YASHASVI PARKASH

ROLL NO.: 07816503820

B.A. LL.B.
EIGHTH SEMESTER

ASSIGNMENT ON

Registration of TradeMark

SUBJECT: Intellectual Property Rights

SUBMITTED TO: Prof. (Dr.) Lisa P Lukose

UNIVERSITY SCHOOL OF LAW AND LEGAL

STUDIES GURU GOBIND SINGH INDRAPRASTHA
UNIVERSITY SECTOR 16 C, DWARKA,
NEW DELHI – 110075, INDIA
2024
 TABLE OF CONTENTS

● Meaning and Definition of Trade Mark

● All about registered Trademark
● Salient Features of the Trade Mark Act, 1999
● Registration of Trade Mark for Services [Sec. 2(2)(z)]
● Enlargement of definition of Trade Marks [Sec. 2(2)(zb)]
● Registration of Trade Marks simplified [Sec. 9(1)(a)]
● Enhanced protection for well known trade marks [Sec. 2(1)(zg), read with section 9(1)
and section 11]
● Defensive Registration system in 1958 Act omitted [Sec. 159(6)]
● Part A and Part B registration system abolished [Sec. 6(7)]
● Period of renewal modified [Sec. 25]
● Filing of Multi-class applications permitted [Sec. 18(2)]
● Assignment of unregistered trade marks [Sec. 39]
● Amendment of Companies Ac [Sec. 158 - Schedule amending Sec. 20 & 22 of
Companies Act]
● Register on Computer [Sec. 6(2)]
● International Classification adopted [Sect. 7]
● Refusal of registration [Sec. 9 and 11]
● International non-proprietary names not registrable [Sec. 13]
● Association of Trade Marks [Sec. 16]
● Requirement of 'disclaimer' abolished [Sec17, read with 159(2)]
● Exhaustion of Trade Mark rights [Sec. 30(3)]
● Distinctiveness of mark subsequent to registration recognized [Sec. 32]
● Acquiescence by proprietor of 'earlier trade mark' - consequence [Sec. 33]
● Regd. User may institute infringement proceedings [Sec. 52]
● Owner of Trademark:
● Registration of Trademark:
● Infringement of Trade Mark:
● Case Law on Infringement:
 Trademark Registration in India

Intellectual Property is the most important part of the modern business. Intellectual property
which is a combination of copyright, trademark, design, geographical indication, patent,
industrial design, integrated circuit, is valuable assets of any company. IP can create healthy
competition in the market; consequently the manufacturer and traders can develop their
products more effectively.

About Trademark:

Trade mark is a branch of Intellectual Property Right. A trademark includes any word, name,
symbol, or device, or any combination, used, or intended to be used, in commerce to identify
and distinguish the goods of one manufacturer or seller from goods manufactured or sold by
others, and to indicate the source of the goods. In short, a trademark is a brand name. Trademark
is a mark or symbol which is capable of distinguishing the goods or services of one from those
of others.

Meaning and Definition of Trade Mark

A trademark is a means of identification. It has a visual symbol in the form of the word, a
device, or a label applied to articles of commerce with a view to indicate to the purchasing
power that they are the goods manufactured or dealt by other persons. Trademark is a mark
used a proposed to be used in relation to goods1 it is not to registered trademarks but it must be
a mark in relation to goods.2 We can say that in other words trademarks are visual
representation attached to goods for the purpose of indicating their trader origin.

The legal concept of Trade Mark can be understood by referring to the definition of the Trade
Mark in Section – 2 (1) (zb) The Trade Mark Act 1999. Trade Mark” means a mark capable of
being represented graphically and which is capable of distinguishing the goods or services of
one person from those of others and may include: shape of goods, their packaging and
combination of colours.

In relation to chapter XII (other than section 107) 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

1
Section 2 (v) (31) Trade Mark Act 1958
2
KT Pavanny v/s K.T. Mathew, AIR 1982. Ker 309: 1982 ker LT 399: ILR (1982) 2 ker 250.
the course of Trade between the goods or services, as the case may be, and some persons having
the right as proprietor to use the mark. 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 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, 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.

