Ipr Unit 4

Unit 03 – Trademarks
Prepared By:
Prof. Sumit Muddalkar
Contents
1. Concept of Trademarks
2. Different kinds of marks (brand names, logos, signatures, symbols,
well known marks, certification marks and service marks)
3. Non Registrable Trademarks –
4. Registration of Trademarks –
5. Rights of holder and
6. assignment and licensing of marks –
7. Infringement, Remedies & Penalties –
8. Trademarks registry and appellate board.
Trademark
Trademark
1. A “Trade mark” [TM] is defined under Section 2(zb) of the Indian Trademarks Act, 1999 as “mark
capable of being represented graphically and which is capable of distinguishing the goods or services
of one person from those of others and may include a shape of goods, their packaging, and
combination of colors.”
2. Simply put, a trademark may include a device, brand, heading, label, ticket, name, signature, word,
letter, numeral, shape of goods, packaging or combination of colors or any such combinations.
(Section 2(m)).
3. A Trademark provides legal protection from infringement and prevents others from copying the same or
creating deceptively similar marks.
4. Trademarks can be owned by an individual, a business organization or any other legal entity.
Trademark
Trademark
1. Trademark is a branch of intellectual property rights.
2. A trademark includes a name, word, or sign that differentiates goods from the goods of other enterprises.
3. A trademark can be a logo, picture mark or a slogan.
4. Trademark identifies the owner of the product.
5. Examples of Trademarks:
1. Example of trademarks goods names are, iPod and a big mac.
2. Company logos like the Golden Arches at McDonald’s and McDonald’s “I’m lovin’ it.
3. Brand names like Apple, McDonald’s, and Dolce & Gabbana.
[well-known-trademaks-updated-newone]
6. Marketing of goods or services becomes easier with a trademark, increases financing of the business.
7. The recognition of product with the trademark is assured and easier.
8. The owner can prevent the use of his mark or sign by another competitor.
9. A trademark is not always a brand but the brand is always is a trademark.

10. The brand name can be simply a symbol or logo but the trademark is a distinguishing sign or indicator in a
business organization as it has a wider implication than brands.
Trademark
Trademark Acts
1. Before 1940 there was no law on trademarks in India. The Indian Trademark Law was firstly enforced
in 1940.
2. The Trademark Law was replaced with the Trademark and Merchandise Act, 1958.
3. It provides better protection of trademark and prevents misuse or fraudulent use of marks on
merchandise.
4. The Act provides registration of the trademark so that the owner of the trademark may get a legal
right for its exclusive use.
5. This previous Act got replaced with the Trademark Act, 1999 by the government of India by
complying it with TRIPS (Trade-related aspects of intellectual property rights) obligation
recommended by the World Trade Organization.
6. The aim of the Trademark Act is to grant protection to the users of trademark and direct the
conditions on the property and also provide legal remedies for the implementation of trademark
rights.
7. The Trademark Act, 1999 gives the right to the police to arrest in cases of infringement of the
trademark.
8. In Trademark Act, it provides punishments and penalties for the offenders.
9. It also increases the time duration of registration and also registration of a non-traditional trademark.
Contents
Different Kinds of Marks
Types of Trademarks
1. Service Marks
2. Collective Marks
3. Certification Marks
4. Figure/Logo Marks
5. Word Marks
6. Device Marks
7. Well-known Mark
8. Unconventional Trademarks
Service Mark
1. A service mark is any symbol name, sign, device or word which is intentionally used in trade to
recognize and differentiate the services of one provider from others.
2. Service marks do not cover material goods but only the allocation of services.
3. For example - FedEx is a registered courier delivery service provider.
4. Service marks are used in day to day services :

1. Sponsorship Services
2. Hotel services
3. Entertainment services
4. Speed reading instruction
5. Management and investment Services
6. Housing development services
5. A service mark is expected to play a critical role in promoting and selling a product or services.
6. A product is indicated by its service mark, and that product’s service mark is also known as a trademark.
Collective mark
1. A collective mark is used by employees and a collective group, or by members of a
collaborative association, or the other group or organization to identify the source of
goods or services.
2. A collective mark indicates a mark which is used for goods and services and for the group
of organizations with similar characteristics.
3. The organization or group uses this mark for more than one person which are acting in a
group organization or legal entity for dividing the different goods or services.
4. Two types of collective marks:

