventions, industrial designs, literary and artistic work,
symbols used to promote commerce are some commonly known forms of intellectual
property.
The law relating to intellectual property is based on certain basic concepts. Thus
patent law centre round the concepts of novelty and inventive steps. Design law is based on
originality, which not previously published in any other country as well as in India. Trade
Marks law is based on the concept of originally and reproduction of the work in any material
form.
Since, at present time intellect is an integral part of one's personality and one's in
intellect plays an important role in deciding what sort of labour his body be engaged into
as well as what work his hand take up, it may be safely assumed that one's intellect is one's
property in the same way as is one's property in the same way as is one's person or one's
bodily labour or work of one's hands i.e. one's skill. With this logic, one's intellect is
exclusively his own, so is his intellectual labour and intellectual skill. Moving a little
further, if these things, namely intellect, intellectual labour and intellectual skill are one's
property or characteristic, then anything which comes out of an of an application of any or
all of these three is equally one's own. Therefore, naturally, a person should have a right to
own these products of his intellect, which has been termed as one's Intellectual Property
Right.
The list of trademarks is still growing as businesses look for new ways to protect
features that make their products stand out in the marketplace. In past years, manufacturers
have tried more and more to develop and use new forms of trademarks that appeal to the
3
senses of the consumer, like sound and smell marks. These marks have potentially been
available in India, but whether they are worth the legal work necessary remains
unanswered. Although sound marks seem to have gained recognition recently, the situation
of smell marks remains controversial.
Date:
Place:
Habib Ur Rehman
LL.M (2nd Year)
Roll No. ASC16008
Enrollment No- AC151/16
i
Abbreviation
AIR All India Reporter
BC Before Crist
CJI Chief Justice of India
Co Company
CTM Community Trade Mark
ECJ European Court of Justice
EC European Community
Ed. Edition
Etc. Excreta
e.g. For Example
EU European Union
Govt. Government
i.e. That is
In re In Reference
IPC Indian Penal Code
Ibid Ibidem (Latin Word- In the same place)
Id Idem (Latin Word- the same person)
Ltd. Limited
Ors Others
OHIM Office for Harmonization in the Internal
Market
pg Page
pvt Private
SC Supreme Court
i
Abbreviation
SCC Supreme Court Cases
Sec. Section
TRIPS Agreement Trade Related Aspect of Intellectual
Property
USPTO The United States Patent and Trade Mark
Office
USA United States America
UK United Kingdom
viz namely
v. Versus
w.e.f With effect from
WWW World Wide Web
WIPO World Intellectual Property Organization
WTO World Trade Organization
ii
LIST OF CASES
1. American Home Product v. Mac Laboratories Private Limited (Dristan case), 1985.......54
2. Blanchard v. Hill, 1742......................................................................................................45
3. Card Service International Inc v. McGee, 1997................................................................26
4. Colgate Palmolive v. K.V.Swaminathan, 1991.................................................................19
5. Cruttwell v. Lye, 1810......................................................................................................45
6. Enfield India Ltd v. Deepak Engineering Syndicate, 2005..............................................26
7. Hall v. Barrows, 1863........................................................................................................46
8. Hamilton v. Davis, 1771....................................................................................................36
9. Knott v. Morgan, 1836.......................................................................................................45
10. Laxmikant V. Patel v. Chetanbhat Shah, 2011..................................................................14
11. Millington v. Fox, 1838.....................................................................................................34
12. Perry v. Trufitt, 1842.........................................................................................................46
13. P. P. Jewellers Pvt. Lltd. v. P.P. Buidwell Pvt. Ltd., 2009................................................64
14. Ralf Sieckmann v. Deutsches Patent-und Markenamt, 2002.............................................74
15. Ramdev Food Products Pvt Ltd v. Arvind Bhai RamBhai Patel & Ors, 2006.................47
16. Rediff Communication Ltd v. Cyber Bootth, 1999......................................................16,27
17. Rediff Com India Ltd v. E-Eighteen Com ltd (2013…………………………………….16
18. Re N.V. Organon, 2006....................................................................................................29
19. The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks, 1997.............64
20. W.N. Sharpe Ld. v. Solomon Bros Ld., 1915....................................................................65
iii
TABLE OF CONTENT
Declaration
Certificate
Acknowledgement
Preface
Table of Abbreviation i – ii
List of Cases iii
Chapter I
1. Introduction
1.1 General…………………………………………………………………….…1
1.2 Statement of the Problem…………………………………………………….4
1.3 Objective of Study……………………………………………………………5
1.4 Hypothesis……………………………………………………………………5
1.5 Review of Literature………………………………………………………….6
1.6 Research Methodology……………………………………………………….8
1.7 Significance of Research………………………………………......................8
1.8 Design of Chapter…………….………………………………………………9
Chapter II
2. Trade Mark: Fundamental Concept
2.1 Meaning and Definition of Trade Mark…………………….……………..…11
2.1.1 Analysis of Definition of Trade Mark……………………………………...11
2.1.2 Changes in Definition Brought by Trade Mark Act 1999 Act……………..13
2.2 Jurisprudential Approach…………………………………………………….14
2.3 Trade Mark: A Constitutional Right……………………...………………….19
2.4 Mark………………………….………………………………………………20
2.4.1 Different Kinds of Marks…………………………..………………………20
2.5 Modern Marks………………..………………………………………………27
2.5.1 Smell Marks………………………………………………..…….…………27
2.5.2 Sound Marks…………………….……………………………….…………28
2.5.3 Taste marks……………………………………………….…….….…….…29
2.5.4 Moving Images, Holograms and Gestures…………………..………………29
2.6 Requisites of Trade Mark……………………………………………………..30
2.6.1 Capable Of Being Represented Graphically………………………...………30
2.6.2 Distinctiveness……………………………………………………...………30
2.7 Conclusion…………………………………………………………...………31
Chapter III
3. Origin and Development of Trade Mark:
International Prospective
3.1 Origin of Trade Mark………………………….……………..………………33
3.1.1 Ancient use of trademarks…………………….……..…………..…………35
3.1.2 Medieval use of trademarks…………………….………………..…………36
3.1.2.1 Proprietary Marks…………………………………………….…..………36
3.1.2.2 Production Marks…………………………………………...……………36
3.1.3 The Rise of the Age of the Consumer……………...………………………37
3.2 International Conventions of Trade Mark………….……………….………..38
3.2.1 The Paris Convention…………………………..………………..…………38
3.2.1.1 The Substantive Provisions of Paris Convention…………………...……39
3.2.1.1.1 National Treatment……………………………………………..………39
3.2.1.1.2 Priority Right…………………………………………………...………40
3.2.1.1.3 Temporary Protection…………………………..………………………40
3.2.1.1.4 Mutual independence of trademarks in the different Countries of the
Union………………………………………………………………………..……40
3.2.2 The Madrid Agreement and Protocol………………………………………40
3.2.2.1 Protection under the Agreement……………………………….…………41
3.2.3 The TRIPs Agreement………………………..………………….…………43
3.2.3.1 Provision of Trade mark under TRIPS Agreement………………………44
3.2.3.1.1 Protectable Subject Matter (Article 15)………………………...………44
3.2.3.1.2 Rights Conferred (Article 16)…………………………………..………44
3.2.3.1.3 Exceptions (Article 17) & Term of Protection (Article 18)……………44
3.2.3.1.4 Requirement of Use (Article 19)…………………………………….…44
3.2.3.1.5 Other Requirements (Article 20)………………………….……………45
3.2.3.1.6 Licensing and Assignment (Article 21)…………………...….……...…45
3.3 Judicial Opinion of Equity and Trade Mark …………..…………..…………45
3.4 Conclusion………….………………….………………………….….………46
Chapter IV
4. Development of Trade Mark Law in India
4.1 Origin of Trade Mark in India……………….……………………..……...…47
4.2 Development in Different Era………………………………..……….…..….49
4.2.1 Clamour for Trade Mark law (1877-1940)………………….…….…..……50
4.2.2 Protection of Trademarks Prior to Trade Marks Act, 1940……………....….51
4.2.2.1 Civil remedy: the passing off action……………………………......…..…51
4.2.2.2 Criminal Remedies……………………………………………..…………52
4.3 Development of the Trade Marks Act, 1940 to the Act of
1958……………………………………………………………………….…..….52
4.3.1 The Trade Marks Act, 1999……………………..……………..……..….…54
4.3.1.1 Object and Reason of 1999 Act……………………………………..…….54
4.3.1.2 Salient Features of Trade Mark Act, 1999 …………………………..……56
4.4 Impact of Lack of Trade Mark Legislation……………………………..…….58
4.5 Conclusion………………………………………………………....................60
Chapter V
5. Registration of smell as Trade Mark
5.1 Smell as Modern Trade Mark……………………………………..…...…..…62
5.2 Conditions of Registration of Smell Trade Mark………………………...…..62
5.2.1 Distinctiveness…………………………………………………………..….64
5.2.1.1 Acquired Distinctiveness…………………………………………………65
5.2.1.2 Inherent Distinctiveness………………………………………………….66
5.3 Evidence of Distinctive Character………………………….…………..…....68
5.4 Graphical Representation…………………………………………….…....…68
5.5 Difficulties in Protecting Smell Trade Mark…………………………………70
5.5.1 Difficulties in Establishing Infringment……………………………………72
5.6 Judicial Opinion Smell as a Trade Mark………………………………….….74
5.6.1 Case: Ralf Sieckmann v Deutsches Patent-und Markenamt………….……74
5.7 Limitation on Smell Trade Mark…………………..…………………………75
5.8 Conclusion……………………………………………..…………….…….…77
Chapter VI
6. Conclusion & Suggestions
Bibliography………………………………………...………………88
Chapter I
INTRODUCTION
1.1 General:
Trademark is important right for the protection of intellectual property. Trade

mark is what is bought by a customer a product can be copied by a competitor and can
become outdated by the introduction of new products, but a trade mark is unique. A
successful trade mark is timeless and the most important source of markets, power and
enables its owner to diversify in products and geographical markets. No firm would
ever stay ahead without possessing IPRs and one who underestimates the trade marks
would have missed the opportunity.
The concept of trade mark is eventually a business concept but is intertwined

with legal things. The exclusion of all there except the using it or a similar trade mark
or with his permission is the fundamental tenet of a trade mark. This sort of monopoly
is possible with the help of law alone. While explaining business things in respect of
trademarks, it is natural to fined mention of legalities involved. An attempt is made to
understand the business concept in the beginning and then concept of trade mark is
explained with the help of its legal definition and the setting and circumstances in which
the law of trademarks is administered. The requirements for being a trade mark
emerging from the definition are noted little later in the chapter.
Trade Marks: New Products and New Markets:
All enterprises market either brands (trade marks) or products. What make an
enterprise succeed are not products but brands. Yet very often when planning new
ventures, the entrepreneurs or the business policy makers talk only about the product;
brands are hardly mentioned. The difference between products and brands is
fundamental. So the entire market approach has been linked with brands or trademarks.
The conventional marketing approach of dividing new ventures, in to newness

of product or newness of market has been displaced by the growth strategies aiming at
exploitation of the market from existing, brands or new brands irrespective of the new
[1]
Chapter I : Introduction
product or the new market. The territory of another country is always new market. A
product normally includes several accepts or elements:
i. Physical structure (or chemical composition)

ii. Get-up;
iii. Color;
iv. Distribution;
v. Guarantee;
vi. After-sales service even beyond an obligation of guarantee;
vii. Trade Mark;
viii. Firm image {at the moment of sale and afterwards};
ix. Price of the product,
x. Distribution, and after sales service;
xi. Publicity;
xii. Opinion of others (family, friends, colleagues, competitors).
1. Roughly speaking, element-

i. Concerns physical aspects,
ii. Concern both physical and psychological aspects and
2. Elements (iv) to (xii) concern only the psychological aspects-
3. Out of the twelve elements, five are directly related to the Trade Market and
five others are associated with the Trade Marks, except for the product itself
and the price.
Trade Marks allow manufacturers to market their products in a way that allows
consumers to clearly identify the organization that produces them. Such identification
assists consumers in ascertaining the quality of the goods or services marketed under
the same name are assumed to emanate from the same manufacturer and display a
uniform quality.
Such identification assists consumers in ascertaining the quality of the goods,

as goods marketed under the same name are assumed to emanate from the same
manufacturer and display a uniform quality. According to Trade Mark theory, this
identification process provides manufacturers with incentives to produce high-quality
goods and provide good customer service in order to build brand image and goodwill.
[2]
Goodwill: The goodwill is a friendly attitude and patronage of the customers for a
Trade Mark. It is the disposition of the customers to purchase goods or services from a
constant source. The customers normally do not try a new product if a known one is
available and this behavior pattern constitutes brand loyalty towards a product. The
brand loyalty or goodwill may we formed by combinations of any one or more of the
elements stated above. Above twelve elements are adjuncts of surroundings of the
Trade Mark and marketing techniques rather than the product.
Reputed marks: Reputed international trade marks(s) far outweigh the domestic trade
marks in presenting an optimal marketing mix of the above elements. The trade mark
owner attempts to partition the market, creating an area in which he has a strong position
vis-à-vis his competitors. The most successful way of capturing or entrenching a market
position is to individualize the image of the Trade Mark in the eyes of the buying public.
1.2 Statement of Problem:
Our ancestors who believed in ‘Smell Test’ which is a customary methods to

check the quality of perishable goods. There are various problem behind the protection
of this mark under the statutory provision. In this dissertation I have discussed all these
problems under the light of bare provisions as;
1. To make the truly distinguish of smell mark The Trade Mark and Merchandise
Marks Act, 1958 provided that a trade mark which was not a distinctive mark
was not registrable in part of the register. The expression “distinctive” was
defined to mean, ‘adapted to distinguish goods with which the proprietor of the
trade mark is of may be connected in the course of trade from goods in the case
of which no such connection subsists either gradually or, where the trade mark
is proposed to be registered subject to limitations, in relation to use within the
extent of the registration’. However, a trade mark could we registered in part b
even if it was not ‘distinctive’ but was ‘capable of distinguishing’ the goods of
its proprietor from the goods of others. One of the pre requisite to getting the
trade mark on goods or services. This provision is provided under Section 09,
following categories of the goods or services which are devoid of any distinctive
character, that is to say, not capable of distinguishing the of one persons from
those of another person.
[3]
2. Graphical representation of mark is essential for registration and under this

study researcher has tried to find out that a smell mark can be possible to present
graphically or translating it into graphic form. There are a number of different
techniques that applicants may use to represent their marks graphically. These
include words and image such (as lines drawings and photograph) with the vast
majority of marks, the process of graphic representation is straight forward;
'word marks' are written and device or 'figurative marks' are represented by
pictures. However, difficulties arise because, as we will see, since the Trade
Mark Act, 1994 liberalized the definition of marks; it is now possible to register
various 'exotic' marks, such as sounds, shapes, colours, smells, gestures etc. In
these cases graphical representation can be more problematic. The particular
mode of description that is used will vary according to the type of mark in
question.
3. A trademark owner has right either to use himself or assign others the use of his
trade mark. Unauthorized use of trademark which may be identical or
deceptively similar to the original trademark would amount who infringement.
In case of registered trademark, the registered proprietor or register user may
take action against infringement. But in case of trademark which is not
registering the common law remedies of passing of action is maintainable. In
order to decide whether there has been an infringement of a trademark or not,
the likely impact of infringing of trademark on purchaser is viewed. If the
totality of impression of trade mark is likely to cause confusion or deception in
the mind of purchaser, it amounts to infringement. Tangible charges of
confusion by a substantial proof are the main test to find out whether the
infringement mark is deceptively similar to the infringed mark.
4. A likelihood of confusion is prove by the plaintiff a problem of the study where

Indian Evidence Act provide that burden of prove lies on the defendant but in
case of violation of Trade Mark law the burden id sifted to the plaintiff where
likelihood of confusion is sufficient and there is no need to prove that actual
confusion has been caused. In other words deception, fraud or confusion on the
part of infringer is essential requirement to determine infringement.
[4]
1.3 Objective of Study:
Trade is a backbone of every county, given the protection and reduced the unfair
means of trade either export or import of goods not only enhance the economic growth
of nation but also create the healthy relation between different States. Here trade
activities are not exhaustive but it is inclusive and trade of intellectual property also
covered under the trade practice, so I as a researcher very interesting to know about the
trade aspect of intellectual property and select the topic to clear concern doubt, so my
topic of dissertation is Evolution of Trade Mark Law in India with Special
Reference to Smell Mark. The reasons and objectives behind the selection of this topic
are as below;
 To know the fundamental concept of trade mark.

 What are the statutory provisions for mark, jurisprudential approach behind the
trade mark and to know whether trade mark is fundamental right or not?
 Under the study being a researcher I try to find out the reasons behind the origin
and development of Trade Mark Law in India and international prospect.
 Smell is said to be one of the most potent types of human memory. The
manufacturers are adding pleasant scent to their products to make them
attractive. The foremost reason of this study is to know the registrability of
smell as a trade mark under the law.
 Mandates of Section 09 of trade Mark Act 1999 i.e. absolute grounds for refusal
of trade mark is applicable on smell mark or not also an objective of research.
Manufacturing the product with different smell or fragrance will increase the
beauty of market and to create more options for consumers. Therefore registration will
legalise their selling and buying and this study will be very beneficial or enhance the
interest of reader to know how to possible the registration of smell as a modern mark.
1.4 Hypothesis
A hypothesis is the starting point of any investigation or inquiry in the process

of legal research. For any research to begin, it is always initiated with a problem of
inquiry. It is called a tentative statement or generalization or assumption or proposition.
Whatever it be, it has to be very clear, simple and definite without any creeping
ambiguity therein. The condition attached to it is that a hypothesis must be empirically
[5]
with the observed facts regarding a phenomenon or an experience. The formulation of

a hypothesis gives direction to arrange the facts. In facts, a hypothesis occupies
indispensable portion for any investigation or inquiry. It gives direction in regard to
collection of evidence. It makes observation and experiment possible. A hypothesis,
theory, law and facts are interconnected. It proceeds in direction o find out answer to
the problem, saving time, money and energy. Hypothesis provides direction to research.
It directs an investigation to identify the procedure and methods to be followed in
solving the problem. The hypothesis is forward looking. It may be a statement of
relationship or it may specific the functions. For any problem framing the hypothesis
requires prior knowledge of the phenomena. I have also formulated very clear or simple
some assumptions or preposition hypotheses for getting direction to arrange the facts
are as:
1. Smell Mark is capable of graphical representation.

2. Smell of different product is distinguishable.
1.5 Review of Literature:
There is enormous literature available on my dissertation, however all those

writing are beyond the scope of this work. This work is outcome of important cases,
Acts and statues wherein Evolution of Trade Mark Law in India with special reference
to smell mark has been completed. There are certain International and National Articles
and Commentaries which are related with the discussed topic have been referred here.
Primary sources of my dissertation are different; statute and secondary sources books
of different authors, article and websites. Opinion of experts like Academicians and
Advocates are also became the helping hand of this work. To getting the latest and more
relevant information about the topics I regularly visited different websites and online
materials. This work is an output of recourses available in my university library.
A book titled Intellectual Property Rights in India, (2nd Edition, 2015)

authored by V K Ahuja provides a huge help during the study. From that book I read
and write in dissertation an idea about historical background of trade mark law in India
meaning and definition of trade mark, conditions of registration of trademarks. Other
than what are absolute grounds for refusal of registration of trade mark.
[6]
There is another book written by Ashwani Kumar Bansal, titled Law of Trade
Mark in India (3rd Edition, 2014), which is very relevant and useful for my work. I
found in that book the concept of distinctiveness, graphical representation, definition
of trademark and what changes occurs in that definition after passing the Trade Mark
Act 1999. I also go through a very leading case that Sieckmanncase in mentioned book
and discussed in my dissertation.
A book by Lionel Bently & Brad Sherman, titled Intellectual Property Law,
(4th Edition 2014) is very beneficial to discussed material related with the earlier
history of law of trade mark.
M. K. Bhandari’s book Law Relating to Intellectual Property Right, (3rd

Edition 2012) provide an idea about the development of law of trade mark at
international aspect as well as the different convention and treaty about the trade mark.
A very important part of my dissertation I got from it that function and objects the Trade
Mark Act 1999.
Jatindra Kumar Das’s the writer of book Law of Copyright, (1st Edition 2015)
is the best material for understand the jurisprudence behind the trade mark, which
include different theories of Intellectual property rights.
David Kitchen’s book titled, Law of Trade Marks and Trade Names,(14th
Edition 2005) has provides a vide knowledge about the historical aspect of trade mark
and give material for Smell as mark.
Helen E Norman, Intellectual Property Law, (2nd Edition 2013) here I read
about the development of trade mark at international level which include ancient use of
trademarks, medieval use of trademarks, the rise of the age of the consumer.
Teresa C. Tucker, Trade Mark Practice & Forms, (1st South Asian Edition,
2014) which help for the present research to do a comparative study about the trade
mark law at international level.
Other helping material are articles and web sites viz, Linda Annika
Erlandsson, “The future of Scents as Trademarks in the European Community” (EU-
law / Intellectual Property Spring 2004).
[7]
M M S Karki, “Non-traditional Areas of Intellectual Property Protection:

Colour, Sound, Taste, Smell, Shape, Slogan and Trade Dress”( Journal of Intellectual
Property Rights Volume 10 November 2005) and for the better result of my research.
These all sources provided a huge contribution to complete my research.
1.6 Research Methodology:
This study is a descriptive analysis of issue pertaining to the objectives and

research questions mentioned above. The doctrinal approach of the research which
provides a systematic exposition of the rules governing particular legal issues, analysis
the relationship between rules, explain reality of implementation and, perhaps, predict
future development. This research work seeks to intensively evaluate the adequacy of
existing rules and it may recommend changes to any rules found wanting. Considering
the uncertain and developing nature of law and jurisprudence, this study will examine
the judicial, legislative and executive attitude toward the research theme. This will not
only be a descriptive study as well as an explanatory research.
The reason behind the selection of doctrinal approach in my dissertation, i.e.