This definition is applicable to registered as well as unregistered Trade Marks. In the new
definition of Trade Mark there are inserted more substantive requirements for being a Trade
Mark than the definition of the 1958 Act. 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) clearly states that:

1. Trade Mark must be a mark which includes a device, brand heading, label, ticket, name,
signature word, letter, members shape of goods, packaging or combination of colours or any
combination thereof : S2 (I) (m) 2. Trade Mark must be capable of being represented
graphically. 3. It must be capable of distinguishing the goods or services or one person from
those of others. 4. It may include shapes of goods, their packaging and combination of colour.
5. It must be used or proposed to be used in selection for goods or services. 6. Thus use must
be or the purpose of indicating a connection in the course of Trade between the goods or
services. And some persons having the rights as proprietor to use the mark. 7. The right to the
proprietorship of a Trade Mark may be acquired by registration under the Act or by use in
relation to particular goods or services. 8. The right of proprietorship acquired by registration
is a statutory right which acquires no actual user but only an intention to use the mark. On the
other hand the right acquired by actual user in relation to particular goods or services, is a
common law right which attached to the goodwill of the business concerned.

All about registered Trademark

● Once a trademark is registered and approved by the Trademarks Registry, a bundle

of rights including the right to use such mark is exclusively conferred upon the
 owner of such registered trademark owner. In India, registered trademark is any
mark that is legally registered under The Trade Marks Act, 1999.
● Registration gives legal protection to the rights of the registered owner and one can
approach the judiciary for infringement and can claim damages from the person who
is using his trademark without his consent or approval. For registration, the owner
of the mark needs to file an application before the Trademark Registry showing that
it gives a unique identity to the goods or services, as the case may be, and can be
distinguished from the others available in the market.
● And, once a trademark is registered, (R) is added in place of (TM) that indicates
trademark and is usually written in the upper right-hand corner of the mark.
● In India, though the registration of trademark is not mandatory, but it is always
advisable to register the mark because of certain benefits that derive automatically
from such registration. Most importantly registration of the mark is required as it
plays a vital role in identifying as well as advertising the product.
● Registration secures the goodwill of the trader and gives protection to the consumers
from purchasing the imitation product or the second rate quality product. Chapter
IV of the Trade Marks Act, 1999 talks about the effects of registration and by such
registration certain rights are conferred under section 28 of the Act. As per Section
27 of the Act, no action for infringement can be taken in case of an unregistered
trademark. Whereas, if a registered trademark is infringed, the aggrieved person can
sue and take action for such infringement of his mark and can even ask for reliefs.
● According to Section 31 of the Act which is consistent to Section 31 of the Trade
and Merchandise Act, 1958, registration of trade marks is to be a prima facie
evidence of its validity. This means that the evidence is liable to be rebutted and the
burden of proof is on the person alleging invalidity.

The Hon’ble Supreme Court observed in Corn Products Refining Co. versus Shangrila
Food Products Ltd [AIR 1960 SC 142, (1960) 1 SCA 536], that the only presumption that
follows from a registration of a trade mark is its prima facie evidentiary value of its validity.

● Chapter III of the Trade Marks Act, 1999 deals with the procedure and time period
or duration of registration. The time period of registration for a trademark is ten
years in India and is subject to renewal on expiration of such time period of 10
 years. The entire process of registration in India is governed by the Trade Mark Act
1999.
● The procedure for registration is complex, costly and takes time. The proprietor
interested in registering his trademark must make an application as prescribed under
Section 18 of the Act. Once the application is filed, it is examined by the Registrar
carefully to find out if there is any discrepancy. The acceptance must be absolute
and unconditional. After the application is accepted by the Registrar, the application
has to be advertised in the Trademark Journal which is published weekly.
● Trademark Journal contains all the trademarks those are accepted by the Registrar.
Once it is published in the Journal, general public have an opportunity to object such
registration if he believes that such registration can be a cause of damage to him.
Any third party may object within three months from the date of the advertisement
of the application or within such further period not exceeding one month, as
provided in the Act may object such registration by giving a notice writing to the
Registrar in a prescribed manner. The Registrar is also empowered to withdraw the
application under section 19 of the Act in case of any defects or errors.
● When no objection or opposition is received by the Registrar, the next step has to
be the preparation and issuance of the trademark certificate to the applicant and once
the certificate is issued, the trademark is considered to be registered trademark under
Section 23 of the Act and then the ® symbol can then be placed next to the Trade
Mark logo or the ™ symbol.

