1. The Trademark Laws
Sanjeev Kumar Chaswal
LL.M (IPR and ARB),
MS Cyber Law & Cyber Security
IP Attorney & Advocate
High Court of Delhi
© Copyright sanjeev kumar chaswal 2012

2. Types of Intellectual Property
ßCopyrights
ßTrademarks
ßPatents
ßIndustrial Design Rights
ßTrade Secrets
ßGeographical Indications
ßSemiconductor Integrated
Circuits Layout
ßPlant variety rights

3. INTELLECTUAL PROPERTY
ß COPYRIGHT - relate to literary or creative works.
ß TRADEMARKS - relate to product names or symbols.
ß PATENTS - relate to inventions.
ß TRADE SECRETS-Any confidential business
information that provides an competitive edge.
ß GEOGRAPHICAL INDICATIONS- name or sign used
on products which belongs to specific geographical
location or origin.
ß SEMICONDUCTOR INTEGRATED CIRCUITS
LAYOUT - provides for protection of Semiconductor
Integrated Circuits Layout Design and for matters
connected therewith.
ß PLANT VARIETY RIGHTS- Granted to the breeder of
a new variety of plant that gives exclusive control over
the materials seed, cuttings, divisions, tissue culture.

4. FOR MOST PRODUCTS EVERY FORM OF
IP RIGHTS CAN BE OBTAINED
ßCAMERAà
PATENT -For every Novel or improved mechanism.
DESIGN For novel outer shape & Contour / Configuration.
“TRADE MARK- Brand name or Logo for goods denoted as
®
Copy right- For Instruction / manual booklet denoted as ©

5. CD PLAYER
Music played
on the CD
player is
Industrial protected by
design copyright
protection for
3D shape
Various
Brand technical parts
name-
name- & mechanisms
registered are subject
under mater of
trademark protection
under Patents

6. What is Trademark
ß A trade mark is a distinctive sign or indicator used by an
individual, business or other legal entity to identify
for consumers that the products or services on or with
which the trademark appears originate from a unique
source, designated for a specific market and to
distinguish its products or services from those of other
entities.
ß Section 2(1) (m) of TM Act, 1999 defines ‘Mark’ as “Mark
includes a – Device, brand, heading, label, ticket, name,
signature, word, letter, numeral, shape of goods,
packing or combination of colours or any combination
thereof.”
Example ‘M’ – written in a particular style with yellow
colour for MacDonald's’; 555/777 numerical used for
detergent soaps; ‘signature’ used as a mark for alcohol
etc. Trademark may also be three-dimensional (e.g.
neck of bottle).

7. Registration contents in
Trade Marks
Name
Logotype
Symbol
Slogan
Shape
Color

8. Objects of Trademark Registration
ß It deal with the precise nature of the rights, which a
person can a acquire in respect of a Trade Mark.
ß The mode of acquisition of such rights.
ß The method of transfer of those rights to others.
ß the precise nature of infringement of such rights and
the remedies available in respect thereof.
ß A person who sells his goods under a particular trade
mark acquires limited exclusive right to use of the
mark in relation to those goods.
ß A trade mark may be registered or unregistered. An
unregistered trade mark is called common law mark.
ß A trade mark when registered gets a stable
existence. A registered trade mark can be in relation
not only to its existing use but also for a proposed
use.

9. TRADE MARKS CAN BE
REGISTERED IF
A trade mark which consists of at least one of the
following essential characteristics can be registered.
a)The name of a company, individual or firm
represented in a particular or special manner;
b) The signature of the applicant for registration;
c) One or more invented words;
d) One or more words having no direct reference to
the character or quality of the goods except the
exceptions listed in the next section;
e) Any other distinctive trade mark; and
f) A trade mark which has acquired distinctiveness by
use over a prolonged period of time.

10. Functions of a Trade Mark
ß It identifies source of the goods / manufacturers.
ß To signify that all goods bearing the same trade
mark have a single source.
ß It acts as prime instrument in advertising and selling
the goods for creating an image for products.
ß A registered trademark gives the right to exclusive
use of the mark.
ß A registered trademark serves as a proof of
certificate in court proceedings.
ß It has acquired importance over the years, viz. to
protect the trade and business interests of the owner
of the brand, as also the goodwill associated with the
brand, in case of infringement of trade mark.

11. Rights of registered mark
ß Certain rights are attach to a registered mark, such
exclusive rights can be enforced by way of an
action for trademark infringement by owner of a
registered trademark to prevent unauthorized use of
that trademark and may initiate legal
proceedings for trademark infringement.
ß while un-registered trademark rights may be enforced
pursuant to the common law tort of in the nature of
“passing off”.
ß It should be noted that trademark rights generally
arise out of the use of, or to maintain exclusive rights
over, that sign in relation to certain products or
services.

12. Benefits of Registration
ß The fundamental benefits of a trademark is to
exclusively identify the commercial source or origin of
products or services, so a trademark, properly
called, indicates source or serves as a badge of origin.
Trademarks must be clear and distinct from each other.
ß Trademark is a symbol that indicates, who is
responsible for the goods placed in the market.
ß Trademarks help to distinguish between the goods of
competing traders.
ß Trademark helps a customer to buy goods of a certain
quality (e.g. color, size, weight, fragrance, taste.)

