Trade mark law in India

TABLE OF CONTENTS

List of Abbreviations

Introduction

Trade Mark- Conception and Definition

Evolution

Indian Sub-context

Trade Marks Act, 1999

Trade Mark Comparison in India

Essentials

Remedy Protection Under Indian Law

Conclusion

Bibliography

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Trade mark law in India

LIST OF ABBREVIATIONS
AIR

All India Reporter

Cal

Calcutta/Kolkata

Co.

Company

edn.

Edition

Id./Ibid

Ibidem

Ltd.

Limited

p./ pp.

Page/ Pages

para.

Paragraph

Rep.

Reprint

Supp

Supplement

vs./v.

Versus

Trade mark law in India

Introduction
A trade mark is a sign that individualises the goods or services of a given enterprise and
distinguishes them from its competitors.1
To the common man the concept of trademark is a recent phenomenon. But contrary to this
perception, they are of ancient origin. They existed even as long as 3000 years ago when
Indian craftsmen used to engrave their signatures on their artistic creations before sending
them to Iran. Later on, over 100 different Roman pottery marks were in use, including the
Fortis brand that became so famous that it was copied and counterfeited. With the flourishing
trade in the middle-ages the use of trademarks increased. And now with the effect of
globalisation the awareness and importance of trademarks knows no bounds. It is due to the
increased competitiveness of the companies operating in different countries of the world that
the trade marks has gained value more than any other form of intellectual property.
The use of modern trade mark as a distinctive sign to indicate the origin or source of the
product, carrying with it an association of high quality, goes back to the eighteenth century
England, as in the case of cutlery trade. The real boost to trade mark came with Unilever. It
marketed its soap under the brand Sunlight, emphasising not the product as such but the
brightness that its use will bring to the clothes cleaned with it. The similarity of the products
in the same market has necessitated the marking of goods by a symbol, which could
distinguish ones products from similar goods made by others.
In the language of the law, brand names are known as trademarks. Several products, of the
same category or of different categories, can be marketed under one brand name. In this,
study we will be dealing with the basic concept of trademark in India so as to move ahead
and have the grasp of the structure and function of the Trademark law in India including its
evolution, and a comparison with other nations.
Trademark Concept and Definition
A trademark is any sign that individualises the goods of a given enterprise and distinguishes
them from goods of its competitors. 2 Marketing of a particular good or service by the
1

World Intellectual Property Organization.

INTRODUCTION TO INTELLECTUAL PROPERTY-THEORY AND PRACTICE, 1997, Kluwer Law
International, p.184.
2

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Trade mark law in India

producer is much better off as by trademark because recognition becomes easier and quality
is assured. The owner of the mark can prevent the use of similar or identical signs by
competitors if such marks can lead to confusion. 3 By this way similar low quality substitutes
will be prevented from replacing good quality ones.
The Trade Marks Act, 1999, s. 2 (zb) defines trade mark as 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 colours.
Also, s. 2(m) defines mark as including a device, brand, heading, label, ticket, name,
signature, word, letter, numeral, shape of goods, packaging or combination of colours or any
combination thereof; For instance Ford - named after Henry Ford, is a name, then IBM an
abbreviation, Apple for computers - is a word, etc. They may also be figurative elements like
that of the Shell oil company.
A trademark is a word or symbol or combination thereof used by manufacturer or vendor in
connection with a product or service. 4 The distinctiveness is maintained as well as sales are
much smoother as people are able to identify with that particular commodity or service.
The Trade Mark Act, 1999 defines well Known Trade mark as a mark in relation to any
goods and services which has become so to the substantial segment 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 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.5
Trademark is one of the areas of intellectual property and its purpose is to protect the mark of
the product or that of a service. Hence a trademark is defined as a mark capable of being
represented graphically and which is capable of distinguishing the goods and services of one
person from those of others and may include shape of goods, their packaging and
combination of colours ,they include a device ,brand, heading ,label ticket ,name ,signature,
3

Article 16, Trade Related Aspects on Intellectual Property Rights(TRIPS).

