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A trade mark (popularly known as brand
name) in laymans language is a visual symbol
which may be a word signature, name, device,
label, numerals or combination of colours
used by one undertaking on goods or services
or other articles of commerce to distinguish it
from other similar goods or services
originating from a different undertaking.


 

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t identifies the actual physical origin of
goods and services. The brand itself is the
seal of authenticity.
t guarantees the identity of the origin of
goods and services.
t stimulates further purchase.
t serves as a badge of loyalty and
affiliation.
t may enable consumer to make a life
style or fashion statement.
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aris Convention for rotection of ndustrial

roperty, March 20, 1883.
Solved time lag problems in cross-country
filing. Trademarks, atents, Designs (nd..).
Started with 11 countries.
7 amendments and revisions, last one Sept 28,
79.
173 countries on last count, including ndia.
Administered by W since 1974.
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erne Convention for rotection of Literary

&Artistic Works, 1886.

Recognized copyright. nfluenced by French

Right of Author and English Copyright.

No need for cross country filing.

8 amendments and revisions, last one 1979.

164 signatories on last count.

Administered by W since 1974.


 
aris & erne merge in 1893.

United nternational ureaux for the

rotection of ntellectual roperty .

1960 moves to Geneva.

1967 rechristens itself World ntellectual

roperty rganization.

1974 becomes part of UN.

184 signatories on last count.

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rganized, non-negotiable, one country one

vote system in W .

Unable to face new challenges.

olitical motives shift dispute resolution to

WT .

oth still work together.

New resolution underway in W .


 

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The ndian law of trademarks is enshrined
the new Trade Marks Act, 1999.
t came into force with effect from
September 15, 2003.
The old Trade and Merchandise Marks
Act, 1958 was repealed at the same time.
The new Trademarks Act of 1999 is in line
with the WT recommendations and is in
conformity with the TRS Agreement to
which ndia is a signatory.

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Trademark Act, 1999 and rules there under.
nternational multi-lateral convention.
National bi-lateral treaty.
Regional treaty.
Decision of the courts.
ffice practice and rulings.
Decision of intellectual property affiliate
board.
Text books written by academicians and
professional experts.

 

The legal requirements to register a
Trademark under the Act are:
Should be capable of distinguishing goods
or services.
Should not be similar to an existing mark.
Should not expressly prohibited under the
Trademark Act.
Should be capable of being represented
graphically.
Should indicate a connection with goods or
services and some person has the right to
use it.
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dentifies goods or services and its origin.

Guarantees its unchanged quality.

Advertises the goods/services.

Creates an image for goods/services.

 

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The registered proprietor.

The Government.

The legal professionals.

The purchasers and consumers.




 
Confers the owner the exclusive right to use a
registered trademark.

ndicate ownership (by using symbol, ).

Seek relief of infringement.

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Name of a person.
nvented or any arbitrary dictionary word(s).
Letters or numerals or any combination.
Devices.
Combination of colours or single colour in
combination with word or device.
Shape of goods or the packaging.
Marks constituting a 3-dimensional sign.
Sound marks represented in conventional notation
or words.
 




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Any person claiming to be the
proprietor of a trademark used, or
proposed to be used by him.
Application should contain:
Trademark.
Goods/Services.
Name and address of applicant and agent
(if any), with power of attorney.
eriod of use of mark and signature.
Application should be in English or
Hindi filed at appropriate office.
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nly the proprietor of a trademark whose
trademark has been registered in ndia can use
the symbol in ndia.
Using the symbol unless your mark has been
registered in ndia is unlawful.


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Using this symbol with your trademark simply
implies that you claim to be the proprietor of
the trademark.
There is no prohibition on the use of the
symbol in ndia.
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* 
 
Those which are affixed to identify goods.


* 
 
They are used to identify the services of an entity (e.g.,
trademark for a broadcasting service, retails outlet, etc.).
They are used in advertising for services.

+* 
 
They are used to distinguish goods/services in connection
with which they are used in the course of trade.
The goods/services are certified by the proprietor with
regard to their origin, material, the method of manufacture,
the quality or other specific features.


