section C IPR laws
section C IPR laws
1. CONCEPT OF TRADEMARK
Introduction
In the dynamic and competitive commercial world, trademarks have emerged as one of the
most valuable assets for businesses, playing a critical role in distinguishing products or
services from those of competitors. A trademark is a powerful tool that not only helps in
brand identification but also protects the goodwill of an enterprise. The concept of trademark
lies at the heart of Intellectual Property Rights (IPR) and is governed in India by the Trade
Marks Act, 1999. Over the years, the trademark regime in India has evolved through
legislative reforms and judicial interpretation, aligning itself with international standards such
as the TRIPS Agreement.
Meaning of Trademark
The term "trademark" is derived from two words—“trade” and “mark.” “Trade” refers to
commerce or business, and “mark” means a sign, symbol, or indication. A trademark,
therefore, represents a mark used in the course of trade. It acts as an indicator of origin,
quality, and association with a particular enterprise.
Trademarks are not merely decorative features on a product or packaging; they serve as a
means for consumers to identify the source and quality of goods or services. In an era where
brand value can exceed the tangible assets of a company, the strategic significance of
trademarks has dramatically increased.
Definition of Trademark
3.1. Statutory Definition
According to Section 2(1)(zb) of the Trade Marks Act, 1999, a trademark 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 colors.”
This definition incorporates two essential criteria:
Graphic representation: The mark must be capable of being graphically displayed.
Distinctiveness: It must distinguish one person’s goods or services from another’s.
3.2. Judicial Definition
In the case of Dunlop Pneumatic Tyre Co. v. Dunlop Motor Co. Ltd., the court
emphasized that:
“A trademark is a symbol, word, or phrase used to identify a particular manufacturer's
products and distinguish them from others.”
Thus, the definition encompasses traditional trademarks such as words, logos, and symbols,
and also non-traditional ones like shape, sound, and smell, provided they fulfill the basic
requirements.
2. Service Marks: Service marks function similarly to product marks but are used to identify
and distinguish services rather than goods. They help consumers recognize the source of a
service and thus help differentiate it from competitors. They are primarily used in advertising
products. Applications for trademark registration are filed under Class 35-35.
3. Word Mark: It consists of words, letters, numerals, and combinations of these to identify
the products and services of a company. Word marks are used when your product is text-
based, only letter-based, or just your business name. For example, Coca-Cola, Nike, and
McDonald’s.
5. Certification Marks: Certification marks are used to certify that goods or services meet
certain standards or possess specific characteristics, such as quality, origin, or manufacturing
methods, established by a certifying authority. Examples include “FSSAI” for food safety
standards and “Agmark” for agricultural products in India.
Non-Conventional Trademarks
With the rise of globalisation and digital technology, businesses began experimenting with
sensory branding, which resulted in the emergence of marks that were not simply visual. To
set their brands apart, the businesses started utilising unusual colour schemes, noises, and
shapes. Among the non-traditional trademarks are:
1. Colour Marks: Colour marks include the use of specific colours or combinations to
distinguish goods or services. The colour mark has to acquire distinctiveness through long-
term, exclusive use in such a manner that the consumers associate that specific colour with a
particular brand or source. For example, the distinctive purple colour Pantone 2685C is used
by Cadbury for its chocolate packaging.
2. Sound Marks: Sound marks consist of unique sounds or jingles associated with a brand.
In India, the registration of sound marks requires a graphical representation or a sound wave
representation, such as the popular Nokia tune.
3. Shape Marks: Shape marks protect the distinctive shapes of products or their packaging.
It is pertinent to note that the shape must serve as a brand identifier and not provide technical
or utilitarian purpose to the brand. For example, the Coca-Cola bottle and the Toblerone
chocolate have unique shapes.
4. Pattern Marks: Pattern marks include distinctive designs and arrangements of designs, as
well as a pattern capable of identifying one’s goods or services and distinguishing them from
those of another. They can also include textile patterns or decorative designs that become
synonymous with a brand. For example, the distinctive pattern of the Louis Vuitton
monogram.
5. Scent (Olfactory) Marks: Scent marks are one of the most challenging to register due to
difficulties in graphical representation and subjective perception. There is no universally
accepted method to visually depict a scent because it cannot be adequately represented
graphically, and its perception can vary among individuals. A popular example is the PIÑA
COLADA scent used to coat Ukuleles.
