University Institute of Legal Studies, Chandigarh

INTELLECTUAL PROPERTY RIGHTS

Trademarks

Submitted to: Submitted by: Manika

Prof. Supreet Gill Roll No.- 11/19

University Institute of Legal Studies, 10th semester

Panjab University, Chandigarh Section- A

Course – B.A.LL.B (Hons.)

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ACKNOWLEDGEMENTS

I would like to express my special thanks of gratitude to my teacher Prof. Supreet Gill who gave
me the golden opportunity to do this project on the topic TRADEMARKS which helped me in
doing a lot of research and it added immensely to my knowledge. I would also like to thank my
family and friends who helped me in finalizing this project within the given time frame.

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TABLE OF CONTENTS

INTRODUCTION ..................................................................................................................... 4

EVOLUTION OF TRADE MARK LAWS ............................................................................ 4

OBJECT OF TRADE MARK LAW ....................................................................................... 4

SALIENT FEATURES OF TRADE MARKS ACT, 1999 .................................................... 5

DEFINITION OF TRADEMARK .......................................................................................... 6

ESSENTIAL FEATURES OF TRADEMARK : ................................................................... 7

EXPLANATION ....................................................................................................................... 7

I. TRADEMARK IS A MARK ................................................................................................ 7

TRADE MARK’ INCLUDES ‘TRADE NAME’ ................................................................... 8

II. TRADEMARK IS FOR “GOODS” OR “SERVICES” ................................................... 9

III. TRADEMARK GIVES “DISTINCTIVENESS” TO THE GOODS OR SERVICES

................................................................................................................................................... 10

IV. TRADEMARK IS USED IN THE “COURSE OF TRADE OR BUSINESS” ............ 11

“TRADEMARKS” INCLUDES “CERTIFICATION MARK” OR “COLLECTIVE

MARK” .................................................................................................................................... 12

WELL KNOWN TRADEMARK .......................................................................................... 13

TERM OF TRADE MARK ................................................................................................... 13

DISTINCTION BETWEEN TRADE MARK AND PROPERTY MARK........................ 14

CHARACTERISTICS OF TRADEMARKS ....................................................................... 14

FUNCTIONS OF TRADEMARK ......................................................................................... 15

CONCLUSION........................................................................................................................ 15

BIBLIOGRAPHY ................................................................................................................... 16

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INTRODUCTION

Trade and commerce is the lifeline of the 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.
The importance 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. In India the trade mark law has undergone major changes with the
enactment of new Trade Marks Act, 1999.

EVOLUTION OF TRADE MARK LAWS

Prior to the enactment of Trade Marks Act, trademarks used to be called common law marks
and they could not be registered as there was no statutory law. The owner of trade mark had to
seek common law remedy of passing off against infringement of his mark. The first statutory
protection prior to independence of India was given through Trade Marks Act, 1940. This Act
was based on the Trade Marks Act, 1938 of England.

Since 1940 significant development took place in the field of business and trade. After
independence, to meet with these requirements and to give the effect to the recommendations
made by Mr. Justice A.N. Rajgopala Aiyangar, the Trade and Merchandise Marks Act was
passed in 1958. But since then again there had been considerable changes in the trading and
commercial practices due to the globalization of trade and industry. To keep pace with the
changing trends of investment flow and technology transfer at International level, a
comprehensive law was required, therefore, the Trade Marks Act was passed in 1999, which
came into force with effect from 15th September, 2003. This act has repealed the Trade and
Merchandise Marks Act, 1958.

OBJECT OF TRADE MARK LAW

The object of Trade Mark Law is to provide protection of trade marks for goods and services
and prevent fraudulent use of marks, The unique feature of trade mark, 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 fir indefinite term, provided other legal
conditions, such as renewal are fulfilled.

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In Laxmikant V. Patel v. Chetanbhai Shah1, the Supreme Court has explained the objectives
of Trade Mark Law in these words:

"The law does not permit anyone to carry on his business in such a way as would persuade the
customers or clients in believing that the goods or services belonging to someone else are his
or are associated therewith. The reasons are two, firstly, honesty and fair play are, and ought
to be, the basic policies in the world of business. Secondly, when a person adopts or intends to
adopt a name in connection with his business or services which already belongs to someone
else it results in confusion and has probability of diverting the customers and clients of someone
else to himself and thereby resulting in injury.”

