TRADEMARKS

Questions
• Explain features of trademark. What are absolute and relative grounds for refusal of
registration of trademark? (10)
• Explain law relating to infringement of Trademark. How is it different from passing
off?
• What is Trademark? Infringement of trademark is different from passing off."
Comment.
• How infringement of trademark is different from passing off ? Briefly explain
remedies for infringement.
• Write short notes on:
(a) Registration of Trademark
(b) Remedies for infringement of Trademark
• Write short notes on :
➢ Grounds for refusal of registration of trademark
➢ Infringement of trademark and passing off

INTRODUCTION
Trademarks, integral to Intellectual Property Rights (IPR), are symbols, names, logos, or slogans that
uniquely identify and differentiate goods or services of one entity from others in the market.
Beyond mere identification, they embody the reputation, quality, and goodwill of a brand,
influencing consumer choices and loyalty. Protecting trademarks is crucial for businesses to safeguard
their market presence, prevent infringement, and maintain their competitive edge.

Proper registration and enforcement ensure legal recognition and exclusivity, enabling brands to
thrive in the global marketplace while preserving their distinct identity and reputation.

DEFINITION
• According to WIPO, "a trade mark is a sign capable of distinguishing the goods or services of
one enterprise from those of other enterprises."
• According to Investopedia, "the term trade mark refers to a recognizable insignia, phrase,
word, or symbol that denotes a specific product and legally differentiates it from all other
products of its kind. A trade mark exclusively identifies a product as belonging to a specific
company and recognizes the company's ownership of the brand."

According to Section 2 (1) (zb) of the Trade Marks 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;

ESSENTIAL FEATURES OF A TRADEMARK

There are three main essential Features of a TM:

• It must be a mark/symbol
 • It must be capable of being represented graphically
• It must be capable of distinguishing goods/services of 'A' from goods of 'B' (what we call
distinctiveness)

• Mark/Symbol
Section 2(1)(m) states that "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. So, talking in context of our domestic jurisdiction- a mark can be: a name like Tory Burch or
Kate Spade, signature- the representation of a name reduced in signature form; a single letter A,
B, C; a word- like Apple etc.

• Capable of Graphical representation.

Graphical representation, as required for trademarks, refers to the ability to visually depict the mark,
often on paper, for clear identification. This serves as a fixed point of reference for recognizing the
trademark.

The necessity for graphical representation is enshrined in Rule 2(1)(k) of the TM Rules, 2002,
defining it as representation in paper form.

In the case of 'Swizzels Matlow Lid's Application', the court highlighted two primary reasons for
this requirement: Firstly, to aid traders in identifying other trademark applications and their
associated products; secondly, to enable the public to precisely determine the registered
trademark.

• Capable of Distinguishing goods/services (distinctiveness)

For a trademark to be effective, it must possess distinctiveness, enabling it to differentiate one entity's
quality goods or services from another's. Trademarks lacking distinctiveness typically consist of
common trade descriptors, rendering them unable to fulfill this essential function.

REGISTRATION OF TRADEMARKS
Trademark registration in India

1. Step 1: Conducting an exhaustive Trademark Search

2. Step 2: Filing Trademark Application with Necessary Documents
3. Step 3: Examination of the application by the Trademark Registry
4. Step 4: Post Examination Procedure
5. Step 5: Publication/Advertisement of application in Trademark Journal
6. Step 6: Opposition by Third Party
7. Step 7: Registration Certificate and Renewal after every 10 years.

a) Trademark Search
Before applying for trademark registration, conducting a trademark search is crucial. This step helps
determine if the proposed mark is unique and distinct, and if any similar or identical marks are
already in use. By checking the Trademark Registry's database, the owner can assess potential
competition in their industry and identify any risks associated with using the mark.

b) Filing an Application

To file a trademark application, must submit Form TM - A online or at the Trademark Registry
Office with fees. Include all required paperwork and details about the trademark. If the mark was
used before applying, provide a user affidavit and proof of prior commercial use.

c) Examination Process

During the Examination Process, the Registrar reviews the application and sends findings within 30
days, indicating rejection or conditional acceptance, along with supporting evidence. The applicant
must respond within 30 days, addressing objections and providing justifications to proceed with
registration. Failure to respond within the timeframe results in application abandonment.

d) Post Examination Procedures

In Post Examination Procedures, the examiner may schedule a hearing if unsatisfied with the
applicant's response or if objections remain unaddressed. If satisfied, the mark is accepted for
publication in the Trademark Journal; otherwise, the application may be denied.