Earnst Graft, Isreal Sam Sagrey, and Isreal Saguy, FOOD PRODUCT DEVELOPMENT, 1991, Springer, p.
367
5
P.K. Vasudeva, WORLD TRADE ORGANIZATION: IMPLICATIONS FOR INDIAN ECONOMY, 2005, p.
169
4

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Trade mark law in India

word ,letter ,numeral ,shape of goods, packaging or combination of colours or any

combination thereof.6 Registration of trademark is not mandatory but in the present day
scenario there is increasing infringement and a lot of cases are challenged so it is advisable to
register Trademarks. There is also a need for trademarks to be globally protected. This is said
because most have regional or local name brands and most constantly push these weak names
while struggling to get global clearance.
A trademark can thus be called a device that gives distinctiveness and a mode of
identification to a particular product or service. An increasing number of countries also allow
for the registration of less traditional forms of trademarks such as single colours, three
dimensional signs (shapes of product packaging), audible signs (sounds) or olfactory signs
(smell).7
It is said that a trademark is a valuable business asset and a marketing tool which could help
in financing of the business in a way. A brand is always a trademark but a trademark is not
always a brand.8 This is quoted because there is often confusion between trademarks and
brands, a brand is simply a name, logo or symbol whereas a trademark is a distinctive sign or
indicator of some kind in a business organisation, because of these trademarks has a wider
connotation than brands. A trademark may also function to symbolize or guarantee the quality
of goods which bear the trademark.9 People are often induced to buy a particular product due
to its distinctive trademark that denotes quality .Trademark symbolises the value or goodwill
associated with the goods and which can be assessed by the extent to its perception in the
public mind with regards to its quality and specific source.10
Trademarks are generally placed in any manner on the goods, their containers, and displays
or on tags or labels attached to the goods or service. 11 The immense economic value a
successful trademark has is the primary reason for their protection under the law. Trade mark
owners by powerful advertising campaigns in collaboration with licensees create a brand
loyalty and establish product differentiation.
6

http://www.businessgyan.com/content/view/623/220/ article written by Santhosh Vikram Singh as on 15th

Nov,2003,accessed on 4th March, 2010.
7
Making a Mark: An Introduction to Trademarks for Small and Medium-sized Enterprises by WIPO, 2003 edn.,
p. 3.
8
Ronald Hildret, Siegrun Kane, TRADEMARK LAW, 4th edn., 2002, p.2.
9
Carl W Battle, LEGAL FORMS FOR EVERYONE, 5th edn., 2006, p. 143.
10
Vinod Sople, MANAGING INTELLECTUAL PROPERTY, 2006, p. 104.
11
Carl W Battle, LEGAL FORMS FOR EVERYONE, 5th edn., 2006, p. 145.

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This results in establishing an enviable goodwill and market power so as to nip competition
in the bud and place a barrier to the entry of new firms in that particular field of activity.
Kinds
If a substantial segment of public associates a trade mark with a particular class of goods and
services, and if this trade mark is used for other goods or services, and the public is inclined
to associate the new goods/services with the earlier goods/services, then the mark is a well
known trade mark. If the proprietor of a trade mark is an association of persons, who do not
make a partnership within the meaning of the Indian Partnership Act, 1932, the trade mark is
called a collective mark. A special class of trade marks is termed as certification trade
marks. These trade marks do not indicate the origin of the goods, but are certified by the
proprietor of the mark as conforming to certain characteristics, like quality, ingredients,
geographical origin etc. Agmark used for food items in India is a certification mark. A trade
mark is a sign used on, or in connection with the marketing of goods. Saying that the sign is
used on the goods means that it may appear not only on the goods themselves but also on the
container or wrapper of the goods. Saying that the sign is used in connection with the
marketing of the goods refers mainly to the appearance of the sign in advertisements (in
newspaper, on television, etc.) or in the windows of the shops in which the goods are sold.
Where a trade mark is used in connection with services, it may be called service mark, e.g.
service marks used by hotels, restaurants, airlines, tourist agencies.
Evolution
From ancient times human beings have been under the process of creating and innovating
things, during pre-historic period man had made stone, jewellery, hunting materials, vessels
etc, when spirituality started to sprout up he made figurines of gods and goddesses.
Originally, marks were placed on objects to identify ownership and to deter would be
thieves.12 By this way the ancient people tried to control low quality goods, and as the maker
of the product was identified automatically the infringers were punished.
The more a trademark came to be known the more it inspired confidence in the goods and
services to potential clients.13 When a mark was placed it meant that any other third party