Evolution of Trade Mark Law in India with Special Reference to Smell Mark,
there is no need of any survey, interview, case study, only through the proper checkup
of study materials and a regular visit to library made me capable to complete this work
1.7 Significance of Research:
This study is very fruitful to know the Fundamental Concept of law of trade
mark. Under the fundamental concept the definition of mark, trademark, modern marks
is provided. I have also discussed different theories or Jurisprudential approach behind
trade mark law under the study. Trade is recognize as a fundamental right under Article
19(1)(g) of Indian constitutional right is a significance of study, through this
dissertation research try to show the role of judiciary to deciding the case related to the
topic so Ralf Sieckmann v Deutsches Patent-und Markenamt mentioned under the
study. This dissertation covered the origin of Trade Mark in India and journey of it from
Paris Convention to TRIPs. One is a history of the social practices and understanding
attached to the activity of applying marks goods; and second is a positivist trademarks
law that the law inevitably evolve with, or ought to reflect the changes in, the nature
and function of marks. There is a doubt of registration of smell mark this study is
[8]
pleasant to give the answer of it. A smell which is distinctiveness from other and
possible to present graphically is a subject matter of registration under the law of trade
mark.
1.8 Design of Chapter:
The emergence and development of global business activities, and the inception of
the Internet have resulted in the creation of a new field of legal studies concerning cross-
border enforcement of intellectual property (IP) Rights. Intellectual Property Rights is
a new branch of law which has no territorial jurisdiction but the prime goal is to protect
the intellect of a person without considering his nationality. Skill of a person is an
intangible effort which should be protected by the laws is the sole reason of
development of this law. Being a student of this discipline I have selected a topic from
this subject and that is Evolution of Trade Mark Law in India with Special Reference
to Smell Mark.
I have covered my work into six chapters. The design of chapter as:
Chapter first is Introduction, which consists various sub headings i.e. brief
idea about topic, which explained the theme and idea of whole study. Second part of
the introduction is, Statement of the problem, where I covered what the reason behind
the selection of this topic is. Third heading of introduction is objective of study, which
include the aim and objective of the topic which selected for research. Formulation of
hypothesis is the next sub heading of the first chapter, which is in the form of a
statement where researcher have to prove or disprove of the topic. Next to hypothesis,
I have discussed from where the data has been collected and which source is more
fruitful under review of literature. Part 6 of Introduction is, research methodology,
which emphasize method of study. Design of chapter, is a 7 part of introduction.
Second Chapter is Trade Mark: Fundamental Concept, under this chapter

the basic concept of trade mark discussed viz. meaning and definition of trade mark,
changes in definition brought by the 1999 Act, meaning of mark and its kinds e.g.
device, brand, heading, label etc. the modern marks including smell marks, sound
Marks, taste marks, moving images, holograms and gestures. One more aspect i.e.
jurisprudential approach behind the trade mark also discussed. There are two requisites
of Trade Mark, capable of being represented graphically, distinctiveness, without that
[9]
no person can claim for a trade mark has been explained. Trade mark which is a
constitutional right provided under Article 19(1)(g) briefly discussed. Finally the
chapter is concluded.
Third Chapter is Origin and Development of Trade Mark: International

Prospective, which include brief journey about the development of trade mark at
international aspect as well as origin of Trade Mark, ancient and medieval use of
trademarks, and the development of International Convention from Paris Convention
to TRIPs (The Paris Convention, 1883, The Madrid Agreement and Protocol, 1989, The
TRIPS Agreement, 1994, Provision of Trade mark under TRIPS Agreement) Cases in
equity at length Conclusion.
Forth Chapter of the study is Development of Trade Mark Law in India, in

which I have discussed, development of trade mark in India during different era viz the
trade mark law (1877-1940), trademarks prior to Trade Marks Act, 1940. The remedies
which were and continue to be available to aggrieved Trade Mark owners are briefly
set out civil remedy the passing off action, criminal remedies, development of Trade
Marks Act, 1940 to the Act of 1958, The Trade Marks Act, 1999, objects, reasons of
and salient features of Trade Mark Act, 1999, impact of lack of trade mark legislation
and followed by conclusion
Fifth Chapter is Registration of smell as Trade Mark, the topics which

covered under the chapter are Smell as Modern Trade Mark, what are the Conditions
of Registration of Smell Trade Mark which is followed by more sub heading are
distinctiveness, acquired distinctiveness, inherent distinctiveness, I have also discussed
one leading case, Ralf Sieckmann v Deutsches Patent-und Markenamt.
Sixth Chapter of the my dissertation is the Conclusion/Suggestion, a

conclusion will sum up relevant observations made and will present an overall analysis
of smell as trademarks which consist suggestion for discussed problem. At the end of
this chapter I have mentioned the list of sources from which I have taken the ideas
named Bibliography.
****
[10]
Chapter II
TRADE MARK: FUNDAMENTAL CONCEPT
The Trade Mark Law is to provide legal protection of trade marks for goods and
services and prevent fundamental use of marks, which distinguishes it from other
categories of IPRs viz., copyright, patent and designs is that the trademarks are given
legal protection not for a fixed term but for indefinite term, provided other legal
conditions, such as renewal are fulfilled.
2.1 Meaning and Definition of Trade Mark:
Trade mark is a product of competitive trade practice. Every trader seeks to sell
his product by its name and distinctiveness. The changing business practices have also
changed the concept and philosophy of trade mark. It is, therefore, necessary to
understand the essential characteristics and the purposes for which a trade mark is used.
A trade mark includes any word, name, symbol, configuration, device shape of goods,
packaging, combination of colours or any combination of combination therefore which
one adopts and use to identify and distinguish his goods from those of others. 1
2.1.1 Analysis of Definition of Trade Mark:
Speaking in general terms, we can define a trade mark as being a sign which
distinguishes2 particular goods or services of one undertaking from the goods or
services of other undertakings. That easy enough, but things start to get more
complicated when you want to create a registration system. Any registration system is
going to be an imperfect way of capturing all the attributes of trademarks which operate
in the market.3 The best that can be achieved is to have a registration system which
records the most concrete attributes of each trade mark. The trouble is that you then
need to devise a set of rules or definitions under which these attributes are going to be
1
M. K. Bhandari, Law Relating to Intellectual Property Right 165(Central Law Publications, Allahabad,
3rd edn 2012).
2
Section 1 of Trade Mark Act, 1994, i.e. the trade mark must actually distinguish. This may seem a
rather obvious point, but it is necessary to keep it in mind when we come to s. 1 of the Act.
3
For example, our existing systems do not record whether a trade mark has a reputation in the market,
or how substantial that reputation may be.
[11]
Chapter II : Trade Mark: Fundamental Concept
recorded.4 And these rules also have to take account of other consequences of a
registration system, for example: a trade may well want to achieve registration of a
trade mark before he starts to use it.5 Hence, if you want to define "trade mark" for the
purposes of a registration system, the definition has to deal with two aims: capturing
the attributes of a trade mark but in a way which is sufficiently concrete or certain so
that these attributes can be presented in a register.6
Picture 1.
The expression Trade Mark is defined in section 2(1) (zb).7 Definition

Follows the pattern on 1958 Act and gives two definitions below. 8
Definition reads 2(1) (zb) Trade Mark Means:
a capital of being represented graphically and which is capable of distinguishing the

goods of services of one person from those of others and may include shape of goods,
their packaging and combination of colours9 and
4
David Kitchen, Law of Trade Marks and Trade Name 10 (Thomson Reuters, New Delhi, 14th edn.,
2005).
5
This reflected in Art. 15 (3) of TRIPS: “actual use of a trademark shall not be a condition for filing an
application for registration.”
6
Id.
7
Defines under section 2 (1) (zb) of Trade Marks Act, 1999 (47 of 1999).
8
Ashwani Kumar Bansal, Law of Trade Mark in India 64 (Thomson Reuters, New Delhi, 3rd edn., 2014).
9
The Supreme Court in Satyam v. Sify has said that domain names fulfill the tests of being a trade mark.
See Chapter 25.
[12]
1. in relation to Chapter XII (other than section107) , a registered trade mark or a

mark used in relation to goods or services for the purpose of indicating or so as
to indicate a connection in the course of trade between the goods of services,
as the case may be, and some person having the right as proprietor to use the
mark ; and
2. in relation to other provisions of this Act, a mark use to proposed to be used in
relation to goods or services for the purpose of indicating or so as to indicate a
connection in the course of trade between the goods or services, as the case way
of permitted user, to use the mark whether with or without any indication of the
identity of that person, and includes a certification trade mark or collective
mark.
There are listed two definitions of trademarks – one for Chapter XII (except
section 107) and the other for the purposes of the rest of the act. The essential feathers
of both the definitions are the same. Section 2(1) (zb) imposes the positive requirement
that a trade mark possess distinctive character.10
2.1.2 Changes in Definition Brought by Trade Mark Act 1999:
In the new definition of trade mark there are inserted more substantive
requirements for being a trade mark. 11 Some of the substantive requirements of
registration are now found in the definition of trade mark, which were earlier read from
the scheme of the statute and Common Law , section 2(1)(zb) specially states that—
I. The trade mark must be capable of being represented graphically.

II. The trade mark must be capable of distinguishing the goods or service from
those of others.
The words “Capable of being represented graphically’’ would mean that the
mark should be such as capable of being put on the register in physical form and also
being published in the Trade Mark Journal. 12 The term “Graphical Representation” is
defined as “representation of trade mark for goods or service in paper form’’ 13. This
10
Id.
11
The 1958 Act s. 2(1)(v) listed two definition of “trade mark”, one for chapter X (except s. 81) and the
other for the rest of the Act. The essential features of both the definition are same.
12
Ibid at pg, 65.
13
Trade Marks Rule, 2000, 2 (1)(k).
[13]
would facilitate registration of three-dimensional mark and even sound mark, so long
as they can be graphically represented.
That the trade mark must distinguish goods of services of the proprietor of trade
mark from those of others, is now especially stated for a mark to qualify as a trade mark
and being proprietor of a trade mark. The trade mark must possess capability to
distinguish goods or services for the purpose of registration of trade mark in the register
which now has only one part.14
From the above analysis of definition of trade mark, there is a conclusive remark
that there is following essentials of trade mark, discussed in details below:
a. It should be mark;
b. It should be capable of being represented graphically;
c. It should be capable of distinguishing the goods or services of one person from
those to others.15
2.2 Jurisprudential Approach:
The concept of the protection of Intellectual Property Right is not new, it was
come from the time immemorial. The economic and cultural importance of this
collection of rules is increasing rapidly.
There are many theories but the question is that is it worth the effort? Should
one care about theories of intellectual property? Fisher identifies four analytical
constructs, which we will call “theories”, namely—
i. Utilitarian for maximizing net social value,
ii. Lockean (one has the right to the fruits of his intellectual labor);
iii. Protection of personality in works; and
14
Under 1958 Act, Register had two parts- A and B. in part A for registration adaptability of
distinguishing was required, registration in part B could take place with capability of distinguishing. The
requirement of adaptability to distinguish is no more applicable.
15
The Supreme Court stated in Laxmikant V. Patel v. Chetanbhat Shah, AIR 2002 SC 275: 2002 (24)
PTC 1(SC) : (2002) 3 SCC 65, that the definition of trade mark is very wide and means, inter alia, a mark
capable of being represented graphically and which is capable of distinguishing the goods or services of
one person from those of others. Mark includes amongst other things name or word also. Name includes
any abbreviation of a name.
[14]
iv. Fostering a just and attractive culture.
Fisher outlines four main theoretical approaches to IP (in order of popularity):
a) Utilitarian aspect of IP jurisprudence;
b) Labor theory (Lockean) and its jurisprudential aspect;
c) Personality theory and its jurisprudential aspect; and
d) Social planning theory and its jurisprudential aspect.16
Over the period of human history, numerous jurists have been put forth to
explain IPR protection. The principal basis for such protection is the labour theory.
Nonetheless, other jurists, most notably the jurists of economic incentive theory,
personality theory and social requirement theory, have been justifying the
understanding, development and scope of IPR protection in their own way.
2.2.1 Labour Theory:
John Locke and Immanuel Kant are two predominant jurists who justify
exclusive rights under IPR within the theory of labour. The theoretical underpinnings
of IPR are based heavily on the work of John Locke, one of the enlightenment thinkers
who most influenced the founders. The foundational premise of Locke’s theory is that
all people have a natural right of property in their own bodies. 17 Because people own
their bodies, Locke reasoned that they also owned the labour of their bodies and, by
extension, the fruits of that labour. This is widely thought to be especially applicable to
the field of IPR, where labour seems so importantly to the value of finished products.18
According to John Locke, thought the earth and all inferior creatures are
common to all men, yet every man has a “property” in his own “work” of his hand, we
may say, are property his. Thus Locke’s theory of labour can be applied to IPR “if ideas
are fixed in a tangible property.”19
Applying the labour theory, Immanuel Kant argues that it is the “natural
obligation” to respect the author’s ownership of his works, On the other hand, it is the
16
Fisher theory of IPR.
17
John Locke, Liberty of the Press (Cambridge University Press, 1695, Re-print in 1997).
18
Jatindra Kumar Das, Law of Copyright 36 (PHI Learning, New Delhi, 2015).
19
Ibid at pg , 37.
[15]
“natural right” of the author to control the use of his work and to be rewarded for it is
one of the significant underpinnings of the IPR jurisprudence. Thus, according to
natural right philosophers, every man has a natural right over the result to enjoy the
fruits of his labour and object to any unauthorized modification or other attack on the
integrity of the work.
In India, in Gramophone Company of India Ltd. v. B.B. Pandey,20 the Apex

Court held that an artistic, literary or musical work is the brain-child of an author, the
fruits of his labour and, so, considered to be his property. It is so highly cherished by
all civilized nation, that it is thought worthy of protection by national laws and
international conventions relating to IPR. Similarly, the Madras High Court, while
explaining the basis of protection to the work of intellectual creation in Sulamanglam
R. Jayalakshmi v. Meta Musical21 observed:
The primary function of copyright law is to protect the fruits of man’s

work, labour, skill or test from annexation by the people.
Thus, in Rediff Com India Ltd v. E-Eighteen Com ltd.,22 the Delhi high Court
held that since the plaintiff incurred substantial expense of labour, skill and money to
create a “Dial”, the plaintiff is the owner of the said work, and the defendant cannot
exploit the same by resort protection of his right in the said work, and the defendant
cannot exploit the same by resort to some slight modification of the basis of the “Dial”.
On the question of justification for providing copyright to author, the Apex Court in
Eastern Book Company v. D. B. Modak,23 observed:
The copyright protection finds its justification in fair play. When a person
produces something with his skill and labour, it normally belongs to him and the
other person would not be permitted to make a profit out of the skill and labour
of the original author and it is for this reason the Copy Right Act, 1957 gives to
the authors certain exclusive rights in relation to the certain work referred in the
Act. The object of the Act is to protect the author of the copyright work from an
unlawful reproduction or exploitation of his works by others.
20
AIR 1984, 2 SCC 534.
21
AIR 2000 Mad. 454.
22
AIR 2013 (55) PTC 294: 2013 (202) DLT 657.
23
AIR 2008, 1 SCC 1.
[16]
2.2.2 Personality Theory:
The main alternative to a labour justification is a “personality theory” that

describes property as an expression of the self. This theory, however, that more familiar
civil right doctrine specially rights of expression and privacy, also can provided a
foundation for personality theory in IPR Law. Most people possess certain objects they
feel are almost part of themselves. These objects are closely bound up with personality
because they are part of the way we continued ourselves as continuing personal entitles
in the world. Hegal had developed the “personality” concept in his Philosophy of Right
24
and maintained that “property for personality”.
A wide variety of interests might be deemed fundamental, each of which

arguably could be advanced by a system if property tights. Thus, peace of mind, self-
reliance, self-realization as a social being, security and leisure, responsibility and
citizenship are some of the interests which help to develop personality.
2.2.3 Economic incentive Theory:
IPR law provides an author with more than a right to profit from a creative work.
The owner of an IPR also holds the exclusive right s to authorize (or enjoin) any
reproductions, derivative works, or public performances of his/her creative material.
Thus, one of the predominant justifications of IPR protection in the economic incentive
of theory. According to this theory the IPR is often justified on the ground that it
stimulates investment of time and money in the creation of new works. Most authors’
works of IPR rely on the income they derive from the publications of their works for
their livelihoods. If such investment is not adequately protected, any person will
misappropriate the fruits resulting from such investment. This act as a disincentive to
the author to engage in such initiatives. On the other hand, if such investment of labour
and skill is rewarded it will stimulate creativity. Therefore, it is necessary to provide
adequate reward to the other through IPR. The supreme court of America recognizes
the economic incentive philosophy of IPR protection in number of landmark cases. 25
24
G.W.F. Hegel, Philosophy of Right, (Batoche Books, Kitchener, 2001).
25
Mazer v. Stlen (1954).
[17]
Justice Stewart describe the basic purpose of the Copy Right Act in America as
Follows:26
The limited scope of the Copyright holder’s statuary monopoly. Like the limited
duration required by the constitution, reflects as a balance of competing claims upon
the public interest creative work is to be encouraged and rewarded. But private
motivation must ultimately serve the cause of promoting broad public availability of
literature, music and the other arts. The immediate effect of our copyright law is to
secure a fair return to an “author’s’’ creative labour. But the ultimate aim is, by this
incentive, to stimulate artistic creativity for the general good. ‘’the sole interest of the
United States and the primary object in conferring the monopoly,’’ this court has said,’’
lies in the general benefits derived by the public from the labours of authors.
In Harper N. Nation Enterprises, 27 The question before the US Supreme court

was whether the defendant ‘s unauthorized publication of quotations from president
Gerald Ford’s unpublished manuscript was a fair use of the work. In concluding the
Court’s analysis focused on the effect that characterizing the defendant’s actions as
form of fair use would have a IPR’s incentives structure. The idea of ‘’incentives’’
provided the court with a rhetorical framework internal to the IPR system by which to
justify its decision, rather than meaningful basis which with to understand the very
functioning of that system. The court found it wholly unnecessary to ask whether
extending IPR’s entitlement to the defendant’s actions was necessitated by its idea of
incentives. Similarly, the court held in incentive to pursue private ones and in Campbell
v. Acuff. Rose Music,28 that the licensing of derivatives is an important economic
incentive to the creation of originals. 29
As in America the underlying idea of IPR protection is of economic benefit of

author. The constitution (Article 1, Section 8 Clause 8) expressly provides the power to
congress to grant copyright to author. This is the best way to advance public welfare
through the talents of authors and investors in ‘’ Science and useful Arts’’30 thus in feist
26
Twentieth Century Music Corp. v. Aiken, 422 US 151 (1975).
27
Harper N. Nation Enterprises, 471 U.S. 539 (1985).
28
Campbell v. Acuff. Rose Music, 510 U. S. 569, 593 (1994).
29
Ibid at pg 39.
30
Harvard Journal of Law and Technology, 544-562 (2014).
[18]
Publications. Inc. v. Rural Telephone Company,31 32 The supreme court of America held
that the primary objective of IPR is not to reward the labour of authors, but to promote
the progress of ‘’Science And useful Arts’’. To this end IPR assures authors the right
to their original expression but encourages others to build freely upon the ideas and
information conveyed by a exclusive rights framework provides creators with an
economic incentive to create, it also entails large social costs, and that creators therefore
need to be given just enough incentive to create in order to balance the system’s benefits
against its costs. 33
2.2.4 Social Requirement Theory:
Social requirement theory is another theoretical justification for providing IPR.