All about Unregistered Trademark

● An unregistered trademark is a trademark which is not registered under the Trade

Marks Act 1999 and does not have safeguards against infringement. The proprietor
of an unregistered trademark does not have the right to use ® symbol. An
unregistered trademark only possesses the ™ logo indicating that such trademark is
not registered but is distinguishable from other similar goods or services.
● Under the Trademarks Act, an unregistered trademark does not get much protection
and cannot stop any third party from using the same mark. An unregistered
trademark is one which does not get statutory protection but possess certain common
law rights.
 ● There are traders who use trademarks which are not capable of registration and they
just prefer not to apply for registration. Sometimes a trademark remains unregistered
as the proprietors do not file an application for registration due to ignorance of the
Intellectual Property laws. The whole procedure of registration is complex and quite
lengthy and due to this, there are lots of cases pending before the Trademark
Registry where an application has been filed by a proprietor but the trademark is yet
to be considered as registered.
● An unregistered trademark does not get much security and legal protection as
compared to the registered trademarked goods or services. The owner of an
unregistered trademark can affix the ™ symbol. This serves as a notice to the public
and indicates that mark used by him on his product is unregistered but can be used
as a trademark to signify or distinguish his product from those of the other available
in the market.
● Though no action can be taken for infringement of an unregistered trademark under
the Trade Marks Act but the third party can be sued for passing off. Unregistered
trademarks posses certain benefits under common law and the action against passing
off is based on the principle which says that “a man may not sell his own goods
under the pretense that they are the goods of another man”.
● Passing- off is a mechanism of practicing unfair trade and seeking profit from the
goodwill of another associate trader. One of the main essential ingredients of a
passing-off action is that some confusion has been formed in the minds of the
consumers regarding the trade names and in such matters the test to be applied is
whether a person of average understanding and a person of imperfect remembrance
would be confused so as to identify the source of the product. It is the responsibility
of the aggrieved to prove that there is a similarity and the defendant is fraudulently
passing off his products as those of the aggrieved.

Difference between Registered and Unregistered Trademark

A registered trademark can be distinguished from an unregistered trademark on the basis of the
grounds that are discussed below:

Validity and burden of proof when challenged

According to Sec 31 of the Trade Mark Act, registration of a trade mark has to be the ‘prima
facie’ evidence of its validity. From this it can be easily concluded that with the registration,
the trademark posses much benefits in terms of its evidential value. Validation is believed to
act only upon trademark which are registered. It is the liability of the owner to prove the value
and the goodwill attached to the goods or services in case of an unregistered trademark. In India
where, registration of a trademark is not mandatory, an unregistered trademark may gain some
protection only after the product earns some level of reputation in the market, manages a highly
convincing position in the industry and gets well known among the large percentage of public.
Hence the burden of proof lies with the proprietor when the validity of an unregistered
trademark is challenged by someone.

Salient Features of the Trade Mark Act, 1999

The Trade Mark bill 1999 was passed and the bill received the accent of the President of India
on the 30th Dec 1999 and became an Act. The Draft Trademark Rules were notified on 18th
May, 2001 and approved Rules were notified on 26th February, 2002. The new Act has been
brought into force on 15th September 2003 after considerable lapse of time.

The Salient features of the Trade Marks Act, 1999, are as follows:

Registration of Trade Mark for Services [Sec. 2(2)(z)]

The new law provides for registration of trade marks for services, in addition to goods. It was
obligatory on India to provide for protection of trade marks in respect of services under the
Paris convention [Article 1(2), read with Art. 6] and for registration under the TRIPS
Agreement [Art. 15(4)], India is a member. Service marks registration has been introduced in
the new Act.

Enlargement of definition of Trade Marks [Sec. 2(2)(zb)]

The definition of trade marks has been enlarged, so as to include shape of goods, their
packaging and combination of colours. It is only illustrative and it follows that even something
not falling into one of these categories may be regarded as a mark for the purposes of the Act.