6. Motion Marks: Motion marks include moving images or sequences that serve as brand
identifiers. These can be represented graphically by depicting a series of still images that
show the sequence of motion. Examples of moving marks are the Columbia Pictures logo and
the Microsoft Windows logo.
Difference Between Conventional Trademarks and Non-Conventional Trademarks
They are easily represented through It is challenging to represent them graphically as they are not traditionally
standard images, words, or symbols. recognized, including sounds, colours, shapes, and more.
They are recognized and identified They are recognized through sensory experiences beyond sight, such as hearing a
based on visual elements like design particular sound or associating a specific colour with a brand, which enhances
and text. brand recall and emotional connection.
It must be distinctive enough to As they are not inherently distinctive, a colour mark must acquire distinctiveness
identify the source of goods or through use. For instance, a colour mark must be shown to be associated with a
services. particular brand in the minds of consumers.
Easy to sue for infringement as any In comparison to a conventional trademark, the case for infringement is
similarity in design, wording, or subjective and needs a detailed holistic analysis of the distinctiveness, market use,
symbols is easily identifiable. and consumer perception.
Conclusion
The concept of a trademark has evolved from a simple trade symbol to a powerful legal and
commercial instrument in today’s globalized economy. The Indian legal regime under the
Trade Marks Act, 1999 provides comprehensive protection aligned with international
practices. The essential features of a trademark—distinctiveness, graphic representation, non-
deceptiveness—ensure that only genuinely distinguishable marks are protected. Judicial
pronouncements have further clarified complex issues such as deceptive similarity, trans-
border reputation, and domain name protection.
Trademarks, as part of IPR, not only protect the interest of businesses but also safeguard
consumer rights, promote fair competition, and facilitate economic growth through brand
recognition and goodwill. Hence, a sound understanding of trademark law is indispensable
for both legal professionals and commercial stakeholders.
2.Registration of Trademark under the Trade Marks Act,
1999
Introduction
A trademark is an essential element of brand identity in the competitive commercial world. It
symbolizes the source, quality, and goodwill of a business. The Trade Marks Act, 1999,
governs the law relating to trademarks in India. One of the primary objectives of this Act is to
provide a legal mechanism for the registration of trademarks and confer rights upon the
proprietors of registered marks.
The process of registration is significant because only a registered trademark holder has
statutory rights under the Act, such as the right to sue for infringement and the exclusive
right to use the mark. This answer provides a detailed exposition of the trademark
registration process, along with the relevant statutory provisions and judicial precedents.
Meaning and Definition of Trademark
Section2(w) defines registered trade mark as a trade mark which is actually on the register
and remaining in force;
According to Section 2(1)(zb) of the Trade Marks Act, 1999:
"Trademark 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..."
A trademark includes words, logos, shapes, packaging, sounds, and even colors that can
distinguish one product/service from another.
5. Section 23 – Registration
If no opposition is filed or if the opposition fails, the trademark is registered.
The Registrar enters the trademark into the Register of Trademarks and issues a
certificate of registration under the seal of the Trademarks Registry.
Section 23(1): Registrar shall register the mark and issue a certificate.
Section 23(2): The effective date of registration is the filing date of the application, not the
date of actual registration.
Legal Significance:
Upon registration, the proprietor obtains exclusive rights under Section 28.
The proprietor may file for infringement under Section 29.
Case laws
1. Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd.(2018)
Facts: The appellant, Nandhini Deluxe (a restaurant), applied to register its trademark
‘NANDHINI’ in various classes, including food items. The Karnataka Co-operative Milk
Producers Federation opposed the application, claiming their registered mark ‘NANDINI’
(used for dairy products) was deceptively similar.
Issues:
Whether 'NANDHINI' is deceptively similar to 'NANDINI' despite being used in
different classes.
Can opposition succeed solely based on phonetic similarity?
Judgment: The Supreme Court held that although the words were phonetically similar, the
businesses operated in distinct fields, and the visual appearance and presentation were
different. Thus, the opposition failed.
Relevance: This case clarified that phonetic similarity alone does not bar registration if
the goods/services are unrelated and there’s no likelihood of confusion.