12

Sruthi Srinivasan, Evolution of Trademark Law in India, http://www.altacit.com/pdf/evolutionoftrademark

lawsin _india.pdf, as accessed on 3rd March, 2010.
13
Siegrun D. Kane, TRADEMARK LAW, A PRACTITIONER GUIDE, 1989, Supplement, pp. 9-10.

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Trade mark law in India

other than the manufacturer did not have any right over it, in a large way it helped deter
people with vested interest. In the middle ages two basic kinds of marks could be found:o Merchants Mark
o Production Mark
The Merchants Mark indicated ownership whereas the Production mark indicated the Origin.
Production marks were used by guilds to guarantee quality and to control entry to particular
trade.14 People also started engraving their names in ships this was the first widely recognised
method of using trademarks, where in case of ship wreckage, identification would be
possible. The other people who started using trademarks were people doing business or in
guilds started asserting it as a mark on their goods. This made the manufacturer responsible
for the quality of the goods that are being produced and to retain their customers.
Nowadays it is up to a seller to use or not use a mark. Modern marks do not aim at
identifying ownership as was the case with the proprietary marks of the Middle Ages.
Modern marks are an asset for the producer whereas in earlier times the trade marks were a
liability.15 Many of the laws like the aforesaid law of bread and beer assizes fought to bring
about a mode of standardisation as well as protect the consumers so that they do not get
cheated with adulterated goods. A specific mode of measurement was fixed.
Indian Sub-context
While some form of proprietary protection for marks in India dates back several millennia,
Indias statutory Trademarks Law dates back to 1860.16 Prior to 1940 there was no official
trademark Law in India. 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 adjucated by obtaining a declaration as to the ownership of a
trademark under Indian Registration Act 1908.
To overcome the aforesaid difficulties the Indian Trademarks Act was passed in 1940, this
corresponded with the English Trademarks Act. After this there was an increasing need for
more protection of Trademarks as there was a major growth in Trade and Commerce. 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. This Law also enables the registration of trademarks so
that the proprietor of the trademark gets legal right to the exclusive use of the trademark. 17
14

Ashwani K.R. Bansal, LAW OF TRADEMARKS IN INDIA, 2001, p. 21.

UNCTAD, on trademark, p. 2.
16
Paul Goldstein, INTELLECTUAL PROPERTY IN ASIA, 2009, p. 73.
17
P.K. Jalan, INDUSTRIAL SECTAR REFORMS IN GLOBALISATION ERA, 2004, p. 33.
15

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The objective of this act was easy registration and better protection of trademarks and to
prevent fraud.
The reappellation of the Trademarks and Merchandise Act gave rise to the Trademark Act
1999; this was done by the Government of India so that the Indian Trademark Law is in
compliance with the TRIPS obligation on the recommendation of the World Trade
Organisation. The object of the 1999 Act is to confer the protection to the user of the.
Trade Mark Act, 1999
Objects and Reasons
The Trade and Merchandise Marks Act, 1958 has served its purpose over the last two
decades. It was felt that a comprehensive review of the existing law is required in order to
provide a better coverage in the light of developments in trading and commercial practices,
increasing globalisation, need to encourage investment flows and transfer of technology, need
for simplification and harmonisation of law and to give importance to judicial decisions.18
To achieve all the above discussed purposes the 1999 Act came up with the following
objectives19

Providing for registration of trademark for services, in addition to goods.

