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INTELLECTUAL PROPERTY RIGHTS

PROTECTION OF SERVICE MARKS UNDER


TRADEMARKS LAW OF INDIA

TABLE OF CONTENTS

INTRODUCTION

SERVICE MARKS
o

CLASSIFICATION OF GOODS AND SERVICES

TYPES OF SERVICES

SERVICE MARK VS. TRADE MARKS

ROLE AND FUNCTION OF SERVICES MARKS

VIOLATION OF SERVICE MARKS

INFRINGEMENT OF SERVICE MARK

PASSING OFF AND GOODWILL OF SERVICE MARK

NEW HORIZONS OF SERVICE MARK


RELIEF AND GRANTS BY COURT IN SUITS FOR
INFRINGEMENT AND PASSING OFF

OFFENCES AND PANELTIES

CASES OF SERVICE MARK VOILATION IN INDIA

CONCLUSION

BIBLIOGRAPHY

Introduction
An outstanding feature of the Indian economy in recent times has been the stupendous
growth of its service sector. Service sectors in which India has gradually emerged as a center
of excellence include software, biotechnology, technical education, healthcare, tourism,
media and entertainment. These sectors continue to attract huge levels of Foreign Direct
Investment. Indias service sector is expected to continue to grow at very high rates; one
recent estimate pegs current years forecast in the range of 30- 35 percent arguably the
highest in the world. Some years ago, Indias service sector grew to be even bigger than the
manufacturing sector and looks to occupy a bigger share of the economy in the coming
years. Indias Trademark Laws, till recently, however, did not even envisage registration of
service marks. Now, and no doubt, as a result also of the sustained boom in the tertiary
sector of the Indian economy, there was an utter need for the Indian Trademark Law to
change. The Trademarks Act, 1999, has now replaced the prevailing Trade Marks Act, 1958,
which enabled service marks also to be registered. Earlier, the owners of such service marks
had no option but to seek, at best, registration of their marks in classes of goods which were
most allied to their services. Besides the hitherto complete lack of statutory protection to
service marks, Indias trade mark regime has also been characterized by shortcomings and
loopholes in then provisions relating to enforcement and prosecution. The delays caused as
a result of infrastructure bottlenecks did little to help the situation- with the average time
taken for even preliminary examination of trade mark registration applications by the Trade
Marks Registry taking 2-3 years on an average and the entire process of registering a
trademark extending upto 6-7 years. Pending registration, and the consequent lack of
remedy of filing for infringement, owners of even well known trademarks, including service
marks, were left with no option but only to resort to the common law remedy of bringing an
action of passing off against encroachments. Given an otherwise soft enforcement of
proprietorship of intellectual property in general, the outlook for foreign trademarks was
even bleaker. All this, in turn, resulted in a huge amount of litigation with matters lingering
in Courts for years on end.
The Trade Marks Act, 1999 has come into force from the 15th of September 2003. An
important feature of the Act is the introduction of the registration of Service Marks in India.
Previously, Service Mark registration in India was not allowed. Protection of service marks
was available only under the common Law. From September 2003, it has now become
possible to separately register and therefore statutorily protect Service Marks.

Service Marks
As defined in Section 2(1)(z) of the Trade Marks Act, 1999, service means service of any
description which is made available to potential users and includes the provision of services
in connection with business of any industrial or commercial matters such as banking,
communication, education, financing, insurance, chit funds, real estate, transport, storage,
material treatment, processing, supply of electric or other energy, boarding, lodging,
entertainment, amusement, construction, repair, conveying of new or information and
advertising.
Whereas in regards to mark, it includes a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, shape of goods, packaging or, combination of colours or
any combination thereof.
A service mark is a form of trade mark that is used in the sale or advertising of services. The
services offered by one business from similar services offered by the other businesses.
Explaining it more elaborately, it is a word, name, or symbol that represents a
company/firm/individual that provides service or a service provided by a
company/firm/individual that differentiates it from the competition and establishes it as
unique. The service mark may be legally registered for the exclusive use of that company.

