Law of Trademarks in India

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Table of Contents:

1.Introduction

2.Types of trademarks

3.Application for registration of a trademark:

4. Grounds for refusal to register

5. Marking of goods after registration

6..Rights and remedies for a registered trademark owner under the Act

7. Features of the Trademarks Act,1999

8.Case Laws

9.Conclusion

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1.Introduction:

Intellectual property rights help people to assert ownership on their creativity and innovations in
various fields. There are many kinds of intellectual property rights and one of them being
trademarks. In simple terms trademarks are for products and services to be identified with its maker
and provider respectively. It becomes very valuable since it is associated with quality and consumer
expectation1.Trademarks can be a name,number,logo,coined term,colors or combination of these
and could be the texture or shape of the goods too.Trademark protects both the interest of the
consumer and the trader as the consumer is able to relate the product with the quality assured by its
trader and also the trader being able to block his competitors from using his mark and gain profits
through imitation while making it distinct. Trademarks define the source of the product and makes
it unique from its sub-standard replicas.In India Trademarks are protected by The Trademarks Act,
1999 which came into force repealing the Trademarks and Merchandise Act,1958 to meet the WTO
and TRIPS requirements.The present act offers a lot of new features to reap benefits out of
registering a trademark to its proprietor which is covered under the objective of the act and that
being protection to the proprietor,prescribe conditions on acquisition, and legal remedies for
enforcement of trademark rights.2

2.Types of Trademarks:

I.Service marks:
A service Mark is used in commerce to identify and distinguish the services of one provider by
others and to indicate the source of services 3.It is basically useful in distinguishing one service
provider from the other. Service Marks covers only provision of services but not any substantial
goods.As trademarks are for goods service marks are for identifying services.A service mark plays a
very important role in the marketing, promoting and sales of a product or service, it also refers to a
specific quality or standard for which the service mark is used. Service marks cover services such as
hotel,entertainment,advertising,management and investment services and many others are also
included.

II.Collective mark:
A collective Mark is one used by members of a cooperative association, union or other collective
group or other group or organization to identify source the of goods or services 4.A collective mark
means a mark which is utilized for goods and services with same characteristics which are to be
traded by one or more person acting jointly or legal entity for differentiation with other goods or
services of same kind 5.A collective mark is for use by the individual members of an organisation
but is registered as a whole. That is a collective mark may be used by the collective association that
owns the mark6.

1 Anita Rao and V.Bhanoji Rao, Intellectual Property-A Primer(1st edition, Eastern Book Company),pg 1
2 Vinod V Sople,Managing Intellectual Property(PHI Learning Pvt Ltd,2006)pg 107
3 http://www.uspto.gov/web/offices/tac/tmfaq.htm%23DefineServiceMark

4 Marcia Rorke, Edward Asolfi,Bernad I Friedlach Licensing in the Federal Laboratory(DIANE Publishing,1993)pg13
5 Andrew Sriro, Sriros desk reference of Indonesian Law(Equinox Publishing,2006)pg367

6 Siegrun D Kane(4th edition,Practising Law Institute,2002)Pg 1-5

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III.Certification marks:
A certification Mark is a mark which indicates that certain qualities of goods or services in
connection with which the mark are used is certified7.An important requirement for registration of
certification mark is that entity which applies for registration is “competent to certify” the products
concerned. Thus owner of certification mark must be representative of products to which
certification mark applies 8.An authorized user of a certification Mark is expressly likened to a
license of a trademark in specified circumstances, namely unauthorized application of the mark to
certain material, prohibition of importation of infringing goods and order as to disposal of
infringing goods9.

IV.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 whole10. Trade dress includes
packaging,size,shape,texture or color of the goods.

3.Application for registration of a trademark:

Any person who claims to be the proprietor of the trademark can apply for the registration of his
mark for goods as well services.The application should be filed in the Trademark office within
whose jurisdiction the main place of business of the applicant falls within. In case, the main place of
business is not in India, then the application can be filed in the Trademark office under whose
jurisdiction the office of the proprietor’s lawyer in india.For a company about to be formed, anyone
may apply in its name for subsequent assignment of the registration in the company's favor.Goods
and services are classified according to the International Classification of goods and services.
Schedule IV of the Act provides a list of goods and services falling in different classes. The
Registrar is the final authority determining the class in which particular goods or services fall.
Before filing an application for registration the mark should fulfill certain legal requirements such
as the selected mark should be capable of being represented graphically,then it should be capable of
distinguishing the goods or services of one undertaking from those of others and the last
requirement being that it should be used or proposed to be used mark 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 and some person have the right to use the mark with or without
identity of that person. All these are required by the act. It is always advisable to do a trademark
search before filing an application for registering a trademark to be on the safer side.All accepted
applications will be published in the Trademarks Journal for the purpose of filing any opposition
which must be filed within three month from the date of publication and an extension of one month
is available for filing such oppositions.