13. WHO GETS TRADE MARK
PROTECTION
ß A trade mark is granted protection specifically to
the applicant on the basis of :
ß First Adoption
ß First User
ß First Inventor
ß In case of the plaintiff is having adoption and later
use but claimed prior registration of the
trademark than the defendant, who is first
Inventor / Adaptor and having prior Use, hence,
first Invention / Adaption and having prior User of
the mark, which will be superior then the
registration granted to plaintiff.

14. A trademark may be designated by
the following symbols
ß™ (for an unregistered trade mark ) that is,
a mark used to promote or brand goods)
ß℠ (for an unregistered service mark, that
is, a mark used to promote or brand
services)
ß®(for a registered trademark)
ßA trademark is typically a name, word,
phrase, logo, symbol, design, image, or a
combination of these elements. There is also
a range of non-conventional trademarks
comprising marks which do not fall into
these standard categories, such as those
based on color, smell, or sound.

15. ORIGIN & HISTORY OF TRADE
MARKS
ß In trademark history, it is usually reported
that blacksmiths, who made swords in the Roman
Empire are thought of as being the first users of
trademarks.
ß BAKERS LAW PRECEDENT
The Anglo Indian trademark law had its origin dating
back to 1266. It was also called as the Bakers Marking
Law. As the name says the law required bakers to
place a mark on the loaves of bread that they sold,
identifying the baker.28 Any bread offered for sale
unstamped was at once confiscated by the “officer of
abundance” and the offending bake was mulcted in
heavy damages.
ß One of the important acts in the history of trademarks
is the law of bread and beer assizes.

16. ß BAKERS LAW-
ß The statute laid down a uniform acceptable standard
of measurement, it defined the statute by declaring
that ,by the consent of the whole realm of England,
the measure of the king was made that is to say that
an English penny, called a sterling round and without
any clipping shall weigh thirty two wheat corns in the
midst of the ear, and twenty pence do make and
twelve ounces one pound and eight pounds do make a
gallon of wine ,and eight gallons of wine do make a
London bushel, which is the eighth part of a quarter.
ß Section 38 of the Usages of Winchester, which
probably antedate 1275 requires every baker to put
1275,
his recognised stamp (sun sel sunu) upon his bread.
ß Marks were registered with the local officer and were
made with wood or metal and simple flower
techniques and designs.

17. ß Other notable trademarks that have been used for a
long time include ”Löwenbräu”, which claims use of
its lion mark since 1383, Registered trademarks involve
registering the trademark with the government. The
oldest registered trademarks in various countries
include:
ß United States Oldest trademark : Samson (a rope-
making company), featuring a depiction of the Biblical
figure Samson wrestling a lion, was the first to be
trademarked in the United States in 1884, and is still
used by that company today.
ß Bass Brewery's logo became the first image
Brewery's
ß to be registered as a trademark, in 1875
ß United Kingdom Oldest trademark: 1876 – The Bass
Brewery's Red Triangle for ale was the first trademark
to be registered under the Trade Mark Registration Act
1875.

18. TRADEMARK LAWS IN INDIA
ß While some form of proprietary protection for marks in
India dates back several millennia, India’s statutory
Trademarks Law dates back to 1860. Prior to 1940 there
was no official trademark Law in India.
ß Numerous problems arouse on infringement, law of
passing off etc and these were solved by application of
section 54 of the specific relief act 1877 and the
registration was obviously adjudicated by obtaining a
declaration as to the ownership of a trademark under
Indian Registration Act 1908.
ß To overcome the aforesaid difficulties the Indian
Trademarks Act was passed in 1940, this corresponded
with the English Trademarks Act.
ß India’s Oldest trademark :M/s. James Buchanan &
Company UK has filed trademark Application no. 10 on
1/6/1942 for the mark BLACK and WHITE (scotch
whisky) which is still registered up till 2016

19. ß After this there was an increasing need for more
protection of Trademarks as there was a major
growth in Trade and Commerce.
ß The replacement to this act was the Trademark and
Merchandise Act 1958.This Act was to provide for
registration and better protection of Trademarks and
for prevention of the use of fraudulent marks on
merchandise. The objective of this act was easy
registration and better protection of trademarks and
to prevent fraud.
ß The re-appellation of the Trademarks and
Merchandise Act 1999; was done by the Government
of India, in compliance with the TRIPS obligation on
the recommendation of the World Trade
Organisation.

20. ß The object of the 1999 Act is to confer the protection
to the user of the trademark on his goods and
prescribe conditions on acquisition, and legal
remedies for enforcement of trademark rights
ß It will for the first time protect service marks and
give provision of registration for collective marks, it
will also differentiate between well known
trademarks and trademarks in general, and also
special treatment and rights are envisaged for well
known trademarks. The act of 1999 also gives police
the right to arrest in case of infringement.
ß There are definitions of terms frequently used,
enhanced punishment for offenders, increased the
period of registration, registration of non- traditional
trademarks.