Classification of goods and services


For the purpose of classification of goods and services for registration of trademarks and
services, India follows the International Classification of Goods and Services (Nice
Classification) published by World Intellectual Property Organization (WIPO). For the purpose
of classification of the figurative elements of marks, India follows the Vienna Agreement.

Types of Services
Goods and Services are classified under various classes of the fourth schedule of the
Trademarks Rules, 2002. Under the old trademark law, Only 34 classes for goods were
available. Under the Act of 99, 11 more classes are created by an amendment in 2003 of the
Trademarks Rules, 2002 for the protection of service marks, i.e. classes 35 to 45. The
services under these classes are classified as follows:
Class 35: Advertising; business management; business administration; office functions
Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.
Class 37: Building construction; repair; installation services
Class 38: Telecommunications.
Class 39: Transport; packaging & storage of goods; travel arrangement
Class 40: Treatment of materials
Class 41: Education; providing of training; entertainment; sporting & cultural activities
Class 42: Scientific & technological services, research & design; industrial analysis &
research services; design & development of computer hardware & software; legal services.

Services for providing food & drink; temporary accommodation; medical services; veterinary
services; hygienic and beauty care for human beings or animals; agriculture, horticulture
and forestry services. Personal and social services rendered by others to meet the needs of
individuals; security services for the protection of property and individuals.
These are general classes. Each class has hundreds of entries for services falling under a
class. Thus, for instance, compilation of information into computer databases is a service
falling in class 35 but a service for providing financial information is a service falling in class
36. Again, a service providing Installation, maintenance and repair of Computer hardware
falls in class 37 but Installation and Maintenance of Computer software falls in class 42.
Class 43 covers hotel and restaurant services. Medical clinics and Beauty parlors fall in class
44 and horoscope casting in class 45.
Service marks indicate the source or origin of services (as opposed to goods). Service marks
are signs used by enterprises to identify their services, such as travel agencies, hotels,
telephone companies and airlines. For all practical purposes, trademarks and service marks
are subject to the same rules of validity, use, protection, and infringement. A service mark is
a recent entrant to the domain of Intellectual Property.

Service Mark vs. Trade Mark


A service mark and a trade mark though not very different are not the same. There is mainly
one simple difference between service mark and a trademark. A Service mark is used for
services rather than goods. A Trademark is to identify goods and to distinguish those goods
from those made or sold by another.
Though there is a difference in the definition of trade mark and service mark, procedure for
the registration and rights created on registration or use are same. Everything is similar
between a trade mark and a service mark except mode in which they are used, a trade mark
is used on a product; whereas a service mark is an identification of a service provider, which
is normally used in advertisements, as services can not defined by a concrete product.

Role and functions of Service marks


General speaking, service marks perform four functions that are deserving of protection in
the courts:
1. Identification of the services of its origin: To identify one sellers services and
distinguish them from services sold by others. In case of goods, the trade mark is prefixed
on the product but in case of services it is not possible, so to identify the source of service or
services, the service mark is used in all the business transactions of the company including
the invoices;

2. Creation of an image for services: To signify that all services bearing the service
mark come from or are controlled by a single, albeit anonymous, source;
3. Guaranting its unchanged quality: To signify that all services bearing the trademark
are of an equal level of quality; and

4. Advertisement of the services: As a prime instrument in advertising and selling the


services.

In addition to these four functions, it must also be kept in mind that a service mark is also
the objective symbol of the goodwill that a business has built up. Without the identification
function performed by service marks, buyers would have no way of returning to buy
products that they have used and liked. If this consumer satisfaction and preference is
labelled goodwill, then a service mark finds its value in allowing customers to develop
affinity to a particular service and recognize this preference in the form of a positive
feedback loop (i.e., increased and repeated purchases). That being the case, it is really the
goodwill that is represented in the service mark that is valuable. In order to tap into this
positive feeling a recognizable service mark must exist, but the key ingredient is having a
service that customers like.