e) Publication of the Trademark Application

Once approved by the examiner, the trademark application is published in the Trademark
Journal for a four-month period. This allows third parties to review and potentially oppose the
application. The Journal, updated weekly, showcases newly approved trademark registrations.

f) Notice of Opposition

Within four months of the application's publication, any aggrieved party may submit a notice of
opposition using Form TM-O. This is typically done when a third party believes the applicant's
mark infringes on their existing trademark or was filed in bad faith. According to the Trademark
Act of 1999, filing a notice of opposition suspends the registration process for the applicant's
mark. To continue registration, the applicant must follow legal procedures, including filing a
counter-statement, providing evidence, and potentially attending a hearing.

g) Registration

The final step is obtaining the registration certificate, which occurs after completing all legal
procedures, including addressing any opposition. The certificate is automatically issued by the
trademark registry office within seven days after the four-month publication period, unless there's
an opposition. The certificate must be renewed every ten years to remain active.

GROUNDS FOR REFUSAL OF REGISTRATION

There are two grounds for refusal, Section 9 and 11 of the Act provide for the absolute and relative
grounds for the refusal of the trademark registration.

• ABSOLUTE GROUND FOR REFUSAL (SECTION 9)

Section 9(1) of the Trade Marks Act, 1999

Under following grounds, the trade mark cannot be registered: –

a) Trademarks which are not capable of distinguishing the goods or services of one person
from that of another person.

Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks: Imperial Tobacco Co. applied
for trademark registration of "SIMLA" for cigarettes but was refused by the Registrar twice. The
Calcutta High Court upheld the refusal, stating that "SIMLA" is a well-known geographical location
and cannot be registered as a trademark.

Aggarwal Sweet Palace v Asst. Registrar: In this case, "Aggarwal Sweet Corner" was granted
trademark registration for sweets and namkeen based on prior usage. The opposition against it was
dismissed, affirming the registration.

b) Trademark which consists only of such marks or of such indications which may function
in trade to specify the kind, quality, geographical origin, or time of production of goods
or services or other characteristics of goods or services.

This clause prevents registration of trademarks solely comprising descriptive terms indicating
characteristics like kind, quality, or origin of goods/services.

Example 1: "RASOI" for Edible Oils:

In Hindustan Development Corporation Ltd. v. The Deputy Registrar of Trade Marks, the term
"RASOI" was refused registration because it describes the product's nature.

Example 2: "SOLAR" for Solar Energy Products:

As demonstrated in relevant case law, the term "SOLAR" is prohibited for products like solar energy
items, as it directly refers to the sun, potentially causing consumer confusion.(Central Camera
Company Private Ltd v Registrar of Trade Mark IPLR (1980) Vol 5 pg 1.
 c) Trademark which comprises only of such marks or indication which have become
customary in the current language or in bona fide and established practice of trade.

Section 9(2) of the Trade Marks Act, 1999

Under following grounds, the trade mark cannot be registered: –

a) If such trademark is likely to deceive the public or can even cause confusion.

In the Leather Cloth Company Ltd. v. American Leather Cloth Company Ltd. case, the House of
Lords held the plaintiff through words ‘tanned leather cloth’ intended to deceive the public. Only one-
third tanned leather cloth was produced.

b) If such trademark is hurting the religious sentiment of any class or section of Indian
citizens.

Example: Refusal of "RAMAYAN" for Incense Sticks:

In Amritpal Singh v Lal Babu Priyadarshi, the term "RAMAYAN" was denied registration as a
trademark for incense sticks and fragrance products. The applicant's intention was opposed on
grounds of the word's religious significance and lack of distinctiveness. It was suggested that if
"Ramayan" had been combined with other words, it might have been considered for registration.

c) If such trademark contains any kind of scandalous or obscene matters.

Eg. Myntra Case
d) If the use of such trademark is prohibited under the Emblem & Names (Prevention of
Improper use) Act, 1950

Section 9(3) of the Trade Marks Act, 1999

A mark shall not be registered if it consists exclusively of:

a) The shape of goods which result from the nature of the goods themselves.
b) The shape of goods which is necessary to obtain a technical result.
c) The shape of goods which adds substantial value to the goods.

• RELATIVE GROUNDS FOR REFUSAL (SECTION 11):

Section 11 of the Trademark Act, 1999 mentions the relative grounds for refusal for registration of a
mark. If a mark is found to confuse public on account of a mark being identical or similar to an earlier
trademark, the same won’t be allowed for registration under this section. Various other grounds
which are listed under relative grounds of refusal are:

Section 11(1)

there exists a likelihood of confusion on the part of the public, which includes the likelihood of
association with the earlier trade mark because of:

• its identity with an earlier trade mark and similarity of goods or services covered by the
trade mark; or
 • its similarity to an earlier trade mark and the identity or similarity of the goods or
services covered by the trade mark.