21. ß some points of changes that are present between the
1958 act and 1999 act, it can be said that the 1999
act is a modification of the 1958 act, it has provided
exhaustive rules. The rules of this act are called as
Trademark Rules 2002.
ß Both the Act and its set of rules came to effect on
September 15th 2003. The trademark act 1999 and
its trademark rules 2002 presently govern Indian
Trademark Laws in India. Laws of trademarks are
based on distinctiveness and deceptive similarity. If
distinct signs are freely used the brand equity
created by one person will be freely used by another.
The value of distinctive sign depends on sales volume
and public association of sign with quality.

22. INDIAN TRADE MARK ACT, 1999
SALIENT FEATURES
ß Some major changes brought about in the law of
trade marks in India by the Trade Marks Act, 1999 are
summarised as under:
ß Inclusion of trade mark for services in the definition
of trade mark;
ß A new provision for registration of Collective Marks;
ß Prohibition of registration of certain marks which are
mere reproductions of or imitations of well
known marks;
ß Provision for filing a single application for registration
in more than one class of goods and/or services;
ß Increasing the term of registration of a trade marks
from 7 to 10 years and providing a grace period of six
months for payment of renewal fees;

23. ß Amplification of circumstances in which validity of
registration can be contested;
ß Vesting the final authority in the Registrar for
disposing of application for registration of
Certification Trade Marks;
ß Harmonizing penal provisions of the Trade Marks Law
with The Copyright Law;
ß Provision for establishment of an Appellate Board.
ß The use of a trademark in this way is known
as trademark use.
ß Different goods and services classified by the NICE
Classification 45 trademark classes (1 to 34 cover
goods, and 35 to 45 services) to unify classification
systems around the world.

24. Procedure for Registration
a) Filing of TM application
b) Examination
c) Acceptance and publication
d) Opposition, if any
e) Registration

25. TM Registration Process

26. The Trademarks Act 1999
ß Chapter 2 - The Register and Conditions for Registration
ß (Covers section 3 to section 17)
ß Chapter 3 - Procedure for and Duration of Registration
ß (Covers section 18 to section 26)
ß Chapter 4 - Effect of Registration
ß (Covers section 27 to section 36)
ß Chapter 5 - Assignment and Transmission.
ß (Covers section 37 to section 45)
ß Chapter 6 - Use of Trade Marks and Registered Users
ß (Covers section 46 to section 56)
ß Chapter 7 - Rectification and Correction of the Register.
ß (Covers section 57 to section 60)
ß Chapter 8 - Collective Marks.
ß (Covers section 61 to section 68)
ß Chapter 9-Certification Trade Marks.
9-
ß (Covers section 69 to section 78)

27. ß Chapter 10 - Special Provisions for Textile Goods.
ß (Covers section 79 to section 82)
ß Chapter 11-Appellate Board.
11-
ß (Covers section 83 to section 100)
ß Chapter 12 - Offences, Penalties and Procedure.
ß (Covers section 101 to section 121)
ß Chapter 13 – Miscellaneous.
ß (Covers section 122 to section 159)

28. TYPES OF TRADEMARKS
ßThere are basically four types of trademarks
they are
ß Service Mark
ßCollective Mark
ßCertification Mark
ßWell known trademarks
ßAll these types of Trademarks are equally
important and promote activity as well as
maintain the distinctiveness of the product.

29. SERVICE MARKS
ß A service Mark is any word, name, symbol, device, or
any combination used or intended to be used in
commerce to identify and distinguish the services of one
provider by others and to indicate the source of services
, it may be called “service mark”.
ß Section 2 (1) (z) of TM Act of 1999.
1999.
ß It means service of any description that is made
available to any potential users and includes the
provision of service in connection with business of any
industrial or commercial matters such as banking,
communications, education, financing, insurance, chit
funds, real estate, transport, storage, material
treatment, processing, supply of electrical or other
energy, boarding, loading’ entertainment’ amusement,
construction, repair, conveying of news or information
and advertising.

30. ß It is basically useful in distinguishing one service
provider from the other. Service Marks do not cover
physical goods but only the provision of services.
Service marks are used to identify a service. some
examples of them are:-
ß Management and investment services
ß housing development services
ß Advertising, sponsorship, Promotional services.
services.
ß all types of consultancy & Professional services.
services.
ß Hotel and motel services .
ß Entertainment services rendered by individual , group
or theatre.
ß That it can play a crucial role in marketing, promoting
and sales of a product or service, it also plays the role
of referring to a particular quality or standard for
which the service mark is used.

31. Collective Mark
ß Section 2(1) (g) of TM Act of 1999
ß “A Trade mark distinguishing the goods or services
of members of an association of persons not being
partnership firm from those of others”
ß A collective mark is utilised 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. Examples of collective trade marks include
ß The "CA" device used by the Institute of
CA"
Chartered Accountants.
ß The mark "CPA", used to indicate members of the
Society of Certified Public Accountants.