Violation of Service Mark


The owner of a registered service mark may commence legal proceedings for service mark
violation to prevent unauthorized use of that service mark. However, if registration is not
acquired, the owner of a common law service mark may also file suit, but an unregistered
mark may be protectable only within the geographical area within which it has been used or
in geographical areas into which it may be reasonably expected to expand.
Two types of remedies are available to the owner of a service mark for unauthorized use of
his or her mark or its imitation by a third party. These remedies are:
1. An action for infringement in case of a registered service mark; and
2. An action for passing off in the case of an unregistered service mark
While former is a statutory remedy, the latter is a common law remedy. In an action
involving infringement or passing off, a 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 etc.
Although registration of service mark is prima facie an evidence of validity of a service mark,
yet the registration cannot upstage a prior consistent user of service mark, for the rule is
priority in adoption prevails over priority in registration.

Infringement of Service mark


The use of a service mark in connection with the sale of a good or service constitutes
infringement if it is likely to cause consumer confusion as to the source of those goods or
services as to the sponsorship or approval of such goods or services. To determine confusing
similarity, the marks are generally compared with respect to pronunciation, appearance, and
a meaning or verbal translation. For example, although to marks might be spelled
differently, if they are pronounced in the same way, they might be considered confusingly
similar. Similarity of appearance is determined in the context of the general presentations
of the service mark on the product. Similarity in meaning depends on the mental impact
made on the consumer as a result of the psychological imagery evoked by the marks
concerned. Therefore, translations of words, especially from well-known languages, are
taken into account to determine whether there exists confusing similarity with the meaning
the protected mark or not. Similarity, a figurative mark can be confusingly similar to a work
mark, depending on the mental impression each of the marks creates. For example, the
word mark arrow and the figurative mark consisting of a drawing of an arrow[1]evoke
similar visual image in the mind.

Passing off and goodwill of Service Mark


The common law of passing off and the statutory regime, which protects registered
trademarks/service marks, is found in the 1994 Trademarks Act. These regimes regulate
certain signs or symbols, usually words or pictures[2], when used in connection with
particular goods or services, Classic (or infamous) examples include MARLBARO for
Cigarettes, DREAMCAST for computer games, the golden arches in the shape of M for
restaurant services, and the SWOOSH or rounded tick symbol for (NIKE) sports clothing.
Under the law of passing off, the sign must have been used in trade so as to have acquired a
reputation. In the case of statutory regime, the sign must have been registered, under Trade
Marks Act (1999).

The method of passing off includes:


(1)

Direct false misrepresentation,

(2) Adoption of a trademark or service mark, which is the same or colourable imitation of the
service mark of a rival trader,
(3) Adoption of an essential part of a rival traders name,
(4) Copying the get up or colour scheme of the label used by a trader,
(5) Adopting the word or name by which the rival traders business is known in the market,
and many other ingenious methods.

The first factor that needs to be proved to establish an action of passing off is goodwill. The
mere fact that consumers are confused about the source of a product or service is not
enough for a trader to bring a successful passing off action against another trader with
whom their services are being confused[3].

New horizons of Passing off


The new meaning of passing off is to be discerned. The real question in each case is whether
there is as a result of misrepresentation a real likelihood of confusion or deception of the
public and consequent damage to the plaintiff, and if so then relief shall be granted. In the
case[4] where the plaintiff has a domain name REDIFF and the defendant has adopted a
domain name RADIFF simply to trade on the reputation of the plaintiff; the injunction was
issued against the use of Radiff.

Relief granted by Courts in Suits for Infringement and Passing off


The relief which a court may usually grant in a suit for infringement or passing off includes
permanent and interim injunction, damages or account of profits, delivery of the infringing
goods for destruction and cost of the legal proceedings.