SALIENT FEATURES OF TRADE MARKS ACT, 1999

The Trade and Merchandise Marks Act, 1958 has served its purpose over the past four decades.
It was felt that comprehensives review of the existing law be made in View of developments in
trading and commercial practices, increasing globalization of trade and industry, the need to
encourage investment flows and transfer of technology, need for simplification and
harmonization of trade mark management systems to give effect to important judicial decisions.
To achieve these purposes, the Act proposes to incorporate inter alia the following features:

• Providing for registration of trade mark for services, in addition to goods. This is a novel
feature introduced by the Act of 1999.

• Registration of trademarks, which are imitation of well-known trademarks, not to be

permitted, besides enlarging the grounds for refusal of registration, consequently, the
provisions for defensive registration of trademarks have been proposed to be omitted.

• Amplification of factors to be considered for defining a well-known trade mark.

• Doing away with the system of maintaining 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 and with equal rights.

• Simplifying the procedure for registration of registered user and enlarging the scope of
permitted use.

• Providing for an Appellate Board for speedy disposal of appeals and rectification of
applications which under the Act of 1958, were entrusted to the High Court.

1
AIR 2002 SC 275

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 • Providing for registration of "Collective Marks" owned by “associations etc.

• Transferring the final authority relating to registration of certification trademarks to the

Registrar instead of the Central Government.

• Providing for enhanced punishment for the offences relating to trade marks on par with
the present 'Copyright Act, 1957 to prevent the sale of spurious goods.

• Prohibiting the use of someone else’s trademarks as part of corporate names, or name
of business concern.

• Extension of application of convention country to include countries which are members

of Group or Union of countries and Inter-Governmental Organizations.

• Increasing the period of registration and renewal, from 1 years to 10 years as required
by TRIPs.

• Filing of single application for registration in more than one class.

• Making trademark offence cognizable.

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
mandate.

DEFINITION OF TRADEMARK

§2(1) (zb) “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; and —

I. in relation to Chapter XII (other than §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 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

II. 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

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 whether with or without any indication of the identity of that person, and includes a
certification trade mark or collective mark;

ESSENTIAL FEATURES OF TRADEMARK :

As per the definition given under the law of trademarks; following are the essential features of
the trademark

1. Trademark is a mark

2. Trademark is for “goods” or “services”

3. Trademark gives distinctiveness to goods or services

4. Trademark is used “in the course of trade”

EXPLANATION

I. TRADEMARK IS A MARK

Earlier §2(1)(j) of TMM Act, 1958 defined mark as follows: Sec. 2(1)(j) “Mark” includes a
device, brand, heading, label, ticket, name, signature, word, letter or numeral or any
combination thereof. Now the Trade Mark Act, 1999 has made some additions and includes

• shape of goods,

• packaging, and

• combinations of colours to the definition of “mark” given under TMM Act, 1958.

The Trade Mark Act, 1999 defines “mark” as follows:-

§2[(1)(m)]. “mark” includes a device, brand, heading, label, ticket, name, signature, word,
letter, numeral, shape of goods, packaging or combination of colours or any combination
thereof.
Thus, the Mark as defined under §2[(1)(m)] of the Trade Marks Act, 1999 Includes

• A device;

• Brand;

• Heading;

• Label;

• Ticket;

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 • name;

• word;

• signature;

• letter;

• numeral;

• shape of goods;

• packaging;

• combination of colours or any combination thereof.

Trade mark’ includes ‘trade name’

For instance, in Kirloskar Diseal Recon Pvt. Ltd. V. Kirloskar Proprietary Ltd 2 , the
respondents had been using the trade name ‘Kirloskar’ for its huge business for a very long
time. The use of the word ‘Kirloskar’ as its trade name for a long time has earned distinctiveness
and goodwill for the respondents. Whereas the existence of the appellant’s company with the
trade name ‘Kirloskar’ was very recent.

Held –
The Bombay High Court granted injunction in the favour of the respondent by which the
appellants were prevented from the use of the word ‘Kirloskar’ for their business. It was held
that respondent’s reputation earned over such a long period was likely to be adversely affected
if the appellants are not prevented from using the word ‘Kirloskar’ as part of their corporate
name for their business.