* 
  
They are registered in the name of groups, associations or
other organizations for the use of members of the group
in their commercial activities to indicate their membership
of the group.
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The register of trade mark is currently
maintained in electronic form. t
contains, apart from the trademark:
The class and goods/ services in respect of
which it is registered including particulars
affecting the scope of registration of rights
conferred.
The address of the proprietors.
articulars of trade or other description of
the proprietor.
The convention application date (if
applicable).
Where a trade mark has been registered.
m




Corrections:
The trade mark applied for should not be
substantially altered affecting its identity.
Subject to this, changes are permissible
according to rules detailed in the
subordinate legislation.
Removal:
A Trademark can be removed on application
to the Registrar on prescribed form.
The Registrar also can issue Notice for
removal of a registered trade mark.
m






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Term of registration of a trademark

is 10 years.
This may be renewed for a further
period of 10 years on payment of
prescribed renewal fees.
Non-usage of a registered trademark
for a continuous period of 5 years is
a ground for cancellation of
registration.
m



The ndian trademark law provides for
invalidation proceedings and you have
the right to initiate a cancellation action
should a competitor have registered
your trademark in ndia.
You also have the right to initiate either
a civil or a criminal action against any
party that is violating your mark in
ndia.





The penalty for selling or providing

services using a false trademark is:
A minimum of six months and
maximum of three years and,
A fine not less than Rupees fifty
thousand but which may extend to
Rupees 2 lakh.
m

 
Remedies for infringement and passing off of
trademark in ndia:
An action for infringement in case of a registered
trademark is a statutory remedy.
An action for passing off in the case of an unregistered
trademark is a common law remedy.

n both the cases, the court may:

Grant relief of injunction and/or
Monetary compensation for damages for loss of
business and/or
Confiscation/destruction of infringing labels and tax.

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Glaxo Smith Kline harmaceuticals Ltd. v.
Unitech harmaceuticals vt. Ltd

- Trademark FEXM that is deceptively similar to

the plaintiff s mark HEXN

N.R. Dongare v. Whirlpool Corp. Ltd

- Use of Trademark Whirlpool.





 

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

- Using the trade name H NDA for ressure

Cookers which they are manufacturing in ndia.
m

 

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Many foreign and domestic Applicants have been
able to successfully register their marks in ndia.

ndia recognizes the system of multi-class

applications and follows the nternational
Classification.

ndian trademark law allows filing of a trademark

application in ndia on an intent-to-use basis.

However, the registered proprietor of the

trademark in ndia has to commence use of the
mark within 5 years and 3 months of the date of
registration.



 

n addition to this, the defendant Qingdao
company used the English name Qingdao
Starbucks Coffee on its napkins, menus and
business cards

Within its shop, the defendant used Starbucks

trademarks such as frappucino and Yukon blend,
and it sold coffee beans clearly labelled as
Starbucks Coffee

The beans were packaged in bags identical to

those used by Starbucks in its legitimate shops



 

Starbucks Corporation has been in a long running
dispute with coffee shops in Shanghai and Qingdao
over the use of the Starbucks trademark in China.
Starbucks has prevailed in both actions

n November 16, 2005, the Qingdao court ruled in

favor of Starbucks and it recently published that
decision (in Chinese only) on its intellectual property
law website

The defendant coffee shop started business in Qingdao

on ctober 23, 2003 under the name 
-
+
  -  , which
means Qingdao Xingbake Coffee Shop Company
Limited



 

Qingdao company's logo is a round circle with stars just like
Starbucks, but it replaced the Starbucks mermaid with a
coffee cup and eliminated the company name

Starbucks filed suit against the Qingdao company claiming it

was infringing on its xingbake and English language
trademarks. The Qingdao defendant asserted the following
defenses:
Starbucks registered xingbake as its trademark in China, it
never actually used the term. t uses only its English
language trademarks.
A company is free to use its legal business name in
conducting its business activities, so long as it does not
infringe on someone else's trademark. The relevant Chinese
authorities approved the Qingdao company using the
xingbake business name and since Starbucks does not
actually use that name, defendant has the right to use it in
its normal business activities.



 




The Qingdao court quite properly summarily rejected the

argument that Starbucks does not own its own English
language marks and rejected both defenses regarding the
xingbake name as well.
The Court found that Starbucks had in fact used the
Chinese term xingbake in identifying its business in China.
The court held that the Qingdao defendant was not using
xingbake as a business name; it was using xingbake as a
trademark to identify its business as a coffee shop.



 




The court therefore held in favor of Starbucks, and issued the

following order:
Defendant must remove the term xingbake from its legal
name;
Defendant must cease using any Starbucks trademarks,
including the Chinese term xingbake;
Defendant must cease using the green circle logo as it is
confusingly similar to Starbucks' logo;
The defendant is ordered to pay economic damages to
Starbucks in the amount of $62,000.



 

'"  
The defendant in this case is also a foreign owned
company.
This case was a dispute between two foreign entities, not a
dispute between a U.S. company and a local Chinese
company.
Much copying in China is organized and carried out by
overseas Chinese based in Taiwan, Hong Kong, Canada, or
the United States. This increases the complexity of dealing
with intellectual property () infringement in China.
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