According to this theory IPR is the interest of society. Therefore, it is in the interest of
the society that authors should be encouragement to create more, as well as publish
their work.34 Thus, trademarks are one of the most important elements of intellectual
property. A product is something that is made in a factory “; a brand are .Trade Mark
is what is bought by a customer a product can be copied by a competitor and can become
outdated by the introduction of new products, but a Trade Mark is unique. A successful
Trade Mark is timeless and the most important source of markets, power and enables
its owner to diversify in products and geographical markets. No firm would ever stay
ahead with ought to possessing IPRs and one who underestimates the Trade Marks to
would have missed the opportunity.35
2.3 Trade Mark: A Constitutional Right:
A right which is provided under the constitution of India is a constitutional right

which includes fundamental rights, and other legal rights. Right to trade is fundamental
right under Article 19(1) (g)36, even judiciary is not silent on this part, in Colgate
Palmolive v. K.V. Swaminathan, AIR 1991 Bom 111, The Court put the ownership
of trade mark on the footing of a constitutional right falling under the right to trade
31
V.Rural Telephone Company, 499 US 340 (1991).
32
Eastern Book Company v. D. B. Modak, AIR 2008 SC 809: 2007, Eastern Book Company v. Naveen
J. Desai, AIR 2001 Delhi 185.
33
Ibid at pg 40.
34
Id.
35
Ashwani Kumar Bansal, Law of Trade Mark in India 39 (Thomson Reuters, New Delhi, 3rd Edition,
2014).
36
Article 19(1)(g) of Indian Constitution : All citizens shall have the right to practice any profession, or
to carry on any occupation, trade or business
[19]
mark and profession and not under the right to property (which has already 37 been
abolished from fundamental rights). The court said that in modern times certain trades
cannot be carried on without the aid of trade mark duly protected by law. The right to
trade and profession and the consequential right to trade marks can be subjected only
to reasonable restrictions in the interest of general public listed n Article 19(6) of the
Constitution of India.38
2.4 Mark:
Section 2(1) (m) defines mark to include a device, brand, heading, label ticker,
name, signature, word, letter, numeral, shape of goods, packaging, or combination of
colors or any combination thereof; the definition of mark is an inclusive definition. It
may also include other things which may fall within the general and plain meaning of
the definition.39
Picture 2.
2.4.1 Different kinds of marks:
Device: Device is a pictorial representation. 40 eg. McDonald's double arches

logo mark has been protected under trade mark.41
37
Ibid at pg, 72.
38
Ibid at pg, 73
39
Id.
40
V K Ahuja, Intellectual Property Rights in India, 255 (Lexis Nexis, Gurgaon, 2nd edn., 2015).
41
Available at: https://www.bitlaw.com/images/mcdonalds.jpg, visited 01/05/2018, 4:43 PM.
[20]
Picture 3.
McDonald's double arches logo mark
Brand: Brand may refer to those symbols which are branded on the goods such
as monkey brands fabric like apple brand trade mark.
Picture 4.
Apple Computer's 42
Heading: The dictionary meaning of heading includes an inscription. However,

the meaning of the word heading in reference to trade mark is not very clear.
Label: A label may refer to a composite mark containing various features

including devices and words usually printed on paper which can be pasted or attached
to the goods themselves or their containers. Levis is the fine example of label trade
mark.43
42
Available at: https://www.bitlaw.com/trademark/devices.html, visited 01/05/2018, 4:43 PM.
43
Id.
[21]
Picture 5.
Tickets: Tickets may be something stitched or tagged on the goods and

containing the mark printed or pasted thereon. These tickets are very essential for the
purposes of trade and economic benefits.
Name: Name may be of an individual (including surname) firm or company.

Name also includes any abbreviation of a name. Name may also include domain name.
Jawed Habib Hair & Beauty Ltd. get protected his name on, 2008-07-22.
Picture 6.
Signature: Signature means signature of an individual e.g. signature of

proprietor of business. Signature is unique identity of an individual which make
himself/herself different from others,44 e.g. Sachin Tendulkar got the trade mark for his
unique signature, 1998-07-23.
44
Id.
[22]
Picture 7. SACHIN TENDULKAR (SIGNATURE)
Word, letter and numeral: The terms word, letter and numeral to given their
plain and general meaning. A mark consists of a combination of them. Combination of
letters and numerals are considered differently as a composite mark and a unique
combination may qualify for registration, these are the fine example of this.
Picture 8.
Shape of goods: Shape of goods was not a mark in the definition of mark under
trade and merchandise marks act, 1958. The trade marks act, 1999, makes shape of
goods registrable as mark under the act.45
Picture 9.
The Coca Cola bottle
45
Id.
[23]
Packaging: Package includes any case, box, contained, covering, folder,

receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel frame, capsule, cap,
lid, stopper and cork.46 The definition is inclusive and not exhaustive.
Picture 10.
Combination of colours: Combination of colors had been inserted within the

definition of mark under the Trade Marks Act, 1999. A scheme of coloring applied to
goods is, therefore a mark within the definition. 47
Picture 11.
Orange Brand
Any Combination of Different Marks: Any combination of two or more

marks is also a mark within the definition of mark.48 Java trade is protected for its
combination of letters and design.
46
Section 2(1) (q), Trade Mark Act, 1999.
47
Ibid at pg, 256.
48
Id.
[24]
Picture 12.
Other than trade mark there are certain specific forms of mark which may be
related to trademarks. These marks cover certain categories of trade, business or
services. The new trade mark law also provides legal protection to them. For proper
understanding of their nature and purpose, they are examine as under:
Goods and Services Marks: A trade mark may be register for goods and
services. Goods” means anything which is the subject of trade or manufacture.49
“Service” means service of any description which is made available to potential users
and includes the provision of service in connection with business of any industrial or
commercial matters such as banking, communication, education, financing, insurance,
chit funds, real state, transport, storage, material treatment, processing, supply of
electrical or other energy, boarding, lodging, entertainment, amusement, construction,
repair, conveying of news or information and advertising. 50 51
Collective Mark: Collective mark means a trade mark distinguishing the goods
or services of members of an association of persons not being a partnership which is
the proprietor of the mark from those of others.52 As regards registration a collective
mark is not registered if it is likely to deceive or cause confusion on the part of public,
particularly if it is likely to be taken to be something other than a collective mark 53
Certification Trade Mark: Certification trade mark means a mark capable of

distinguishing the goods or services in connection with which it is used in the course of
trade which are certified by the proprietor of the mark in respect of origin, material,
49
Section 2(1) (j), Id.
50
Section 2(1) (z), Id.
51
Ibid at pg, 261.
52
Section 2(1) (g), Id.
53
Section 62
[25]
mode of manufacture of goods or performance of services, quality, accuracy or other

characteristic from goods or services not so certified and registrable as such under
Chapter IX of the Trade Marks Act, 1999. In respect of those goods or services in the
name, as proprietor of the certification trademarks of that person. 54 Certification
trademarks now include services also. (Illustration-‘Agmark’ for food items,
’Hallmark’ for Jewellery).
Well-known Trade Marks: The concept of well-known trademarks has been

introduced by Trade Mark Act, 1999 Section 2(zg) states as under: “well-known trade
mark”, in relation to any goods or services, means a mark which has become so to the
substantial segment of the public which uses such goods or receives such services that
the use of such mark in relation to other goods or services would be likely to be taken
as indicating a connection in the course of trade or rendering of services between those
goods or services and a person using the mark in relation to the first-mentioned goods
or services. (Illustration -Reliance, Bata, Colgate, Pornids, Parle, Britannia etc).55
In Enfield India Ltd v. Deepak Engineering Syndicate, the application for

registration of a trademark 'Bullet' in respect of diesel oil engines in class 7, claiming
user since 1978, has been filed. It was opposed by Enfield India Ltd, the Proprietor of
the mark 'BULLET 'and having much reputed name 'ENFIELD BULLET" in the
market. It was held that a person adopting a well-known mark would take advantage of
reputation of that well known mark which could not be permitted.
Domain Name: A domain name could be said to be a word or name which is

capable of distinguishing the subject of trade or service made available to potential
users of the internet. A domain name may have all the characteristics of a trade mark.
There is no legislation in India which explicitly refers to dispute resolution in
connection with domain names may be protected under the laws relating to passing off.
Card Service International Inc v. McGee,56 it was held that the domain name
serve function as the trade mark and is not a mere address or like fining number on the
internet and therefore, it is entitled to equal protection 57.
54
Section 2(1) (e), Trade Mark Act, 1999.
55
Ibid at pg, 262.
56
Card Service International Inc v. McGee, 1850.
57
Supra note 1 at pg, 172.
[26]
Rediff Communication Ltd v. Cyber Bootth,58 the Bombay High Court held
that the domain name “Radiff” is deceptively similar to plaintiff”s domain name
“Rediff” and therefore Court restrained the defendant from using domain name
“Radiff” by granting injunction.59
2.5 Modern Marks:
Apart from the aforesaid marks, there is a new category of modern marks which
ore protectable only in some countries. These marks include three-dimensional marks,
such as the shape of goods or their packing , colors , per se, sound marks, motion marks
,position marks, hologram marks slogans , smell marks and taste marks, graphically
representation of some of the modern marks is a serious problem.
2.5.1 Smell Marks:
Smell is said to be one of the most potent types of human memory. The
manufacturers are adding pleasant scent to their products. To obtain registration of a
smell mark applicants must be able to visually represent the product’s scent and must
show it is distinctive from the product itself. But how does one represent a smell in a
visual way? Writing down the chemical formula for a smell is problematic as it is
deemed to represent the substance rather than the smell of that substance. Any written
description of a smell must be so precise that that particular smell would not be
confused with any other.60
It is noteworthy that smell must not result from the nature of the goods itself.
For example, an application by channel to register its well-known No. 5 fragrance as a
smell mark in the United Kingdom was unsuccessful on that count – the scent of the
perfume being very essence of the product. However, some smell mark description have
met the distinctiveness test and been successfully registered, such as a Dutch company’s
tennis balls with the scent of newly mown grass UK registration for tires with “a floral
fragrance / smell reminiscent of roses” and darts with “the strong smell of better
beer”. 61,62
58
Rediff Communication Ltd v. Cyber Bootth, 2000.
59
Ibid at pg, 173.
60
Id.
61
WIPO Magazine, Non-Traditional Marks: Smell, Sound And Taste, February 2009 at p. 5.
62
Ibid at pg, 257.
[27]
2.5.2 Sound Marks:
In the case of sound marks, alternative methods have emerged for their visual
representation : depictions by oscillogram, spectrogram and sonogram are now being
accepted in recently defined areas of convergence concerning the representation and
description of non-traditional marks, the WIPO Standing Committee on the Law Of
Trademark, Industrial , Industrial Designs And Geographical Indication (SCT) agreed
that “Office may require that the representation of sound marks consist of a musical
nations on a stave, description of the sound constituting the mark consist of a musical
nations as a stave a description of the sound constituting the mark on analog or digital
recording of that sound – or of any combinations . Thereof where electronic filing is
available, an electronic file may be attached to the application. However, for some
jurisdictions, only a musical notation on a stave may be considered to adequately
represent the mark.”63
In India, the first sound mark has been registered on august 18, 2099; the mark
was registered in favour of California – based internet firm Yahoo Inc.’s for its three
notes Yahoo Yodel. Sound marks can function as trademark or service mark, as source
identifiers for goods and/or services in commerce. Even though trademarks consisting
of sounds have existed for many years, there is no uniformity regarding protection for
such marks in the global marketplace or on the international level. The TRIPS
Agreement, the EU Directive and the Community Trade Marks Regulation are all silent
on sound marks. The United States has long recognized sound marks, such as the
familiar chimes of the National Broadcasting Corporation (NBC). Although certain
sound marks may not be considered inherently distinctive, they may be registrable upon
proof of secondary meaning. Nonetheless, fewer than 50 sound marks are registered
with the US Patent and Trademark Office (USPTO); among them are the Intel tones
and ESPN's six-tone jingle. Musical compositions have also been registered as
trademarks in USA.64
63
Id.
64
M M S Karki, “Nontraditional Areas of Intellectual Property Protection: Colour, Sound, Taste, Smell,
Shape, Slogan and Trade Dress.”
[28]
Picture 13.
2.5.3 Taste marks:
For the representation of taste mark graphically, the WIPO Standing Committee
on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT)
reports that “the graphic representation requirement was satisfied by using a written
description of the taste and an indication that in concerns a taste mark”. The test of
distinctive, however, is harder to satisfy.
In its decision in case r 120/2001-2, the office for harmonization in the internal
market (OHIM) rejected the pharmaceutical company Eli Lilly’s attempt to register the
taste of artificial strawberries nothing “any manufactures… is entitled to add the
flavour of strawberries to those products for the purpose of disguising any unpleasant
taste that they might otherwise have or simply for the purpose of making them pleasant
to taste…65 Moreover the taste is unlikely to be perceived by consumer as a trade mark;
they are far more likely to assume that it is intended to disguise the unpleasant taste of
the product…”
In re N.V. Organon, the USPTO rejected the attempt by N.V. Organon to

register an orange flavor four pharmaceuticals on June14, 2006.66
2.5.4 Moving Images, Holograms and Gestures:
Multimedia production has opened the way for even more non-traditional
trademarks, holograms gestures and motion or moving image marks. Their registration
usually requires the use of a sequence of pictures or drawings to depict how the trade
65
Id.
66
Ibid at pg, 260.
[29]
marks functions. To meet the graphical representation requirements in case of

hologram, it is necessary that the application form must contain representations of each
of the various views depicted in the hologram. Motion marks are probably the most
common of the multimedia marks.67 68
2.6 Requisites of Trade Mark:
Other than mark, there are two important essentials which for the purpose to
getting the registration on trade mark there includes as follow:
2.6.1 Trade Mark Should Be Capable of Being Represented Graphically:
A trade mark is required to be capable of being represented graphically.

Graphical representation means the representation of a trade mark for goods or services
in paper from. 69 In the registrar’s view a mark is graphically represented when:
 The representation of a trade mark is in paper from.

 It is possible to determine from the graphical representation precisely what the
marks is that the applicant use or proposes to use without the need for supporting
samples etc.
 The graphical representation can stand in place of the mark used or proposed to
be used by the applicant because it represents the mark and no other’s and.
 It is reasonably practicable for persons inspecting the register, or reading the
trade marks journal, to understand from the graphical representation what the
trade mark is.70
2.6.2 Distinctiveness:
A trade mark is required to be capable of distinguishing the goods or services

of one person from those of others. To be distinctive or capable of distinguishing the
goods, there may be some inherent qualities or distinguishing characteristic in the mark
67
20th Century Fox Film Corporation logo with floodlights trailing back and forth across the sky is a
registered trademark (USPTO1.928.424).
68
Ibid at pg , 270.
69
Rule 2 (k), Trade Mark Rules, 2002.
70
See Government of India, DRAFT MANUAL (REVISED) FOR TRADEMARK PRACTICE AND
PROCEDURE, p. 24.
[30]
itself which make it so distinctive or capable of distinguishing the goods of the one
person from others.
The concept of a trade dress which includes overall “look and feel” of the trade
mark is inherently built in to the definition of trade mark under the Trade Marks Act.71
The 1999 Act prescribes ‘distinctive character or capable of distinguishing’ as

the most crucial condition in contrast to the word ‘distinctiveness’ in the 1958 Act.72
The expression ‘distinctive character’’ has taken the jurisprudence of distinguishing
function of trade mark in conformity with the international practice. The 1999 Act
recognizes that distinctive character may be inherent or acquired; when a generic or
descriptive (non-distinctive) mark acquires secondary meaning, fulfilling requirement
of the distinctive character.
The Indian parliament has chosen a less stringent condition for ‘capability of
distinguishing’ as compared to adaptability of distinguishing for general applicability
to all trade mark registration. The requirement of distinctive character in the 1999 Act
is lowered and is not that strict, comparable to the 1958 Act or the 1938 law of U.K. It
may not fructify in more registration. The balancing of distinctive character with
features making a mark inherently indistinctive shall continue to be in the purview of
the registrar, courts/appellate board.73
The Registrar, the Board and Courts, now do not require enhanced capacity to
distinguish and if secondary association with goods and services can be demonstrated
the mark is normally accepted as possessing distinctive character. Moreover, as the
registration of trade mark does not guarantee exclusivity, the registration should
normally be granted, if there are no objections. 74
2.9 Conclusion:
Trademarks may be words or symbols, identifying the ownership or origin of a

particular merchandise or product to which it is applied. By registering a trademark the
71
Ibid at pg, 256.
72
The cumulative impact of the 1958 Act and 1999 Act is that firstly it split the register in two parts with
different requisites for registration as to the standards of distinctiveness. Now again it is one part of
register with lower standards of distinctiveness.
73
Supra note 8 at pg, 143.
74
Id.
[31]
owner legally reserves the exclusive use of trademark. Trademarks are used to
strengthen the consumer’s awareness of the merchandise and to distinguish it from
competing merchandises. Designs are arrangements of elements or details in a product
or work of art. Design rights protect two or three dimensional designs. Design rights
may be registered or unregistered rights: the latter coming into existence when new
designs are created.
Trademarks are commercial source indicators, distinctive signs that identify

certain goods or services produced or provided by a specific person or enterprise. In
villages, cobblers’ names used to serve that function. Trademarks are especially
important when consumers and producers are far away from one another. Children ask
for Barbie dolls, Lego building blocks and Hot wheels toy cars. Some adult’s dream of
Ferrari automobiles, but more can afford to buy Toyota or Honda Brands. Consumers
need trademarks to seek or avoid the goods and services of particular firms. Throughout
most of the world, trademarks must be registered to be enforceable and registrations
must be renewed. Yet, while copyrights and patents eventually expire, names of
companies that treat customers well become increasingly valuable over time. If
trademark rights were to expire, consumer would be collectively harmed much as
owners. Imagine the confusion if unaffiliated firms could sell products under another
company’s trademark, for example, the dubious quality of counterfeit and fake drugs
75
and their potential for causing great harm, if not death, to unsuspecting users.
Trademark protection is also widespread in sports, estimated to account for

2.2% of world trade. Much support for the Olympics, for example, derives not from
copyrighted broadcasts, but from merchandising rights protected by trademarks. At an
earlier time , purchasers of products bearing the name of logos of famous sports teams
or events would probably have assumed no connection, much less an endorsement of
quality between the sports team and, say, the baseball cap bearing the teams symbol.
Increasingly, however, consumers assume both. As early as 1993, U.S. baseball teams
alone licensed uses of their trademarks on $2.5 billion in goods.
****
75
Anupam Singh & Ashwani Singh, Intellectual Property Rights and Bio-Technology, 68-69 (Narendra
Publishing House, Delhi, First Edition, 2012).
[32]
Chapter III
ORIGIN AND DEVELOPMENT OF TRADE MARK:

INTERNATIONAL PROSPECTIVE
“The great Empire of India has no trade mark legislation! It would

appear that the interest of commerce and manufacture and other
practical consideration do not attract the attention of those who clamour
so loudly for political recognition,”76
- Sir Courtney Terral
3.1 Origin of Trade Mark:
In early time, in the absence of an effective media, the ownership of goods was
announced by a visible mark. It was a propriety or possessive work. Common instances
work where the branding of cattle and sheep by their owners, particularly by
agriculturalist.
Region wise, trade guides had unwritten conventions for making of goods made
by their members for the purposes of identify the quality of their goods. The guilds
disappeared. So did the habits of branding cattle and sheep. The original object of
making to indicate proprietorship was no longer relevant. It was, nevertheless, the root
of the awareness to have a trademark. The customer may not know the maker of the
goods or who is the party that has inducted quality in those goods. Yet without the mark
it would be not be possible of a satisfied customer of particular goods to go to the market
for purchasing those goods. The marking of goods began with trading activities. The
marking since then has continued and the trade competition marches on the belly of the
mark. 77
The common law recognized trademarks as explain in an English decision. The

use by manufactures of distinctive marks upon goods which they had made is of very
ancient origin, but legal recognition of trademarks as a species of an incorporeal
76
CJ of Patna High Court (31st march 1928 to 6th May 1938).
77
V J Taraporevala, Law of intellectual Property 399 (Thomson Reuters New Delhi 2nd edn., 2013).
[33]
Chapter III : Origin and Development of Trade Mark: International Prospective
property was first accorded by the court of chancery in first half of 19 th century. It may
be said to have established by Lord COTTENHAM L.C. in Millington v. Fox (1838) 3
My & Cr 338 LC said that it was not necessary to established to deceive on the part of
an infringer whom an injunction to restrain his use of author’s Trade Mark was sought.78
Most accounts of the history of trademarks tend to focus on two intertwined

themes: one is a history of the social practices and understanding attached to the activity
of applying marks goods; the other, a positivist history of trademarks law. These two
histories are often conflated in a way that suggests that the law inevitably evolve with,
or ought to reflect the changes in, the nature and function of marks. While
acknowledging that may development in the trade mark law have been made in
response to changes in the function that marks performs, we would prefer to keep the
histories separate to avoid any implication that a change in the function of marks require
corresponding action by the legislature or judiciary to alter (typically, to expand the
scope of legal protection afforded by) trade mark law. 79
The right of propriety in a Trade Mark had special characteristics. One, which
it shared with patents and with copyright, was that it was a monopoly, that is to say it
was right to restrain other person from using the mark. Common law considered it an
adjunct of the good will of a business and incapable of separate existence dissociated
from that goodwill. To be capable of being the subject matter of property a trademark
had to be distinctive, that is to say, it had to be recognizable by a purchaser of goods to
which it was affixed as indicated that they were of the same origin as other goods which
bore the same mark and whose quality had endangered goodwill. Property in a Trade
Mark could therefore only be acquired by public use of it as such by the proprietor
business in which it was used. Under the English Trade Mark Act,1994 trademarks
could be assigned in the same way as personal property and without the goodwill of a
businesses independently similar is the position under the Indian Trademarks Act, 1999
(See Section38).80 There is a problem of honest use which requires proper consideration
in today’s globalization Convention of Paris in 1883.
78
Ibid at pg. 400
79
Lionel Bently & Brad Sherman, Intellectual Property Law 809 (Oxford University Press, UK, 4th edn.,
2014).
80
Trademarks Act, 1999 Sec 38 Assignability and transmissibility of registered trademarks.—
Notwithstanding anything in any other law to the contrary, a registered trade mark shall, subject to the
provisions of this Chapter, be assignable and transmissible, whether with or without the goodwill of the
[34]
On the basis that the Trade Mark had industrial significance, the trademark was
formally designated as an ‘industrial property’, over a hundred years ago, by the
International Convention of Paris in 1883. 81
3.1.1 Ancient Use of Trade Marks:
The use of trademarks develop long before their legal protection. It is not
possible to pin-point accurately when the concept of ownership first evolved, nor when
mankind first began to trade by bartering or selling goods, but it is reasonable to assume
that the use of symbol or sign to designate either ownership or commercial origin must
have developed contemporaneously with these events. Ancient cave paintings in France
show how trade marks were first used to claim ownership of cattle by the practice of
burning (or branding) the hides of the animals with symbol, the term with ‘brand name’
today being a relic of this ancient custom. The use of a trade mark to designate the trade
origin of goods goes back furthest in ancient China, where marks are thought to have
been placed on pottery as long ago as 3000 BC. A good deal of information is available
about ancient pottery, because it lasts almost indefinitely. Excavations from ancient
Egypt, Asia Minor, India and Crete have all revealed potters’ marks, and indeed marks
used by other crafts, notably goldsmiths, ironsmiths and brick makers. 82
Nevertheless, it is Greek and Roman antiquities which are most revealing of the
historical background of trademarks. In Greece, Vases, Jars and Pottery objects were
marked in various ways, for example, amphorae used to export wine were marked with
the name of the marker, the place of origin, and official mark, the latter presumably
signifying fitness to drink. Thousands of Roman trademarks have been catalogued;
particularly those used one clay lamps. Roman goods were exported throughout the
Roman Empire and their remains have been found in numerous countries across Europe
and beyond. Even bread found in the ruins of Pompeii was found to bear the maker’s
stamp.
business concerned and in respect either of all the goods or services in respect of which the trade mark
is registered or of some only of those goods or services.
81
Ibid at pg 810.
82
Helen E Norman, Intellectual Property Law 328(Oxford University Press 2nd edn., 2013)
[35]
3.1.2 Medieval Use of Trade Marks:
Use of trade mark in the Middle Ages falls again into these two broad categories,
namely marks to show ownership and merchant’s marks. Schechter (in his seminal
work, Historical Foundations of Trade Mark Law, Columbia University Press, New
York, 1925) describes theses as proprietary and production marks. 83
3.1.2.1 Proprietary Marks:
The use of the proprietary mark on goods (i.e. branding them as a means of
showing ownership) can be considered similarly to the adoption of heraldic devices.
The practical significance of such branding becomes clear when it is remembered the
frequency with which goods might be affected by piracy or shipwreck. Where goods84
had been so lost in transit, the seller and original owner could reclaim them, if they
were later recovered, by proving that they bore his mark. Throughout the trading cities
of Northern Europe, laws were passed enabling merchants to get back lost or stolen
goods upon proof of entitlement to their mark. In England, Stat. 27 Ed III Chap 13
(1353) facilitated the recovery of goods in this manner, the statute being invoked as late
as Hamilton v. Davis (1771) 5 Burr 2732. Here Lord Mansfield held that the claimant
was entitled to recover certain hogsheads of tallow, lost en route from Ireland to
Liverpool, from the defendant, even though it couldn’t be established how the
defendant had acquired the goods.
3.1.2.2 Production Marks:
When considering the use of production marks, two things need to be

remembered, first the overwhelming power of the Craft Guilds, and the fact that the
public bought goods direct from the maker. Not only in England, but throughout
continental Europe, virtually all industry up until the fifteenth century was organized in
towns and cities by the guilds, who, in return for the grant of a monopoly over a
particular product, saw it as their function to preserve high standers of quality. Goods
were marked so that poor workmanship could be identified and punished.
Consequently, as a form of consumer protection, there were numerous national, local,
83
Ibid at pg 329
84
The Sale of Goods Act, 1930 Sec 2(7):“goods” means every kind of movable property other than
actionable claims and money; and includes stock and shares, growing crops, grass, and things attached
to or forming part of the land which are agreed to be severed before sale or under the contract of sale.
[36]
and Guild regulations providing for the compulsory marking of goods, and setting out
criminal penalties for breach. Examples include bread makers, brewers weavers and of
course, gold silversmiths.
3.1.3 The Rise of the Age of the Consumer:
How then did the trade mark evolve from the production mark, designed to
create collective goodwill for the Guild, to the asset mark of today, creating individual
good will for the trader in question? Again, the answer lies in trading conditions. So
long as goods were brought by the consumer dealing directly and face to face with the
craftsman there was no need for a trade mark as an indication of origin (although one
was needed as a guarantee of quality).85 Trading in the middle Ages was by and large
very localized with consumers and craftsman living in the sea community, although as
Schechter explains, cloth and cutlery were two trades which form a relatively early date
were located in only a handful of towns, so that the resulting goods had, of necessity,
to be transported over long distances to reach consumers. 86 Moreover with the
craftsman usually having his place of business in the same vicinity as others of the same
type and being closely controlled by his Guild, it was difficult for him to acquire any
individual goodwill or indulge in any real form of competition, where fair and unfair.
It is only when goods of a durable nature are transported that the trade mark as a mark
of origin acquires any significance.
The decisive event, therefore, which changes trade marks from what Schechter
calls liability marks to asset marks, is the industrial Revolution. Once technology
enables goods to be mass produced in a mail or factory, and then transported to cities
many miles away, the producer and consumer are separated. The maker’s mark
therefore has a different role to fulfill. It is needed to identify the source from which
85
Id.
86
Consumer Protection Act, 1986 Sec 2(1)(d):"consumer" means any person who(i) buys any goods for
a consideration which has been paid or promised or partly paid and partly promised, or under any system
of deferred payment and includes any user of such goods other than the person who buys such goods for
consideration paid or promised or partly paid or partly promised, or under any system of deferred
payment when such use is made with the approval of such person, but does not include a person who
obtains such goods for resale or for any commercial purpose; or
(ii) hires or avails of any services for a consideration which has been paid or promised or partly paid and
partly promised, or under any system of deferred payment and includes any beneficiary of such services
other than the person who hires or avails of the services for consideration paid or promised, or partly
paid and partly promised, or under any system of deferred payment, when such services are availed of
with the approval of the first mentioned person;
[37]
satisfactory goods have come. Nevertheless, the explosion in the use and exploitation
of trademarks does not really happen until the latter part of the twentieth century. What
matters is the way in which retailing habits change, from selling goods in small,
personalized outlets (the local shops), to selling in sophisticated, multi-national
hypermarkets offering thousands of competing brands of prepackaged, ‘designer’
goods from around the world. The advent of internet shopping is likely to have a further
impact on the role of trade mark. 87
3.2 International Conventions of Trade Mark:
Trade and commerce is the lifeline of economy of any nation. In an era of

competitive economics, the goods are traded by their names which may indicate their
quality and identity distinct from others. Trade mark is, by far, the most commonly used
intellectual property right.88 The impotence of trade mark was recognized at global level
through Madrid agreement way back in 1891. From Madrid to TRIPs the international
legal system in the field of trade mark has developed significantly.
3.2.1 The Paris Convention, 1883:
Paris convention is an outcome of a diplomatic conference which was held in

1880 at Paris the capital of France a result the first treaty of Intellectual Property Right,
i.e. The Paris Convention for the Protection of Industrial Property was came into
existence. This treaty was signed by 11 countries on 20 March 1883, these beginner
nations are Belgium, Brazil, France, Guatemala, Italy, the Netherlands, Portugal, El
Salvador, Serbia, Spain and Switzerland. Guatemala, El Salvador and Serbia denounced
and reapplied the convention via accession which signed in Paris the Capital of France.
This treaty was revised in different era and different places, viz at Brussels, Belgium,
on 14 December 1900, at Washington, United States, on 2 June 1911, at The Hague,
Netherlands, on 6 November 1925, at London, United Kingdom, on 2 June 1934,
at Lisbon, Portugal, on 31 October 1958, and at Stockholm, Sweden, on 14 July 1967,
and was amended on 28 September 1979. As of February 2017, the Convention has 177
contracting member countries and it became a widely adopted treaty worldwide. 89
87
Ibid at pg 330
88
Infra note 5 at pg 162
89
Available at http://www.livelaw.in, visited on March2, 2018, at 08:30pm.
[38]
The key requirements of Paris Convention include trademarks, utility models

and industrial design. However, for trademarks, in order to preserve priority the interval
between the original filling and filling in another member country is limited to six
months. The convention contains stronger substantive guarantees for trademarks then
it does for patents.
First, the convention facilitate leveraging goodwill from one country to others
through its ‘well-known marks’ provision : under Article 6, members must prohibit the
use, refuse to register or cancel the registration of ant symbols where use is libel to
create confusion with a mark that is ‘well known’ in that country for use on identical
or similar goods. Second, the convention facilitates use of the same mark in all reasons.
Article 10 requires member to provides ‘effective protection against unfair
competition’90
3.2.1.1 The Substantive Provisions of Paris Convention:
3.2.1.1.1 National Treatment: Article 02 and Article 03 provide extra territorial

benefit for a natural, juristic person or either national or domiciled in a state party to
the Convention shall, have a right to exclude the other persons from his intellectual
efforts, it means when an applicant files an application for a patent or a trademark in a
foreign country member of the Union, the application will enjoy his rights as the same
as if it came from a national of this foreign country.91 (e.g. if the applicant becomes
owners of a patent or of a registered trademark), the owner benefits from the same
90
M. K. Bhandari, Law Relating to Intellectual Property Right 162 (Central Law Publications,
Allahabad, 3rd edn., 2012 )
91
Paris convention Art 1 : (1) Nationals of any country of the Union shall, as regards the protection of
industrial property, enjoy in all the other countries of the Union the advantages that their respective laws
now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for
by this Convention. Consequently, they shall have the same protection as the latter, and the same legal
remedy against any infringement of their rights, provided that the conditions and formalities imposed
upon nationals are complied with.
(2) However, no requirement as to domicile or establishment in the country where protection is claimed
may be imposed upon nationals of countries of the Union for the enjoyment of any industrial property
rights.
(3) The provisions of the laws of each of the countries of the Union relating to judicial and administrative
procedure and to jurisdiction, and to the designation of an address for service or the appointment of an
agent, which may be required by the laws on industrial property are expressly reserved.
[39]
protection and the same legal remedy against any infringement as if the owner was a
national owner of this right92.
3.2.1.1.2 Priority Right: Article 4 of the Paris Convention discussed the "Paris
Convention priority right" or "Union priority right" which provides that an applicant
from one contracting State shall be able to use its first filing date (in one of the
contracting State) as the effective filing date in another contracting State, provided that
the applicant, or his successor in title, files a subsequent application within 6 months
for trademarks from the first filing. 93
3.2.1.1.3 Temporary Protection: Article 11(1) of the Paris Convention provide that
countries of the Union shall, in conformity with their domestic legislation, grant
temporary protection to patentable inventions, utility models, industrial designs, and
trademarks, in respect of goods exhibited at official or officially recognized
international exhibitions held in the territory of any of them 94
3.2.1.1.4 Mutual independence of trademarks in the different Countries of the

Union: Articles 4bis and 6 give mandates for foreigners, that application for a patent
or the registration of a trademark shall be determined by the member state in accordance
with their municipal law and not by the decision of the country of origin or any other
countries. 95 The Law of Patent applications and trademark registrations will be
independent among contracting countries. 96
3.2.2 The Madrid Agreement and Protocol, 1989:
The Madrid Agreement concerning the International Registration of Marks (the

Agreement) was signed on April 14, 1891. It provided for trademarks registered in one
country to be extended to other countries. The system worked reasonably well in those
countries that used it but, as a result of number of perceived defects, failed to attract
many adherents. Major trading nations such as the United States, Canada, Australia, the
United Kingdom, Japan and South Korea remained outside the system, in an attempt to
92
Paris Convention Art 2: Nationals of countries outside the Union who are domiciled or who have real
and effective industrial or commercial establishments in the territory of one of the countries of the Union
shall be treated in the same manner as nationals of the countries of the Union.
93
Paris Convention Art 4
94
Article 11(1) of Paris Convention
95
Article 4bis of Paris Convention
96
Paris Convention Article 6: The countries of the Union undertake to protect service marks. They shall
not be required to provide for the registration of such marks.
[40]
make the system attractive to wider range of countries the Agreement was
complemented by a protocol (“the Protocol”), which was adopted in Madrid on June
27, 1989, and came into force on April 1, 1996. The Agreement and the Protocol
together from the “Madrid System”, which is administered by the International Bureau
of the World Intellectual Property Organization (WIPO) based in Geneva. The
countries that have adhered to the Agreement or the Protocol (or both) constitute the
“Madrid Union”. Rules implementing the Agreement and Protocol have been adopted
and are known as the “Common Regulation”. 97
With respect to the acquisition of rights to trademarks, the Paris convention

relies on the same expensive state by state registration system that it uses for patents.
The Madrid Agreement for International Registration of Trademark, which went into
effect less than ten years after the conclusion of Paris Convection. Under the Madrid
Agreement, once protection is secured in a trademark holder’s country, it can be
extended to other member states by filling an international application with the
International Bureau at WIPO, specifying where protection is sought.
Because the Madrid Agreement bases protection on securing registration in a

trader’s home country, it presents a problem for countries that make registration
contingent on the use of the trademark in commerce. To enable the United States to join
the Madrid Agreement, a modified version of the agreement was created in 1989. Under
the ‘Madrid Protocol’ an application is sufficient to enter the system. 98
3.2.2.1 Protection under the Agreement:
In order to use the system it is necessary to have one of three specified linked with
a Protocol member country, namely;
 Be a national of a protocol member country; or

 Be domiciled in a protocol member country; or
 Have a real and effective industrial or commercial establishment in a protocol
member country.99
97
These are available on the WIPO website.
98
Supra note 13 at pg 162.
99
Madrid Protocol, Art 2.
[41]
Such a person (which may of course be a corporation) must hold a trade mark
registration, or an application for a registered trade mark, in a Protocol member country
with which he has one of those links. This is known as “the basic registration” or “the
basic as application” and the county in which it exists is known as “the country of
origin”. The national Office which has registered the trade mark or to which the
application has been submitted is known as “the Office of origin”. The holder of the
basic registration or the basic application files an application for an international
registration with the Office of origin, which, after checking that the particulars
appearing in the international application correspond to the particulars appearing in the
basic registration or basic application, forwards the international application to the
International Bureau of WIPO. The international application must relate to the same
trade mark as the basic registration, or application and must be for the same goods or
services the (or for goods or services contained with those cover by the basic
registration or application). The International Bureau registers the trade mark, awarding
it the date on which the international application was received at the Office of origin,
providing that it is received by the International Bureau within two months from that
date.100 The international Bureau notifies the international registration to the national
trade mark Office of the countries in which the applicant has requested protection (“the
designated countries”). Each Office then examines the trade mark in accordance with
its own national law and must inform the International Bureau, within a specific time
limit, if the trade mark cannot be protected in that country. Under the Agreement the
time limit was 12 months. The protocol allows contracting Parties to make a declaration
extending the time limit to 18 months and to declare further that a refusal of protection
based on an opposition may be issued after the expiry of that period, 101 provided that
certain condition are complied with. In so far as protection is not refused, the trade mark
is protected in each designated country, as from the date of the international registration,
in the same way as if it had been registered in that country. 102 The holder of the
international registration may also ask for protection to be extended to a protocol
country subsequently to the date of the international registration. In that event, the mark
will be protected as from the date when the request for extension is recorded by the
100
Madrid Protocol, Art 3 (4).
101
Madrid Protocol, Art. 5 (2)(b)and (c).
102
Madrid Protocol, Art 6 and 7.
[42]
International Bureau. 103 An International registration is valid for a period of 10 years

and may be renewed for further periods of 10 years. 104
3.2.3 The TRIPS Agreement, 1994:
The most influential efforts on the global scale regarding the protection of
intellectual properties is an undoubtedly the agreement on Trade Related Aspect of
Intellectual property Rights, which was adopted at Marrakesh on April15, 1994 and
came into force on January 1 st, 1995.105
Section 2 of Part I of TRIPS deals specifically with Trade Mark. The section
spreads over seven Articles from Article 15 to 21. Article 15 deals protectable subject
matters and defines a Trade mark as “any sign”, or any combination of sign, it should
be capable of distinguishing the goods or services of one from the other goods and
services.
TRIPS explicitly incorporate the principal provisions of the Paris convention,

including its national treatment provision, its priority rule, and substantive protection.
It adds a most-favored nation requirement, elaborates on the requirement for trademark
protection, and extends the substantive rights a member state must confer.
Prior to TRIPS, some countries had been given local manufactured a boost when
they manufactured goods for foreign trademark holder by requiring the foreign
trademark holder to display the local manufacture’s mark. TRIPS Article 20 prohibits
encumbering foreign marks in this way, although identification of the undertaking that
produced the goods and services may be required. Member also enjoys a measure of
flexibility. Article 17 permits ‘limited’ expectations provided they ‘take account of the
legitimate interest of the owner of the trademark and of the third parties’.
103
Madrid Protocol, Art 3.
104
Madrid Protocol, Art 6 and 7.
105
Ibid at pg 162.
[43]
3.2.3.1 Provision of Trade mark under TRIPS Agreement
In relation to registered marks, TRIPS provides by far the most detailed

international prescription of the substantive rules relating to their protection. Under
Section 2 of Part I of TRIPS as follow 106
Protectable Subject Matter (Article 15); defines the protectable subject matter
expensively, to include, for example, service marks. It also prohibits discrimination as
to registrability based on the nature of the goods and services to which a trade mark is
to be applied. 107
Rights Conferred (Article 16); requires recognition of certain rights, in particular over
the use of an identical or similar mark on identical or similar goods or services where
such use would result in a likelihood of confusion (although not extending to
dilution).108
Exceptions (Article 17) & Term of Protection (Article 18); provide, respectively, for
limited exception to the rights conferred by a trade mark, and for the potentially
indefinite registration of marks on the basis of renewable terms each of a minimum of
seven years.109110
Requirement of Use (Article 19); limits the circumstances, in which registration may
be revoked for non-use, 111
106
Lionel Bently & Brad Sherman, Intellectual Property Law 821 (Oxford University Press, 4th edn
2014).
107
TRIPS Agreement Art 15
108
TRIPS Agreement Art 16: The owner of a registered trademark shall have the exclusive right to
prevent all third parties not having the owner’s consent from using in the course of trade identical or
similar signs for goods or services which are identical or similar to those in respect of which the
trademark is registered where such use would result in a likelihood of confusion. In case of the use of an
identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights
described above shall not prejudice any existing prior rights, nor shall they affect the possibility of
Members making rights available on the basis of use.
109
TRIPS Agreement, Art 17: Members may provide limited exceptions to the rights conferred by a
trademark, such as fair use of descriptive terms, provided that such exceptions take account of the
legitimate interests of the owner of the trademark and of third parties.
110
TRIPS Agreement Art 18, Initial registration and each renewal of registration, of a trademark shall be
for a term of no less than seven years. The registration of a trademark shall be renewable indefinitely.
111
TRIPS Agreement, Art 19
[44]
Other Requirements (Article 20); prevents certain conditions being imposed on the
use of marks, and 112
Licensing and Assignment (Article 21); prohibit the compulsory licensing of marks.
The significance of these standards for UK laws is mainly in the restrictions that they
place on potential future developments, most obviously the adoption of plain packing
regulations for tobacco products.113
3.3 Judicial Opinion of Equity and Trade Mark
It took a little while for the Court of Chancery to catch up with the courts of
common law. In Blanchard v. Hill (1742) 2 Atk 484, Lord Hardwicke refused to grant
an injunction to restrain the defendant from placing the claimant’s trade mark on
playing cards for the simple reason that to give protection would create an unfair
monopoly. Freedom to trade was likewise used as the reason for denying equitable
relief by Lord Eldon in Cruttwell v. Lye (1810) 17 Ves 335 However, it was eventually
recognised that the ‘get up’ of a business could be protected in Knott v. Morgan (1836)
2 Keen 213, where Lord Langdale MR restrained the defendant from using the same
works, colour scheme and lettering on his omnibuses as were already used by the
claimant in his rival enterprise.
A significant shift in thinking occurred in Millington v. Fox (1838) 3 My & Cr