7 Jeffery Belson, Certification Mark, (Sweet and Maxwell 2002)Pg6

8 http://www.wipo.int/sme/en/ip_business/collective_marks/certification_marks.htm

9 Neil Wilkof, Daniel Burkitt ,Christopher Stothers, Trade Mark Licensing(2nd edition Sweet and Maxwell)
10 Ruper Barkoff ,Andrew C Selden Fundamentals of Franchaising(American Bar Association ,2005)pg 17-f

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4.Grounds for refusal to register:

Registration of the mark can be refused upon being scandalous or obscene,likely to deceive, cause
confusion, or offend religious sentiments, which are contrary to the law or morality, or which would
otherwise be disentitled to protection in a court, which are accepted chemical names or which are
identical to other marks for the same goods or description of goods. In the case of identical marks,
registration may, however, be allowed upon proof that the mark was being used concurrently and in
good faith.Applications which have been accepted are advertised in the Trade Marks Journal and
opposition may be filed within three months of the date of advertisement; an extension of time of
one month for filing opposition may be obtained upon application. If the opposition prevails then
registration will be refused.

5.Marking of goods after registration:

The law does not prescribe that a registered trademark, when used by its proprietor, be described as
such on the goods to which it is applied nor does it require that the proprietor’ identity be disclosed.
Where a mark is used by a registered user, however, goods must be marked in such a way as to
disclose the identity of the registered proprietor and the fact that the mark is being used by the
registered user by permission of the registered proprietor. All goods imported into or manufactured
or assembled in India may be required to be marked in such a way as to indicate their country of
origin. The Indian Government will issue notifications regarding the manner in which the goods are
to be marked.

6.Rights and remedies for a registered trademark owner under the Act:

The major advantage of registering a trademark would be the exclusive right to use the mark and
another benefit being realized on the event of an infringement where the the same mark has been
unauthorizedly used by any person other than the owner of the said mark then the owner can move
to the court seeking remedies both under civil and criminal proceedings which are prescribed under
the act. The act says that it does not protect any unregistered mark but that is not implying that a
registered trademark looses the remedies got under the common law. All common law remedies
such as passing off are still applicable for a registered trademark.The Court may grant relief of
injunction and/or monetary compensation for damages for loss of business and/or confiscation/
destruction of infringing labels and tags.Trade mark owners can initiate civil proceedings in any
court having jurisdiction where they reside, work for gain or carry on business. It is not necessary to
initiate proceedings where the infringer resides or works for gain or carries on business. This
ensures that the rights owner can take care of infringements from any part of the country from one
jurisdiction.The criminal remedies include placing a complaint before the district magistrate
directly or through the concerned police station. If proved then the court may decree imprisonment
up to three years and a fine worth up to two lakhs. After the introduction of the present act an
infringement of a trademark has been made a cognizable offense and is non-bailable. A police
officer needs no warrant to search and seize.

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7.Features of the Trademarks Act,1999:

i.Registration of service marks has been allowed just like trademarks which was not a feature of the
previous acts.
ii.Registration of collective marks is also allowed under the present act.
iii.A single application is enough to register a trademark in multiple classes though the filing charge
for each class will be independent.This is more convenient than the previous act where each class
needed separate applications.
iv.An application can be amended without any major changes to the mark
v.Assignment to use a mark is made available under the act
vi.The term of registration is ten years which can be extended to another ten years upon renewal.
vii.Imitations of well known trademarks is not allowed.
viii.Punishments are more stringent under the present act.
ix.One of the most important and arguably the best feature of the trademarks act,1999 is the
availability of extension of application to other convention countries with whom india is linked
with.
x.Cancellation procedures can be initiated against competitors who have already registered a similar
mark in india.
xi.An Appellate board is set up to speedy disposals of appeals.
xii.Foreigners can also apply for registration provided that they give a local address of service.
xiv.Not using the trademark for over five years and three months would lead to the marks
cancellation from register.
xv.There is only one single register unlike the previous one where there were two parts.

8.Case laws on Trademark disputes:

Cases on trademarks are often made popular due to the involvement of famous brands and
companies clashing to protect their marks and logos and some of them are as follows:
Tata Sons Ltd vs. Manoj Dodia and Ors.

In this case were the plaintiff had been a very reputed business house
corresponding to the trust of its customers through its trademark name Tata and whereas the
defendants who are engaged in the business of manufacturing and selling weighing scales and
spring balances under the trade mark A-one Tata. It is claimed that use of the aforesaid mark by the
defendants amounts to infringement of plaintiffs registered trade mark TATA, granted wide various
registrations in class 9. It is further alleged that the impugned mark is inherently deceptive and
constitutes a misrepresentation to unwary consumers that goods of the defendants are either of the
plaintiff company or approved by it. Such misrepresentation, according to the plaintiff, will
inevitably lead to confusion or deception in the mind of the unsuspecting buyers and will result in
the defendants poaching on the plaintiffs business, goodwill and reputation, thereby amounting to
passing off. The plaintiff has accordingly sought an injunction restraining the defendants from
manufacturing, selling, offering for sale, advertising, and directly or indirectly dealing in weighting
scales and springing balances or goods of any description bearing the trademark A-ONE TATA or
any other mark confusingly similar to trade mark TATA amounting to passing off the defendants
goods as that of the plaintiffs. It has also sought delivery up of all the goods bearing the impugned
mark, dies, blocks, cartons, labels and any other infringing material, to the authorized

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representatives of the plaintiff, for the purposes of destruction. The plaintiff company has also
sought damages amounting to Rs.20,05,000/- besides rendition of accounts in respect of the profits
earned by them from use of the trademark A-One TATA. The court after carefully going through the
arguments laid down that the defendants indeed infringed the trademark rights of the plaintiff and
ordered them to restrain from doing so and also awarded a damage of 2 lakhs stating that brands
need to be protected in order to protect the consumer in return and anyone who takes undue
advantage must be ordered to pay pecuniary damages.11

Infosys Technologies Ltd. vs Park Infosys And Ors.