1. Collective mark indicates that the marketer, trader or person is a part of the specified
group or organization. .
2. Collective trademark and collective service mark are used to indicate the origin or
source of the product.
5. A collective trademark is used by the single member of a group of an organization but is
registered as a whole group.
6. Example- CA is the title or mark which given to the member of Institute of a chartered
accountant.
Certification mark
1. A certificate mark is verification or confirmation of matter by providing
assurance that some act has been done
2. A certification mark indicates certain qualities of goods or services with
which the mark are used is certified
3. Certification mark is used in respect of source, body, mode of manufacture
of goods or performances of assistance, quality, accuracy or other
characteristics.
4. Registration of certification mark is done according to the Trademark Act,
1999.
5. For Example - FSSAI - Certification for the quality of packaged food
products.
Figurative marks / logos

1. They consist of a figure or a logo.
2. Examples: The YELLOW M of Mc Donlads or the SWOOSH sign of Nike.
Word mark
1. Word marks may be words, letters or numerals.
2. A word mark gives the proprietor a right only in the word, letter or numerical.
3. No right is sought with respect to the representation of the mark.
4. They may be words, letters or numerals. Eg: COCO CHANEL and APPLE
Device marks
1. Where the trademark lies in the unique representation of a word, letter or numerical, it is called as a
device mark.
2. Eg: The way in which AMAZON is written or EBAY is written.
Well-known marks
1. When a mark is easily recognized among a large percentage of the population, it achieves the trademark
status of a well-known mark.
2. Well-known marks enjoy greater protection.
3. Persons will not be able to register or use marks, which are imitations of well-known trademarks.
4. These people include actual or potential customers, people involved in the distribution and business service
dealing with the goods/services.
Unconventional Trademarks:
Unconventional trademarks are those trademarks that get recognition for their inherently distinctive feature:
Unconventional trademarks include the following categories:
1. Colour Trademark: If a particular color has become a distinctive feature indicating the goods of a
particular trader it can be registered as a trademark. For example, Red Wine.
2. Sound Marks: Signs which are perceived by hearing and which is distinguishable by their distinctive and
exclusive sound can be registered as sound marks. For example, Musical notes.
3. Shape Marks: When the shape of goods, packaging has some distinctive feature it can be registered. For
example: Ornamental Lamps.
4. Smell Marks: When the smell is distinctive and cannot be mistaken for an associated product it can be
registered as a smell mark. For example, Perfumes.
Trade dress
1. Trade dress is a term that refers to features of the visual appearance of a product or design of a
building or its packaging that denote the source of the product to customers.
2. It is a form of intellectual property.
3. Trade dress protection is implemented to protect consumers from packaging or appearance of products that
framed to imitate other products.
4. Aspects of Trade Dress:

1. Anything that makes an overall look or overall dress and feel of brand in the market
2. The consumer believes that trade dress is the main indicator of differentiation of one brand or
goods from others.
3. The requirement for the registration of trade dress is the same as the registration of the logo, mark.
4. The features in trade dress are size, color, texture, graphics, design, shape, packaging, and many
more.
Contents
3. Non Registrable Trademarks
Registrable and Non-Registrable Trademarks
Registrable Trademarks
1. Marks that can be observed easily and are unique/distinct from another person’s goods or services
are registrable.
2. These marks. must have a distinguishable characteristic that makes it unique and different from a
similar line of good or service
3. According to the TRIPS(Trade-Related Aspects of Intellectual Property Rights) Agreement[ii], of which
India is a signatory, a Trademark can be registered if it contains any sign or signs that make the goods or
services of an undertaking distinguishable from that of another‟s undertaking.
4. The requirements under the Trademarks Act, 1999, the following essentials are required to be fulfilled:
1. The mark must be distinct and must not be descriptive with respect to the goods or services.
2. The mark must not be similar to another mark, which has already been registered or is pending
for registration.
3. The mark must not be prohibited by the Trade Marks Act.
Examples of Registrable Trademarks
1. Names which are unique and not similar to an already existing mark.
2. Newly coined or invented words that neither describe the character nor the quality of the goods or services.
3. Numerals or letters or a combination of both.
4. Devices.
5. Use of unique symbols and signatures can be registered as a mark.
6. A combination of colours, giving rise to a unique colour.
7. 3D marks.
8. Distinct shapes of goods that make them stand out.
9. Specific sound marks that can be shown in a system or can be represented graphically.
Non-Registrable Trademarks
1. A Non-Registrable Trademark is one which has failed to distinguish itself from other goods or
services or fails to meet any other requirements provided in the Act/Rules.
2. The mark does not qualify for registration as a Trademark as it is not different enough from other
existing marks.
3. Such marks are also those which may likely cause confusion or may deceive potential consumers.
Examples of Registrable Trademarks