338, where Lord Cottenham granted an injunction on the ground simply that a trade
mark was ‘property’ treating it as conferring the same rights on its owner as entitlement
to a piece of land. Use of the mark by another amounted to trespass. The defendant’s
state of mind was irrelevant. It was sufficient that the claimant’s mark had been
reproduced on the defendant’s steel bars.
Thereafter, Chancery cases fall into two groups. There are those where it was
held that likely-hood of deception was a precondition to equitable relief and there are
112
TRIPS Agreement, Art 20: The use of a trademark in the course of trade shall not be unjustifiably
encumbered by special requirements, such as use with another trademark, use in a special form or use in
a manner detrimental to its capability to distinguish the goods or services of one undertaking from those
of other undertakings. This will not preclude a requirement prescribing the use of the trademark
identifying the undertaking producing the goods or services along with, but without linking it to, the
trademark distinguishing the specific goods or services in question of that undertaking.
113
TRIPS Agreement, Art 21: Members may determine conditions on the licensing and assignment of
trademarks, it being understood that the compulsory licensing of trademarks shall not be permitted and
that the owner of a registered trademark shall have the right to assign the trademark with or without the
transfer of the business to which the trademark belongs.
[45]
those which treated trademarks as property. An example of where the Court of

Chancery followed the common law and insisted on deception is Perry v. Trufitt (1842)
6 Beav 66. However, this case and others like it (such as Croft v Day (1843) 7 Beav 84
and Burgess v Burgess (1853) 3 De G, M & G 896) tell us that equity differed from the
common law in its approach to deception, concentrating not on the defendant’s state of
mind but on the effect of the false statement on the consumer. An example of the
property approach is Hall v. Barrows (1863) 4 De G, J & S 150, where the Lord
Chancellor, Lord Westbury, Treated trademarks as analogous to patents and copyright
for the purposes of infringement.114
3.4 Conclusion:
The preceding historical account shows several things. First, the way in which
trademarks are used has, in some ways, changed little, even though trading conditions
today are far removed from those of previous times. Although medieval use was
primarily to guarantee quality, use since the Industrial Revolution has been to tell the
consumer about the origin of the goods. Trade marks have always been messengers.
They are the communications link between the manufacturer and ultimate consumer
(not necessarily the purchaser) of the goods.
The legal history of trademarks shows that the principles articulated in the early
cases continue to influence today’s law. There is the perennial concern that trademarks
create unfair monopolies. Further, the perception of early cases that the key to the
protection of trademarks was the effect of defendant’s false statement on the consumer
rather than the right of property in the mark remains today. It is bound up in the judicial
concern not to create monopolies. In turn, it raises one of the underlying debates in the
law of trademarks, namely whether trade mark law exists to protect consumers or the
trade mark owner.
****
114
Id.
[46]
Chapter IV
THE DEVELOPMENT OF INDIAN

TRADE MARK LAW
Commercial India has long struggled for the establishment of

a trade mark register as in other civilized countries. An Indian Patent
Office for the protection of inventions now exits. Though the need for
protection of inventions is far less, in India, than for machinery to
protect trademarks; for though a large proportion of the population
is engaged in manufacture or trade.115
- Dr. S. Venkateswaran*
4.1 Origin of Trade Mark in India:
Trademark law continues to be one of the most interesting branches of law, not
just in the realm of intellectual property law but in terms of general legal developments
as well. The rationale behind trademarks is multi-layered. Trademark’s economically
efficient because it allows the consumer to identify the service or good that he prefers
and to buy that to the exclusion of others in the future.116Consequently, the maker of
the preferred good is encouraged to maintain the production of quality goods.
Moreover, since good quality is associated with that particular trademark, infringement
claims exist when another undertaking uses a similar mark. This prevents the latter from
unjustly enriching from the labour and reputation of the holder of the original mark,
and protects consumer interests.
In Ramdev Food Products v. Arvind Bhai,117 the court held that, the concept of
Trade Mark dates back to ancient time. Even in the Harrapan Civilization marks of
115
Ashwani Kumar Bansal, Law of Trade Mark in India 37 (Thomson Reuters, New Delhi, 3rd edn,
2014).
* Dr. S. Venkateswaran, Venkateswaran on Trade Marks and Passing off (6th Edition 2015).
116
I J. THOMAS McCARTHY, McCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, 2-3
(4th ed. 2000).
117
2006 (33) PTC 281, 299.
[47]
Chapter IV : The Development of Indian Trade Mark Law
trade with foreign countries such as Mesopotamia and Babylon were found embossed
on articles.
The court further stated that the law of Trade Mark was formalized with the
process of registration which gave an exclusive right to a trader to deal in his goods
using a symbol or a mark to distinguish his goods from similar goods sold by other
traders.
In the last decade of British rule in India, a system of registration of trademarks

and statutory protection of registered trade mark was established. This was done by the
enactment of the Trade Marks Act, 1949.w.e.f.11.3.1940, which was followed by the
1958 act and now has been replaced by the 1999 Act, Since the late 1990s
unconventional trademark forms such as sounds, signs, tastes, touch and smells are
gaining more importance. In France, notably, music and sounds have been eligible for
trademark for the last few years. Furthermore, there is also another form of protection
called trade dress, which can be further divided into product packaging trade dress and
product design trade dress. Though most of the activity has been noticed in trademarks,
copyright is also being used for protection of unconventional fields, and strong
possibilities of such developments in the future are being predicted in the area of patents
as well. 118
International arrangements as well as protection in all countries generally does

not extend to all types of trademarks, for example, out of collective marks, certification
marks, and guarantee marks one or the other may not be protected. In India holograms,
and non – visible signs, such as sound marks and olfactory (smell) marks which are not
easily reproduced by graphic means, are not protected. Even otherwise, only a few
countries provide for the protection of these marks in their national law and
international arrangement also does not exist for them.
The delay of about 60 years in the legislation and slow pace of industrial
development appear to be largely responsible for why India cannot boast of
internationally famous trademarks. Moreover, during this period the foreign trade
marks, (FTMS) established a strong foothold in the Indian market, making it difficult
for Indian brands to develop even within the Indian market. It is one thing to be able to
118
Ibid, at pg 39
[48]
export a commodity, but it is completely different to have a demand for the goods from
other countries generated by popularity or prestige of trade mark.
The legislation was necessary to tackle the following difficulties;
 Repeatedly establishing the title to the mark;

 The delay and heavy cost in trade mark litigation;
 Difficulties of Indian merchants in foreign countries,
 Special difficulties relative to the adoption of trade marks in India, and
 The absence of information about the scope and content of laws of other
countries. 119
In the absence of information about the registrability of trademark, Indian trader

used to adopt Trade mark which was not registrable prima facie. Some example of trade
mark in the thirties is superfine Scent, Calcutta soap, and Neem tooth powder which
obviously cannot serve has trade mark. There were bona fide cases of concurrent user
and the absence of a central Trade Mark Office encourage setting up of false claims of
concurrent user in trade mark suits.
Trade mark legislation is beneficial to both vendors and buyers of goods or

services. In the case of the merchant who sells his wares, legislation would have been
a great boon as it would facilitate proof of title. He would not have to produce evidence
of user and reputation to establish his title and but bound to show the registration
certificate. Legislation for effective protection of trademarks will, therefore prevent
spurious goods and will enable the purchaser to buy the goods with confidence. Even
states such as Chile, Peru, Iraq and Manchukuo form no exception. Ceylon had a
registration Act since 1889 and even Siam had promulgated such an Act.
4.2 Development in Different Era:
Protections of interest of owner of the goods and services as well the awareness
of the consumer are the reasons behind the behind the development of trade mark law
in India. There are three major efforts to give the strength of this new trend. These are
discussed as follow:
119
Id.
[49]
4.2.1 Clamour for Trade Mark law (1877-1940):
Bombay Mill Owners’ association in 1877 made the first demand for making
provision for registration of trade marks on the lines of the English Trade Marks
Registration Act of 1875. Government of India introduced a Bill in 1879 which where
the opinion was divided whether trademarks already registered in England should be
registered afresh in India .A fresh bill was introduced in 1880; again the opinion being
divided; the original bill of 1879 was restored. But the Select Committee favoured
adoption of a scheme for registration of India marks in England.
This suggestion met with severe opposition and the Bill was dropped. The
Cutlers’ company; Sheffield, on 8.2.1902 requested for the constitution of a trade mark
Office in India. With the exception of the Manchester Chamber of Commerce in
England, commercial opinion in England was in favour of such a law. The commercial
community favoured the legislation, whereas the local governments, while recognizing
the benefits, did not consider the time for such a law. Part of it was ostensibly due to
struggle against the economic dominance of English enterprises in the Indian market.
In 1905, the Association of Chambers of Commerce of the U.K. stated that there
was really no valid reason why the Indian Empire should stand in isolation from the
rest of the world in this matter. In fact London Chambers of Commerce were worried
about counterfeiting of English marks by German, Austrian and Italian manufacturers
in to the Indian market. In 1906, yet another abortive attempt was made by the UK
Association of Chambers of Commerce. However the British government of India did
not oblige. In 1908, the Association of Chambers of Commerce of the UK reopened the
question and this time it found that the Indian response had become encouraging.
The commercial community in India was disillusioned about the efficacy of

common law for protecting trademarks which was highlighted by the following
resolution passed in December 1927 in the industrial and commercial congress. 120
This congress recommends to the government of India that it is desirable in the

interests of Indian trade and industries to introduce at an early date legislation for the
registration of trade marks in India, in the absence of which Indian merchants are put
120
Id.
[50]
to considerable hardship both in India and abroad, and India is unable to join the
international convention of the protection of Industrial Property.
The Bengal National Chamber, the Bombay Chamber, the Upper India
Chamber, and the Associated Chambers of commerce consistently demanded trade
mark legislation. The Secretary of State for India state in the British House of Commons
that they are very much concern about, the manufacturers in England and India. He
assured the government of India would give the due weight to the demand. 121
4.2.2 Protection of Trademarks Prior to Trade Marks Act, 1940:
In the absence of a registration system and statutory protection for Trade Marks,
there were very few remedies which a person could invoke if, he /she felt aggrieved
against any other person using a mark identical with or deceptively similar to his Trade
Mark. The aggrieved trader could invoke the civil law of tort or institute a passing off
action against the offender to restrain him by an injunction from doing so and to recover
damages for any loss or injury caused to him. He could invoke the criminal law and
prosecute the offender for offence against the provision of the Indian penal code (IPC),
1860122 and of the Indian Merchandise Marks Act, 1889.123 The remedies which were
and continue to be available to aggrieved Trade Mark owners are briefly set out below.
4.2.2.1 Civil remedy –The Passing off Action:
It is an actionable civil wrong for one person to pass off one’s goods as the
goods of another. Such passing off may take many forms including the slavish copying
or colourable imitation per se, but in thereby passing of one’s goods as those of another,
which are usually more reputed goods of a competitor. The plaintiff may institute a
passing off action against the defendant to restraint the latter from persisting with such
unlawful conduct and to recover damages.
In such an action the plaintiff has to prove that the mark had become so
associated with his goods that the use of that mark , or a colourable imitation thereof,
by the defendant would have the probable effect of the defendant ‘s goods being
mistaken for those of the plaintiff , or of causing confusion or deception . It is not
121
Quoting The Statesman, 2.5.1932.
122
Indian penal code , 1860(45 of 1860)
123
Indian Merchandise Marks Act, 1889(IV of 1889)
[51]
enough for the plaintiff to prove that the mark was used by him in relation to his goods.
He must further prove that the use of the same or a deceptively similar mark by the
defendant in respect of his goods would result in the defendant’s goods being mistaken
in the market for goods emanating from the plaintiff or in deception or confusion. The
burden of proof is on the plaintiff throughout. He has to carry that burden every time
he sues another for piracy of his trade-mark.
4.2.2.2 Criminal Remedies:
The IPC made the “using of a false Trade Mark” an Offence punishable with
imprisonment up to one year or fine, or both unless the accused proved that he acted
“without intent to defraud.”124 It defined Trade Mark to mean “a mark used for denoting
that the goods are the manufacture or merchandise of a particular person”. A person
was said to use a false Trade Mark, if he marked any goods or receptacle containing
goods or if he used any receptacle with any marks thereon in a manner reasonably
calculated to cause it to be belied that the goods so marked or any goods contained in
any such receptacle so marked, are the manufacture or merchandise of a person whose
manufacture or merchandise they are not.125
Sections 483 to 486 of Code made in an offence for any person to counterfeit
any Trade Mark, punishable with imprisonment up to 2 years, or fine, or both. Or a
person will be liable for imprisonment up to one year, or fine, or both, unless the
accused proved that he had acted innocently. If he make or have in possession any disc,
plate or other instrument for the purpose of counterfeiting
4.3 Development of Trade Marks Act, 1940 to the Act of 1958:
The trade marks registry was established pursuant to the enactment of the Trade
Marks Act, 1940.126 The Trade Marks Registry was set up as part of the Patent office
in Calcutta. By the Trade Marks (Amendment) Act, 1943, the Trade Mark Registry was
separated and was transferred from the Controller of Patent and Designs to a separate
Registrar of Trade Marks in Bombay.
124
Ss. 478-489 of IPC as substituted by s. 3 of the Indian Merchandise Marks Act, 1889.
125
S. 482 of IPC read with s. 478, s. 480 of IPC.
126
Trade Marks Act, 1940 (5 of 1940).
[52]
After the enactment of Trade Marks Act, 1940, with the growth of trade and
commerce, the need was left to provide more effective protection of trademarks. In
November 1953, Government of India appointed a committee known as the Trade
Marks Enquiry Committee for reform of the trade marks law. There was strong
difference of opinion on among the members of the committee. Government of India
appointed Justice N. Rajagopala Ayyangar of the Madras High Court to further
examine the committee’s report, the 1940 Act and other related statutes, and make
recommendations for the revision of the law. In October 1955, Government of India
asked Dr. Venkateswaran, Officer on Special Duty (Trade Marks, Patents and Designs)
to draft a comprehensive Trade and Merchandise Marks Bill consolidating the
provisions of the IPC relating to trademarks and implementing the recommendations of
the Ayyangar Report.
The Trade and Merchandise Act 1958, (hereinafter 1958 Act) was passed by
parliament and received the assent of the president of India on 17 October 1958. The
1958 Act was brought into force on 25-11-1959. The Trade and Merchandise Marks
Rules, 1959 (Trade Mark Rules, 1959) made by the Central government in pursuance
of the rule making power conferred on it by section 133 of the Act, were also made
effective on the same date. 127
Reformation of the 1958 Act in form of Trade Marks Act, 1999:
In the year 1993, law of trademarks was sought to be amended and for this
purpose the Trade Marks Bill, 1993 was introduced in the Lok Sabha. The Bill was
passed in the Lok Sabha in 1995, but could not be passed in the Rajya Sabha till the
expiry of the term of the Lok Sabha in May 1996 and, therefore, the Bill lapsed. The
Trade Marks Bill, 1999 was introduced in the Rajya Sabha on 1-12-1999 and after being
passed by both houses has been assented to by the President of India on 30-12-1999.
The 1958 Act stands replaced from 15.9.2003, the day of the commencement of the
1999 Act.
Besides many changes in the details of the law, the recognition to ‘shape trade
marks’, and introduction of Trade Marks for services are epoch making milestones of
the 1999 Act. It has divided the trade marks into two legally unequal types of marks-
127
Ibid, at pg. 41.
[53]
a. Trade Marks as defined in section 2 (1) (zb). And

b. Well- known Trade Marks as defined in section 2 (1) (zb). The establishment
of an appellate Board and withdrawal of the powers of the Central Government
are touchstones of the new Act.
4.3.1 The Trade Marks Act, 1999:
Whenever earlier state of law is changed by repealing and re-enacting the

legislation, then it cannot be called a new law and for all practical purposes it is an
amendment of trade mark law. The 1999 Act has done exactly this, and therefore, all
rules relating to interpretation of amending laws shall be applicable to interpretation of
the 1999 Act.
Indian Trade Mark law had been controversial in view of the policy prescription
against the use of foreign trade marks, which was relaxed by allowing hybrid trade
marks in seventies. Restriction on use of FTMs was withdrawn by omitting the
128
guideline in industrial policy. 1991 and issue of press not on 15.5.1992. Indian
trademarks law had been controversial also because of decision of Calcutta High Court
in 1968 in American Home vs. Mac. (Dristan case 129) whereby it had become
impossible for FTMs to register trade marks in India, which legal position was corrected
by the Supreme Court in the year 1985 in American Home vs. Mac.130
The necessity to amend the law also arose as India became original member of
WTO in 1995 and it was necessary to bring Indian law in conformity with TRIPs. It
acceded to the Paris Convention with effect from 8 December 1998. There has been a
need for Indian trade mark law to be in line with advancements in international thinking
on the subject and to use the IP regime to its advantage.131
4.3.1.1 Objects and Reasons of 1999 Act:
In view of the extensive amendment necessitated in the 1958 Act, the

government thought it fit to repeal and re-enact the said Act. It may be noticed that
there was no mention of India joining WTO effective 1 January, 1995 or joining the
128
Ibid, at pg.42
129
AIR 1969 Cal 342 (DB)
130
AIR 1968 SC 137.
131
Id.
[54]
Paris Convention in December 1998 nor was there any mention if India preparing to
join the Trade Marks Law Treaty or the Madrid Agreement 132 in any related speech or
document while introducing the bill.
The Minister-in-charge while introducing the Bill on 1 December, 1999 said,

that a comprehensive review of the existing law be made in view of development in
trading and commercial practices increasing globalization of trade and industry, the
need to encourage investment flows and transfer of technology. The 1999 Act proposes
to achieve the above purposes. The industry and commerce minister appended the
following statement of object and reason to the bill dated 19-11-1999 which read as
follows:
i. enlarging the jurisdiction of courts to bring the law in this respect on par with
the copyright law, amplifying the power of the court to grant ex parte injunction
in certain cases and other related amendments to simplify and streamline the
Trade Mark law and procedure.133
ii. Providing for registration of trade mark for services, in addition to goods;
iii. Registration of trademarks, which are imitation of well-known trademarks, not
to be permitted, besides enlarging the grounds for refusal of registration
mentioned in clauses 9 and 11.consequently, the provision for defensive
registration of trademarks are proposed to be omitted;
iv. Amplification of factors to be considered for defining a well –known mark;
v. Doing away with the system of maintaining registration of trade marks in part
a and part b with different legal right, and to provide only a single register with
simplified procedure for registration and with equal right;
vi. Simplifying the procedure for registration of registered user and enlarging the
scope of permitted use;
vii. Providing for registration of “collective marks” 134 owned by association etc.
viii. Providing an appellate board for speedy disposal of appeals and rectification
applications which at present lie before high court;
132
On 7th February,2007 Government of India decided to accede to Madrid Protocol, 1989. The Trade
Mark Amendment Bill of 2009 has been passed in 2010.
133
Ibid, at pg. 43.
134
Sec 2 (zg) of Trade Mark Act, 1999, defines, "collective mark" means a trade mark distinguishing the
goods or services of members of an association of persons (not being a partnership within the meaning
of the Indian Partnership Act, 1932 (9 of 1932) which is the proprietor of the mark from those of others.
[55]
ix. Transferring the final authority relating to registration of certification