The order of interim injunction may be passed ex parte or after notice. The Interim reliefs in
the suit may also include order for:
(a)
Appointment of a local commissioner, which is akin to an Anton Pillar Order, for
search, seizure and preservation of infringing goods, account books and preparation of
inventory, etc.
(b) Restraining the infringer from disposing of or dealing with the assets in a manner which
may adversely affect plaintiffs ability to recover damages, costs or other pecuniary
remedies which may be finally awarded to the plaintiff.

Offences and Penalties


In case of a criminal action for infringement or passing off, the offence is punishable with
imprisonment for a term which shall not be less than six months but which may extend to
three years and fine which shall not be less than INR 50,000 but may extend to INR 200,000.

Cases of Service Mark Violation in India


Service mark infringement especially among the corporate classes in India is rising on
alarming rate but it came to be recognised only after the amendment of the Indian
Trademarks Act in 2003.
Few of the notable cases have been described in brief:

Health and Glow Retailing Pvt. Ltd. vs. Dhiren Krishna Paul and
Anr[6].
In this case the plaintiff was in the business of selling cosmetics, hair care and beauty care
goods while the defendant was using the mark for hair care services. The honble Madras
high court held that an action for infringement/passing off was maintainable without going
into the issue of goods or services. The honble court said that s per the language employed
in Section 29(4) infringement would rise by the usage of trade mark in relation to dissimilar
goods or services, if three conditions are satisfied, namely:(a)

is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade
mark is registered; and
(c) the registered trade mark has reputation in India and the use of the mark without due
cause takes unfair advantage of or is detrimental to, to distinctive character or repute or the
registered trade mark.
The court applied the above three pre-conditions to the case on hand, and observed:
(a) that the defendants have adopted trade mark which is not merely identical with or
similar to the registered trade mark, with the same words Health and Glow and the same
device;
(b) that the plaintiff has attained reputation in India with 43 retail outlets in Chennai,
Bangalore, Hyderabad, and Mumbai.
(c) that the use of the same mark by defendants is not only without due cause but also
detrimental to the reputation of the registered mark of the plaintiff.
The court came to the conclusion, that prima facie, all the above three pre-requisites of the
Section 29(4) are satisfied in this case.

These two cases were the foremost instances of service mark violations in Indi after the
inclusion of service mark by an amendment of 2003 in the Trade Marks Act, 1999. In both
the cases the decision of the two high courts was different. In the Balkrishna Hatcheries
case[7], the Bombay high court decided that for the violation of services mark, it must be
infringed by service providing company only but in the Health Glow case[8], the Madras
high court did not went into such discussion and granted the injunction against the
defendant which was a company not in service industry but manufactured goods. The
reputation of the plaintiff was at stake because the consumer would think or believe that the
defendants goods were coming from the same source as the plaintiffs.
In the later cases it is seen that decision of the Balkrishna Hatcheries case[9] is followed but
none of the succeeding cases mentioned or discussed the Balkrishna Hatcheries case[10].
The cases that follow are:
DZine Garage Pvt. Ltd. vs. DZine Cafe Fze[11] (2008)
In this case, the plaintiff was in the business of managing an online communication agency
for a spectrum of the industry, viz., banking, insurance, healthcare, IT etc. In the course of
business, the plaintiff adopted the mark DZINE and registered the mark. According to the
plaintiff DZine as a service mark is unique, and has distinctive feature and is extensively
used as a part of the corporate name and domain name. By virtue of such long, extensive,
open and continuous use and advertisements, the service mark DZine has acquired
enormous reputation and goodwill amongst the members of the public all over India and in
many countries abroad.
It came to the knowledge of the plaintiff that the defendant was using the mark Dzine
caf as a service mark and as part of their corporate name and domain
name www.dzinecafe.com. The defendant was involved in the business of web designing,
multimedia presentations, online communication, etc.
It was argued on behalf of the plaintiff that the defendant had deliberately adopted a similar
service mark/trade name DZine caf in a calculated attempt to cash in on the reputation
and goodwill enjoyed by the plaintiff and to get illicit and quick gains without putting any
substantial efforts. The unauthorized and unlawful use of DZine caf for the defendants
business activities was with mala fide intention to make the customers believe that their
business also originates from the respondent/plaintiff. Similarity of the line of business of the
defendant would infringe the right of the plaintiff.
According to the respondent, the word DZine is a common and universally corrupted and
abbreviated form of the mark and word design, which is used in SMS messages sent
through mobile phones, where abbreviated words are very commonly used throughout.
It was further pointed out that the word and mark Dzine, the use of which is sought to be
objected to by the plaintiff, is actually a common and universally corrupted and abbreviated
use of the mark and work design, and this was evident from the fact that in an online search
of the website Google, it was found that there were in all 1,90,000 search options available
on and over the said word Dzine alone, and as such the plaintiff does not have the sole
and exclusive corporate and domain right over the said common mark and word.