In this case the plaintiff had registered its name infosys which is a coined name and alleged that
because of the widespread use and association with quality products and services emanating from
the plaintiff, has acquired a high degree of selling power thereby becoming a target for commercial
infringers intending to create on the goodwill and reputation connected with the mark for their own
benefit, by deceiving consumers as regards the source and origin of the goods and services. The
plaintiff has also established that it has made applications for registration of the mark 'Infosys' in
various service classes including classes 35, 37, 38 and 42 under the Trademarks Act, 1999. The
defendant in the suit is Park Infosys is a data conversion/data processing division/centre engaged in
the business of imparting computer education to engineering students in this institution and is in a
business similar to that of the plaintiff. The plaintiff as soon as it learned about the defendant using
its trademarked name, sent a legal notice asking to restrain from doing so and got no reply in return.
The matter was considered solved but after few months the plaintiff found that the defendant was
still using the same name. The plaintiff moved to the court filing a suit to seek remedy.The plaintiff
has established that it has proprietary rights in the trademark by virtue of the registrations thereof in
accordance with law in its favor.It now becomes necessary to examine the relief to which the
plaintiff may be entitled. The court passed the decree for permanent injunction and also ordered the
defendant to handover all the materials bearing the plaintiff’s marks.The court also went ahead
further and said that the plaintiff is entitled for Rs.50,000 which was cost of the present suit.12

Cadbury India Limited And Ors. vs Neeraj Food Products:

This suit has been filed by the plaintiff under the CrPC pleading for interlocutory injunction against
the defendant from using the names such as ‘James’ which closely resembles the plaintiff’s product
Gems.The plaintiff has also prayed that a further injunction against the defendant restraining him
from passing off its goods of the plaintiff, by reproducing in any material form. The plaintiff is the
market leader in india for manufacturing chocolate goods under several brands and one of them
being under the registered trademark called gems. The Plaintiff filed the suit after it was informed
about the introduction of a similar chocolate food product very identical to its size and shape with a
phonetically similar name called James. The defendant argued that the plaintiff registered its
product mark as Cadbury’s Gems and the defendants product is James which are totally
different.The court relied on the supreme court’s precedent where it was held that if the defendants
name is identical to the plaintiffs then there is no need for the plaintiff to prove anything before the
court and can expect a subsequent injunction order. The court in the present case after a lengthy

11 http://indiankanoon.org/doc/344613/, Not Reported

12 137 (2007) DLT 349, MIPR 2007 (1) 341

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explanation said there is indeed an infringement and dishonesty on the part of the defendant and
under the trademarks act,1999 the plaintiff is entitled for a relief.13

Pfizer Products Inc. vs Rajesh Chopra And Ors:

In this case the plaintiff is a company registered in United States and works in the field of medical
drugs. The plaintiff registered the trademark of two of its products Zoloft and Geodon in the US and
subsequently registered it in India.The present suit was filed pleading for an injunction against the
defendants who released a similar product in india.Their defense is that the plaintiff never used the
impugned trademarks in india and is not entitled to any remedy in india. But the court was of the
view that the defendants are not able to prove the research and development of the drugs and hence
it is understood that the drug itself is a copy and the marks just followed it . It said the trademarks
are indeed identical and the defendants have failed to meet the requirements of the law. Since the
plaintiff is able to establish a prima facie case and the balance of convenience is in favor of the
plaintiff an injunction is allowed and the defendants are restrained from using the trademarks of the
plaintiff.14

9.Conclusion:

The dynamics of trademark laws keep changing as it has a global character attached to it and the
local laws have to be updated very often in order to keep in pace with the changes and to be able to
tackle the technical impediments it may have to come across frequently.For example there have
been already provisions regarding the inclusion of trademarking smell,sound and taste in foreign
jurisdictions which will take quite a while before it reaches the tables of the parliament. Though
common law remedies are available they can be applied only after the issues arise and are brought
to the notice of the court but if the statutes are technically sound and clear then there would be no
need for numerous court proceedings and ample amount of time and money could be saved. India
being a very active member in the world intellectual property arena should be able to make these
changes and be able to protect the businesses of numerous makers and also the goodwill of the
consumers. Since there has been considerable change in the economic scenario in the country the
government would not mind getting some foreign investments by just making few changes to the
trademark regime like adopting the madrid protocol which makes the application of international
trademarks more convenient for adopting.

13 142 (2007) DLT 724, MIPR 2007 (2) 269

14 MIPR 2007 (2) 323, 2007 (35) PTC 59 Del

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