32. CERTIFICATION MARK
ß Section 2 (1) (e) of TM Act of 1999. There is a
1999.
species of trade mark called as Certification Trade
mark. Its function is to indicate that the proprietor of
the mark has certified the goods bearing the mark as
to certain characteristics of the goods.
A certification mark indicates that the goods or
services in connection with which it is used are
certified by the proprietor of the mark in respect of
origin, material, and mode of manufacture of goods or
performance of services, quality, accuracy, or other
characteristics.
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.
e.g. Geographical origin, ingredients and so on such
as ISI, AGMARK, FPO

33. WELL KNOWN TRADE MARKS
ß Section 2(1) (zg) of TM Act of 1999.
(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.
Example: TATA, Coco Cola, Frooti, Bata enjoys an
Frooti,
unparalleled reputation and goodwill and has
acquired the status of a "well known" trademark.

34. Few Trademarks & Service Marks

35. GROUNDS OF REFUSAL
ß Sections 9- 17 of Trademark Act of 1999, deal with
the conditions, under which a Trade Mark can be
refused registration.
ß If an application for the registration of a Trade Mark
denotes any of the characteristics, mentioned under
the following categories, it will not be registered as a
Trade Mark. These are the most important sections,
which need to be considered for registering a mark.
ß The Absolute Grounds (section 9)
ß The Relative Grounds (section 11).
ß Based on an understanding of these grounds, the
following marks may not be able to get registration
under the Trade Marks Act:
ß A Mark which is devoid of any distinctive character (
which is incapable of distinguishing the goods or
services of one person from that of another),

36. ß A Mark which is likely to deceive or cause confusion,
ß A Mark which is contrary to any law for the time being
in force,
ß A Mark which is phonetically similar to any existing
registered mark,
ß A Mark which is deceptively similar to any existing
registered mark,
ß A Mark which is identical to any existing registered
mark,
ß A Mark which contains scandalous /obscene matter,
ß A Mark which is likely to hurt the religious sentiments
of a particular class of the society,
ß A Mark which is disentitled to protection in court, and
ß A Mark whose use is prohibited under the Emblems
and names (Prevention of Improper Use) Act, 1950.

37. PROCEDURE FOR AND DURATION OF
REGISTRATION
ß Section 18 -Application for registration.
ß Every application under sub-section (1) shall be filed in the
office of the Trade Marks Registry within whose territorial
limits the principal place of business in India of the applicant
or in the case of joint applicants the principal place of
business in India of the applicant whose name is first
mentioned in the application as having a place of business in
India, is situate.
ß 19. Withdrawal of acceptance
ß Where, after the acceptance of an application for registration
of a trade mark but before
ß its registration, the Registrar is satisfied –
ß (a) that the application has been accepted in error; or

38. ß (b) that in the circumstances of the case the trade mark
should not be registered. Or should be registered subject to
conditions or limitations or to conditions additional to or
different from the conditions or limitations subject to which the
application has been accepted, the Registrar may, after
hearing the applicant if he so desires, withdraw the
acceptance and proceed as if the application had not been
accepted.]
ß 20. Advertisement of application
ß (1) When an application for registration of a trade mark has
been accepted, whether absolutely or subject to conditions or
limitations, the Registrar shall, as soon as may be after
acceptance, cause the application as accepted together with
the conditions or limitations, if any, subject to which it has
been accepted, to be advertised in the prescribed manner:

39. Section 21. Opposition to registration
(1) Any person may, within three months from the date
of the advertisement or re-advertisement of an
application for registration or within such further
period, not exceeding one month in the aggregate, as
the Registrar, on application made to him in the
prescribed manner and on payment of the prescribed
fee, allows, give notice in writing in the prescribed
manner to the Registrar, of opposition to the
registration.
(2) The Registrar shall serve a copy of the notice on
the applicant for registration and, within two months
from the receipt by the applicant of such copy of the
notice of opposition, the applicant shall send to the
Registrar in the prescribed counterstatement of the
grounds on which he relies for his application, and if
he does not do so he shall be deemed to have
abandoned his application.

40. Section 25. Duration, renewal, removal and
restoration of registration
ß (1) The registration of a trade mark, after the
commencement of this Act, shall be for a period of
ten years, but may be renewed from time to time in
accordance with the provisions of this section.
ß (2) The Registrar shall, on application made by
the registered proprietor of a trade mark in the
prescribed manner and within the prescribed period
and subject to payment of the prescribed fee, renew
the registration of the trade mark for a period of ten
years from the date of expiration of the original
registration or of the last renewal of registration, as
the case may be (which date is in this section
referred to as the expiration of the last registration).

41. Section 25. Duration, renewal, removal and
restoration of registration
ß Where a trade mark has been removed from the
register for non-payment of the prescribed fee, the
Registrar shall, after six months and within one year
from the expiration of the last registration of the
trade mark, on receipt of an application in the
prescribed form and on payment of the prescribed
fee, if satisfied that it is just so to do, restore the
trade mark to the register and renew the registration
of the trade mark either generally or subject to such
conditions or limitations as he thinks fit to impose,
for a period of ten years from the expiration of the
last registration.