Registration of Trade Marks simplified [Sec. 9(1)(a)]

For registrability, the mark will have to be capable of distinguishing the goods or services of
the applicant from those of others. Thus the test of registrability of trade marks under the new
Act will generally be similar to what was necessary to secure a registration in Part B of the
register under the old Act. Any mark which is demonstrated to be distinctive in fact by use will
qualify for registration under the law, since it does not seem to be necessary as under the old
law that the mark must be "adapted to distinguish", a concept omitted in the present law.

Enhanced protection for well known trade marks [Sec. 2(1)(zg), read with section 9(1)
and section 11]

The new act incorporates definition of "well-known trade marks" [Sec. 2(1)(zg)]. Further the
law seeks to prevent registration of trade marks, which are imitations of well-known marks, by
enlarging the grounds for refusal of registration under Sections 9 and 11 of the Act. The
proprietor of well-known mark will be entitled to prevent use of identical or similar trade mark
in connection with goods or services, though not similar to those for which the mark is
registered, where such use is without due cause, would take unfair advantage of or be
detrimental to the distinctive character or reputation of the well-known trade mark.

Defensive Registration system in 1958 Act omitted [Sec. 159(6)]

Defensive Registration is abolished in the new Act, since it was limited to only "invented
words". Sec. 159 enacts that a defensive registration is effected under section 47 of the TM Act
1958, will cease to have effect on the date immediately after the expiry of five years of the
commencement of the new Act or after the expiry of the period for which it was registered or
renewed, whichever is earlier.

Part A and Part B registration system abolished [Sec. 6(7)]

In 1958 Act, the law provided registration of trade marks in Part A marks which were
distinctive i.e. "adapted to distinguish" the goods and in Part B marks which are "capable of
distinguishing" the goods. The new Act has abolished the system of maintaining two-part
registration of trade marks in Part A and Part B with different legal rights, and to provide only
a single register with simplified procedure for registration of marks and with equal rights. The
provision for presumption of conclusive validity of a trade mark after 7 years as contained in
former section 32 has been omitted, as being redundant.
Period of renewal modified [Sec. 25]

The new Act 1999 has increased the period of renewal of Trade Mark from 7 years to 10 years.
Therefore every trade mark registered will be valid for 10 years and has to be renewed every
10 years. The old mark where certificates have been issued will be valid for 7 years and then
the calculation has to be for 10 years and respective fees have to be paid to the Registrar of
Trade Marks.

Filing of Multi-class applications permitted [Sec. 18(2)]

The new Act enables an applicant to file a single application for registration of the same mark
in respect of goods or services falling in more than one class. It means that the law facilitates
registration of the same mark in several classes by means of single application. But fees payable
will be in respect of each such class of goods or services.

Law concerning registration of registered users simplified [Sec. 49]

The definition of 'permitted user' has been substantially changed to cover use of the mark both
by a registered user and unregistered common law licensee, who is in any case entitled to use
the mark by virtue of the agreement with the registered proprietor. The authority to register
such licensing arrangement is transferred from 'Central Government' to the legitimate authority,
viz. the Registrar of Trade Marks. Another change is the deletion of the reference to 'trafficking
in trade marks' which existed in the old law. The Trademark Act 199 has incorporated
assignment of Trademark with or without the transfer of the goodwill of the business or part of
the business to which the trade mark concerned pertains, which has now been given statutory
shape in Sections 38 and 39 of the new Act.

New provision for registration of Collective marks [Chapter VIII - Sec. 61-68]

The new Act has introduced a set of provisions for registration of 'collective mark' which
belongs to a group or association of persons, whose use is reserved for members of the group
or association of persons. Collective marks would serve to distinguish characteristic features
of the products or services offered by those enterprises.

Appeals from Registrar to lie to Appellate Board, instead of High Court [Sec. 83-100]
Appeals from orders or decisions of Registrar which had to be filed before the High Court
having jurisdiction as defined under the old Act, has been transferred from the High Courts to
the Intellectual Property Appellate Board, constituted by the new Trade Marks Act, 1999. The
Act explicitly bars any court or authority from exercising jurisdiction, powers or authority in
relation to appeals [vide section 93]. In Section 100, all cases of appeals and rectification
proceedings pending before any High Court will be transferred to the Appellate Board from
such date as may be notified in the Official Gazette.