The case of (Heinz Italia v. Dabur India Ltd[12].) was referred which had an occasion to deal
with a similar question between Glucon-D and Glucose-D. In fact, in that case though two
courts had declined to grant ad-interim injunction it observed that principle of similarity
cannot be strictly applied; Phonetic similarity cannot be ignored; prior user must be proved
and dishonest intention must be there and injunction was granted.
The Honble Madras high court held that in this case, there is phonetic similarity. Dzine is
not a generic word, it cannot be said to carry distinctive reference to a particular trade, thus
losing its distinctiveness and falling into common use and (Sic) publici juris. The fact, one is
Dzine caf and the other is Dzine garage, hardly helps since even the defendants
accepts that the business is the same, so the clientele is likely to be confused and to think
both are the same. The prior user is established. There was no specific denial of the charge
that the defendant is taking advantage of the plaintiffs mark.

Ozone Spa Pvt. Ltd vs. M/S. Ozone Club[12] (2010)


Facts of the case:

The plaintiffs runs a health center and Spa under the brand Ozone.
The plaintiff came to know that the defendant also runs a business related to health
services with the identical brand name Ozone.
It was established that the present case is a case of triple identity where the mark is
identical, the business/services are also identical i.e. health Spa and fitness and related
services and class of customers are also the same and, therefore, the defendant cannot be
allowed to ride piggy back on the goodwill and reputation earned by the plaintiff.
Therefore, the defendant was restrained by the honble court from using the mark/name
Ozone in relation to the services of Fitness Centre, Spa, Health Club and Gymnastic except
the services of swimming pool provided by the defendant under the name Ozone.

Tea Board vs. I.T.C. Limited[13] (2011)


In this case the plaintiff had registered geographical indications DARJEELING, under the
Trade Marks Act, 1999 as certification mark in its name for DARJEELING tea. It came to the
knowledge of the plaintiff that the defendant was carrying on its business at the hotel
situated in Kolkata by using the name DARJEELING LOUNGE where beverages were sold.
The defendant contended that the lounge which he is using as the impugned mark
DARJEELING LOUNGE catered to a wide range of beverages and thus such use in connection
with beverages other than Darjeeling teas is an act of unfair competition inasmuch as it
discredits the famous Darjeeling tea and misleads the defendants patrons as to the nature
of the beverages served there.
It was concluded that the appellant has registered its name for the word mark DARJEELING
(DEVICE of WOMEN) under the goods and description tea and such registration has been
made under Chapter IX relating to Certification Trade Marks under the Act and the plaintiff is
not a trader dealing with tea but it has the right of certification in India and other jurisdiction

