TRADEMARKS

Identifies the product and its origin. Guarantees product quality. Advertises the product.

IMPORTANCE OF TRADEMARKS

Used for identifying and distinguishing a particular sellers goods from others. Shows the origin of the goods i.e. a customer can identify the manufacturer and also assume about the quality of goods that all goods bearing the particular trademark are of a particular quality desired by the customers. Trademarks are widely used for the advertisement purposes also which helps to customers in associating any good with the quality, reputation and goodwill of any company.

Trademark Rights

Trademark rights arise automatically as a result of using the mark. Registration is not mandatory. Without obtaining registration of mark, the owners rights are limited to geographical area in which the mark has actually been used. Two or more parties can use simultaneously the same mark for same goods or services in different parts of the country without infringing each others rights.

SELECTION OF TRADE MARK

It shall be distinctive. If it is a word it should be easy to speak, spell and remember. The ideal word for a trademark is an invented or coined word. It should be short.

Benefits of Registration of Trademark

Owner has nationwide priority rights to use the trademark. Prevents others from any country or region from using the mark for similar goods or services. Owner gets legal protection under law.

Types of Trademarks that can be registered

Trademarks are registered for words, names, symbols, or devices that are capable of distinguishing the owner's goods from the goods of others. Trademarks are not registered if:

The use of the mark is likely to deceive or cause confusion; The use of the mark is contrary to any law; The mark contains scandalous or obscene matter; The mark contains any matter that is likely to hurt the religious sentiments of any section of the citizens of India; The mark is identical or deceptively similar to a trademark already registered in respect of the same goods or goods of the same description; The use of the mark is prohibited under The Emblems and Names (Prevention of Improper Use) Act, 1950.

Procedure for registration of Trademarks

STEP 1
Any person/entity who claims to be the proprietor of a trademark can apply for registration. Before applying for registration, the applicant may apply for a report from the Registrar of Trademarks, as to whether the mark or one similar to it has already been registered or applied for. The applicant can also conduct private searches using the records maintained in the Registry.

STEP 2

Thereafter, the application for registration should be filed in Form TM-1, under the Trade and Merchandise Marks Rules, 1959.

STEP 3
After the application is received, the Registrar of Trademarks will examine the same and communicate any objections to the applicant. The objections normally are with regard to distinctiveness and similarity with already registered trademarks. If the submissions of the applicant are accepted, the application will be advertised in the Trademarks Journal.

STEP 4
In case any objections are received, the Registrar will conduct a hearing and give a decision regarding the same. If no objections are received, the Registrar will enter the mark in the Register of Trademarks and issue a certificate of registration to the applicant. The certificate of registration is valid from the date of application for

Types of Protectable Marks

1.Fanciful Marks
Considered as strongest. Do not carry any meaning in English language or in context in which they are used. For Example:

XEROX APPLE KODAK GILLETTE

2. Suggestive Marks
These marks brings to mind, the attributes of product or service without describing it. For Example:

7-11 for a store that was open from 7 a.m. to 11 p.m JAGUAR and MUSTANG for quality fast cars

3. Descriptive Marks
Easiest to market. Can be weaker. Show poor choices for trademarks. A mark is descriptive if it indicates what the product or service is. For Example:

COMPUTERLAND for a computer store. VISION CENTER for an optics store. REGISTERINGATRADEMARK.COM for an Internet site that registers trademarks.

4. Generic Mark
It has lost trademark significance. It no longer describes the particular goods or services of a single source. It has come to be used by the public as a term describing entire class of items. For Example:

Kerosene Aspirin Elevator

TRADE DRESS

The arrangement of identifying characteristics or decorations connected with a product, whether by packaging or otherwise, intended to make the source of the product distinguishable from another and to promote its sale.

Examples of Trade dress: shape of the Coca-Cola bottle front grill on the Rolls-Royce automobile shape of a classic Ferrari sports car

Certification Marks

The mark which is able to distinguish the goods and services on the basis of:
origin, material, mode of manufacture of products, mode of performance of services, quality, accuracy of other characteristics of products or services.

They are generally used by industrial standard bodies or certification companies to demonstrate that a product or service meets a certain standard. For example :- ISI, WOOLMARK, AGMARK

 The

purpose of the Certification Mark is to provide a guarantee to the relevant public that goods or services possess a particular characteristic The certifying authority conducts a regular audit to ensure that the tested standard is maintained

SILKMARK An Example
Registered by Silkmark Organization of India Quality assurance symbol denoting that the products on which it is applied are made from 100% natural silk as base material
Silk Mark is a quality assurance label which is aimed at protection of the interests of the consumers, Traders and Manufacturers of pure Silk. Silk Mark aims at the generic promotion of silk. Silk Mark is aimed at building brand equity of Indian Silk. Silk Mark aims at a cohesive campaign with all stakeholders in the Silk value chain to promote Silk

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CRAFTMARK Another Example

Registered by the All India Artisans and Craftworkers Welfare Association (AIACA)

Logo symbolizes threads from craft product. Also metaphor for the hands of the craft worker.
Certifies that product is genuine Indian handicraft or handloom

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Benefits of Certification Marks

For Consumers:
Guarantee for consumers of certain quality

For SMEs:
Benefit from the confidence that consumers place in users of certification mark Strengthen reputation
Copyright 2007 Xellect IP Solutions

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Collective Mark

Collective Mark is a special type of trademark belonging to an association Only the members of the association can use the Collective Mark

Collective Mark is used as an indication to the relevant public that goods or services originate from a member of a particular association Therefore a sign of membership
Association of persons can be manufacturers, producers, suppliers, traders or other professional bodies.