Scope of infringement of Trade marks widened [Sec. 29]

The scope of the law governing infringement of trade marks has been enlarged to include where
the infringing use is likely to cause confusion or is likely to be taken to have an association
with the registered trade mark. In keeping with the legislative intent to protect well known
marks, the law enacts that use of an identical or similar mark on goods or services which are
not similar will constitute infringement, where the registered trade mark has a reputation in
India and the use without due cause will take unfair advantage of or is detrimental to the
distinctive character or repute of the registered mark. Section 29 specifies the circumstances
and types of uses which constitute infringement of a registered trade mark.

Enhanced punishment for trade mark offences [Sec. 103-105]

To discourage sale of spurious goods, penalty for applying false trade mark, trade description,
etc. and for selling goods or providing services to which false trade mark or false trade
description is applied, has been enhanced. Further enhanced punishment for second and
subsequent convictions these offences are explicitly declared as 'cognizable' Section 115(3).

Forum for institution of infringement proceedings, etc. [Sec. 134]

As per the old Act Suits for infringement have to be filed in District Court, where the defendant
carries on his business. The new Act has now brought it in conformity with the Copyright Act,
i.e. Suit can be filed in 'District court having jurisdiction' which will include a district court
within the local limits of whose jurisdiction, the plaintiff actually or voluntarily resides or
carries on business or personally works for gain.

Removal of mark on ground of non-use [Sec. 47]

As per the old Act the mark can be removed from the register if the mark is not used for 61
months from the date of filing of Trade mark application. Due to considerable time lag between
date of application and date of registration, such a law was causing hardship to registrants. The
new Act, now explicitly provides that the period of 5 years non-use will be reckoned from the
date of actual registration and not from the application date. Further use by not only a registered
user, but also an unregistered permitted user, will accrue to the benefit of the registered
proprietor for any purpose for which 'use' is material under the Act.

Assignment of unregistered trade marks [Sec. 39]

As per the old Act an unregistered trade mark was not assignable or transmissible except along
with the good will of the business concerned, except in certain specified circumstances. This
has been abolished. Under the new Act an unregistered trade mark can be assigned with or
without the goodwill of the business concerned.

Amendment of Companies Ac [Sec. 158 - Schedule amending Sec. 20 & 22 of Companies

Act]

The new Act prohibit the use of someone else's trade mark as pert of corporate name or name
of a business concern, sections 20 and 22 of the Companies Act have been amended suitably
as per Section 158 of the Trade Marks Act, 1999. As per Section 27(5) such use will constitute
an infringement of a registered trade mark under the Act.

Register on Computer [Sec. 6(2)]

The Registrar is empowered to maintain the register and other records wholly or partly in
computer floppies diskettes or in any other electronic form [section 6].

International Classification adopted [Sect. 7]

The new Act has adopted the International Classification of Goods and Services for registration
of marks and the Registrar is to publish an alphabetical index of classification of goods and
services to give such index statutory recognition [Section 8].

Refusal of registration [Sec. 9 and 11]

The new Act provides for 'absolute' and 'relative' grounds for refusal of registration.
International non-proprietary names not registrable [Sec. 13]

International Non-proprietary names declared as such by the UHO and notified by the Registrar
or which is/are deceptively similar to such names will not be registrable as stated in section
13.

Association of Trade Marks [Sec. 16]

In the matter of association of trade marks, goods and services are associated with each other,
if it is likely that those goods might be sold or otherwise trade in, and those services might be
provided by, the same business - section 2(3).

Requirement of 'disclaimer' abolished [Sec17, read with 159(2)]

The new Act has abolished the provision for imposition of 'Disclaimer' and enacts that where
a mark consists of several matters, its registration confers on the proprietor exclusive right to
the use of the mark taken as a whole and that such registration will not confer any exclusive
right in any matter forming part of the 'whole', unless that part is separately registered [section
17].

Exhaustion of Trade Mark rights [Sec. 30(3)]

The new Act recognizes the principle of international exhaustion of rights in sub-section (3)
and (4) of section 30 of the Act.

Distinctiveness of mark subsequent to registration recognized [Sec. 32]

The new Act provides that a registration will not be invalid if, by reason of use subsequent to
its registration and before commencement of legal proceedings, the mark has acquired a
distinctive character - section 32.