Providing for omission of provisions for defensive registration of trademarks.
Amplification of factors to be considered for defining a well-known trademark.
Doing away with the system of maintaining registration of trademarks with different
legal rights, rather providing with simplified procedures for registration with equal

rights.
Providing an Appellate Board for speedy disposal of appeals and rectification
applications which lie on a usual course, before High Courts.
Final authority relating to certification trademark in the hands of Registrar instead of
Central Government.
Extension of application of convention to include inter-governmental organisations
and other countries.
Other provisions relating to amendment in the previous Act, like change of
definitions, powers of courts, offences, renewal, etc.
Thus, with this objective and purpose the Trade Marks Act, 1999 has been brought into force
with effect from 15th September, 2003.

18
19

B. L. Wadhera, LAW RELATION TO INTELLECTUAL PROPERTY, 4th edn., 2009, p.131.

Ibid.

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Trade mark law in India

Trademark Comparison in India

Trademark recognition in Indian context is a complex phenomenon, where there is no single
common language, large percentage of population is illiterate and a small fraction of people
know English. In such situations application of English Trademark law is illogical and a near
impossibility. Thus, in order to make Trademark law applicable in India law has to adapt
according to Indian scenario.
While examining such cases in India, it has to be kept in mind that the purchaser of goods
may not have absolutely any knowledge of English or the language in which the trademark is
made. To such a person slight difference in the letters of the words might sound phonetically
same. Thus, in cases of passing of the principle to be adopted is that that whether there has
been a misrepresentation made by the defendant of such nature as to cause an ordinary
consumer to confuse one product for another due to similarity of maker and other
surrounding factors.20
Essentials
In the light of afore-going discussion it is very clear that the kind of trademark to be granted
in India is very tricky issue to deal with. There must be some set standard whicha trademark
must meet in order to be registered for its protection under the law. A few important essentials
of Trademark are:
Distinctiveness
In Imperial Tobacco v. Registrar, Trade Marks21 the court discussed the meaning and scope of
the word distinctiveness and held it to be some quality in trademark which earmarked the
goods as distinct from other product or such goods.
It may be class dependant and what is distinct for one class may not be so for another. Also,
this distinctiveness means that the mark or the get up is distinct in itself from others and no
one can claim it. This is inherent distinctiveness while a distinctiveness acquired through use
may be known as acquired distinctiveness.22
Other essentials
Besides distinctiveness there are other qualities upon which a trademark is based. A
trademark should preferable an invented word. It should not be deceptive in nature and thus,
20

B. L. Wadhera, LAW RELATION TO INTELLECTUAL PROPERTY, 4th edn., 2009, p.133.

AIR 1977 Cal 413.
22
B. L. Wadhera, LAW RELATION TO INTELLECTUAL PROPERTY, 4th edn., 2009, pp..135-6.
21

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Trade mark law in India

must not use the identity of another product to use its goodwill. It should be easy, spelt
correctly, legible, short and appealing to eyes and ears. But ultimately the most essential
requirement is that it must meet the requirements of registration.23
Remedy Protection under Indian Law
The law under which a trademark is registered is provided for protection of the trademark.
Thus, whenever there is an infringement of a trademark this law must provide for some
remedy to the person whose right has been infringed over a registered trademark. The Indian
Law, that is, the Trade Marks Act, 1999 provides for three type of remedies:
Civil Remedies
When instances of infringement or passing off occur, the court of competent jurisdiction
(court not lower than District Court) can be moved for grant of interlocutory injunction,
damages and accounts of profits.24
Criminal Proceedings
Under Chapter XII of the Act it is provided for the offences, penalties and other procedures
relating to infringement. A complaint may be made against a person causing infringement.
Both the actions, under the Civil Law and criminal law proceedings can be initiated
simultaneously.
Administrative Remedies
Opposing the registration of a deceptively similar trademark when the Trademark registry is
in the process of considering the grant of a trademark can protect trademark. 25 The registry
can also be moved for removal of a deceptively similar trademark when registered.26
Conclusion
Intellectual Property reflects the idea that its subject matter is the product of the mind or the
intellect. As its the product of a creative and artistic mind it is bound to changes. It can be
sold, bought, bequeathed and owned. As all this can be done there are bound to be issues
related that have to be dealt. Trademarks and Patents are very important aspects of
Intellectual Property. Trademark Protection has become important in present day competitive
world because, every producer of a good or service will want his mark to be unique, eye
23