1. Marks which are not allowed under the Trade Marks Act.
2. Marks which mislead or confuse the public. For example, AQUAFENA and AQUAFINA.
3. Aquafina has been a popular brand for bottled drinking water in the market for a long time.
4. When a company in the name of „Aquafina‟ is brought into the market, people tend to get misled because of
the very minute difference in the mark intended to be registered.
5. Marks whose subject matter may hurt the religious sentiments of the citizens.
6. For example, JESUS JEANS for clothing. Attributing Jesus to a line of clothing may hurt the religious
beliefs of Christians as they believe him to be their God.
7. Marks that contain obscene or vulgar subject matter. For example, W.B. WIFE BEATER for clothing.
Such a brand will normalize abusive behaviour in households which can be troublesome for brands with
such names.
Examples of Non-Registrable Trademarks
1. Marks which have been prohibited by the Emblems and Names of Prevention of Improper Use Act, 1950.
For example, RED CROSS, ASHOK CHAKRA, etc. These are considered to be sacred emblems which are
attributed to national sentiments.
2. Marks of the goods whose shapes directly associated with the characteristic of the product. For example,
SHARP for televisions.
3. Marks which are similar in character with another mark. For example, PICNIC and PICNIK for chocolates.
Similar to the example used above, very often consumers might get confused between these two brands due
to very similar names of both the brands.
4. A geographical location cannot be registered as a mark. For example, SCOTCHLITE.
5. Marks that relate to smell cannot be registered.
Registered and Non-Registered Trademarks
Designation of trademark
1. Trademark is designated by:

1. ™ (™ is used for an unregistered trademark and it is used to promote or brand goods).
2. ℠ ( used for an unregistered service mark and it is used to promote or brand services).
3. R (letter R is surrounded by a circle and used for registered trademark).
Contents
Registration of Trademarks
The Trademark registration process of the brand name is a simple task.