governing the use of the geographical indication DARJEELING, by its LOGO which
guarantees that the tea sold under the same is produced in the defined region and district of
Darjeeling and meets the criteria laid down by the plaintiff.
Therefore, the question that arises for determination is whether by virtue of such
registration, the Plaintiff can restrain the Defendant who is carrying on a business of
hospitality from naming one of its lounges in the hotel as DARJEELING LOUNGE where
among the beverages and foods served to its customers, tea is also one of the items which
is not necessarily restricted to the one grown only in the district of Darjeeling.
The grievance of the Plaintiff is that because of the name of the lounge containing
DARJEELING, its Trademark, the people at large will be under an impression that the tea that
is served in the said lounge is grown in the region of Darjeeling although according to the
defendant, tea of other regions is also served in the said lounge.
The facts of the case were analyzed in the light of the provisions of the Trade Marks ct, 1999
and theIndications of Goods (Registration and Protection) Act, 1999. In Chapter IX of
the Trade Marks Act by virtue of registered certifications, the holder is entitled to protect its
right conferred under Section78 of the Act as provided in Section 75 of the said Act.
It was held that the protection given in respect of certification trademarks related to any
goods or services in respect of which it was registered and plaintiff had not registered its
name as holder of mark DARJEELING in respect of hotel business but for purpose of
certification of tea as one grown in Darjeeling district where benefit of Sections 28 and 29 of
Act was not available. Therefore, plaintiff had prima facie failed to prove that there was any
violation of registered certification trademark at instance of defendant in terms of Section 75
of Act or under G.I. Act. Additionally, it was never intention of defendant to pass off right of
certification conferred in favour of plaintiff as its own right by naming one of its lounges as
DARJEELING LOUNGE so, even in respect of allegation of passing off, no prima facie case was
established.

Conclusion
Service marks are also considered as a form of (intellectual) property. Hence service marks
could be sold, purchased, assigned, and licensed in the lines of any other property. The very
different feature of the service marks is that it is a symbol of goodwill. So the transfer of
service marks requires much care and caution than that of the transfer of other properties. It
is a very valuable asset in the field of business since it involves goodwill, reputation and the
market. Reputation and goodwill could be earned only through hard work for years. Here we
can appreciate the importance of service marks by remembering the words this hardearned right is as important as money in the bank.Hence people are willing to invest large
sums of money to acquire, assign or license service marks. Since protection of service marks
is a new entrant in the field of Indian legal regime, protection of service marks must be as

safeguarded by the courts and the law in the interest of the business world as well as the
consumer.
With the protection of service marks under Indian Intellectual Property Law in 2003, much of
the litigations related to service marks will not go in vain and the owners of such service
marks will be better protected.

Bibliography
Primary Sources:

Bare Acts:

The Indian Trademarks Act, 1999


The Trademarks Rules, 2002

Books:

Ahuja V.K., Laws Relating to Intellectual Property Rights, New Delhi, Lexis Nexis
(2007)
Bansal Ashwani Kumar, Law of Trademarks in India, New Delhi, Institute of
Constitutional & Parliamentary Studies and Centre for Law, Intellectual Property and
Trade (3rd edition)(2009)
Narayana P.S., Intellectual Property Law, New Delhi, Universal Law Publications (8th
Edn.)(2011)

Secondary Sources:

www.ipit-update.com/service33.htm
www.indiankanoon.com
www.juris.nic.in
www.tradeandlaw.com/ServiceMark.html
www.indiatrademarkregistration.com/service-mark-registration-india/

[1] WIPO on Consumer Protection, 1983,p.16.


[2] Marks are often referred to according to the nature of the sign. A word mark is a registration of a word above
(irrespective of its depiction). A figurative mark is usually made up of a visual image, such as a picture. Marks which
have both figurative and verbal elements are commonly referred to as Composite marks.
[3] Goodwill is a form of intangible property that is easy to describe but difficult to define. It is the ineffable thing,
the magnetism that leads to customers to return to the same services, or buy the same brand.
[4] Rediff Communications vs. Cyberbooth 2000 PTC 209 (Bom)
[5] 2007 (4) BomCR 48, 2007 (109) Bom L R 911
[6] 2007(35)PTC474(Mad)
[7] Ibid. 5
[8] Ibid. 6
[9] Ibid. 5
[10] Ibid. 5
[11] 2008 (36) PTC 614 Mad

[12] 2010 (42) PTC 469 (Delhi)


[13] 2011(48)PTC169(Cal)

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