42. Removal of trademark section 25(3)
ß (3) At the prescribed time before the expiration
of the last registration of a trade mark the
Registrar shall send notice in the prescribed
manner to the registered proprietor of the date
of expiration and the conditions as to payment
of fees and otherwise upon which a renewal of
registration may be obtained, and, if at the
expiration of the time prescribed in that behalf
those conditions have not been duly complied
with the Registrar may remove the trade mark
from the register:

43. PROPERTY MARKS
ß Section 479 of Indian Penal Code, 1860 provides
that “A mark used for denoting that moveable
property belongs to a particular person is called a
property mark.”
mark.
ß The distinction between ‘trade mark’ and ‘property
mark’ is not recognized in English Law.
Law.
ß However in India, the distinction between a ‘trade
mark’ and a ‘property mark’ is as follows:
follows:

44. Distinction between property mark
and Trademark
Trade Mark Property Mark
It denotes manufacture It denotes the ownership
or quality of the goods to of them
which it is attached
It concerns the goods It concerns the
themselves proprietor of the goods

45. Distinctive Mark
Distinctive (unique) and not descriptive for the type
of product or service being registered but if
descriptive, it can be registered only if sufficient
evidence of use is presented - acquired distinctiveness
¡ Distinctive marks identify goods or services as
originating from a particular company, and
consequently distinguish those goods or services from
competitors’ goods or services.
¡ Have little or no descriptive function; Operate
primarily to identify a product source.
¡ Inherently distinctive: Marks that are unique (made
up) or very original.
¡ Secondary Meaning: Marks that become distinctive
due to TM owner’s efforts to create distinctiveness
(long-term use & public recognition)

46. DESCRIPTIVENESS DISTINCTIVENESS
CHEESE FROM DENMARK
TENNISSHOES ADIDAS TENNISSHOES

47. Distinctive Yes No
ß Word SUPPER Super
ß Logo
ß Word/Logo

48. Descriptive Trade Marks
The trademark, which consist exclusively of signs or
indications which may serve, in trade, to designate the
kind, quality, intended purpose, value, geographical
origin, the time of production of goods or of rendering
of services, or other characteristics of goods or services
It Describe some quality or characteristic of goods or
services in descriptive terms like:
¡ SWEET to sell chocolates.
¡ “Apple” brand apple juice
¡ “ORWOOLA” or “Pure whool” for 100% for wool
materials.
¡ “The Band” Not protected unless “secondary
meaning” acquired

49. DESCRIPTIVENESS DISTINCTIVENESS
CHEESE FROM DENMARK
TENNISSHOES ADIDAS TENNISSHOES

50. TYPES OF TRADEMARKS
ß Coined or Invented Trademarks:
ß These Trademarks are meaningless trademarks which
enjoys highest amount of legal protection e.g. KODAK,
RANBAXY, DABUR.
ß These marks also includes common words but arbitrary in
connection with the products or services e.g. TORTOISE for
Mosquito coil, CAMEL for Cigarettes, APPLE for Computers,
OMEGA for watch.
ß Suggestive or Semi-descriptive Trademarks:
These Trademarks are always preferred by Marketing
people as it creates association with the product without
being descriptive. These Trademarks are easily
remembered and easy to promote than coined or invented
marks. Suggestive marks also includes plain dictionary
words e.g. SWATCH, TITAN, RELIANCE, INFO GATE,
CYBERSURFER, HEAD & SHOULDER

51. ß Descriptive Trademarks:
ß Marketing people are mostly keen on finding the name, which
communicates product associations to consumers. But no or minimal
protection is granted by the law to such trademarks unless it is being
used extensively and continuously for many years with huge sale and
advertising to popularize the same. Examples of Descriptive marks are
RAPID RICE, SWISS CHOCOLATE, LITE FOR BEER, EASY CASH,
ANY TIME MONEY, HAIR & CARE, FAIR & LOVELY,
ß House Marks:
ß A Trade Name or House mark is a mark to identify a Company or a
business and serves as the name of the Company or a business. Many
times, a Group of Companies use its house mark on its products or
services along with or without any other Trademark e.g . GODREJ’s
JUMPIN and GODREJ STOREWELL, TATA TEA, TATA SALT, TATA
PRESS, NESTLE’s NESTEA, NESTLE’s MILO, BAJAJ SCOOTER,
BAJAJ MAJESTIC for Toaster, BIRLA WHITE Cement, BRITANNIA
GOODDAY, BRITANNIA CREAM TREAT, AMUL CHEESE, DABUR
HONEY.

52. ß Figurative Trademarks:
ß Each of the above mark may be combined with figurative
elements or marks. It is also possible to use a figurative mark in
isolation. Such figurative elements are added or used exclusively
for different markets where there is communication problem i.e
different languages are used in different markets.
ß The Figurative marks can also be like word marks of following
types:
ß Meaningless, fancy or pure fantasy marks
ß Arbitrary or marks without any relevance with the product (half
bitten apple for APPLE Computers, ARROW for Shirts)
ß Suggestive (Cow for MILKMAID), TWO ELEPHANTS pulling a
chain in opposite side joined with FEVICOL)
ß Descriptive (device or picture of Wheat for Bread, device of hand
showing No. 1 for McDowell’s No. 1 Whisky, Running Deer
through letter “S” for Savani Transports)
ß For its distinctiveness full legal protection is granted to such
figurative marks.