1. Step 1: Trademark Search
2. Step 2: Filing Trademark Application in India
3. Step 3: TM Examination
4. Step 4: TM Publication
5. Step 5: Registration Certificate
6. Step 6: Trademark Renewal
Step 1: Trademark Search
1. A trademark search helps you to know if there are similar trademarks available.
2. It gives you a fair picture of where your trademark stands.
3. Sometimes, it also gives you a forewarning of the possibility of trademark litigation.
Step 2: Filing Trademark Application in India
1. After you are sure that your chosen brand name or logo is not listed in the Trademark Registry India, you
can opt for registering the same.
2. The first step is to file a trademark application form at the Trademark Office, India.
3. The Indian trademark offices are located at Chennai, Delhi, Mumbai, Kolkatta and Ahmadabad.
4. Once the application is filed, an official receipt is immediately issued for future reference.
5. Further, you can see the trademark status of your application instantly online.
Step 3: TM Examination
1. After a trademark application is filed, it is examined by the examiner for any discrepancies.
2. The examination might take around 1-2 months.
3. The examiner might accept the trademark absolutely, conditionally, or object.
4. If accepted unconditionally, the trademark gets published in the Trademark Journal.
5. If not accepted unconditionally, the conditions to be fulfilled or the objections would be mentioned in the
examination report, and a month‟s time would be given to fulfill the requirements or response to the
objections.
6. Once such a response is accepted, the trademark is published in the Trademark Journal.
7. If the response is not accepted, one can request a hearing.
8. If in the hearing, the examiner feels that the trademark should be allowed registration, it proceeds for
publication in the Trademark Journal.
Step 4: TM Publication
1. The step of publication is incorporated in the trademark registration procedure so that anyone who objects
to the registering of the trademark has the opportunity to oppose the same.
2. If, after four months from publication, there is no opposition, the trademark proceeds for registration. In
case there is opposition, there is a fair hearing, and the Registrar gives a decision.
Step 5: Registration Certificate
1. Once the application proceeds for trademark registration, following publication in Trademark Journal, a
registration certificate under the seal of the Trademark Office is issued.
Step 6: Trademark Renewal
1. The trademark can be renewed perpetually after every ten years. Hence, your logo or brand name
registration can be protected perpetually..
Process of Registration
1. Filing of Application: As per the Rules and Act given under the Trade Marks Registry, an application for a
Trademark registration may be filed.
2. Application Number Allotment: Once the application is done, the Registry shall allot a unique number for
that application.
3. Data Entry: Once the Registry receives the application, all relevant data given by the applicant shall be
entered into the system for further scanning and examination.
4. Scanning (Vienna Codification): After the data has been entered, it shall be scanned by the system to
check for already existing Trademarks of the same or similar nature and if the mark contains unique and
distinct features to qualify for registration. This process was codified at the Vienna Agreement, 1973. The
Registry will apply the Vienna Classification.
5. Examination Report: The Registry shall despatch the examination report following the scanning of the
mark.
6. Application Accepted: If the Examination Report has accepted the Trademark,
7. Journal Publication: The mark shall be published in the Trademark Journal to inform the public of
registration of such mark.
Process of Registration
8. Awaiting Opposition: Once the trademark has been published in the Journal, the public is given an
opportunity to oppose such a mark, in case of any violation.
9. If there is no opposition within 90 days from the publication of the Journal, the Trademark shall qualify for
Registration. Subsequently, the Trademark Manuscript and the Trademark Registration Certificate shall be
prepared. After issuing the Certificate, the applicant becomes the rightful owner of that Trademark and is
granted exclusive use of that mark.
10. If any person in the public opposes such a mark, the Trademark Hearing Officer shall fix a hearing. The
applicant and the opposing party shall have the opportunity to appear for such hearing to justify the
registration or rejection of the mark with sufficient evidence. Following this, the Hearing Officer shall
deliver the judgment on merit.
11. If the opposition is rejected, the application shall proceed for registration. If the opposition is accepted and
the application is rejected, the mark may either go for a review or the aggrieved party may approach the
Intellectual Property Appellate Board.
12. Once a trademark has been registered, the “®” symbol can be used next to the mark
13. The registration of a Trademark has a duration of 10 years.
Documents Required for Trademark Registration
The information and documents requirement for Trademark Registration are as follows:
1. Name of the Applicant (Individual or Company)

2. Type of Business
3. Objective of Business
4. Registration Address
5. Certificate of Incorporation in case of company and LLP
6. Identity proof of the individual applicant like Aadhar Card, Passport, Driving License or Voter‟s ID
7. MSME Certificate, if available
8. Brand/Logo Name
9. Detailed description of goods or services
10. Trademark Class or classes (Your proposed trademark can full under any one class or in multi-class)
11. Power of Attorney in Form TM-48 Format duly signed by the applicant if registration is to be done with th
help of third party
Advantages of Trademark Registration
1. Registered Trademark gives you a legal protection against the one who tries to copy your trademark.
2. You can raise the issue legally and can sue them.
3. Helps a product or service to build trust, quality, reliability and goodwill amongst the customers.
4. Gives unique identity to your business products and company, thus creating a brand value.
5. Gives recognition to your products in the global market.
6. Helps in differentiating goods from the competitors.
7. Helps in increasing the volume of sales.
8. A Trademark once registered in India is allowed to be filed in other countries also.
Contents
Rights of Trademark Holder
1. In case of both registered and unregistered trademarks, the rights are vested to the owners.
2. One such right is to prevent the third party from using an identical or deceptively similar trademark
under certain circumstances.
Rights of Unregistered Trademark Holder/Owner
1. The proprietor of an unregistered trademark can prevent any third party from using an identical or
deceptively similar trademark, provided such an unauthorized use by the rival results into passing-off.
2. For this purpose, he can initiate the proceedings under common law and the right is known as a
common law right.
3. The claimant must establish three important factors in order to bring an action against the pass-off:
1. Claimant has acquired goodwill in his trademark;
2. The act of the defendant amounts to misrepresentation;
3. The claimant has suffered or is likely to suffer damage due to the act of the defendant
Rights of Registered Trademark Holder/Owner
1. Right to Exclusive Use