A collective trade mark is used by a variety of traders, rather than just one individual concern, provided that the trader belongs to the association. For example:

"CA" device used by the Institute of Chartered Accountants "CPA mark, used to indicate members of the Society of Certified Public Accountants

Difference between Collective Marks & Certification Marks

Distinguished by the User:

Collective Marks is used by particular members of the organization which owns them Certification Marks is used by anybody who complies with the standards defined by the owner of the particular certification mark

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TRADEMARK INFRINGEMENT

CASE STUDY

Castrol v/s. Pentagon Lubricants

Castrol

Pentagon Lubricants

Highlights of the case

Marks of two companies are different. The colour scheme, layout and packing scheme is same. DECISION OF COURT : View of colour scheme and packing being identical. The ordinary person would assume that the defendants goods emanate from Castrol.

Infringement occurs when someone else uses a trademark that is same as or similar to your registered trademark for the same or similar goods/services. Under trademark infringement :

Cause confusion in the minds of consumers. Results in dilution of trademarks of plaintiff.

Case Study

Mars Inc. v/s. Chanda Softy Icecreams

Facts of the Case

Plaintiff is the owner of registered trademark MILKYWAY and GALAXY. These trademarks are extensively used in international market in respect of :

Chocolates Milk shakes Ice creams

Defendant started an ice cream parlour in Chennai called Milky way Galaxy of ice creams.

Decision of the Court ?

Case went in favour of plaintiff. Injunction was granted by the court for infringing the trademark of plaintiff.

Case Study
M/s Bikanervala v. M/s Aggarwal Bikanerwala

Facts of the Case

The respondent was running a sweet shop in with the name of AGGARWAL BIKANERVALA. The plaintiff was using the name BIKANERVALA from 1981 and also got registered it in the year 1992.

Decision of the court?

Court held : The defendants trademark is deceptively similar to plaintiffs trademark. It stopped defendant from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in food articles for human consumption.

Case Study

Mars Inc v/s. Viva Knitters

Facts of the case

Mars Inc. (plaintiff), an international well reputed manufacturers of MARS chocolates. Viva Knitters used the trademark MARS in respect of undergarments.

Decision of the Court ?

Existence of trademark infringement. Case went in favour of plaintiff. Court granted injunction and prevented Viva Knitters for using MARS trademark and selling its goods to public with same mark.

Penalties in Trademark Infringement

Section 76 to 79 deals with criminal action. Use of false trademark is an offence under Section 77. Sale of goods bearing false trademark amounts to offence under Section 78. The penalty for use of false trademark or falsifying the trademark is imprisonment up to 2 years or fine or both under Section 79.

Manufacture or sale of goods bearing identical or similar marks also amounts to cheating under section 420 of IPC. Manufacture and sale of goods bearing imitative marks amounts to counterfeit property marks under section 486 of IPC. Import of goods bearing false trademarks under section 120 B of IPC.

Case Study

McDonalds vs. McCurry

Facts of the case

McDonalds, filed case in court for trademark infringement against McCurry. Related with prefix of word Mc. McCurry, used as an abbreviation for Malaysian Chicken Curry is restaurant in Malaysia.

Court held :Case went in favour of defendant McCurry. Not a case of trademark infringement. McDonalds do not have monopoly over the word Mc. The word Mc is already used in American lexicon. McCurry's signboard has white and gray letters against a red background with a picture of a smiling chicken giving a double thumbs-up. McDonald use red and yellow 'M' logo.

Passing-off Action

Misrepresentation is made by the person in the course of trade to his prospective customers. Injures/damage the goodwill or reputation of the other vendor. Passing off action applies in case of unregistered trademarks. In a passing off action, the registration of the trade name or a similar mark is irrelevant.

Case study
N.R. Dongare v. Whirlpool Corp. Ltd.

Facts of the Case

Defendants have failed to renew their trademark WHIRLPOOL. In the mean time the plaintiffs have got registration of the same.

Decision of the court?

The Court held: Case went in favour of WHIRLPOOL. The WHIRLPOOL has acquired reputation and goodwill in this country. Associated in the minds of the public. Even advertisement of trade mark without existence of goods in the mark is also to be considered as use of the trade mark.

Case study

Honda Motors Co. Ltd. v. Mr. Charanjit Singh

Facts of the case

Defendant Company was using the trade name HONDA for Pressure Cookers which they are manufacturing in India. Plaintiff is the well known company having presence all over the world. Plaintiff deals in the field of Motor Cars, Motorcycles, Generators and other electronic appliances. Plaintiff brought action in court.

Court Held:Plaintiff has acquired the reputation. His trade name has become distinctive of his goods and the purchasing public at large associates the plaintiff's name with them. The use of trademark HONDA by respondents is creating deception or confusion in the minds of the public. Court has restricted the defendants from using the trademark HONDA in respect of pressure cookers.

Difference between Infringement & Passing-off

Trademark Infringement Confined to registered trademarks. When a trademark is registered, registration is given only with regard to a particular category of goods and hence protection can be given only to these goods. Statutory remedy is available for infringement. Registration of trademark is must for taking action

Passing -off Confined to names, signs, symbols and unregistered trademarks. In a passing off action, the defendants goods need not be the same; they may be related or even different.

Action for passing off is a common law remedy. Registration of trademark is not relevant for taking the action.