Observation
Thus the hon’ble court observed the Bombay High Court observed as follows:-
“The very definition of ‘trade mark’ includes ‘mark’ and the very definition of ‘mark’ includes
‘name’. As such, the term ‘trade mark’ is a comprehensive term including within itself ‘trade
name’ as also ‘mark’, ‘business name’ as also ‘name’ under which articles, goods, etc. are
sold. What is necessary is connection or nexus between the mark used in relation to the goods

2
AIR 1996 Bom 149

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and the person claiming a right to use the same. The Act covers all passing off actions whether
based on trade marks or marks or trade names or business names.3”

II. TRADEMARK IS FOR “GOODS” OR “SERVICES”

The definition of trademark clearly indicates that Trademark in the course of business trademark
is used for

1. Goods; or

2. Services

GOODS

§2(1) (j) of the trademarks act,1999 defines goods. It reads as “Goods means anything which is
the subject of trader or manufacture.”

SERVICES

§2[(1)(z) of the Trade Marks Act, 1999 defines 'services' as follows:-

"Service" means service of any description which is made available to potential user and
includes the provision of services in connection with business of any industrial or commercial
matters such as banking, communication, education, financing, insurance, chit fund, real estate,
transport, storage, material treatment, processing, supply of electrical or other energy, boarding,
lodging, entertainment, amusement, construction, repair, conveying of news or information and
advertising.

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M/s. Helpage India v. M/s. Helpage Garhwal,
Facts: Plaintiff and defendant both are social welfare organizations. The plaintiff organisation,
founded in the year 1978, extends services to the elderly people throughout India by providing
consultancy, training and financial support through 531 voluntary agencies. The plaintiff's
application for registration of trade mark 'Helpage India" in respect of paper articles, cardboard
articles, printed matter, newspaper periodical books, greeting cards, calendars and gift items,
etc. was pending for registration of trade mark. Whereas the defendant, i.e., Helpage Garhwal
who claims that it is also running social services as that of plaintiff was registered under the
Societies Registration Act in 1993. The plaintiff contended that it has been using the key word
"Helpage" as trade mark for its organisation for 14 years before the registration of the defendant

3
Ibid
4
AIR 1973 AP 51

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organisation with the similar key word "Helpage". As the use of the word "Helpage" by the
defendant is bound to create confusion in the minds of people which is an infringement of the
trade mark of the plaintiff organisation under the trade mark law. Therefore, the defendant
should be injuncted from the use of the word "Helpage" for its organisation.

Decision: The Delhi High Court accepted the contention of the plaintiff in this case and
observed that "if the defendant allowed to use "Helpage" as part of its name, it will cause
irreparable injury to the plaintiff organisation" and granted the order of injunction in the favour
of the plaintiff by which the defendant was restrained from the use of the word "Helpage" for
its organisation.

Services at “Internet” within the domain of the trademark law

With the advancement of technology and communication through internet, domain names of
website have attained as much sanctity as the trade marks. The services rendered at the internet
are equally important for their business. The "domain name" of a website is a valuable corporate
asset entitled to protection like trade names. The basic principles of the trade mark law apply to
the disputes in respect of internet domain name.

In Rediff Communications Ltd. V. Cyberbooth 5 , the Bombay High Court restrained

Cyberbooth, i.e., the defendant from using the domain name “Radiff”. Because “Radiff” is
deceptively similar to “Rediff”. The High Court held as follows:

“The Internet domain names are of importance and can be a valuable corporate asset. A
domain name is more than an internet address and is entitled to the equal protection as trade
mark.”

III. TRADEMARK GIVES “DISTINCTIVENESS” TO THE GOODS OR SERVICES

National Bell Co. & Gupta Industrial Corporation v. Metal Goods Mfg. Co. (P) Ltd.6The
Supreme Court held:- “The property in a trade mark exists as long as it continues to be
distinctive of the goods of the registered proprietor in the eyes of public or a section of the
public.”

5
AIR 2007 Bom 27
6
AIR 1971 SC 898

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 7
In Imperial Tobacco v. Registrar; Trade Marks,
the word distinctiveness was held to be some quality in trade mark which earmarked the goods
marked as distinct from those of other products or such goods.
Thus, distinctive character simply means a characteristic of goods or services which is capable
of distinguishing the goods or services of one person from those of another person. Because Of
‘distinctiveness’ goods sold under distinct trademarks are differentiable from one another. The
courts in order to determine whether the two marks are distinct or deceptively similar to each
other has adopted the test of a man of average intelligence and imperfect recollection.