trademarks to the registrar instead of the central government;
x. Providing enhanced punishment for the offences relating to trade marks on par
with the present copyright act, 1957135, to prevent the sale of spurious goods;
xi. prohibiting use of someone else’s trademarks as part of corporate manes or
name of business concern;
xii. extension of application of convention country to include countries which are
members of group or union of countries and Inter-Governmental organizations;
xiii. incorporating other provision like amending the definition of “trade mark”
provision for filling a single application for registration in more than one class,
increasing the period of registration and renewal from 7 to 10 years ;
xiv. making trade mark offences cognizable,
4.3.1.2 Salient Features of Trade Mark Act, 1999:
The Trade and Merchandise Marks Act, 1958 has served its purpose over the
past four decades. It was felt that a comprehensive review of the existing law be made
in view of development in trading and commercial practices, increasing globalization
of trade and industry and to achieve these purposes, the Act purposes to incorporated
inter-alia the following features:136
i. Providing registration of trade mark for services, in addition to goods. 137 This
is novel feature introduce by the Act of 1999.
ii. Registration of trademarks which are imitation of well-known trade mark, not
to be permitted, besides enlarging the grounds for refusal the registration,
consequently, the provisions for defensive registration of trademarks have been
proposed to be omitted.
iii. Amplification of factors to be considers for defining a well-known138 trade
mark.
135
Copyright Act, 1957(14of 1957).
136
M. K. Bhandari, Law Relating to Intellectual Property Right, Pg (Central Law Publications,
Allahabad, 3rd end., 2012 )
137
Sec 2 (j) of Trade Mark Act, 1999, defines, "goods" means anything which is the subject of trade or
manufacture.
138
Sec 2 (zg) of Trade Mark Act, 1999, defines "well-known trade mark" in relation to any goods or
service, means a mark which has becomes so to the substantial segment of the public which uses such
goods or receives such services that the use of such mark in relation to other goods or services would be
likely to be taken as indicating a connection in the course of trade or rendering of services between those
goods or services and a person using the mark in relation to the first mentioned goods or services.
[56]
iv. Doing away with the system of maintain registration of trade mark in Part-A
and Part-B with different legal rights, and to provide only a single register with
simplified procedure and with equal rights.
v. Simplifying the procedure for registration of registered user and enlarging the
scope of permitted use.
vi. Provided for an Appellant Board139 for speedy disposal of appeals and
rectification of applications which under the Act of 1958, were entrusted to the
High Court.
vii. Providing for registration of “collective Marks” owned by associations etc.
viii. Transferring the final authority relating to registration of certification
trademarks140 to the Registrar141 instead of the Central Government.
ix. Providing for enhanced punishment for the offence relating to trade marks on
par with the present Copyright Act, 1957 to prevent the sale of spurious goods.
x. Prohibiting the use of someone else’s trademarks as part of corporate names, or
name of business concern.
xi. Extension of application of convention country to include countries which are
members of Group or Union of countries and Inter-Government Organizations.
xii. Increasing the period of registration and renewal from 7 years to 10 years as
required by TRIPs.142
xiii. Filling of single application for registration in more than one class.
xiv. Making trade mark offence cognizable. 143
139
Sec 2 (a) of Trade Mark Act, 1999, defines , "Appellate Board" means the Appellate Board established
under section 83:
140
Sec 2 (zb) of Trade Mark Act, 1999, defines "trade mark" means a mark capable of being represented
graphically and which is capable of distinguishing the goods or services of one person from choose of
others and may include shape of goods, their packaging and combination of colors , and in relation to
Chapter XII (other than section 107), a registered trade mark or mark used in relation to goods or services
for the purpose of indicating or so as to indicate a connection in the course of trade between the goods
or services, as the case may be, and some person having the right as proprietor to use the mark, and in
relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services
for the purpose of indicating or so to indicate to a connection in the course of trade between the goods or
services, as the case may be, and some person having the right, either as proprietor or by way of permitted
user, to use the mark whether with or without any indication of the identity of that person, and includes
a certification trade mark or collective mark.
141
Sec 2 (y) of Trade Mark Act, 1999, defines, "Registrar" means the Registrar of Trade Mark referred
to in section 3.
142
TRIPS (Trade Related Aspect of Intellectual Property Rights) India ratified the TRIPS Agreement in
1994.
143
Sec 2 (c) of Code of Criminal Procedure,1973 defines ," cognizable offence" means an offence for
which, and" cognizable case" means a case in which, a police officer may, in
accordance with the First Schedule or under any other law for the time being in force, arrest without
warrant;
[57]
From 1958 to 1999 the Trade Mark law in India has come to a full circle like
other laws on intellectual property the law relating to trade marks in India is
now harmonized with TRIPs mandates. 144
4.4 Impact of Lack of Trade Mark Legislation:
In 1884, the British government of India had stated that as Government did not
consider legislation for registration of trademarks expedient at the time which was
necessary for adherence to the Convention, it was averse to India’s accession to the
Convention. 145 Absence of legislation and non- accession to the Paris Convention at its
inspection had put Indian manufactures and traders at a disadvantage in the
international arena. This is the reason that Indian industry does not possess prestigious
trademarks which translate the production in to sales.
It is the result of such neglect of building a Trade Mark capital that we find the
markets dominated by goods manufactured in India sold under foreign or other
international Trade Mark(s).Whenever goods are sold under reputed trade mark(s) of
others, it means that some royalty or profit is paid to such owners of the trade mark(s).
Moreover, a part of decision-making in relation such a product would always be with
the foreign proprietor of the trade mark. 146
India as a country and as a society needs to build prestigious trade marks in the
international arena. Which trade mark would exert pull on goods or generate demand
of Indian manufactures from markets, which may translate the same in to exports from
India. Trade marks perform the function of not only identifying the product so as to
facilitate purchase decisions by buyers , but they give an impetus to sales and
production of the enterprise with an identifiable contribution to the economy , as is
submitted.
Generally, a trademark is defined as a "sign that individualises the goods of a

given enterprise and distinguishes them from the goods of its competitors". However,
most international regulations give non-specific definitions of what can be registered
as a trademark and no international treaty concerning trademarks explicitly mandates
144
Ibid, at pg.
145
Venkateswaran, 1937, p. 3.
146
Supra note, 1 at pg. 38.
[58]
contracting parties to register scent marks. In fact, the Trademark treaty explicitly states
it is inapplicable to scent marks.147 Neither the Madrid Agreement Concerning the
148
International Registration of Marks nor the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks149 conclusively defines
what "trademark" means within the context of those agreements. It is therefore possible
that a scent mark could receive protection under either agreement. Similarly, the Paris
150
Convention for the Protection of Industrial Property also does not define
"trademark" for the purposes of that particular convention. However, the Paris
Convention does leave what is a registrable trademark to the domestic law of
contracting parties. Likewise, the TRIPS Agreement states contracting parties may limit
trademark registration to only visible perceptible signs. 151
At the European Community level, the definition of what can potentially

constitute a trademark following the Council Regulation 40/94/EEC on the Community
Trade Mark (CTM), is very open. Article 4 provides the non-exhaustive definition of a
trademark as "any sign capable of being represented graphically, particularly words,
including personal names, designs, letters, numerals, the shape of goods or of their
packaging, provided that such signs are capable of distinguishing the goods or services
from those of other undertakings". The same non-exhaustive definition is given by
Article 2 of the First Council Directive 89/104/EEC to the approximation of the
national trademark laws of the European Member states.
While some examples of signs are given, the term "sign" is deliberately left
undefined. Thus, dictionary definitions reveal that the word has a wide meaning, which
covers both visual and sensory mechanisms for conveying information. Along the same
line, the Explanatory Memorandum issued by the Commission when commenting on
the provision in the draft CTMR, stated very clearly "no type of sign is automatically
excluded from registration as a Community trade mark". Thereby, solid colours or
shades of colours and signs denoting sound, smell or taste are in theory not excluded
147
Trademark Law Treaty 1994, Article 2(1) (b).
148
Madrid Agreement for the International Registration 1891.
149
Protocol relation to the Madrid Agreement concerning the International Registration of Marks 1989.
150
Paris Convention for the Protection of Industrial Property 1883.
151
The World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights
1994, Article 15(1).
[59]
from constituting a trademark under European trademark law provided that they are
capable of being represented graphically. 152
Similarly, the American Federal Lanham Act states that "the term "trademark"
includes any word, name, symbol, or device, or any combination thereof - (1) used by
a person, or (2) which a person has bona fide intention to use in commerce and applies
to register on the Principal Register established by this Act, to identify and distinguish
his or her goods, including a unique product, from those manufactured or sold by others
and to indicate the source of the goods, even if that source is unknown".
The United States Trademark Association has interpreted the terms "symbol, or
device" not to be deleted nor narrowed to prelude registration of such things as a colour,
shape, smell, sound, or configuration which functions as a mark. Thereby, the scope of
subject matter for trademark protection is theoretically unlimited, confined only by the
requirement of the trademark act to identify source. As a result, the tendency in the EU
as well as in the USA seems to be that the word "any" has been taken more and more
literally including non-perceptible signs such as scents.
4.5 Conclusion:
There are three phases of development of trade mark in India, including before
independence of India i.e. Clamour for Trade Mark law 1877-1940. Second phase tassel
of independence (1940-1958) last and foremost era is 1999.The first legislation in
respect of trade mark brought on the statute book was the Indian Merchandise Marks
Act. 1889. This Act was followed by the Trade Marks Act, 1940. Prior to the
enactment of Trade Marks Act 1940 the disputes or problems were resolve by Indian
Merchandise Marks Act 1889. Those relating to the enactment of trademarks of passing
off were decided in the light of section 54 of the Specific Relief Act, 1877, while the
registration problem was tackled by obtaining a declaration as to ownership of a trade
mark under the India Registration Act, 1908. The Trademarks Act, 1940, introduced
the system of registration of trademarks and provided statutory protection to registered
trademarks. In 1958, the Trade Mark Merchandise Marks Act was adopted which
repealed the Indian Merchandise Marks. Act, 1889 and the Trade Marks Act, 1940
and also provided in section 129 that any document declaring or purporting to declare
152
Linda Annika Erlandsson, “The future of Scents as Trademarks in the European Community”.
[60]
the ownership or title of a person to a trade mark other than a registered trade, mark
was not to be registered under the Indian Registration Act, 1908.
The 1958 Act did well for four decade. However, a need was felt to make a
comprehensive review of the 1958 act in view of the developments in trading and
commercial practices, increasing globalization of trade and industry, the need to
encourage investment flows and transfer of technology and to give effective to
important judicial decisions. Further, as India become a party to the agreement on Trade
Related Aspects of Intellectual Property Rights (TRIPS Agreement), it became
mandatory for us to bring our Trade Marks law in conformity with the provisions of
trips agreement. Accordingly, the Trademarks, Act 1999, was adopted which came
into force on September 15, 2003. In India also became a party to Paris convention for
protection of industrial property, 1883 the 1999 Act repealed the 1958 Act. The Trade
Mark Act, 1999, is in conformity with both the international treaties. Apart from the
1999, act, which provides for statutory remedies, the remedies for passing off are also
available for unregistered trademarks under common law.
****
[61]
Chapter V
REGISTRATION OF SMELL AS TRADE MARK
5.1 Smell as Modern Trade Mark:
After a period of uncertainty in which the OHIM rather surprisingly held that a
verbal description of a smell was sufficient. 153Smell is said to be one of the most potent
types of human memory. The manufacturers are adding pleasant scent to their products.
To obtain registration of a smell mark applicants must be able to visually represent the
product’s scent and must show it is distinctive from the product itself. But how does
one represent a smell in a visual way? Writing down the chemical formula for a smell
is problematic as it is deemed to represent the substance rather than the smell of that
substance. Any written description of a smell must be so precise that that particular
smell would not be confused with any other. 154
It is noteworthy that smell must not result from the nature of the goods itself.
For example, an application by channel to register its well-known No. 5 fragrance as a
smell mark in the United Kingdom was unsuccessful on that count – the scent of the
perfume being very essence of the product. However, some smell mark description have
met the distinctiveness test and been successfully registered, such as a Dutch company’s
tennis balls with the scent of newly mown grass UK registration for tires with “a floral
fragrance / smell reminiscent of roses” and darts with “the strong smell of better
beer”. 155
5.2 Conditions of Registration of Smell Trade Mark:
The Trade Mark Act, 1999, lays down absolute grounds and relative grounds
for refusal of registration trade mark under the Act. Section 9 of the Act lays down
153
Lionel Bently & Brad Sherman, Intellectual Property Law 895 (Oxford University Press, 4th edn.,
2014).
154
V K Ahuja, Intellectual Property Rights in India 256 (Lexis Nexis, Gurgaon, 2nd edn., 2015)
155
WIPO Magazine, non-traditional marks: smell, sound and taste, February 2009 at p. 5.
[62]
Chapter V : Registration of Smell as Trade Mark
absolute grounds for refusal of registration of trademarks under the act. 156Section 9(1)
provides that following trademarks are not registrable.
a. the trademarks which are devoid of any distinctive character, that is to say , not
capable of distinguishing the goods or services of one person from those of
another person;
b. the trademarks which consist exclusively of marks or indications which may
serve in trade to designate the kind, quality, quantity, intended purpose, values,
geographical origin or the time of production of the goods or rendering of the
service or other characteristics of the goods or service;
c. The trade marks which consist exclusively of marks or indications which have
become customary in the current language or in the bona fide and established
practices of the trade.
However, a trade mark is not to be refused registration if before the date of

application for registration it has acquired a distinctive character as a result of the use
made of it or is a well-known trade mark. Thus, if a mark through use becomes clearly
associated in public mind with the goods/service of a particular person, then it could
not be legitimately used as a trade mark by others. The owner, in such a case is one of
the applicants to show by cogent evidence that the trade mark, by reason of use has
acquired distinctiveness in relation to his goods and services.
The absolute grounds for refusal of registration as laid down in each of the sub
sections of section 9(1) are independent. it is possible that a trade mark which is hit by
section 9(1) (b) or (c) may also be hit by section 9(1)(a) for being devoid of distinctive
character. Section 9(1) prohibits registration of certain marks for the reason that a
person should not unnecessarily obtain a statutory monopoly through registration of
such a mark which another person is entitled to use. However, a person is entitled to
make bonafide use of the mark, to describe his goods or the place of manufacture.
Section 9 (1) is thus to be read with section 30 (Limits on effect of registration trade
mark), section 34 (Saving for vested right), section 35 (Saving use for of the name,
156
Ibid at Pg 270.
[63]
address of description of goods or services) and section 36 (saving for words used as
name or description for a substance or service) of the Act.157158
5.2.1 Distinctiveness:
The Trade Mark and Merchandise Marks Act, 1958 provided that a trade mark
which was not a distinctive mark was not registrable in part of the register. The
expression “distinctive” was defined to mean, ‘adapted to distinguish goods with which
the proprietor of the trade mark is of may be connected in the course of trade from
goods in the case of which no such connection subsists either gradually or, where the
trade mark is proposed to be registered subject to limitations, in relation to use within
the extent of the registration’. However, a trade mark could we registered in part b even
if it was not ‘distinctive’ but was ‘capable of distinguishing’ the goods of its proprietor
from the goods of others. In determining whether a trade marks was ‘distinctive’ or
‘capable ‘of distinguishing’, regards could be had by the tribunal to the extent to
which:159
 a trade mark was inherently distinctive or was inherently capable of

distinguishing; and
 By reason of the use of the trade mark or of any other circumstances, the trade
mark was in fact so adapted to distinguish or was in fact capable of
distinguishing. 160
In The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks,161
the Calcutta High Court stated that distinctiveness means ‘Some quality in the trade
mark which earmarks the goods so marked as distinct from those of other producers of
such goods’.
In P. P. Jewellers Pvt. Ltd. v. P.P. Buidwell Pvt. Ltd.,162 the court stated that
letter marks which are a combination of alphabets did not admit of easy acceptance as
distinctive marks. However, on account of language in a line of trade, letter marks can
157
See Government of India, draft manual (revised) for trademark practice and procedure, p. 39.
158
Id.
159
Ibid at pg, 271
160
Section 9, Trade and Merchandise Marks Act, 1958.
161
The Imperial Tobacco Co. of India Ltd. v. The registrar of Trade Marks, AIR 1977 Cal. 413
162
P. P. Jewellers Pvt. Lltd. v. P.P. Buidwell Pvt. Ltd., 2009 (41) PTC 217 (Del.) at p. 223.
[64]
attain a formidable reputation and considerable goodwill. That will depend on the facts
of each case. 163
In W.N. Sharpe Ltd. v. Solomon Bros Ltd.,164 it was held that certain words
such as “goods”, “best”, and “superfine” were incapable of adoption. They could not
have a secondary meaning and were not capable of registration. 165 In a given situation,
however , even the mark “Super166 Deluxe”, which otherwise may come within the
purview of section 9 (1) , can nevertheless be registered if before the date of application
date of application for registration it has acquired a distinctive character as a result of
the use made of it or is a well –known trade mark.167
5.2.1.1 Acquired Distinctiveness: The mind-boggling assumption in trademark law is

that non-particular imprints are unregistrable. The method of reasoning for declining
security is that of non-unmistakable imprints ought not be consumed by one gathering
and ought to be accessible for all without obstruction. A special case to this decides is
that non-particular denotes that have procured unmistakable character through utilize
and serve to recognize the products or administrations of one gathering from another.
These exemptions can get the advantages of enrolment.
Non-intrinsically particular imprints may meet all requirements for enlistment

under the American Lanham Act on the off chance that it is demonstrated they have
procured auxiliary importance i.e. through constant and elite utilization of the check for
a time of five years. Expanded utilization of the stamp offers the open door for a
relationship between the great and the check. On the off chance that customers come to
know the stamp in this way, auxiliary significance has been effectively made. To be
sure, the training is to require such proof on account of uses to enroll fragrance marks.
In this specific circumstance, see that nonspecific imprints can never be demonstrated
to have procured peculiarity in the USA, while this is conceivable in Europe. 168
163
Id.
164
W. N. Shape Ld. V Solomon Bros Ld., (1915) RPC 15.
165
See also Cluett Peabody & Co. Inc. v. Arrow Apparels, 1998 (18) PTC 156 (Bom), Where the court
stated that the mark must be distinctive of the goods. They were only descriptive and hence incapable of
confusing trade mark.
166
Id.
167
Bharatbhai Khushalbhai Patel v. Deluxe Bearing Limited & Others, 2013 (56) PTC 451 (Guj) (DB)
at p. 462.
168
[65]
Guaranteeing procured uniqueness in the EC, under article 7(3) CTMR , can
just help with beating the total grounds of refusal which identify with absence of inborn
unmistakable character and can in this way not cure complaints raised under article
7(1)(a) concerning signs not reasonable to be a trademark. As opposed to the US
rehearse, it isn't a necessity that the utilization happens amid a specific time before the
application for enrolment of a CTM. In any case, the candidate must have the capacity
to prove that the check is utilized as a part of the EC in no less than a generous part
thereof and such that an adequately substantial piece of the pertinent class of people
perceives the sign as a particular trademark. 169
Obtained uniqueness of fragrance marks has so far not yet been asserted in
Europe, which is the reason the American custom will demonstrate the way. As on
account of innate uniqueness, a fragrance that is new and unordinary in connection to
the item to which it is attached will probably be seen by the general population and
consequently simpler to demonstrate obtained peculiarity. This was the situation In re
Clarke, where the US T.T.A.B. held that since Clarke was the main maker to showcase
yarns and strings with a scent, it said something support of procured source
recognizable proof. The significance of Clarke stretches out past its criticalness as
allowing the principal fragrance check enlistment; verifiably it set up the criteria for
deciding uniqueness of aroma stamps in the USA. It was expressed that the aroma stamp
must invoke a psychological relationship with its source in clients' brains. For this to
happen, purchasers must approach the fragrance, utilize that entrance in perceiving the
wellspring of the item and be prepared to do quite distinguishing the source by smell.
In conventional perspective of trademarks, this happens before a deal is made, yet how
it applies to fragrance imprints will now be additionally created.
5.2.1.2 Inherent Distinctiveness: The American Lanham Act plainly expresses that no
trademark by which the products of the candidate might be recognized from the
merchandise of others should be denied enrolment because of its inclination. Imprints
that are demonstrated innately particular, i.e. arbitrary170, fanciful171, or suggestive172
169
170
Arbitrary marks are words or symbols which already exist in the language, but are used as
trademarks on goods or services with which they are not normally associated
171
Fanciful marks are invented words which do not exist in any language and that are created solely for
the purpose of using the term as trademark
172
A mark is suggestive when it suggests the good or services but does not go so far as to actually
describe them.
[66]
are in this way quickly registrable on the US Principal Register, if they don't comprise
of or contain an improper, beguiling or outrageous issue. In any case, the US hone is to
consider aroma stamps as fancy or practical highlights of an item and are subsequently
non-innately unmistakable. In the EU, then again, once the fragrance is viewed as a
sign under article 4 CTMR, it is the recorder's errand to demonstrate that the stamp
needs characteristic uniqueness. Uniqueness of a specific check is an issue for article
7(1)(b) CTMR, which accept that the sign is a trademark and gives that the trademark
might not be enrolled if, considered on its individual merits, the stamp is "without any
unmistakable character". It is the act of trademark specialists and case law that give a
sign of how to utilize the criteria, which in reality appears to be changed relying upon
the stamp and items being referred to a fragrance stamp might be unmistakable when
utilized as a part of association with one item and non-particular when utilized with
another. The criteria will hence differ from case to case and the examination ought to
be made separately. Just when the idea of the aroma and the capacity to be distinguished
by people in general individual of the products or administrations of which it speaks to,
can smells be intrinsically unmistakable for trademark reason. This connection amongst
fragrance and item ought to be tough after some time with the goal that the choice to
buy is constantly made in regards to an aroma that keeps up a similar state.173
Fulfilment of these criteria however, just appears to be conceivable by attaching