Section 11(2):

A trade mark which-

• is identical with or similar to an earlier trade mark; and

• is to be registered for goods or services which are not similar to those for which the
earlier trade mark is registered in the name of a different proprietor,

shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in
India and the use of the later mark without due cause would take unfair advantage of or be
detrimental to the distinctive character or repute of the earlier trade mark.

Section 11(3):A trade mark shall not be registered if, or to the extent that, its use in India is liable
to be prevented-

• by virtue of any law in particular the law of passing off protecting an unregistered trade
mark used in the course of trade; or
• by virtue of law of copyright.

Section 11(4): If the proprietor of the earlier trade mark or other earlier right consents to the
registration- then registration is allowed

Section 11(5): Objections need to be raised under sub-clause 2 and 3. If not raised at the
objection stage in the filling process then TM may be granted.

In the case of Amritdhara Pharmacy v Satyadeo, the court established that similar word marks like
'Amritdhara' and 'Lakshmandhara' are to be compared not merely through side-by-side analysis but
also through a structural examination. This approach aims to identify any outstanding characteristic
that would leave a lasting impression on the consumer's mind.

INFRINGEMENT OF TRADEMARK

Trademark infringement, as per Section 29 of the Trademarks Act, 1999, occurs when someone
uses a mark that's identical or deceptively similar to a registered trademark without permission.
Courts presume that such similarity, especially concerning goods or services, can confuse the public
and unfairly benefit from the original trademark's reputation.

To prove infringement, one must show that the infringing mark is deceptively similar or identical to
the registered one.

In the case of Starbucks Corporation v. Sardarbuksh Coffee & Co. & Ors., the Delhi High Court
examined if the defendant's trademark was deceptively similar to Starbucks, both phonetically and
visually. To prevent confusion among consumers, an interim order was issued, mandating the
defendant to change their trademark to 'Sardarji-Buksh', ensuring clear distinction from Starbucks.

REMEDIES

When a trademark is infringed, both civil and criminal actions can be pursued. Under the Trademarks
Act, 1999, infringement is a cognizable offence, allowing for criminal complaints and police
prosecution. Civil actions can also be taken, irrespective of trademark registration status.
Remedies for trademark infringement:

1. Injunction/stay: Stop the use of the infringing trademark.

2. Damages: Compensation for losses incurred due to infringement.

3. Account of profits: Require the infringer to account for profits made from the infringement.

4. Seizure of infringing material: Court-appointed local commissioner can seize and seal infringing
goods and accounts.

5. Customs intervention: Direct customs authorities to withhold infringing goods from shipment or
disposal.

6. Temporary injunction: Seek interim orders to immediately halt infringement, either ex-parte or
after notice.

DISTINCTION BETWEEN INFRINGEMENT AND PASSING OFF

In the case of Cadbury India Limited and Ors. v. Neeraj Food Products', Delhi High Court has
drawn a clear distinction between passing off and infringement:

• An action for trade mark infringement is a statutory remedy and on the other hand, an action for
passing off is a common law remedy

• The use of the trade mark of the plaintiff, by the defendant, is also a prerequisite in the case of an
action for infringement while it is not a necessity of an action for passing off

• In an action for infringement of the plaintiff's trade mark, it is immaterial that the outfit, outer
covering and other written marks on the goods originate from a different source than that of a
registered proprietor's trade mark. The liability of the defendant in such a case may be absolute.
However, in case of passing off of trade mark, the defendant may escape liability if he can show that
the material added by him is sufficient to distinguish his goods from that of the plaintiff's goods.
• In an action for infringement, the Plaintiff on account of it being a registered trade mark in dispute
claims to have an exclusive right to use the mark concerning those goods. However, a passing off by a
person of his goods as those of another, in essence, is an action of deceit.

Criteria Trademark Infringement Passing Off

Statutory right under the Trademark

Legal Basis Common law tort
Act

For both registered and unregistered

Protection Only for registered trademarks
trademarks

Injunction, damages, account of

Remedy Injunction, damages, etc.
profits, etc.

Key Use of an identical/similar mark on Misrepresentation leading to confusion

Elements related goods/services and damage to goodwill

Burden of Plaintiff must prove deceptive Plaintiff must prove misrepresentation,

Proof similarity confusion, and damage

Nature of Protects the exclusive rights of the Protects the goodwill associated with a
Rights trademark owner mark

Action Can be initiated by the trademark Can be initiated by the owner of the
Initiation owner goodwill