Chapter II of the Act deals with conditions of registration while Chapter III deals with the procedure and
duration of registration.
24
Section 134 and 135, Trade Marks Act, 1999.
25
Section 21, Trade Marks Act, 1999.
26
Section 25, Trade Marks Act, 1999.

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Trade mark law in India

catching as well as it should be easily distinguishable from others. Creating a mark like this is
quite difficult and after all this when infringing of the mark takes place it will case utmost
difficulty to the manufacturer.
With the ever expanding scope of Intellectual Property it is inevitable that the scope of
Trademarks is going to increase. From the very fact that the field of trademarks is going to
open up to new spheres like sound, shape and smell, the extent of development of law can be
imagined. The law relating to domain names is already reaching heights and covering the
areas which no one had thought it would reach.
Thus in the light of the ever expanding scope of Trade Mark Law in India I would like to
conclude with famous American historian and educator Daniel J Boorsteins quote:
An image is simply not a trademark, a design, a slogan or an easily remembered picture. It
is a studiously crafted personality profile of an individual, institution corporation, product or
service.

BIBLIOGRAPHY
Books

Ashwani K.R. Bansal, LAW OF TRADEMARKS IN INDIA, 2001.

B. L. Wadhera, LAW RELATION TO INTELLECTUAL PROPERTY, 4th edn., 2009.
Carl W Battle, LEGAL FORMS FOR EVERYONE, 5th edn., 2006.
Earnst Graft, Isreal Sam Sagrey, and Isreal Saguy, FOOD PRODUCT
DEVELOPMENT, 1991, Springer.
INTRODUCTION TO INTELLECTUAL PROPERTY-THEORY AND PRACTICE,
1997, Kluwer Law International.
P.K. Vasudeva, WORLD TRADE ORGANIZATION: IMPLICATIONS FOR
INDIAN ECONOMY, 2005.
Paul Goldstein, INTELLECTUAL PROPERTY IN ASIA, 2009.
P.K. Jalan, INDUSTRIAL SECTAR REFORMS IN GLOBALISATION ERA, 2004.
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Trade mark law in India

Ronald Hildret, Siegrun Kane, TRADEMARK LAW, 4th edn., 2002.

Siegrun D. Kane, TRADEMARK LAW, A PRACTITIONER GUIDE, 1989,
Supplement, pp. 9-10.
Vinod Sople, MANAGING INTELLECTUAL PROPERTY, 2006.

Table of Cases
Imperial Tobacco v. Registrar, Trade Marks

AIR 1977 Cal 413

Miscellaneous Sources

World Intellectual Property Organization.

Trade Related Aspects on Intellectual Property Rights(TRIPS).
Making a Mark: An Introduction to Trademarks for Small and Medium-sized
Enterprises by WIPO, 2003 edn., p. 3.
UNCTAD on trademark, p. 2.

Internet Sources

http://www.businessgyan.com/content/view/623/220/
article
written
by
SanthoshVikram Singh as on 15th Nov,2003,accessed on 4th March, 2010.
Sruthi
Srinivasan,
Evolution
of
Trademark
Law
in
India,
http://www.altacit.com/pdf/evolutionoftrademarklawsin _india.pdf , as accessed on 3rd
March, 2010.

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