Acquiescence by proprietor of 'earlier trade mark' - consequence [Sec. 33]

If the proprietor of an 'earlier trade mark' has acquiesced for a period of 5 years, he is precluded
from enforcing his right; unless it is proved that the registration of the later mark was not in
'good faith' - section 33.

Regd. User may institute infringement proceedings [Sec. 52]

The right of registered user to take infringement proceedings is recognized, subject to
agreement between the parties, while an unregistered licensee who is also a 'permitted user' has
no such right - section 52.

Police empowered to search and seize [Sec. 115(4)]

Police officer, not below the rank of Deputy Superintendent of Police, is empowered to search
and seize the infringing goods etc. without warrant. However, he is required to obtain the
opinion of the Registrar on facts relating to the trade mark and abide by his opinion - section
115(4).

Unauthorized registration of mark by Agent [Sec. 146]

Marks registered by an agent or representative in his own name without authority may be
cancelled or registration rectified so as to make the true owner as the registered proprietor by
assignment - section 146.

Member countries of TRIPS & Paris Convention are Convention countries [Sec. 154]

India acceding to the Paris Convention and the TRIPS Agreement, and likelihood of accession
to Madrid agreement or Protocol, convention country in the law includes countries which are
groups or union of countries or inter-governmental organizations - section 154. The Central
Government has already issued notification No. S. O. 1041 (E) dated 3rd December, 1998
ratifying the Paris Convention and declaring each of the member countries as a 'Convention
Country' in terms of section 131 of the Trade & merchandise Marks Act, 1958. This notification
will continue to be operative by virtue of section 159(1).

Govt. empowered to remove difficulties in administration of Act [Sec. 156]

In view of considerable changes in the law, a specific provision has been incorporated, enabling
the Central Government to take such action, as necessary (not being inconsistent with the Act),
to remove difficulties in the administration of the Act - section 156.

Owner of Trademark:

Trademark provides protection to the owner of the mark by ensuring the exclusive rights to use
in to identify the goods or services or authorize another to use it in return of payment. It works
like a weapon in the hand of registered proprietor or owner of the mark to stop other traders
from unlawful use of the mark of the registered owner. Under section 28 of the Act, the
registration of a trade mark shall give to the registered proprietor of the trademark, the exclusive
right to the use of the mark in relation to the goods in respect of which the mark is registered
and to obtain relief in respect of the trademark in the manner provided under the Act. The
proprietor of a trade mark has a right to file a suit for infringement of his right and obtain:

1. Injunction,

2. Damages,

3. Account of profits

Registration of Trademark:

As per section 18 (1) of the Trade mark Act, 1999, any person claiming to be the proprietor of
a trademark used or proposed to be used by him may apply in writing in prescribed manner fro
registration. The application must contain the name of the mark, goods and services, class in
which goods and services fall, name and address of the applicant, period of use of the mark.

Any Person means a Partnership firm, association of persons, a company, whether incorporated
or not, a Trust, Central or State government.

Steps for registration of trademark-

1. Search for the name, device, logo, and mark intended to be applied as trademark.

2. Apply for registration of trademark.

3. Examination of application by the registry. Examination report issued by the registry raising
objections under different sections of the Trademark Act, 1999.

4. Replying to the official objections and if required, ask for hearing. Applicant needs to file
evidence in support of the trademark application.

5. Advertisement of trademark in official gazette/trademark journal for the purpose of

opposition filed by the public within 3 months from the date of publication.
6. If no opposition is received, a certificate of registration is issued in favour of applicant. The
validity period of registration certificate is for ten years and after that the same can be renewed
subject to the payment of renewal fees.

Infringement of Trade Mark:

Infringement is a breach or violation of another's right.

As per Black's Law Dictionary Infringement means an act that interferes with one of the
exclusive rights of a patent, copyright and trademark owner. According to the Trademark Act,
'A registered trade mark is infringed by a person if he uses such registered trade mark, as his
trade name or part of his trade name, or name of his business concern or part of the name, of
his business concern dealing in goods or services in respect of which the trade mark is
registered. Infringement of trademark means use of such a mark by a person other than the
registered proprietor of the mark.