1. The exclusive right to use the trademark in relation to the goods or services in respect of which the
trademark is registered.
2. Right to Seek Statutory Remedy Against an Infringement

1. The registered proprietor of a trademark can seek legal remedy in case of an infringement of his
trademark
2. May obtain an injunction(warning/order) and at his option, either damages or an account of profits
by instituting a suit against the alleged infringer.
3. Right of Registered Trademark holder of Identical Trademark

1. The right of the registered owner of the trademark is not higher in order to right of the person using an
identical trademark or resembling thereto in relation to the similar goods and services if the other
party has been continuously using the said trademark prior to the user of the trademark by the
registered owner.
Rights of Registered Trademark Holder/Owner
4. Right to Assign
1. The registered proprietor of a trademark have the power to assign the trademark and to give effectual
receipts for any consideration for such assignment.
5. Right to Seek Correction of Register

1. The registered proprietor of a trademark has a right to make an application to the registrar seeking
correction of register regarding the errors in particulars of the registered proprietor and other aspects
relating to the registered trademark.
6. Right to Alter Registered Trademark

1. The registered proprietor of a trademark must make an application to the registrar for altering the
registered trademark in such a way that is not substantially affecting the identity thereof.
Contents
6. Assignment and licensing of marks –
Assignment of Trademark
1. Trademarks can be transferred from one owner to another.
2. The transfers could be temporary through licensing or permanent through an assignment.
3. Assignment of trademarks is a process in which the owner of the trademark transfers the ownership of
the mark either with or without the goodwill of the business.
4. In other words, it is transferring of proprietary rights in the property of the proprietor.
The manner in which an assignment can be made are as follows:
1. Complete assignment of trademarks
1. In a complete assignment, the owner of the trademark transfers all the rights with respect to the
trademark, including the transfer of the rights such as right to further transfer, earn royalties, etc., to
another entity.
2. For example, A, owner of “xyz”, sells his brand to another through an agreement to B. After this, A
does not retain any rights with respect to “xyz”.
2. Partial assignment of trademarks

1. In a partial assignment, the transfer of ownership is restricted to specific product or service only.
2. The owner may retain the right to further transfer, to earn royalties etc.
3. For example, A, owner of a tea and a biscuit brand, transfers proprietary rights only with respect to the
tea brand and retains the rights over the biscuit brand, this is said to be a partial assignment.
1. Assignment with goodwill;

1. This is an assignment where the owner transfers the rights and value of the trademark as
associated with the product it sells;
2. For example, A, owner of “TH” trademark for manufacturing and selling of watches, can assign the
trademark along with giving the assignee the right to use the said trademark for the same product.
2. Assignment without goodwill

1. This is an assignment where the owner restricts the assignee to use trademark for the products
owner uses it for.
2. That is, the goodwill attached to the owner‟s brand with respect to the product already being sold under
such brand, is not transferred to the buyer.
3. This means that assignor & assignee both can use the same trademark but in dissimilar goods or
services.
4. For example, if the owner of the trademark “TH” uses it for manufacturing and selling of watches and
decides to assign it without goodwill, it means that the assignee can use the trademark “TH” for any
other product other than watches.
1. Assignment of an unregistered mark:

1. An unregistered trade mark may be assigned or transmitted with or without the goodwill of the
business concerned.
2. A request has to be made to registrar for an unregistered trademark to be assigned or transferred.
2. Assignment of a registered trademark:

1. Trade Marks can be either assigned in full or transmitted in part, with or without the goodwill of
the business.
2. All transmissions or assignments must be registered with the Registrar of Trade Marks.
3. Once a trademark is assigned it is important to record the change in ownership with the Trademark
Registry.
4. Specific forms with fees have to filed to ensure that the records reflect the ownership details.
Aspects of Assignment of Trademark
1. The assignment deed must be in writing where the assignor’s name must be same as it is in the Register of
Trademarks, i.e. the owner of the trademark;
2. It is absolutely necessary that the territorial extent of the assignment is clearly laid down; for example, if the
assignee is based in India, then it is a must that the assignment deed contain a clause saying the assignment is
for that particular region;
3. The next obvious thing is, the mark/marks that the proprietor wants to assign must be mentioned clearly;
4. The consideration that the assignee needs to pay should be mentioned as well;
5. The effective date of the assignment must be laid down clearly;
6. The most important part of an assignment deed is to mention if the assignment is along with the goodwill or
not.
Contents
6. Assignment and licensing of marks –
Licensing of Trademark
Licensing of Trademark
1. The licensing of a trademark allows the licensee to use the trademark.
2. The trademark itself is not assigned to the other entity
3. The ownership has not been transferred but the mere use of the trademark is permitted to be used by the
licensee.
4. Trademark licensing has become a common practice as it benefits both the licensor and the licensee.
5. The licensor earns money by way of royalty, while the licensee gets commercially exploit using the
mark.
Make a Licensing Agreement:
1. A licensing agreement is essential for laying down the terms and conditions of the use of a trademark.
2. Provision for quality control: The provision for quality control is essential for maintaining the goodwill
and reputation of the trademark. The agreement must provide for consequences of infringement of quality
measures so as to ensure that the quality of the product is maintained.
3. Duration of the license
4. Exclusive or Non-exclusive license
5. In case of sub-licensing, the terms on which it is permitted and the extent of its use.
6. Commercial terms such as the payment of royalties, escalations, etc.
7. Circumstances under which the license would be canceled.
8. Specific restrictions or terms on the use of trade-name and a dispute settlement mechanism.
Contents
Infringement, Remedies & Penalties
Infringement of Trademark
1. A registered trademark is infringed by a person who not being a registered proprietor but using trademark.
2. Trademark infringement means the unapproved use of a trademark on regarding products and benefits in
a way that is going to cause confusion and difficulty to the trader.
3. After infringement, the owner of the trademark can go for civil legal proceedings against a party who
infringes the registered trademark.
4. Trademark infringement through websites.
5. For example, an individual who develops a website online that discusses her expertise with Microsoft
software could use Microsoft‟s trademarks to consult exact merchandise without the worry of infringement.
6. There are two types of infringement of trademarks:

1. Direct Infringement
2. Indirect Infringement
Direct Infringement of Trademark
A trade mark can be infringed in the seven following ways:-
1. Identity with registered mark

