Trademarks

Introduction to Trade Mark

• The primary function of a trademark is to highlight the quality of a
product/service to a customer/prospective customer.
• The trademarks help identify the products of a company.
• It takes years to create goodwill.
• A well-identified trademark is the symbol of an assurance made by a
company to its customers.
• It can communicate almost everything about a manufacturer.
Trademark include functions like:
• (1) Identifying the origin and source for the quality of a product.

• (2) Ensures uniform standards in quality

• (3) Effectively provides advertisement to the products

• (4) Builds goodwill and image for the product.

History of tardemark
• The origin of Trademark Law in India can be traced back prior to 1940
there was no statutory law relating to Trademarks in India.
• When common law principles of equity and passing off were
administered for the protection of trademarks.
• In view of the lack of any specific legislation dealing with the nuances
of infringement and passing off of trademarks, the Trademark Act of
1940 was enacted for the first time in India, providing a missionary of
the registration and statutory protection for the Trademarks in India.
• The statutory provisions in the Trademark Law substantially
corresponded with the English Laws and precedents.
History
• Accordingly the Trademarks Act, 1940 was substituted & replaced by the
Trade& Merchandise Marks Act, 1958 and the Trade & Merchandise
Marks Rules, 1959 was also framed.
• The 1958 Act & Rules 1959 was passed thereto with the objective of
extending better protection to trademarks and it also consolidated
provisions relating to trademarks in other Statutes like the Indian Penal
Code, Criminal Procedure Code, and the Sea Customs Act.
• In order to follow to the requirements of Trade-Related Aspects of
Intellectual Property Rights (TRIPS) and in view of enhanced globalization
of trade and technology, the Trademark Act, 1999 & Trademark Rules,
2002 were framed, which came into effect onSeptember 15, 2003..
History and Development
• The Trademark Act, 1999 inter alia aims at providing for the registration
of service trademarks and collective trademarks, enhanced protection
to marks categorized as well- known marks,.
• Thereafter in the year 2010 the Trademark Act, 1999 was amended vide
the Trade Marks (Amendment) Act, 2010. Through the Trademark
(Amendment) Act, 2010, the Legislature incorporated Chapter VI in the
Act which embodies Special Provisions Relating to Protection of
Trademarks through International Registration under the Madrid
Protocol.
• Thus, the Indian Trademark Law covers national as well as international
trademark registrations within its purview.
Concept of trademark is based on
three broad factors:
1.Distinctiveness or distinctive character, or capable of distinguishing

2.Deceptive similarity or similarity or near resemblance of marks

3.Same description or similarity of goods.

What is the objective of Trademark?
• The two goals of trademark law are as follows:

• A trademark aids consumers in recognizing different

products
• A trademark safeguards the owner’s reputation and
business investment.
Court Interpretation:
• The Supreme Court defined trademark law as “stopping others from
copying a source-identifying mark” and “aiding the consumer in
making buying decisions” in the 1995 case of Qualitex Co. v. Jacobson
Products Co.
• The law also ensures that the manufacturer receives all monetary
incentives and reputation-related benefits related to its product.
Objectives of a Trademark
• Distinctive Identification or Brand Recognition
• Brand Protection
• Brand Communication to the Public or Consumer Trust and Assurance
• Registered Trademark is Considered the Most Valuable Asset in a
company
• Trademarks increases the Employment Opportunities for a Brand
Features of a good trademark?
• So to identify a good trademark what all comes under
trademark is important:
• Trademark is a recognizable sign, design,
or expression which identifies products or services of a
particular source from those of others.
What all should be included:
• An ideal trade mark should be attractive and simple to
remember and should suggest the quality of the
product.
• Most importantly an ideal trademark should be made in
such a manner that it can be distinctive from other
trademarks of the same class and should be able to be
registered easily and protected.
Features
• A trademark must be a mark which includes a device, heading, brand, label,
ticket, signature, word, letter, name, numeral, packaging or combination of colors
or any combination of the above attributes.
• It should be easy to speak and spell. A good trademark is such that the public can
easily spell and speak.
• It should be easy to remember. A good trademark that is easy to speak and spell
can be easily remembered as well. So that it becomes easy for public to
• It should not be too lengthy and complicated to be forgotten easily. If it is lengthy
or complicated, people will not bother to take the effort to memorize it and
ultimately it will be forgotten.
• It must be distinctive. It can be natural distinctiveness or acquired distinctiveness.
• It can only be suggestive of the quality of the products, but not descriptive
In a nut shell
• Distinctiveness
• Non-confusing
• Not deceptive- it should be a mark which gives some idea about the
product
• Strong visual elements- It should leave a mark in customers mind
Property in a trademark?
• It is the symbol or the label or any mark which is given importance to
recognize the service or product of a company.
Other Marks identified under
trademark laws:
• Service mark:
• Service marks are marks or names used by businesses rendering
various kinds of services.
• The new definition of 'service' has been included for the benefit of
service-oriented establishments such as banking, communication,
education, insurance, hospitality, etc.
• A service mark is the same as a trade mark except that it identities and
distinguishes the source of a service rather than a product.
• Normally, a mark for goods appears on the product or on its packaging,
while a service mark appears in advertising for the services.
Certification mark:
• The Act for registration of Certification marks, whose function is not to
indicate trade origin, but to indicate that the goods have been certified for
certain characteristics in it.
• It is used to give an surety to the customer.
• The main purpose of certification mark is to bring out the standard of the
product and guarantee the product to the customers.
• A certification mark can also be used to uplift the product’s standard
amongst the customers by showing that the product had undergone
standard tests to ensure quality.
• Certification marks are usually seen on packed foods, toys and electronics.
• Eg: HALLMARK for Gold jewelry indicating a particular level of quality
Example:
Collective mark:
• Trade Marks Act, 1999 has also made provisions for registration and
protection of Collective marks, which is a mark owned by association
of people for producing certain goods.
• The new definition of 'collective mark ' has been provided for the
benefit of members of an association of persons, but not partnership.
• In a collective mark, normally the standards of the products are fixed
by the regulator owing the mark. Others associated with the
collective are held responsible to adhere to certain standards while
using the mark in the course of business.
• A commonly known collective mark in India is the Chartered
Accountant designation.
Example
Shape marks
• Shape marks are the marks which are the shapes of the product or
packaging of the business.
• Appearance of the product can distinguish the product from other
products.
Sound marks
• Trademarks consisting of distinctive sounds that uniquely identify the
origin of a product or service.
Colored marks
• Trademarks that consist of a single color or a combination of colors,
provided that they have acquired distinctiveness.
• Smell mark evolved with time to differentiate products of particular
origin with a distinct and ident able Smell which is publicized in
advertising to educate the consumers about this differentiating factor
of the product.
Other distinctions:
• Well-known trademarks: Being a signatory to the Paris Convention
and TRIPS, India recognizes the concept of a well-known trademarks.
Under Section 2(1)(zg) of the Trade Marks Act, 1999 “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 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
rst-mentioned goods or services.
Other:
• Generic Trademark: The value of a trademark whether registered or not
can be maintained only if the proprietor uses it and takes prompt action
against infringement.
• If infringement of the mark is prevented, the mark is likely to become a
generic name and the distinctiveness of the mark will be lost or eroded
or diluted if other traders use the same or similar mark in relation to the
same or similar goods or sometimes even different goods.
• Eg: Dalda, Bisleri, Xerox, etc. were registered trademarks but in due
course of time the overwhelming popularity and unchecked use or
reference of the mark by others, resulted in losing its distinctiveness and
became generic.
• Trade Dress: Trade dress refers to combination of elements that make
up the look, feel, or environment of a product or business; the term
can refer to individual elements of a product or business image as
well as to the image the combination of those elements creates as a
whole. Trade Dress is non-functional physical detail.
• Trade Dress may include a few important features like: Size, shape,
design, colour, etc