53. A generic Trademark
ß Brand names become generic when they are so commonly
used that people associate the brand name for every product
of that type regardless of who manufacturers it, or who
trademarked the name. The trademark becomes synonymous
with a product. And while you would want your product to
become that well known, a trademark can lose the right to
registration and protection if it becomes generic. Did you that
in Austria Sony lost its trademark registration for
the walkman? Here are a few examples of genericized
trademarks.
ß Through this PPT we’ve included images of once trademarked
brand names that have become generic, either officially or in
practice. Did you recognize them? The Yo-Yo, the Escalator,
the Zipper, the Band-Aid and the Kleenex have all gone the
way of the generic.

54. ß These are actually not a Trademark but generic, chemical or
ingredient’s original name. However, some of the
Trademarks which are used generically and hence became
generic and not protected as a Trademark.
ß ASPIRIN,
ß THERMOS,
ß KEROSENE
ß ESCALATOR,
ß GRIPE WATER,
ß REFRIGERATOR
ß DALDA
ß were Trademarks but due to its general and descriptive use
by all together with improper protection by its owners made
them generic words. Today, many companies are facing
dilution of their Trademarks due to its general use such as
XEROX for photocopies, VELCRO for fasteners etc.

55. ß sometimes the power of the masses overrules the power of
law. Take the word “escalator,” a brand name originally
trademarked by the Otis Elevator Company. Soon, people
started using the word “escalator” to refer to all moving
stairs, not just Escalator-brand moving stairs. This improper
usage eventually became so common that the U.S. court
declared the term “generic.” Now, any company that
produces moving stairs may call their product an “escalator.”

56. Generics
ßDixie Cups Cellophane
ßCorn Flakes Dry Ice
ßLanolin Mimeograph
ß Monopoly Pogo Stick
ßRaisin Bran Shredded Wheat
ßThermos Toll House
ßTrampoline Frisbee
ßHi-Liter Kitty Litter
ßKleenex Magic Marker
ßPing-Pong Popsicle
ßScotch Tape Sheetrock
ßTV Dinners Wiffle Ball

57. i1
Deceptively Similar / Identical Mark
ß If it concerns the same or similar/identical
products and services: The name of product /
service cannot be similar or identical to a
previous mark Meaning the way the mark is:
Written, Looks, Phonetic (sounding), Conceptual
similarity, however The same similar / identical
brand name can be used for different
products/services in different classes.

58. Slide 57
i1 First half of slide changed (to make more understandable)
ihl, 12/4/2006

59. Deceptively Similar / Identical - Examples
ß Written Cool / Kool
ß Looks
ß Sounding Basket / Buskit
For You / 4U
ß Conceptual Star / Stern

60. VIVO AND TIVO

61. The Concept of Unfair Competition
ß The law of unfair competition is primarily comprised of
torts that cause an economic injury to a business
through a deceptive or wrongful business practice.
Unfair competition can be broken down into two broad
categories. First, the term "unfair competition" is
sometimes used to refer only to those torts that are
meant to confuse consumers as to the source of the
product. The other category, "unfair trade practices",
comprises all other forms of unfair competition.
ß Unfair competition does not refer to the economic
harms involving monopolies and antitrust legislation.
What constitutes an "unfair" act varies with the context
of the business, the action being examined, and the
facts of the individual case.

62. ß Unfair competition can be broken down into two broad
categories. First, the term "unfair competition" is
sometimes used to refer only to those torts that are
meant to confuse consumers as to the source of the
product. The other category, "unfair trade practices",
comprises all other forms of unfair competition.
ß that fall into the area of unfair competition include:
false advertising, "bait and switch" selling tactics,
unauthorized substitution of one brand of goods for
another, use of confidential information by former
employee to solicit customers, theft of trade secrets,
breach of a restrictive covenant, trade libel, and false
representation of products or services.

63. Methods of unfair competition
ß Our judiciary has continually enlarge the definition of
unfair competition and the methods of unfair
competition, which are as varied as they are
ingenious and are not limited to palming off; it
includes not only
ß infringement of trademarks, service marks and trade
names,
ß simulation of a product or its packaging, palming off
by unauthorized substitution, and use of similar titles
of artistic works,
ß dilution of trade symbols,
ß misappropriation of distinctive literary and
entertainment characterizations, misappropriation of
the right of publicity and other business values, false
advertising and other false representations.

64. Trademark infringement
ß The trademark infringement case is the likelihood of
confusion �that is, the alleged infringer will be
prohibited from using a trademark on a competing
product if that use causes a likelihood of confusion
in the mind of a relevant purchaser.
ß The Courts have set forth a number of factors for
determining the likelihood of confusion, such as the
closeness of the appearance, sound, and meaning
of the conflicting marks; the relatedness of the
goods on which the marks are used; the channels
of commerce in which the marks are sold; and the
sophistication of the relevant purchasers of the
goods. Thus, in analyzing any trademark
infringement situation, all of these factors as well
as other relevant factors not mentioned must be
considered.