Conclusion
The process of registration of trademarks under the Trade Marks Act, 1999 is an
elaborate and robust mechanism that ensures only distinctive and genuine trademarks are
granted legal protection. Sections 18 to 26, along with Section 29, form the bedrock of the
registration framework, providing both procedural guidelines and substantive rights.
Registration confers several advantages: exclusive rights, statutory remedies, legal
recognition, and protection against infringement. Given the growing importance of brand
value and intellectual property in today's commercial environment, understanding and
utilizing the registration provisions of the Trade Marks Act is essential for businesses and
proprietors.
Exception:
1. Acquired Distinctiveness (Proviso to Section 9(1)): A non-distinctive or descriptive
mark may still be registered if it has acquired a secondary meaning through continuous and
exclusive use.
2. Honest Concurrent Use – Section 12: This provision allows registration of similar or
identical marks in cases where:
The use is honest and concurrent, and
There has been no actual confusion.
The Registrar may impose limitations or conditions on such registration.
Case laws
Section 9
1. Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd. (2008) 10 SCC 657
Facts: The appellant claimed rights over the word “Clear” for glass products.
Held: The court ruled that “Clear” was descriptive and not inherently distinctive.
Significance: Clarified that descriptive terms need secondary meaning to qualify for
trademark protection under Section 9(1)(b).
2. Lal Babu Priyadarshi v. Amritpal Singh (2015) 4 SCC 392
Facts: Trademark “Ramayan” was sought for incense sticks.
Held: Religious texts like “Ramayan” cannot be registered as trademarks. Such names
belong to public domain and are prohibited under Section 9(2)(b).
Significance: Clarified that religious and sacred terms cannot be monopolized as
trademarks.
Exception
1. TATA Sons Ltd. v. Manoj Dodia & Ors. (2011)
Facts: Defendant used “TATA” for hair oil and personal care products.
Held: The court held that “TATA” is a well-known mark that had acquired distinctiveness
through extensive use.
Significance: Applied the proviso to Section 9(1) allowing registration of marks that have
acquired secondary meaning.
2. Kores (India) Ltd. v. M/s. Eshwarsa & Sons (AIR 1985 Bom 404)
Facts: Two parties used similar marks in different regions for carbon papers.
Held: The court allowed registration based on long-standing, honest use by both.
Significance: Established the principle that Section 11(1) may be overridden with honest
concurrent use.
Section 11
1. N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714
Facts: Whirlpool had no registered trademark in India, but objected to another's use of the
name.
Held: Whirlpool’s mark enjoyed trans-border reputation even without registration.
Significance: Section 11(3) recognizes common law rights and passing off actions.
2. Daimler Benz AG v. Hybo Hindustan (1994)
Facts: Defendant used “Benz” on undergarments.
Held: Court ruled in favor of Daimler, protecting reputation of well-known marks under
Section 11(2).
Significance: First major Indian case acknowledging well-known marks protection.
Conclusion
Sections 9 and 11 of the Trade Marks Act, 1999 form the core framework of trademark
eligibility and conflict resolution in India. Section 9 ensures that only marks which are
capable of distinguishing goods and are not offensive or misleading are granted legal
protection. On the other hand, Section 11 ensures that existing trademark owners and prior
users are protected from imitation and unfair competition.
The combined reading of these provisions upholds the objectives of the Act: promoting
distinctive identity, consumer protection, and fair trade practices. With the evolution of
commerce, especially digital branding, courts have interpreted these provisions dynamically,
balancing public interest with private rights.
Therefore, while seeking registration, applicants must ensure:
That their marks are inherently distinctive or have acquired distinctiveness, and
That they do not infringe upon existing or well-known marks.
Proper due diligence and compliance with Sections 9 and 11 significantly improve the
chances of successful registration and protection of a trademark under Indian law.
Trademark Infringement
Statutory Provisions and Nature
Unlike passing off, trademark infringement is a statutory offence under the Trade Marks
Act, 1999. It applies only to registered trademarks. According to:
Section 27(1): No infringement action can be brought for unregistered trademarks.
Section 28: The proprietor of a registered trademark has exclusive rights to use the
trademark and prevent others from unauthorized use.