an especially special fragrance to a typically unscented item. A surprising item highlight
would then be sufficiently striking to make the essential mental connection in buyers'
brain. This is by all accounts the motivation behind why "the possess a scent
reminiscent of crisp cut grass" for tennis balls was permitted CTM enlistment. Because
of the one of a kind blend gave and that the candidate was the main maker giving
scented tennis balls, it was apparent that shoppers could instantly recognize the source
whereby the inspector under Appeal unmistakably expressed that uniqueness was not
the issue. Additionally, "a botanical scent/smell reminiscent of roses connected to tires"
and "the solid possess an aroma similar to unpleasant brew connected to flights for
darts" were permitted enrolment under the UK Trade Marks Act.174
173
Linda Annika Erlandsson, “The future of Scents as Trademarks in the European Community”
174
[67]
The CTM Examiner certainly affirmed this hypothesis in a later case. He expressed
that “a specific aroma” was without particular character in connection to the typically
scented items for which the stamp was connected, yet stayed quiet concerning a similar
aroma in connection to the ordinarily unscented items for which the check likewise was
connected. In offer, enrolment was however rejected for not satisfying the prerequisite
of graphical portrayal whereby the Board did not further inspect the topic of
peculiarity. 175
5.3 Evidence of Distinctive Character:
Evidence of user of trade mark or of its required capacity to distinguish must be

given by affidavits by the applicants. The affidavit has to be executed by the applicant
himself or by some person associated with his business. It should contain statement
giving particular of the business carried on by him, the date of commencement of use
of the mark, the list of goods in respect of which the mark has been used, the sales
turnover of the goods sold under the trade mark up to the date of application, the area
in which the goods have been sold, the nature and extent of advertisement and publicity
given to the mark and the expenses incurred in connection therewith, and the class of
customers of the goods. The name, address and nature of business of a few dealing in
the applicant’s goods, representative of the areas in which the mark is used may also be
given.
5.4 Graphical Representation:
The Trade Mark applicant is also required to provide a representation of the sign
and, before an application is accepted, that representation must be 'adequate'. The
reflects the fact that the trade mark registration system is built around a notion of
'representative registration' that is, rather than depositing an actual sample of the marks,
applicants are required to deposit a representation of the mark. The representation
registration has a number of ratio rationales (as well as having some significant effects)
as follow;
1. One functions of the representation the (which might be called the 'property'
function and is analogous to the role of patent claims) is to define the scope of
175
UK Trade Marks Act 1994
[68]
the trade mark owner's right s and delineate with a degree of precision exactly
what sign is protected.
2. A second function of graphic representation (which might be called the
'information function') is to enable publicity to be given to the fact that an
applicant is seeking registration, the publicity being provided by publication in
the Trade Marks Journal. In particular, it helps to ensure that third parties are
able to search the register, to ascertain things such as the of existing marks, and
to determine whether a fresh application conflicts with earlier marks, and to
determine whether a fresh application conflict with earlier marks.
3. A third and related function of graphic representation requirement (which might
be called the 'administrative function') is to make the bureaucratic dealing with
the sign-its classification and comparison with other signs- more manageable.
While each of these functions demands different things, in effect, for graphic
representation to be acquired. It must achieve all three goals as the court of Justice held
in Ralf Sieckmann, a graphic representation is one that utilizes images, lines or
character. In order to render a sign registrable as a trade mark, the graphical
representation must be clear, precise, self-contained, easily accessible, intelligible,
durable and objective (known as the 'Sieckmann criteria') . While the Sieckmann case
is usual in that it articulates a criterion that is graphic representation must meet, it
remains difficult to say in particular situation whether a representation is sufficient
stable, durable, objective or intelligible to satisfy the criteria. It's seems that a
representation is not sufficiently intelligible if it is intelligible only to a few or to a
limited section of the population (such as with a chemical formula) in the Libertel case
reviewed below, advocate general lager indicated that a representation was sufficiently
assessable and intangible if it did not require excessive efforts to be taken for the public
to understand it. Moreover, in Shield, the Court noted that accessibility and
intelligibility did not require 'immediate' intelligibility, but only that intelligibility
should be 'easy', so that a music score would suffice as a representation of sound.176
There are a number of different techniques that applicants may use to represent
their marks graphically. These include words and image such (as lines drawings and
photograph) with the vast majority of marks, the process of graphic representation is
176
Supra note 1 at pg no.892
[69]
straight forward; 'word marks' are written and device or 'figurative marks' are
represented by pictures. However, difficulties arise because, as we will see, since the
Trade Mark Act, 1994 liberalized the definition of marks, it is now possible to register
various 'exotic' marks, such as sounds, shapes, colours, smells, gestures etc. In these
cases graphical representation can be more problematic. The particular mode of
description that is used will vary according to the type of mark in question.
5.5 Difficulties in Protecting Smell Marks:
The protection afforded by registration confers to the proprietor of a mark the

exclusive right to use it in commerce that prevents the public from being confused as
to the source of products. Regarding smell marks, there are no guidelines or case-law
concerning infringement but it would certainly be more difficult to prove than in the
case of traditional trademarks.
Use against Which a Trademark is protected:
Registration of a trademark affords its owner an exclusive right to use the mark
in commerce. This includes the right to use the trademark on or in connection with
identified goods or services as well as the right to license this right to third parties. All
other uses, or attempts to use the mark by others or by adoption of similar mark on
similar goods and services may give rise to infringement. The combination of these
reproductions would increase the number of different interpretations resulting in even
more uncertainty. The capability of smells to be clearly identified through their
representation should not automatically be rejected but decided on a case-by-case basis.
In addition, any source identification function is outweighed by the economic interest
in giving competitors free and unfettered access to the feature so that they can compete
effectively. Primary smells like perfumes and air fresheners are thereby completely
excluded from trademark protection in the USA for their functional natural
characteristics.
The protection afforded to a trademark proprietor against third party use of the
trademark is absolute. Trademark use means use in the course of trade, commercial
activity involving the production and supply of goods and services on a specific market.
Consequently, commercial situations may occur where a similar or identical smell is
used on products that are dissimilar to the ones the smell is granted protection.
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Regarding smell marks, such use could under some circumstances be detrimental to the
trademark's repute and be subject for a dilution- or unfair competition-claim. Whether
or not such use is hard to establish extends beyond the scope of this thesis, but the
difficulties in establishing infringement will further be examined. As a result, smells
can only, as shown by practice, function as trademarks under circumstances where the
smell is new in relation to the product to which it is affixed or when the smell is
particularly unique and used on normally non smelled products.177 The smell is thereby
sufficiently outstanding to create a mental association to the source in consumers'
minds. It is the memory function of the sense of smell that is used and since this sense-
memory link is closely intervened with emotions, people link smells to experiences.
Therefore, smells that remind people of pleasant things, such as vacations, sweets,
flowers, freedom, calm and security compounding to a strong sense-memory link, can
be used for trademark purpose because of their distinctive character. The question that
then arises is whether or not the available pool of such particular smells is limited so as
to disadvantage competitors from choice. Considering the fact established that there are
at least ten thousand distinguishable smells, one can deduce that fear of smell depletion
would be unrealistic.
Another perplexing issue is if the consumers come to define a smell only in

terms of a particular product, then they will be confused if other producers apply that
smell. Considering that trademark law prevents third parties from using the protected
mark under circumstances likely to cause confusion this could be prevailed by
infringement claims. However, smell mark infringement would be hard to establish
since the test of likelihood or confusion would call upon the consumer's recollection of
smells. The evidence would then be established by consumer survey, resulting in a
decision that entirely depends on the subjective nature of human smell perception. The
outcome would be unpredictable and litigants would truly be entering a lottery system
when proceeding to trial for smell mark actions unless they are sure that their smell has
certain market strength.178 An unsuccessful trial would have important economical
consequences. Not only does the trademark reputation risk to be harmed, but the owner
also loses an important business asset and all efforts and investment put into research
and development. Actually, while the cost of a trademark application is relatively low,
177
178
Linda Annika Erlandsson, “The future of Smells as Trademarks in the European Community”.
[71]
the cost of research and development necessary for a successfully registered and
protected smell mark might be considerably high. Scientific and commercial research
is necessary in order to assure that the smell will be distinctive and conjures a sense-
memory link in order to function as a trademark. Assurances that the smell will appeal
to consumers and be suitable in relation to the product require investigation as well as
how to technically and durably affix the smell on the product or in advertisement. Not
until the smell is actually put on the market will it be sure that the smell will function
as a trademark and that sufficient protection can be afforded. In reason hereof,
trademark practitioners look for other openings that are more cost-effective, which is
probably one of the reasons why only six CTM applications for smells have been filed
so far.
The major obstacle to smells marks registration is the lack of means existing
that would seemingly satisfy the criteria set out for fulfilling the European legal
requirement of graphical representation of non-visible signs. The ECJ declared this
possible by means of images, lines or characters, provided that the representation is
clear, precise, self-contained, easily accessible, intelligible, durable and objective. 179
5.5.1 Difficulties in Establishing Infringement:
In order to establish infringement of a trademark under the Lanham Act, the

plaintiff has to prove there is a likelihood of confusion, mistake or deception regarding
the source or origin of the goods or services on the part of the purchasers. Similarly, the
CTMR provides the holder of a registered trademark to prevent the use of a similar sign
in relation to similar goods or services if there exists a likelihood of confusion on the
part of the public, including the likelihood of association between the sign and the
trademark.180The test of likelihood is an overall impression of the two marks compared
that encompass the nature of the goods or services, the end users, the method of use and
whether the business using the signs are in competition with each other. As to any other
trademark, these principles also apply to smell marks.
However, the test of likelihood would not be exactly the same as for any other
trademark considering that the comparison would call upon the consumer's recollection
of an earlier smell. It is therefore the same criteria as when determining the smell's
179
180
Article 9(1)(b) CTMR.
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distinctiveness that will decide the likelihood of confusion, which is afflicted by the
strength of a sign in the marketplace. Thereby the scope of the likelihood question
considers the possible confusion at the point of sale as well as when third parties might
be mislead by viewing the items after the purchaser has put them into their intended
use.
Confusion may result when a consumer subconsciously calls to mind the

registered mark when seeing the alleged infringing sign or vice versa. Supposing for
instance, that a laundry detergent is advertised for its superior bleaching powers and
happens to be imbued with a distinctive smell that no other manufacturer uses. A
competitor perceives that consumers like the new smell and adds it to its low quality,
non-whitening detergent. A prospective consumer notices the grubby, greying clothes
of his neighbour while a whiff of the unique fragrance floats by. The result could be
consumer confusion and harm the first user.
Smell mark infringement is however difficult to detect. The likelihood of

confusion should be proved among the general public or among users other than the
original purchaser. Such evidence may be hard to establish since the ability to detect
and differentiate smells varies between individuals and may depend on factors such as
age, sex, hormonal cycling, environment and even cultural differences. The courts will
have the same difficulties in deciding whether there is infringement or not. Without
expert assistance, uniformity among judicial determinations would be difficult to
achieve. However, leaving infringement determinations to a perfumery expert is not
appropriate since he has an extraordinary sense of smell compared to the ordinary
181
consumer who comes in contact with the products in the marketplace.
Finally, infringement decisions will only rely upon consumer surveys that will
depend on the subjectivity of the human sense of smell. It thereby seems hard to succeed
with an infringement claim concerning a smell mark unless the mark has a strong place
in the market i.e. distinctive. Trademark protection grants its owner an exclusive right
to use the mark in commerce and claim infringement if there is a likelihood of confusion
of the smell on the part of the public. The test of likelihood would call upon the
consumer's recollection of an earlier smell. Smell mark infringement is however
181
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difficult to detect since the ability to differentiate smells varies between individuals.
Used as a strategic weapon for business, smells have become an innovative and catchy
way for traders to market their goods and services to appeal to customers. However, an
equally strong case can be made that smell marks pose a significant dilemma for
trademark law. Even though smells are implicitly recognised, the capability to
constitute a trademark sign is challenging given the parameters of trademark law. The
subjective nature of perception makes it difficult for smells to function as reliable
indications of trade source. Although some smells are very distinctive, such as bread
fresh from the oven or cigar smoke, there are still bound to be shades of differences and
impressions made on individuals exposed to the mark. Some individuals have a keener
sense of smell than others and how a human perceives a smell is dependent on many
factors such as age, sex, health, environment and cultural differences. Even when a
smell is correctly identified, there may be a risk that the persons identifying the smell
will describe it in different terms. It is only the nature of the smell and its ability to be
unvaried when identified by the public that a smell can be distinctive enough for
trademark purpose. 182
5.6 Judicial Opinion Smell as Trade Mark:
Judiciary which the third pillar of government very silent to for determining
whether smell is the subject matter of trade mark or not. The reasons behind the lack of
activism of judiciary on the issue are India is no more developed in the field of trade
mark especially modern trade mark, second reason is it is very confusing to distinguish
the smell of one product to other, so there is only a very latest or leading case on the
discussed topic mentioned here.
5.6.1 Case: Ralf Sieckmann v Deutsches Patent-und Markenamt:
Fact: The application was to register an olfactory mark comprising "the pure chemical
substance methy1 cinnamate (=cinnamic acid methy1 ester)" and the structural formula
was provided: C6H5-CH = CHCOOCH3. In addition, Mr Sieckmann gave details
where one could obtain the chemical, he submitted with his application an odour sample
of the sign in a container and stated that the scent was usually described as ‘balsamically
182
Linda Annika Erlandsson, “The future of Smells as Trademarks in the European Community”.
[74]
fruity with a slight hint of cinnamon’. 183
Held: The ECJ answered the various questions referred to it in the following way:,
1. That a trade mark may consist of a sign which is not in itself capable of being
perceived visually provided that it can be represented graphically.
2. So far as the graphic representation is concerned, it laid down the requirements
that it must be clear, precise, self-contained, easily accessible, intelligible,
durable and objective.
3. The RCJ stated that, in respect of an olfactory sign, the requirements of graphic
representation are not satisfied by a chemical formula, by a description in
written words, by the deposit of an odour sample or by a combination of those
elements.
A chemical formula is not sufficient because few people would recognise from
the formula the formula the odour in question: hence, the chemical formula would not
be sufficiently intelligible. A further point was that the formula does not represent the
odour, but the substance itself. A description in written words in not sufficient because
it is not sufficiently clears, precise and objective. The deposit of an odour sample does
not constitute a graphic representation. Furthermore, an odour sample is not sufficiently
stable or durable. None of these options, whether individually or in combination would
be, in the opinion of the ECJ, sufficiently clear and precise. 184
In the light of those emphatic statements, one may ask: how else can one attempt
to provide a satisfactory graphic representation of an olfactory mark? There are some
possibilities which Mr. Sieckmann did not put forward, such as defining the odour by
reference to accepted standards of classification for odorants such as Zwaarde maker
(1985) with 30 sub-classes or Linnaeus (1756) with seven classes, but it is very difficult
to find any alternative which would satisfy the requirements laid down by the ECJ. The
practical effect of the Sieckmann judgment is probably that it is impossible to obtain a
valid registration of an olfactory mark unless or until the requirements for recording the
"sign" in question are changed to allow representations other than purely graphic or
183
David Kitchen, Law of Trade Marks and Trade Names 17 (Thomson Reuters New Delhi 14th edn.,
2005).
184
Case C-273/00 Sieckmann (2002).E.C.R.I-11737;(2003) Ch.487; (2003) E.T.M.R 37; (2003)
R.P.C.38, para 47-55.
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descriptions in words.185
5.7 Limitation on Smell Trade Mark:
Depletion theory is a doctrine that has been applied in American trademark law
to smell trademarks. This theory operates on the principle that there are a limited
number of sensory devices that will be favourably perceived by consumers. Granting a
trademark monopoly over one of the few desirable marks available "depletes" the
186
remaining pool of desirable marks and thus adversely affects competition. If there
are a large or even infinite number of sensory devices that can be positively perceived
by consumers, then removing one trademark out of this deeper pool via trademark
registration does not significantly affect competition. Given the similarity of fragrance
to smell, in terms of composition, it is possible that the same principle would apply to
fragrances.
Not all smells are suitable for all products. To the extent that a particular
fragrance conjures up existing associations or has become an expected smell for a given
product, the number of fragrances from which a competitor might choose may be
limited. According to Hawes, the existence of innumerable possible smell combinations
and variations available makes smell depletion an unrealistic fear. However, there
should be sufficient smell alternatives to support a vigorously competitive market
system. Studies have shown there may be as many as ten thousand distinguishable
smells, although individual abilities differ greatly. Further study is required to
determine the number of distinguishable smells existent under purchasing conditions.
Certainly, this number will be less than ten thousand but enough to assure competition
in the marketplace.
Although there are many available smells, one needs to be concerned that
certain smells may be more sales effective and perhaps more limited. Consequently, if
similar smells are monopolized, only the mark owner could produce variations on this
theme. If it is true that there are only a few possibilities from which to prove new smells
then fragrance depletion could be actualised. Overall, customers prefer smelled
products. There may be cross-cultural preferences and aversions to smells. Shared
cultural smell preferences mean that there are relatively few desirable smell marks to
185
Ibid at pg, 18.
186
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be shared among traders. Given the universal human preferences for certain odours, a
smell mark registration in one country potentially depletes the pool of marks both
nationally and internationally, reducing competition on both a local and global scale.
Even though there might not be a great variety of existing smells that
immediately conjure up associations, such smells can be developed. With strong
marketing and use of products that relates to or create pleasant experiences, a basic,
created smell can, over time, become functional by establishing a sense-memory link.
Although this may be possible, it requires scientific and commercial research resulting
in high costs and without any guaranty of efficiency.
Based on the number of possible alternatives, depletion concerns are probably

not as significant for smells as they may be for smells. Given the underlying goal of
preventing mark before closure by monopolizing trade signs, this concern is probably
more efficiently dealt with under the theory of smell functionality. 187
5.8 Conclusion
The protection of trade mark is very tough, the reason is very common, no
specific laws or case law relating to the infringement of smell mark. Through this
process law want to protect the real owner as well as the exclusive right. The reason
behind the infringement is likelihood of confusion, the cause compression between two
smell marks is not a cup of tea. To obtain registration of a smell mark applicants must
be able to visually represent the product’s scent and must show it is distinctive from the
product itself. But how does one represent a smell in a visual way? Writing down the
chemical formula for a smell is problematic as it is deemed to represent the substance
rather than the smell of that substance. The expression “distinctive” was defined to
mean, ‘adapted to distinguish goods with which the proprietor of the trade mark is of
may be connected in the course of trade from goods in the case of which no such
connection subsists either gradually or, where the trade mark is proposed to be
registered subject to limitations, in relation to use within the extent of the registration’.
****
187
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Chapter VI
CONCLUSION & SUGGESTION
Intellectual property is the creative work of the human intellect. A right to

intellectual property is an invisible right to a product of a man’s brain such as a new
invented production i.e. property of the mind as against a right for material things i.e.
goods such a as a right to the invented goods. An intellectual property is at times
described as knowledge goods. IPRs are sine qua non for the economic development of
nation and milestone in national building. There are different motives behind the
protection of this branch of law as:
 Promote the progress of science and technology;