2. Similarity with registered mark and identity of goods/services
3. Identity with registered mark and goods and services-presumption of confusion
4. Identity with a registered mark having reputation
5. Similarity of trade name with registered trademark
6. Application of registered mark on labeling, packaging knowing that it is without authorization
7. Use of registered trademarks in advertisements
Indirect Infringement of Trademark
1. There is no provision in the Act that deals with indirect infringement precisely.
2. This does not mean that there is no accountability for indirect infringement.
3. The accountability has to be established in either of the two ways:
1. Contributory Infringement
1. It takes place when the person knows of the infringement
2. or the person materially contributes to the direct infringement
3. or the person induces the principal infringer to commit infringement.
4. If a person in any of the above mentioned ways contributes towards infringement without being
the primary infringer then even that person can be held liable by the virtue of this.
2. Vicarious Liability
1. If a company commits an offence under this Act, then the whole company will be liable.
2. Therefore not only the principal infringer but, every person responsible for the company will be
liable for indirect infringement, excluding for a person who acted in good faith and without
knowledge of the infringement.
When can a person be considered as infringing a trademark
A registered trademark is said to be infringed in case of the following situation:
1. If the mark in dispute is identical with or deceptively similar to the registered trademark and is in
relation to the same or similar goods or services;
2. If the identical or similar mark can cause confusion in the minds of general public to have an association
with the registered trademark
3. If the registered trademark is used as a part of trade name or business concern for goods and services in
respect of which the trademark is registered
4. If the trademark is advertised and as a result it takes unfair advantage or is contrary to the honest
practices or is detrimental to the distinctive character and reputation of the registered trademark.
5. If the registered trademark is used in the material meant for packaging or labelling of other goods or as
a business paper without due authorization of the registered user.
Remedies and Penalties
1. Whenever a trademark is said to be infringed, both civil and criminal action can be brought about.
2. The Trademark Act, 1999 recognizes infringement of trademarks as a cognizable offence i.e. a police
complaint can be lodged, and the infringers can be prosecuted directly.
3. Even the courts are empowered with the authority to conduct raids and seizure operations.
4. On the other hand, a civil action can also be brought about against such infringements.
5. A suit can be initiated depending on whether the trademark is registered, pending or unregistered.
6. Since trademark infringement is a continuing offence, there is no limit on the time period for filing a suit.
The court of competent jurisdiction can give the following

remedies if the infringements are successfully proved:
1. Appropriate Damages;
2. Injunction/stay against the use of trade mark;
3. Cost of proceedings
4. Destruction of goods.
5. Handing over of accounts and profits;
6. Appointment of a local commissioner by the respective court

for custody or sealing of infringing material and accounts.
7. The court can even go up to the extent of granting injunctions

and directing the custom authorities to withhold the infringing
material from being shipped or being disposed so that the
proprietary interest of the owner gets protected;
A person is said to be applying for a trademark wrongfully in the following conditions:
1. If falsification of trademark has been committed;

2. If any trademark has been falsely applied to goods and services;
3. Makes, possesses or disposes of any instrument with the object and purpose of falsifying a trademark;
4. Falsely indicates name of the country or place where the goods have been made or the name or address
of the person who is responsible for its manufacturing;
5. Alters or tampers with the indication of origin that is applied or required to be applied to a product.
6. The punishment for infringement of trademarks as a result of falsification shall not be less than six months
but which may extend to three years and with fine which shall not be less than fifty thousand rupees
but which may extend to two lakh rupees.
What is Passing Off
1. Passing is recognized as a common law tort which is used to protect and enforce unregistered trademarks in
India.
2. Like protection of trademarks, Passing off also prevents a person from misrepresenting its goods and
services from that of the other.
3. The concept of passing off has emerged in the recent past.
4. It has extended its ambit from goods to businesses and services.
5. Today it is even applied to many forms of unfair trading and competition.
6. There are three elements of passing off popularly known as the classical trinity.
7. These include Reputation, Misrepresentation and damage to goodwill.
8. Common law courts have come up with a few basic characteristics of passing off which include the
following:
1. Misrepresentation
2. Made by a person in the course of trade
3. To prospective or ultimate consumers of goods and services
4. To injure the business or goodwill of the other person
5. It causes actual damage to the person by whom the action is brought about.
Contents
Trademarks Registry and Appellate Board
Intellectual Property Appellate Board (IPAB)
1. Intellectual Property Appellate Board, a statutory body under DIPP(Department of Industrial Policy and
Promotion) established under the provisions of the Trade Marks Act on 15th September, 2003 in Chennai.
2. This body is responsible to hear appeals against the decisions of the Registrar of Trade Marks and
Geographical Indications and Controller of Patents.
3. Composition of the Appellate Board