Section 29: Describes what constitutes infringement in various scenarios.
Infringement occurs when:
A person uses an identical or deceptively similar mark.
The goods or services are identical or similar to those of the registered mark.
There is likelihood of confusion in the minds of consumers.
Concept of Likelihood of Confusion
This is the most significant element in infringement cases. Courts evaluate whether an
average consumer would be likely to confuse the infringer’s mark with the registered one.
Factors similar to those under passing off (e.g., visual/phonetic similarity, class of purchasers,
nature of goods) are applied.
Trademark Dilution
Dilution is a modern trademark concept that prohibits the use of a famous trademark in a
way that weakens its distinctiveness, even without confusion or competition. For example,
using a famous cosmetic brand name to sell unrelated products like furniture or cereal can
amount to dilution.
There are two types of dilution:
1. Blurring – Weakening of the mark's uniqueness.
2. Tarnishment – Association with inferior or unwholesome products.
What Constitutes Infringement: Section 29 Analysis
Section 29 of the Trade Marks Act, 1999 provides detailed grounds that constitute
trademark infringement, including:
Use of identical/similar marks for identical/similar goods (Section 29(1), 29(2)).
Use in a manner likely to cause confusion or association with the registered mark.
Use in advertising, which takes unfair advantage of the trademark (Section 29(8)).
Use in trade names, domain names, or packaging, implying false association.
Conclusion
Trademark law is a cornerstone of brand protection, fair competition, and consumer trust.
The distinction between passing off and infringement highlights the two-fold protection the
law offers—both under common law principles and statutory enactments.
While passing off protects unregistered marks based on use, infringement safeguards
registered marks based on legal entitlement. Indian courts have consistently emphasized that
businesses have no right to ride on another’s reputation, whether through intentional
deception or negligent similarity.
Thus, understanding both these remedies is essential for businesses to ensure their brand
identity remains uncompromised and legally protected. As Indian commerce becomes
more competitive and globalized, the relevance of robust trademark protection becomes even
more vital.
2 Criminal Remedies
Sections 103–105 of the Trade Marks Act, 1999 provide for criminal penalties:
Section 103: A person who:
Falsely applies a registered trademark to goods or services, or
Makes, disposes, or possesses any instrument for falsifying a trademark,
Shall be punished with:
Imprisonment up to 3 years, and
Fine not less than ₹50,000 (can extend to ₹2 lakh).
Section 104: If any person sells or exposes for sale goods/services to which a false
trademark is applied, knowing it is false:
Imprisonment up to 3 years, and
Fine between ₹50,000 and ₹2 lakh.
Section 105: If a person is convicted again for the same offense under Section 103 or
104:
Imprisonment of not less than 1 year, extendable to 3 years.
Fine of not less than ₹1 lakh, extendable to ₹2 lakh.
CONCLUSION
The protection of trademarks from infringement is essential for preserving business identity
and consumer trust. The Trade Marks Act, 1999, through its comprehensive provisions,
offers both civil and criminal remedies against such infringements. Indian judiciary has
played a vital role in shaping trademark jurisprudence through its proactive decisions.
However, with digital commerce growing rapidly, enforcement mechanisms must adapt to
newer forms of violations such as domain squatting and online deception.
The law ensures that the sanctity of a trademark is upheld and misuse is effectively deterred,
thereby promoting fair competition, consumer protection, and economic innovation.
7. Personality Rights
Introduction
Personality rights, often considered a subset of Intellectual Property Rights (IPR), refer to the
rights of an individual to protect his or her identity, likeness, voice, signature, expressions,
and other personal attributes from unauthorized commercial exploitation. These rights are
increasingly gaining significance in the Indian legal landscape, particularly with the rise of
celebrity culture, media outreach, and digital technology.
While India does not have a codified statute exclusively for personality rights, these are
derived from a combination of constitutional rights, tort law, and intellectual property
statutes, primarily under the umbrella of Right to Privacy and Right to Publicity.
Conclusion
Personality rights form a crucial component of the modern IP landscape, especially in the era
of media proliferation and digital transformation. Although India lacks a formal statutory
framework, the judiciary has played a commendable role in evolving and protecting these
rights through creative legal interpretation and enforcement mechanisms.