As per Trademark Act, a mark shall be deemed to be infringed mark if:

1. it is found copy of whole registered mark with a few additions and alterations,

2. the infringed mark is used in the course of trade,

3. the use of the infringed mark is printed or usual representation of the mark in advertisement.
Any oral use of the trademark is not infringement.

4. the mark used by the other person so nearly resembles the mark of the registered proprietor
as is likely to deceive or cause confusion and in relation to goods in respect of which it is
registered.

Protection Against Infringement of Trade Mark:

Under section 29 of the Trade mark Act, 1999, the use of a trade mark by a person who not
being registered proprietor of the trade mark or a registered user thereof which is identical with,
or deceptively similar to a registered trademark amounts to the infringement of trademark and
the registered proprietor can take action or obtain relief in respect of infringement of trademark.
In a matter Supreme Court has held that in an action for infringement if the two marks are
identical, then the infringement made out, otherwise the Court has to compare the two marks,
the degree of resemblance by phonetic, visual or in the basic ides represented by the registered
proprietor, whether the essential features of the mark of the registered proprietor is to be found
used by other person than only the Court may conclude the matter.

Case Law on Infringement:

Hearst Corporation Vs Dalal Street Communication Ltd., 1996 PTR 1 (Cal)

The Court held that a trade mark is infringed when person in the course of trade uses a mark
which is identical with or deceptively similar to the trademark in relation to the goods in respect
of which the trademark is registered. Use of the mark by such person must be in a manner
which is likely to be taken as being used as a trademark.

In an action for infringement of trademark:

(a) the plaintiff must be the registered owner of a trademark

(b) the defendant must be use a mark deceptively similar to the plaintiff's mark

(c) the use must be in relation to the goods in respect of which the plaintiff's mark is registered,

(d) the use by the defendant must not be accidental but in the course of trade.

Amritdhara Pharmacy Vs Satya Deo Gupta, AIR 1963 SC 449

In the said case the test for determining the similarity in two words relevant to an infringement
action was stated by Supreme Court that: You must take the two words. You must judge them,
both by their look and by their sound. You must consider the goods to which they are to be
applied. You must consider the nature and kind of customer who would be likely to buy those
goods. In fact you must consider all the surrounding circumstances and you must further
consider what is likely to happen if each of those trade marks is used in normal ways as a trade
mark for the goods of the respective owners of the marks. If considering all those
circumstances, you come to the conclusion that there will be a confusion- that is to say, not
necessarily that one man will be injured and the other will gain illicit benefit, but that there will
be a confusion in the mind of the public which will lead to confusion in the goods-then you
may refuse the registration, or rather you must refuse the registration in that case

Differences Between Passing Of And Infringement:

The action for passing off is different from an infringement action. The action for infringement
is a statutory remedy whereas the action for passing off is a common law remedy. Accordingly,
in order to establish infringement with regard to a registered trademark, it is necessary only to
establish that the infringing mark is identical or deceptively similar to the registered mark and
no further proof is required. In the case of a passing off action, proving that the marks are
identical or deceptively similar alone is not sufficient. The use of the mark should be likely to
deceive or cause confusion. Further, in a passing off action it is necessary to prove that the use
of the trademark by the defendant is likely to cause injury or damage to the plaintiff's goodwill,
whereas in an infringement suit, the use of the mark by the defendant need not cause any injury
to the plaintiff. However, when a trademark is registered, registration is given only with regard
to a particular category of goods. Protection is, therefore, afforded only to these goods. In a
passing off action, the defendant's goods need not be the same; it may be allied or even
different.

In, Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical laboratories, AIR
1965 SC 980, the Apex court held that there is certain differences between the action for
passing off and action for infringement of a trademark. In American Home

Products Corpn. Vs. Lupin Laboratories Ltd., 1996 PTR 7 (Bom), the Court held that it is well
settled law that when considering the infringement of a registered trademark. It is important to
bear in mind the difference between the test for infringement and the test in passing off action.
In a passing off action, the courts look to see whether there is misrepresentation whereas in
infringement matter, it is important to note that the Trademark Act gives to the proprietor an
exclusive right to the use of the mark which will be infringed in the case of identical mark and
in the case of similar marks, even though there is misrepresentation, infringement can still take
place.