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For instance, in Living Media India Ltd. v. Jitender V. Jain,
"AAJ TAK" is the trade mark of a national news channel of Living Media India Ltd. which has
earned reputation and goodwill in the field of media. Later the defendant Jitender V. Jain
adopted the trade mark "khabrein AAJ TAK" for its news programme. Delhi High Court
restrained the defendant from adopting the name "khabrein AAJ TAK" on the ground that
"khabrein AAJ TAK" is deceptively similar to the trade mark news channel "AAJ TAK" of the
plaintiff, which is likely to cause confusion.

IV. TRADEMARK IS USED IN THE “COURSE OF TRADE OR BUSINESS”

Use of trade mark in the course of business or trade is another essential feature of trade mark.
A proprietor of the trade mark may apply for the registration of the trademark if:

• He has been using that trade mark; or

• is proposing to use that trade mark in the course of business or trade.

In Indo-Pharma Pharmaceutical Works Ltd. v. Citadel Fine Pharmaceuticals Ltd.,9 it was

observed, "A trade mark is a mark used or proposed to be used in relation to goods for the
purpose of indicating or so as to indicate a connection in the course of trade between the goods
and some person having the right to use the mark." "A trader acquires a right of property in
trade mark merely by using it upon or in connection with his goods irrespective of the length of
such user and extent of his trade."

7
AIR 1968 Cal 582
8
(2002) 25 PTC 61 (Del.)
9
AIR 1996 Del 329

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Trademark not for a business that has been “closed”

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In case of Santosh Devi v. Ramesh kumar,
A partnership firm M/S Pooja Udyog between appellant and respondent was started in 1985 and
closed down in 1997. The appellant started his own separate business using the trade name
“Shree Pooja Udyog” in February,1998. The respondent filed suit for injunction in the district
court restraining the appellant from using the same. The court granted the injunction. An appeal
was filed against such order. The Rajasthan High Court found that the business of the
respondent in this case had been closed down and the trade name “Pooja” is no more used by
him in the course of his business and trade.
The court further held that as in this case, there was nothing on record to establish respondent
goodwill and distinctiveness of the trademark neither the respondent intends to continue nor
there is any production available in the market in the name of “Pooja Udyog”. Thus, the High
Court of Rajasthan allowed the appeal of the appellant and use the trade name “Shree Pooja
Udyog” for his business that has been started after the closure of the partnership firm M/s. Pooja
Udyog between the appellant and respondent.

Trademark knows no geographical boundaries

Trade Marks know no geographical boundaries and may enjoy transborder reputation. A trade
mark may enjoy reputation even in those places where the goods or services with which it is
associated are not sold. “The knowledge and awareness of trade mark in respect to the goods
of a trader is not necessarily restricted only to the people of the country where such goods are
freely available but the knowledge and awareness of same reaches even those shores where the
goods have not been marketed.”11

“TRADEMARKS” INCLUDES “CERTIFICATION MARK” OR “COLLECTIVE

MARK”

As per §2(2) “trade mark” shall include reference to “collective mark” or “certification trade
mark”;

10
2007 (34) PTC 219 (Raj.)
11
NR Dongre v. Whirlpool Corporation, AIR 1995 Del 300

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§(1)(e) defines certification mark. It reads as “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, mode of
manufacture of goods or performance of services, quality, accuracy or other characteristics from
goods or services not so certified and registerable as such under Chapter IX in respect of those
goods or services in the name, as proprietor of the certification trade mark, of that person”

ISI mark is an example of "certification mark”. As the ISI mark granted by Bureau of India
Standards (BIS) when applied to goods certifies that the goods bearing such mark comply with
the standards set by Bureau of India Standards (BIS) for industrial and consumer goods.

As certification mark ISI certifies that the goods comply with the standards set by the Indian
Standards Institute now. Similarly, ISO is a “certification trade mark” that certify the quality of
the goods or services to which it is granted. Whereas “Agmark” that certified the quality of
agricultural products like spices etc., and “woolmark” that certifies the quality of wool are also
“certification marks”.