65. PASSING OFF
ß Passing off is a wrong, a common law tort which
protects the goodwill of a trader from
misrepresentation. Misleading the public into believing
falsely, that the brand being projected was the same
as a well known brand is a wrong and is known as the
tort of “passing off” .
ß Though the trademark of whirl pool corporation was
not registered in India, as it was removed from the
trademark register for non use / non renewal.
ß As held in the famous case of N. R. Dongre Vs.
Whirlpool Corporation “A man may not sell his own
goods under the pretence that they are the goods of
another man.” Law aims to protect traders from this
form of unfair competition.

66. Civil remedies for Protection of Trademark
In case of Infringement In case of Passing off
Statutory remedy available for a Common law remedy against a
registered proprietor against person of passing off his own
violation of his exclusive right to goods as those of another & en-
use the trade mark; cashing on other’s goodwill;
Mere confusion is enough for Actual deception has to be
getting interim and final relief. proved for getting any relief.
Trade Mark registration is prima Evidence showing long
facie proof of ownership of the continuous use of the brand
mark. needs to be led thereby showing
prior adoption, use then infringer
Registered owner can initiate Passing Off action can be
action in a Court , where the owner initiated, where the Defendant
resides or carries it’s business or carries on its business or where
where cause of action arose. cause of action arose.
infringement is actionable per se, Owner of the unregistered brand
owner need not to prove specific has to prove actual monetary
monetary damage in case of the damages because of its wrongful
infringement adoption.

67. Palming off
ß The Palming off is considered to be a species of unfair
trade and competition or of actionable unfair trading
by which one person, through deception attempts to
obtain an economic benefit of reputation, which
another has established, for himself in a particular
trade or business, for instance, Warner Ltd. v. Antox
India Pvt. Ltd., 1990 Suppl. SCC 727.
ß The touchstone in any action of unfair competition in
trademarks is the likelihood of confusion about the
origin of product.
ß Unfair competition when used in connection with
palming off, is understood to mean the result of the
defendant’s act, i.e. deception of the public, rather
than his intent.

68. Public is considered deceived, when a seller uses a
trademark on a competing product and that use causes
a likelihood of confusion in the minds of a relevant
purchaser.
The spectrum of palming off has been consistently
broadened and it includes at least three situations;
they are
(1) substitution of one brand of goods when another
brand is ordered;
(2)trademark infringement where the infringer
intentionally meant to defraud and confuse buyers; and
(3)trademark infringement where there is no proof of
fraudulent intent, but there is a likelihood of confusion
of buyers.
palming off essentially requires an intent to deceive
and actual fraud

69. Trademark dilution as unfair
competition
ß Another main area of unfair competition in trademark
infringement is trademark dilution, which can happen
either by blurring or tarnishment.
ß Blurring of trademark occurs when the trademark is
used with a number of goods and service not
controlled by original owner, by which it looses its
distinctiveness in the market.
ß The Tarnishment occurs when the other party
attaches the trademark with an activity that brings
disrepute to the trademark. For example, using a cold
drink trademark for a "playboy" magazine.

70. Damages
ß This damage can occur in two different ways. The first
is a blurring of the distinctiveness of the mark. If
consumers see the mark being used on a number of
different goods and services not controlled by the
original owner, the original owner’s mark will lose
“cachet” or distinctiveness. In some cases the
likelihood of confusion is not present, but there is still
damage done to a recognized mark by a second
seller’s unfair use of it.
ß The second damage to the mark is by tarnishment. In
this case, the original mark is used in such a way that
the consumer knows, because of the context or the
usage, that there is no connection between the
owners of the respective marks. However, use of the
mark by the other party brings the trademark owner’s
mark into disrepute or shows the trademark in a bad
light.

71. Remedies for infringement and
unfair competition
ß Remedies in the case of trademark infringement and
unfair competition include injunction, imprisonment
up to three years, fine to a maximum two lakh Indian
Rupees, damages, rendition of account of profit and
cancellation of registration of trademark.
ß Remedy for unfair competition is generally in
conjunction with remedy for trademark infringement.
However, an order as to non-infringement of
trademark does not necessarily mean dismissal of a
suit for unfair competition as held in Frito-Lay India v.
Guru Pasad Enerprises, 2004(29) PTC 537(Del).
ß Seeking a remedy for unfair competition along with
remedies for trademark infringement and passing off
can certainly strengthen a case.
ß

72. Trade Names
ß Trade names are not marks. A trade name is a word,
name, term, symbol, or combination of these, used
to identify a business and its goodwill. Whereas, a
mark identifies the goods or services of a company, a
trade name identifies the company itself.
ß Trade names and marks are related. For example, if
one business adopts a trade name similar to a mark
used by another, the trade name of the first business
may impede the effectiveness of the mark used by
the second in identifying the source or origin of
goods or services.
ß Consumers may come to believe that the first
business makes goods, or provides services, sold by
the second. For this reason, conflicts can arise
between trade names and marks.

73. ß Trade names also can function as marks. Many
companies use all or part of their business names as
marks on their products, or in connection with their
services.
ß When a trade name is used by a company in this dual
fashion, it becomes even more important that
competing companies refrain from using a similar
trade name or mark.