 To give the protection of other creative work
 Encourage and reward creativity;
 To protect the economics of rights of creators;
 Give the protection of rights of public in accessing those creations.
Here “intellectual property” refers to all the categories of intellectual property

which covered under Section 01 to Section 07 of TRIPs Agreement viz; Copyright and
Related Rights, Geographical Indications, Industrial Design, Patent, Layout-designs of
Integrated Circuits, Protection of Undisclosed information. My research topic i.e. trade
mark which I have discussed in detail under the forthcoming chapters.
Trademarks are one of the most important elements of intellectual property. A

product is something that is made in a factory, a brand are .Trade Mark is what is bought
by a customer a product can be copied by a competitor and can become outdated by
the introduction of new products, but a Trade Mark is unique. A successful Trade Mark
is timeless and the most important source of markets, power and enables its owner to
diversify in products and geographical markets. No firm would ever stay ahead with
ought to possessing IPRs and one who underestimates the Trade Marks to would have
missed the opportunity The concept of Trade Mark is essentially a business concept but
is intertwined with legal things. The exclusion of all there except the using it or a similar
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Chapter VI : Conclusion & Suggestion
Trade Mark or with his permission is the fundamental tenet of a Trade Mark. This sort
of monopoly is possible with the help of law alone. While explaining business things
in respect of trademarks, it is natural to fined mention of legalities involved. An attempt
is made to understand the business concept in the beginning and then concept of Trade
Mark is explained with the help of its legal definition and the setting and circumstances
in which the law of trademarks is administered. The requirements for being a Trade
Mark emerging from the definition are noted little later in the dissertation. Trade mark
law is for too important for the economy and is liable to be protected under law of free
speech and freedom of trade and profession as also is a property and contributes to the
gross domestic product. Thus our submissions in favour of marks owned by domestic
traders and industry and against tradition and self-professed morals and giving enlarged
protection to foreign interests may be viewed with tolerance and patience by the
judiciary.
The prevailing task of a trade mark is to serve the consumer. This may be the
consequence of the use of a trade, but it is not the prevailing purpose of a trade mark.
The task of a trade mark is to accentuate the producer goods from the mass of unknown
products and to establish a communication channel to actual or potential buyers and
users of the product. It is a communication channel for the advantage of its owner;
however, with the resulting consequences that the addressed user or buyer may obtain
information regarding the product irrespective of either that information is objective or
purely subjective. It is an investment by the trade mark owner which is fundamental to
the successful promotion and sale of its goods and services.
In order to decide whether a sigh is exclude under section 3(1)(b)-(d), it is first

necessary to decide what the sigh is. In many ways, this is straightforward: we have
seen that the sigh is that for which registration is sought. This task is made somewhat
easier by the fact that the application has to submit documentation identifying the mark
and indicating whether protection is sought as a word mark, a colour mark, or a three-
dimensional mark. The statutory definition of mark is defines mark to include a device,
brand, heading, label ticker, name, signature, word, letter, numeral, shape of goods,
packaging, or combination of colors or any combination thereof; the definition of mark
is an inclusive definition. It may also include other things which may fall within the
general and plain meaning of the definition. A Trade Mark is a visual symbol used in
relation to goods or services so as to indicate some kind of trade connection between
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the goods or services and the person using the mark. They may be words letters or
numerals , pictures, designs or any sort of graphic devices , or combinations of such
words or pictures, designs or any sort of graphic devices, or combinations of such words
or pictures shape trademarks as also sound marks have now been accepted in UK and
India. There are countries in which smell trademarks are also recognized. It is becoming
increasingly common for a manufacturer or trader to give a distinct name or get –up to
his product so that the consumer ,relying on its quality, price or some such peculiar
feature identifies the product, goods or services as distinguished from other product,
goods or services a separate personality. This pro-cress of giving distinct personality to
wares or services involves the use of Trade Marks or of trade names. A small business
or corner shop in a colony or in a remote area tends to put a distinctive name to claim
that the product has originated from him. An organized business would naturally desire
to establish its mark in the market.
No permission or sanction from any officer or authority is necessary to put up

such a distinctive mark on the goods or services. Neither there is any restriction on
giving a name to a business or a shop. A Trade Mark protects the seller’s exclusive right
to use the brand name or brand mark. Thus, as already pointed out, the two terms are
virtually synonymous, what marketers call brands, lawyers term then as Trade Marks
.whereas marketers are concerned with creating, maximizing, main- training, or
leveraging brand equity law years are concerned with obtaining and defending, or Trade
Marks, i.e.by getting them registered and protecting them or similar versions against
unauthorized use, or from dilution or disparagement. An optional registration of such
marks, known as Trade Marks, is possible in the Trade Marks register maintained by
the authorities under the Trade Mark law. This option converts the Trade Marks into
two types – registered and unregistered Trade Marks, both of which are protected and
enjoy rights as per the law thus anyone, may put up a distinctive mark of his own desire
without overstepping others right depending on considerations which are the subject
matter of this book.
The list of mark is not exhaustive it includes different marks because of different
reasons e.g. device brand, heading label, tickets, name, signature word, letter, numeral
shape of goods, packaging, combination of colours etc. There are some other modern
marks which is also protected under the law of trade mark likely smell marks, sound
marks, taste marks, moving images, holograms and gestures. The origin of trade mark
[80]
is come into picture when there is no an effective media, the ownership of goods was
announced by a visible mark. It was a propriety or possessive work. Common instances
work where the branding of cattle and sheep by their owners, particularly by
agriculturalist. There are two intertwined themes in the development of trade mark; one
is a history of the social practices and understanding attached to the activity of applying
marks goods and second is a positivist history of trademarks law, these themes reflect
the changes in, the nature and function of marks. The development of trade mark has
be observed at international level into three different duration listed as; Ancient use of
trademarks, here in conclusive remark, discussed the development of trade mark in
Ancient time in different countries, in France trade marks were first used to claim
ownership of cattle by the practice of burning (or branding) the hides of the animals
with symbol, the term with ‘brand name’ today being a relic of this ancient custom.
China where use of a trade mark to designate the trade origin of goods goes back
furthest. But in ancient Egypt, Asia Minor, India and Crete have all revealed potters’
marks, and indeed marks used by other crafts, notably goldsmiths, ironsmiths and brick
makers. First time in Greek the wine was protected under the trade mark, and in Roman
Empire the road name was protected under trade mark which was connected with the
name of king. During the medieval age it was confine only to show the ownership.
Where protection of property mark and production mark was foremost concern. The
use of the proprietary mark on goods (i.e. branding them as a means of showing
ownership) can be considered similarly to the adoption of heraldic devices. The
practical significance of such branding becomes clear when it is remembered the
frequency with which goods might be affected by piracy or shipwreck. Where goods
had been so lost in transit, the seller and original owner could reclaim them, if they
were later recovered, by proving that they bore his mark. Goods were marked so that
poor workmanship could be identified and punished. Consequently, as a form of
consumer protection, there were numerous national, local, and Guild regulations
providing for the compulsory marking of goods, and setting out criminal penalties for
breach. Examples include bread makers, brewers weavers and of course, gold
silversmiths.
Rising of Consumer is most important era in the devilment of trade mark

Trading in the Middle Ages was by and large very localized with consumers and
craftsman living in the same community, although as Schechter explains, cloth and
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cutlery were two trades which form a relatively early date were located in only a handful
of towns, so that the resulting goods had, of necessity, to be transported over long
distances to reach consumers. Moreover with the craftsman usually having his place of
business in the same vicinity as others of the same type and being closely controlled by
his Guild, it was difficult for him to acquire any individual goodwill or indulge in any
real form of competition, where fair and unfair. It is only when goods of a durable
nature are transported that the trade mark as a mark of origin acquires any significance.
Three major international documents which are helping hand in the

development of trade mark in which old and most important is The Paris Convention,
1883 Paris convention is an outcome of a diplomatic conference which was held in
1880 at Paris. This treaty was signed by 11 countries on 20 March 1883, these beginner
nations are Belgium, Brazil, France, Guatemala, Italy, the Netherlands, Portugal, El
Salvador, Serbia, Spain and Switzerland. Guatemala, El Salvador and Serbia denounced
and reapplied the convention via accession which signed in Paris the Capital of France.
This treaty was revised in different era and different places; it was amended on 28
September 1979. As of February 2017, the Convention has 177 contracting member
countries and it became a widely adopted treaty worldwide. Article 02, Article 04,
Article 11 and 06 are related with the trade mark. Second convention is The Madrid
Agreement and Protocol, 1989 it was signed on April 14, 1891. In order to use the
system it is necessary to have one of three specified linked with a Protocol member
country, namely; be a national of a protocol member country; or be domiciled in a
Protocol member country; or have a real and effective industrial or commercial
establishment in a Protocol member country. The holder of the international registration
may also ask for protection to be extended to a protocol country subsequently to the
date of the international registration. In that event, the mark will be protected as from
the date when the request for extension is recorded by the International Bureau. An
International registration is valid for a period of 10 years and may be renewed for
further periods of 10 years. Last but not a fully stop on the international convention is
The TRIPs Agreement, 1994, which was adopted at Marrakesh on April15, 1994 and
came into force on January 1 st, 1995. Including its national treatment provision its
priority rule, and substantive protection. It adds a most-favoured nation requirement,
elaborates on the requirement for trademark protection, and extends the substantive
rights a member state must confer.
[82]
The journey of development of trade mark in India started from the last decade of
British rule in India, a system of registration of trademarks and statutory protection of
registered trade mark was established. This was done by the enactment of the Trade
Marks Act, 1949.w.e.f.11.3.1940, which was followed by the 1958 act and now has
been replaced by the 1999 Act, Since the late 1990s unconventional trademark forms
such as sounds, signs, tastes, touch and smells are gaining more importance. There are
different phases of development as; Before 1940 there was common law remedies
which include The Passing off Action In such an action the plaintiff has to prove that
the mark had become so associated with his goods that the use of that mark, or a
colourable imitation thereof, by the defendant would have the probable effect of the
defendant’s goods being mistaken for those of the plaintiff, or of causing confusion or
deception. It is not enough for the plaintiff to prove that the mark was used by him in
relation to his goods. He must further prove that the use of the same or a deceptively
similar mark by the defendant in respect of his goods would result in the defendant’s
goods being mistaken in the market for goods emanating from the plaintiff or in
deception or confusion. The burden of proof is on the plaintiff throughout. He has to
carry that burden every time he sues another for piracy of his trade-mark. Other than
passing off action there is criminal remedies under the IPC the accused will be liable
under Section 483 to Section 486. The Trade Marks Act, 1940 create the history in
development where The Trade Marks Registry was set up as part of the Patent office in
Calcutta. By the Trade Marks (Amendment) Act, 1943, the Trade Mark Registry was
separated and was transferred from the Controller of Patent and Designs to a separate
Registrar of Trade Marks in Bombay. There is not a great contribution of Trade Mark
Act 1958 in the development of trade mark in India. Again in 1999 an Act was passed
with some specific objectives. After passing the Act a person is entitled to get the trade
mark on services too, amplification of factors to be considered for defining a well –
known mark, providing for registration of “Collective Marks” owned by association,
extension of application of convention country to include countries which are members
of group or union of countries and Inter-Governmental organizations; prohibiting use
of someone else’s trademarks as part of corporate manes or name of business concern.
Providing an Appellate Board for speedy disposal of appeals and rectification
applications which at present lie before High Court. This Act was somehow special
because Filling of single application for registration in more than one class, Making
trade mark offence cognizable Simplifying the procedure for registration of registered
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user and enlarging the scope of permitted use etc. lack of legislation on trade mark is
the cause of Indian industry does not possess prestigious trademarks which translate the
production in to sales. India as a country and as a society needs to build prestigious
trade marks in the international arena. Which trade mark would exert pull on goods or
generate demand of Indian manufactures from markets, which may translate the same
in to exports from India. Trade marks perform the function of not only identifying the
product so as to facilitate purchase decisions by buyers , but they give an impetus to
sales and production of the enterprise with an identifiable contribution to the economy
, as is submitted. There are three important essentials for the purpose to getting the
registration of trade mark there includes; mark, trade mark should be capable of being
represented graphically and distinctiveness. The graphical representation includes;
representation of a trade mark is in paper from. Smell which is a modern trade mark
has a risk of its depletion. This is based on depletion theory. This theory by consumers
granting a trademark monopoly over one of the few desirable marks available
"depletes" the remaining pool of desirable marks and thus adversely affects
competition. If there are a large or even infinite number of sensory devices that can be
positively perceived by consumers, then removing one trademark out of this deeper
pool via trademark registration does not significantly affect competition. Given the
similarity of fragrance to smell, in terms of composition, it is possible that the same
principle would apply to fragrances.
To get the suggested explanation or solution to my research problem, I have

formulated as propositions are called the hypothesis. Such tentative explanations, i.e.
hypothesis may be the solution of the problem. Here I have tried to assertion of a causal
association between two properties i.e. representation of smell mark graphically and
make it distinguishable from other marks. Therefore my two testable hypotheses of
research work is as below;
1. Smell mark is capable of graphically representation.

2. Smell as a trade mark is distinguishable.
Every trade mark is required to be capable of being represented graphically.

Graphical representation means the representation of a trade mark for goods or services
in paper from. In the registrar’s view a smell mark should be graphically represented.
[84]
First hypotheses i.e. smell mark is capable of graphical representation is very

testable and verifiable because the graphical representation of a substance which
produce the smell is very easy to represent on paper. e.g. CH3COOH (vinegar). Which
is easy to present on paper and have distinguishable smell.
It is possible to determine from the graphical representation of a smell mark

precisely what the smell mark is that the applicant use or proposes to use without the
need for supporting samples etc. The graphical representation of smell mark can stand
in place of the mark used or proposed to be used by the applicant because it represents
the mark and no other’s and.
With regard to smell mark, it is reasonably practicable for persons inspecting

the register, or reading the trade marks journal which gives brief idea about the smell
as a trade mark, to understand from the graphical representation. There is no ambiguity
in graphical representation. It is very simple and clear and have a relevancy with the
research problem.
In Ralf Sieckmann where applicant try to get registration on a very specific

chemical substance. i.e. C6H5-CH = CHCOOCH3. The European court of justice held
that the graphical representation of mentioned chemical is very clear, precise, self-
contained, easily accessible, intelligible, durable and objective. Therefore issue the Non
Objection Certificate and held it is capable to get the registration. The above discussion
is very affirmative and the tentative statement i.e. graphical representation asserting
relationship between all facts. Hence the first hypothesis i.e. smell mark is capable of
graphical representation is proved. On the basis of this hypothesis a smell is registerable
subject matter under law of trade mark.
The second hypothesis is smell as a trade mark is distinguishable.

Distinctiveness is an essential to getting the registration. A smell mark is required to be
capable of distinguishing other smell mark of one person from those of others. To be
distinctive or capable of distinguishing the smell, there may be some inherent qualities
or distinguishing characteristic in the mark itself which make it so distinctive or capable
of distinguishing.
Smell is a non-conventional trade mark and it is very difficult to prove on the

basis of distinguish. This is a problem which carried by smell, but every product having
[85]
its own specific nature of smell, e.g. the flower of rose and the flower of marigolds has
their own different smell, which can be distinguish by any layman. Similarly the smell
of different fruits has their own. It is an example an example of inherent distinguishes.
Where it can distinguish on the basis of smell. On the other side, there is a concept of
acquired distinguishes, which may be combination of two or more smell, this is concept
of acquired distinguish. It may be perceive through food products, shampoo, shop
makeup kits etc. Observing of acquired distinctiveness is only possible through;
1. Lay Observer Test: The test is not required a very special skill or process only
observing a things by the large number of ordinary prudent users and give their
opinion about the product. Whether the product is similar to any existing
products or not. In case of acquired distinctiveness the observers or users affirm
or reply negatively that the goods is not similar and have no acquired
distinctiveness.
2. Special Devices: Testing smell through special devices is like an expert opinion.
When there is a question whether a goods have acquired distinctiveness or not
by using different devices, to determine its smell.
Therefore to testing whether a smell is distinguishable from other is easy in team

when the question is related with it inherent distinctiveness. But it is not a cup of tea
when we have to determine acquire distinctiveness. Hence in balancing way it is a
conclusive remark that smell is capable to distinctive and fulfill its second requirements
for registration.
After a brief discussion under this dissertation I hereby submit the following
suggestions, which contribute to clear the confusion that smell mark possesses all
essentials (capable of being represented graphically; capable of distinguishing the
goods or services of one person from those to others) necessary for get the registration.
There suggestions run as follow;
Suggestions:
1. To the check the inherent distinctiveness not a problem but there should be some
yardstick to determine the acquired distinctiveness.
2. There should be specific provision for determining the smell as a mark under
the Act.
[86]
It is necessary to understand the essential characteristics and the purposes for

which a trade mark is used. It is evident that a trade mark may be protected as property
by passing off action, irrespective of registration. There are many judicial dicta and
provisions in the 1999 Act which are a pointer to the independent identity of a trade
mark. There are some suggestions:
Thus, the obligations imposed on the proprietor of the trade mark can be referred
to as obligation s on the trade mark. Also because the obligations and rights both can
be subject matter of transfer along with the assignment of a trade mark. If the
obligations are not fulfilled, not only will the proprietor lose his rights over the trade
mark , but trade mark itself may be destroyed by expunction , removal of the register
must be fulfilled so that the trade mark remains alive and enjoys and identity.
****
[87]
BIBLIOGRAPHY
Primary Sources:
A. Reports:
 Government of India, Draft Manual (revised) for Trademark Practice
and Procedure U.K.
 Registry work Manual.
 Journal of Intellectual Property Rights Vol 10 November 2005
 WIPO Magazine, Non-Traditional Marks: Smell, Sound and Taste
B. Statutes:
 The Trade Mark Act, 1999
 Trade Related Aspect of Intellectual property Rights, 1994
 The Patents Act, 1970
 The Copyright Act, 1957
 Indian Merchandise Marks Act. 1889
 Trade Marks Act, 1940
 Specific Relief Act, 1877
 India Registration Act, 1908
 Indian Merchandise Marks. Act, 1889
C. Rules:
 Trade Mark Rules, 2002
[88]
Bibliography
Secondary Sources:
A. Books:
 Anupam Singh & Ashwani Singh, Intellectual Property Rights and Bio-
Technology, (Narendra Publishing House, Delhi, First Edition, 2012).
 Ashwani Kumar Bansal, Law of Trade Mark in India, (Thomson Reuters, New
Delhi, 3rd Edition, 2014)
 David Kitchen, Law of Trade Marks and Trade Names, (Thomson Reuters New
Delhi 14th Edition 2005).
 Deborah e. Bouchoux, Intellectual Property, (Thomson Reuters, New Delhi, 4rd
Edition, First Indian Reprint 2015.
 Jatindra Kumar Das, Law of Copyright, (PHI Learning, New Delhi, 2015).
 Lionel Bently & Brad Sherman, Intellectual Property Law, (Oxford University
Press, 4th Edition 2014).
 M. K. Bhandari, Law Relating to Intellectual Property Right, (Central Law
Publications, Allahabad, 3rd Edition 2012 )
 V K Ahuja, Intellectual Property Rights in India, (Lexis Nexis, Gurgaon, 2nd
Edition, 2015)
B. Articles:
 Linda Annika Erlandsson, “The future of Scents as Trademarks in the European
Community”.
 M M S Karki, “Nontraditional Areas of Intellectual Property Protection: Colour,
Sound, Taste, Smell, Shape, Slogan and Trade Dress.”
C. Websites:
 http://www.ladas.com-/Trademarks/MakingSenseTM.html, visited on March
17, 2018, 08:30 PM.
 http://www.patent.gov.uk/m/reference/workman,chapt6/sec16.pdf, visited on
March 17, 2018, 08:30 PM.
 http://coudert.com.au-/publications/?action=displayarticle&id=180, visited
on March 17, 2018, 08:30 PM.
 http://www.itma.org.uk, March 21, 2018, 08:30 pm.
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EVOLUTION OF TRADE MARK IN INDIA

WITH SPECIAL REFERENCE TO SMELL

Prof. (Dr.) Preeti Saxena Dr. Vikas Kumar Upadhyay

Urkund Analysis Result

Sources included in the report:

Bhatnagar Sir (2).docx (D29604665)

Instances where selected sources appear:

Special Reference to Smell Mark: An Analysis” submitted by Habib Ur Rehman, Roll

No. ASC16008, Enrolment No.AC151/16 as a part of the partial fulfillment of the

Prof. (Dr.) Preeti Saxena Dr. Vikash Kumar Upadhyay

Creation, enjoyment and accumulation of property has been a central activity of

AIR All India Reporter

CJI Chief Justice of India

CTM Community Trade Mark

ECJ European Court of Justice

e.g. For Example

IPC Indian Penal Code

Ibid Ibidem (Latin Word- In the same place)

Id Idem (Latin Word- the same person)

OHIM Office for Harmonization in the Internal

SCC Supreme Court Cases

TRIPS Agreement Trade Related Aspect of Intellectual

USPTO The United States Patent and Trade Mark

USA United States America

w.e.f With effect from

WWW World Wide Web

WIPO World Intellectual Property Organization

WTO World Trade Organization

1.2 Statement of the Problem…………………………………………………….4

1.3 Objective of Study……………………………………………………………5

1.5 Review of Literature………………………………………………………….6

1.6 Research Methodology……………………………………………………….8

1.7 Significance of Research………………………………………......................8

1.8 Design of Chapter…………….………………………………………………9

6. Conclusion & Suggestions

Trademark is important right for the protection of intellectual property. Trade

The concept of trade mark is eventually a business concept but is intertwined

Trade Marks: New Products and New Markets:

The conventional marketing approach of dividing new ventures, in to newness

i. Physical structure (or chemical composition)

1. Roughly speaking, element-

Such identification assists consumers in ascertaining the quality of the goods,

1.2 Statement of Problem:

Our ancestors who believed in ‘Smell Test’ which is a customary methods to

2. Graphical representation of mark is essential for registration and under this

4. A likelihood of confusion is prove by the plaintiff a problem of the study where

1.3 Objective of Study:

 To know the fundamental concept of trade mark.

A hypothesis is the starting point of any investigation or inquiry in the process

with the observed facts regarding a phenomenon or an experience. The formulation of

1. Smell Mark is capable of graphical representation.

1.5 Review of Literature:

There is enormous literature available on my dissertation, however all those

A book titled Intellectual Property Rights in India, (2nd Edition, 2015)

M. K. Bhandari’s book Law Relating to Intellectual Property Right, (3rd

M M S Karki, “Non-traditional Areas of Intellectual Property Protection:

1.6 Research Methodology:

This study is a descriptive analysis of issue pertaining to the objectives and

The reason behind the selection of doctrinal approach in my dissertation, i.e.