In Satyam Infoway Ltd. Vs Sifynet Solutions (P) Ltd. 2004 (6) SCC 145 it was held by the
Court that to establish an action for passing off three elements are needed to be established,
which are as follows:

(a) The first element in an action for Passing off, as the phrase passing off itself suggests, is to
restrain the defendant from passing off its goods or services to the public as that of the
plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard
the public. The defendant must have sold its goods or offered its services in a manner which
was deceived or would be likely to deceive the public into thinking that the defendant's goods
or services are the plaintiffs.

(b) That second element that must be established by the plaintiff is misrepresentation by the
defendant to the public and what has to be established is the likelihood of confusion in the
minds of the public that the goods or services offered by the defendant are the goods or the
services of the plaintiff. In assessing the likelihood of such confusion the court must allow for
the 'imperfect recollection of a person or ordinary memory'.

(c) The third element of a passing off action is loss or the likelihood of it.

However, trade mark registration under the Act only has effect in India. To obtain trade mark
rights and protection in other countries it is necessary to use and/or register the trade mark in
those countries. Trade mark protection is territorial in nature. A separate registration will have
to be made in each of the countries where protection is desired. To obtain protection outside
India, it is necessary to file applications in the concerned countries individually. In addition
you should be careful to apply for registration in a country before you commence use of your
trade mark in that country. In some countries such as Continental Europe, China, Japan and
Indonesia, the first person to apply for registration will be given the rights to a trade mark,
rather than the person who first uses the trade mark. Therefore, another party could legitimately
"steal" your trade mark by applying for registration even if you were the first person to use the
trade mark.

Conclusion

Trademark has existed as long as the trade itself. It is defined under section 2(1) (zb) of the
Trade Mark Act 1999. It means that a mark capable of being represented graphically and which
is capable of distinguishing the goods or services of one person from those if others and may
include shape of goods. Their packaging and combination of colours, a trademark is a
commercial asset intended to be used commercially by businessmen. In business and economic
matters move often the term “brands” is used for the expression trademark. However as and
when legal issues are discussed in relation to brands the marketing men to use the term
trademark. A trademark as defined under the trademarks Act 1999, It should be capable of
distinguishing the goods or service of one from another 52 and should be able to establish a
connection or indication in the course of trade between the goods or services and the person
claiming to have some right as proprietor for using the mark. Protection of trademark rights
will definitely promote the development of new products and services with the immense growth
in the scale of business. For the last several years, trademarks were the poor relation of the
intellectual property family, undervalued and misused by much of the business community.
Now the time and attitudes have been changed. Trademark law in India is passing through a
remarkable and progressive phase. After the entry into force of the TRIPS agreement, India has
given effect to its different provisions through amending the existing trademark law or
legislating new ones. The new Act expands the scope of the definition of “trademark” to include
graphic representation, shape packaging and combination of colours and covers both goods and
services.
Notes & References

1. T.R. Srinivasan Ivengrar, The Trade Marks Act, 4th edition, 2011, revised by Dr. H.K.
Saharay, Universal Publication, page1
2. J.P. Mishra, A Introduction to Intellectual Property Rights, 2005, Central Law Publication,
Page-176 3. Supra note 1, page 2-3
4. Ibid page-3.
5. Explanation to Section 68 TM Act 1999.
6. Section 62 of Trade Marks Act, 1999.
7. Section 2 (1) (j) of Trade Marks Act, 1999.
8. Rule 26 of Trade and Merchandise Marks Act, 1958.
9. Section – 18 (2) of Trade Marks Act, 1999.
10. Section-28.
11. Section 11 (2) 12. WIPO (International Bureau of). The Paris Convention for Protection of
industrial Property, a paper presented to the National Workshop on Intellectual Property
Teaching, Delhi October, 2125, 1991. Page 5 (WIPO/DEL/9/4bis).
13. Ibid, Para 25.
14. Section-155 of Trade Marks Act, 1999.
15. WIPO, WIPO/Del/91/4bis Para 24.
16. WIPO, Background Reading Material on Intellectual Property, Geneva, 1998 P.52.
17. Section 131 and 132 of Trade and Merchandise Marks Act, 1958.
18. WIPO, International Bureau of Op. cit, Para 79.