§(1)(g) defines collective marks. It reads as: “collective mar 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”

WELL KNOWN TRADEMARK

As per §2(zg) “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.

TERM OF TRADE MARK

A unique feature of the trade mark is its potential life. Through initially a trade mark is
registered for 10 years, but it can be periodically renewed and can be used for indefinite period,
unless it is removed from register or prohibited by court order. It is interesting to note that first
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trade mark registered in U.K. under No. 1 of 1876 consisting of red equilateral triangle in respect
of alcoholic beverages is still in force.

DISTINCTION BETWEEN TRADE MARK AND PROPERTY MARK

The distinction between a “trade mark” and a “property mark” is that the former denotes the
manufacture or quality of goods to which it is attached and the latter denotes the ownership of
them, or more briefly, the former concerns the goods themselves, while the latter; the proprietor
of them.

In Sumal Prasad Jain v. Shejonan Prasad12, the Supreme Court observed that concept of
trade mark is distinct from that of a property mark. In this case the name ‘Basant Bahar’ with
the picture of an angel with flowers in her hands and the inscription of ‘Basant Bahar
Khushbuon Ka Badshah’ printed on the packets and receptacles was the property mark denoting
that the scent in question was the one manufactured and belonging to the complainant. Appellant
marked his scent and the packets and receptacles in which it was packed with the same name,
the same picture and the same inscriptions with the intention of causing it to be believed that
the scent so marked or the scent contained in the said packets and receptacles so marked was
the one manufactured by and sold in the market by the complainant. The Court held that
appellant thus committed the offence of both using a false property mark and of selling goods
marked with a counterfeit property mark.

CHARACTERISTICS OF TRADEMARKS

Based on various judicial verdicts, certain essential characteristics of trade mark may be
highlighted as under:

• The definition of "trade mark" and "mark" includes within itself trade name under which
articles, goods are sold.13 (Use of "Kirloskar", "Bajaj" or "Godrej” as corporate name
are permissible)
• Trade mark is a kind of property and is entitled to protection under law.14

12
1972 AIR 2488
13
Kirloskar Diesel Recon v. Kirloskar Proprietary Ltd., 1997 PTC 469 (Bom.)
14
London Rubber Co. Ltd. V. Durex Products, AIR 1959 Cal. 56

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 • A trade mark is generally transmitted in connection with the goodwill of a business.
Therefore, law does not recognize transfer of trade mark per se, separate from goodwill
of the business.15
• A trade mark may by registered or unregistered. Registration ensures ownership of trade
mark and it enables him to avoid proving his title against any infringement or the mark.
But in case of unregistered trade-mark the only way in which the owner can protect the
infringement is the passing off action.16
• Trade mark has many species such as service marks, certification marks, collective
marks and well known trade marks.
• Distinctiveness is the basic quality of trade mark.

FUNCTIONS OF TRADEMARK

The function of a trade mark is to give an indication to the purchaser or possible purchaser as
to the manufacturer or quality of the goods. It gives the purchaser the satisfactory assurance of
the make and quality of the article he is buying. The goodwill of the product is also reflected
through its trade mark. We classify the functions of a trade mark in the following four
categories:

I. It identifies the product and its origin.

II. It guarantees its established quality.
III. It is means of advertisement of product.
IV. It creates an image of product in the mind of public.

CONCLUSION

In conclusion, trademarks play a vital role in the business world. They act as the cornerstone of
brand identity, fostering consumer recognition and trust. Trademarks protect a company's
intellectual property, ensuring their brand isn't imitated and devalued. Registering a trademark
strengthens this protection with legal backing. By understanding trademarks and their
importance, businesses can safeguard their brand and build a strong foundation for future
success.

15
KM Oosman v. KAM Sahib, AIR 1951 MAD 681
16
Ibid

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BIBLIOGRAPHY

• D.P. Mittal; Trade Marks Passing off and Geographical Indications of Goods; Laws
relating to Copyrights, Patents, Trade Marks and GATT; Edition 2013
• Dr. M. K. Bhandari; Law Relating to Intellectual Property Rights; Second edition, 2010;
Central Law Publications
• Narayanana P; Intellectual Property Law; Eastern Law House; Edition 2014
• Meenu Paul; Intellectual Property Laws; World press publications

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