74. Comparison of Trade Names & Trademarks
Laws Trade Names Trade Marks & service
marks
Protection Law Commercial Laws Trademark Law
Function To distinguish traders To distinguish goods
(companies) and services
Composition Composition Characters Composition Characters,
Name, figures, signs, etc.
Protection Indefinite Ten years & renewals
period
Scope of Within the same city, Same right throughout
right town, as designated by India
the law

75. TRADE DRESS
ß It is pertinent to discuss in brief about the Trade Dress. Trade
Dress is the overall appearance of the goods or their packaging
or of advertising or the means for delivering goods or services.
For Example a restaurant’s name or logo will constitute as a
Trademark while its style, furnishing and ornamentation of
restaurant premises identify the restaurant’s services, which
constitute Trade Dress (e.g. McDONALD’S restaurant chain).
Even the shape, size and graphic design of packaging including
its internal and external configuration will constitute a Trade
Dress (MAGGI in a typical yellow and red colours).
ß Trade Dress like a Trademark, is protectable if it is distinctive
i.e. it distinguishes the owner’s goods, services or business
from those of other. Inventive, arbitrary or suggestive features
or combination of any its features will make the Trade Dress
distinctive. However, in some cases Trade Dress may be
inherently distinctive. Inherently distinctive Trade Dress usually
refers to “Product packaging Trade Dress that serves to
immediately single out a brand or product source”. Otherwise,
the Trade Dress is to be made distinctive by extensive
marketing and use.

76. INTELLECTUAL PROPERTY
APPELLATE BOARD
ß The Intellectual Property Appellate Board was
established on 15th September 2003, under the Trade
Marks Act 1999 and became functional in December
2003.
ß The primary purpose of establishment of the IPAB is to
provide an appellate forum to expeditiously adjudicate
upon appeals from the orders or decisions passed by
the Registrar of Trade marks & Geographical
Indications as well as the Controller of Patents.
ß The IPAB has also been conferred the original
jurisdiction in regard to rectification applications in its
original jurisdiction. As of now the IPAB has been
hearing appeals from the orders passed by the
Registrar of Trade Marks only.

77. Citations
ß The test laid down by the Supreme court is a person of
average intelligence with imperfect memory –
Amritdhara case AIR 1963 SC 449. This test is followed
by the Supreme Court and by various High Courts all
over India.
ß The test laid down by the SC is overall impression /
Comparison of the two marks. A side by side, word, by
word comparison is not permitted. In the Parle case AIR
1972 SC 1359 the marks involved were Gluco biscuits
wrapper and the defendant using similar wrapper
although there were minor differences like the Basket
being held differently, the background, etc. Still the court
granted injunction in view of the over all similarity of the
marks.

78. ß The Court does not consider / ignores commonly used
prefixes or suffixes. The SC held in Ruston & Hornby case
– AIR 1970 SC 1649 that the trademarks RUSTON and
RUSTOM INDIA are similar. The Court held that the suffix
India has no significance.The marks RUSTON and
RUSTOM are phonetically and visually similar.
ß In Hoffman La Roche case AIR 1970 SC 2062, the
Supreme Court held that the suffix VIT means vitamin
and held that the suffix is common to Pharmaceutical
trade. The plaintiff could prove that there were more than
58 registrations of trademarks in class 5 having the suffix
VIT. The court held that the trademarks PROTOVIT and
DROPOVIT are not similar.

79. passing off
ß In a passing off suit filed by a company having international
reputation, the mark being a well-known trademark, injunction has
been granted even wherein the goods are different.
ß Daimler Benz Vs. Hibo Hindustan AIR 1994 DEL 239 – Injunction
was granted in a suit filed by Daimler Benz, manufacturers of
famous Benz cars filed a suit against Hindustan Hibo,
manufacturers of well known VIP underwear against use of trade
mark BENZ and device of a man with folded arms and spread legs
which looks like a three pointed star used by Benz. Interim
injunction was granted restraining Hindustan Hibo from using the
trademark BENZ and device looking like a three-pointed star in
respect of undergarments.

80. Passing off
ß Where the marks are different, but the colour
scheme, get up and layout are identical, injunction
has been granted in a suit for passing off.
ß Castrol Vs. Pentagon Lubricants – C.S. No. 327 of
1999 – Order of Mr. Justice A. Ramamurthi dated
22.12.1999. The Learned Judge observed that in
view of the colour scheme, packing being identical,
an ordinary person would assume that the
defendants’ goods also emanate from Castrol.

81. ß Composition of IPAB: Every bench comprises of a
Judicial member & a Technical member.
ß Appeals to IPAB: An order may be appealed before
the IPAB within a period of three months from the
date of such order. The law also allows condonation
of delay.
ß Rules & Procedures: The Code of Civil Procedure is
not applicable to the proceedings before IPAB. The
IPAB has been vested with the powers to make its
own rules for conduct of proceedings.
ß The orders, passed by the IPAB, are subject to
appeal before the High Court.

82. TM Registration certificate

83. THANK YOU FOR YOUR
ATTENTION !
ANY QUESTIONS?