1. The Appellate Board constituted under the Trademarks Act consists of three types of members: the
chairman, the vice-chairman, and other members who are nothing but the technical and judicial
members.
2. The other members are appointed by the Central government as it deems fit.
4. Chairman
5. A person cannot be appointed as the chairman unless he was or is the High Court judge or was a Vice-
Chairman for a period of two years.
6. He is appointed for a period of five years or until he becomes 65 years old.
7. When a chairman dies or resigns, temporarily the vice-chairman acts as the chairman until a new chairman
is appointed according to this act.
Intellectual Property Appellate Board (IPAB)
1. Vice-Chairman
2. A person is not appointed as the vice-chairman unless he has been a technical or a judicial member for a
period of two years or was a member of the Indian legal service and held a post not lesser than Grade I for a
period of five years.
3. He holds the office for a period of 5 years or until he attains the again of 65 years.
4. He acts as a substitute in case of the death/ resignation or absence of the chairman.
5. Other Members
6. A person cannot be appointed as a judicial member unless he has been a member of the Indian legal service
and held a post of Grade I for a period of three years or has held a post in the Civil judicial office for a
period of 10 years.
7. A person cannot be appointed as a technical member unless he has been an advocate in any of the
specialized trademark law for a period of ten years or has discharged the functions of the tribunal under this
act or Trade and Merchandised Act or both for a period of ten years along with holding a post not less than
a joint registrar for a period of five years.
8. The important point to note is that all the members i.e the chairman, vice-chairman, the judicial, and the
technical members are appointed by the president only after the consultation of the chief justice of India.
Functions of Appellate Board
1. When a person is aggrieved by the order of the registrar, he shall file an appeal within three months of the
passing of the order before the board.
2. The appeal must be filed in the prescribed form and manner along with a copy of the order against which
the appeal is filed.
3. An application can be filed for the rectification of the register under sec 57 of the Act and when the board
passes an order regarding this, the certified copy of the order is communicated to the registrar.
4. The registrar gives effect to the order by amending or rectifying the contents in the register.
5. The board can hear cases after the expiry of the said period if there is sufficient and reasonable cause for
not being able to file for an appeal before the specified time.
Powers of Appellate Board
1. The board is not bound by the rules of the civil procedure code.
2. It is bound by the principles of natural justice and has the power to regulate its own procedure like deciding
the time and place of the meeting
3. It shall have the same power like that of a court trying a suit under the civil procedure code like receiving
evidence, examining the witness, requisitioning any public record etc.
4. The proceeding before this board is deemed to be a judicial proceeding and the board is considered to a
civil court.
5. After the constitution of this board, no other court has the jurisdiction to try cases that come under the
purview of this board
Powers of Appellate Board
1. The registrar has the right to appear in a legal proceeding where the issue is regarding the amendment or
rectification of the register.
2. The registrar also has the right to appear in a proceeding in relation to the rejection or amendment of the
application of the registration of the trademark.
3. The registrar will appear also if he is directed by the Board.
4. The registrar can also provide a written statement with particulars in support of his contention which will be
regarded as evidence.
5. A trademark can be removed from the register on the application made to the registrar or the appellate
board.
Thank You

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Unit 03 – Trademarks

9. A trademark is not always a brand but the brand is always is a trademark.

4. Service marks are used in day to day services :

4. Two types of collective marks:

Figurative marks / logos

Unconventional trademarks include the following categories:

4. Aspects of Trade Dress:

Examples of Registrable Trademarks

1. Trademark is designated by:

The Trademark registration process of the brand name is a simple task.

Step 2: Filing Trademark Application in India

Step 6: Trademark Renewal

1. Name of the Applicant (Individual or Company)

Rights of Unregistered Trademark Holder/Owner

1. Right to Exclusive Use

2. Right to Seek Statutory Remedy Against an Infringement

3. Right of Registered Trademark holder of Identical Trademark

5. Right to Seek Correction of Register

6. Right to Alter Registered Trademark

2. Partial assignment of trademarks

1. Assignment with goodwill;

2. Assignment without goodwill

1. Assignment of an unregistered mark:

2. Assignment of a registered trademark:

5. The effective date of the assignment must be laid down clearly;

6. There are two types of infringement of trademarks:

A trade mark can be infringed in the seven following ways:-

1. Identity with registered mark

A registered trademark is said to be infringed in case of the following situation:

The court of competent jurisdiction can give the following

6. Appointment of a local commissioner by the respective court

7. The court can even go up to the extent of granting injunctions

A person is said to be applying for a trademark wrongfully in the following conditions:

1. If falsification of trademark has been committed;

3. Composition of the Appellate Board

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