Trade Mark Act, 1999Questions & Answers
The newly enacted Act has some features not present in the 1958 Act and these are :-
1. Registration of service marks, collective marks and certification trademarks.
2. Increasing the period of registration and renewal from 7 years to 10 years.
3. Allowing filing of single application for registration in more than one class.
4. Enhanced punishment for offences related to trademarks.
5. Exhaustive definitions for terms frequently used.
6. Simplified procedure for registration of registered users and enlarged scope of permitted use.
7. Constitution of an Appellate Board for speedy disposal of appeals and rectification applications which at present lie before High Court.
According to section 2(1)(zb) "trade mark" means :
A mark :
i. capable of being represented graphically and which is capable of distinguishing the goods or services of one person from choose of others
ii. and may include shape of goods, their packaging and combination of colours, and
iii. used to indicate to a connection between the goods or services and some person having the right in the course of trade in relation to goods or services, either as proprietor or permitted user, and includes a certification trade mark or collective mark
Thus, a Trade Mark may be defined as a visual symbol or representation or any specific identification by way of any identification mark, word or label so as to distinguish the goods or services from the other goods and services. It may include shape of goods, their packaging and combination of colors. It must be used in relation to goods or services. A Trade Mark thus indicates to public that the goods or services carrying a specific trademark are being sold by a particular businessman and that person has an exclusive right to sell his products under that Trade Mark.
The definition of Trade Mark under the Trade Mark Act is not very exhaustive. Various judicial decisions have elaborated upon the term 'Trade Mark' as follows :In Laxmikant V. Patel vs Chetan Bhai Shah, 2002 PTC 126 SC, the Supreme Court held that ' Mark ' includes name or word also among the other things as defined in the Act and Name may also include an abbreviation even.
"certification trade mark" means a mark capable of distinguishing the goods or service which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of service
The term 'Collective Mark' has been for the first time defined by the 1999 Act and S. 2(1)(g) defines that -
collective mark" means a trade mark distinguishing the goods or services of members of an association of persons (not being a partnership) which is the proprietor of the mark from those of others;
In order to bring it within the scope of statutory definition, a trademark should satisfy the following essential requirements :
(a) It must be a mark.
As per Section 2(m) "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;
(b) It must be used or proposed to be used in relation to goods which are subjects of trade or manufacture or in relation to services.[Sec 2(1)(zb)]
(c) Any reference to the use of a mark shall be construed as a reference to the use of printed or other visual representation of a mark.
(d) A trademark should be present at the time of sales of goods and not when the goods are put to use.
(e) It gives distinctiveness to 'goods and services'.
Distinctiveness is the essential feature of the Trademark. Distinctive character means a characteristic of goods or services which is capable of distinguishing them from the goods or services of another person.
It is also essential that Trade Mark is used in the course of business or trade. In the Case of Santosh Devi vs Ramesh Kumar, 2007 (34) PTC 219 (Raj), the HC held that where a business has been closed for a long time and there is no loss to the goodwill or reputation of the business, a new entity using the same old name can not be debarred to do the business in the old trade name.
According to section 2(h) the term "deceptively similar" means :
A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.
Nature of Deception or Confusion :
Deception or confusion may arise in the following ways :
(i) Deception or confusion as to goods : A person may buy the goods seeing one mark thinking that it is the brand which is in his mind but in fact is not the same. This is the most common type of confusion or deception.
(ii) Deception or confusion as to trade origin : A person at a mark may buy goods thinking that it is coming from the same source as some other goods bearing a similar mark which he is familiar with.
(iii) Deception or confusion as to trade connection : A person looking at the mark may not think that it is the same as one with a different brand in his mind but the similarity may make him believe that the two are in some way or other connected with each other.
(a) The main idea or salient features of the mark must be considered.
(b) Marks must be looked at from the view and first impression of a person of average intelligence and imperfect recollection.
(c) Words must be compared as a whole : When comparing two words it is not right to take a part of word and to compare it with a part of the other word; One word must be considered as a whole and compared with the other word as a whole. Marks must be compared as whole, microscopic examination being impermissible.
In Coca-Cola Co. of Canada v. Pepsi Cola Co. of Canada Ltd., 1942-59 RPC 127, it was found that cola was in common use in Canada for naming the beverages. The distinguishing feature of the mark cocacola was coca and not cola. For the same reason the distinguishing feature of the mark Pepsi Cola was Pepsi and not cola. It was not likely that any one would confuse the word Pepsi with coca.
(d) Similarity in structure,sound and idea : Overall structural(appearance) and phonetic (sound) similarity is relevant for consideration. Further, it is necessary to take into account the meanings conveyed by the words or the ideas suggested by them, for words are remembered not only by their sound and appearance but also by the ideas suggested by them. Words conveying the same meaning or suggesting the same idea are in general likely to cause confusion.
In Bombay Oil Industries Pvt Ltd Vs Ballarpur Industries (AIR 1989 Delhi 77)
Delhi High Court held that use of trade mark "SHAPOLA" for edible oil which is similar to registered trademark "SHAFFOLA" is an act of infringement as both are edible oil and of same nature. Both are phonetically similar also.
(e) Distinguishing or essential features to be considered : It is impossible to accept that a man looking at trademark would take in every single feature of the mark.
The broad and salient features must be considered for which the marks must be placed side by side to find the differences in the design.
(f) Surrounding circumstances to be considered : In addition to the nature of commodity,class of purchasers, the mode of purchase and the other surrounding circumstances must be considered.
(A). Absolute grounds for refusal of registration
As per Section 9 following categories of Trade Marks shall not be registered :
a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
(b) which consists exclusively of marks or indications which may serve in trade
to designate the
i. kind, quality, quantity, intended purpose, values, geographical origin or
ii. the time of production of the goods or
iii. rendering of the service or
iv. other characteristics of the goods or service.
(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade
(d) which is of such nature as to deceive the public or cause confusion;
In Info Edge (India) Pvt. Ltd. and Another v. Shailesh Gupta and Another, 2002 (24) PTC 255(Del), the dispute was regarding the domain name "naukri.com". The defendants had registered a similar domain name "naukari.com". HC held that it is a well settled legal position that when a person does business under a name sufficiently close to the name under which some person is already trading and the name has acquired a reputation, the public at large is likely to be deceived and misled.
(e) which contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
(f) which comprises or contains scandalous or obscene matter;
(g) whose use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
(h) which consists exclusively of the shape of goods which results from the nature of the goods themselves or the shape of goods which is necessary to obtain a technical result or the shape which gives substantial value to the goods.
However, if it is shown that before the making of the application, the Trade Mark has in fact acquired a distinctive character as a result of use made of it or it is well known trade mark, then in such cases, the registration shall not be refused.
(B) Relative grounds for refusal of registration :
Section 11 provides relative grounds for refusal of registration.
(1) Confusing Similarity with Earlier Trade Mark for similar Goods/Services : A trade mark shall not be registered if, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark because of
a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark,
(2) Identity or Similarity with an earlier Well Known Trade Mark for goods or services which may not be similar
A trade mark which is identical with or similar to an earlier trade mark; and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, Shall not be registered if the earlier trade mark is a well-known trade mark in India and the use of the later mark without due course would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.
For Example, in Bata India Limited vs M/s Pyrelal & Co. AIR 1985 All. 242, the HC restrained the Trade name "Bata" for mattresses, sofa cushions and other articles though these goods were totally different from the goods manufactured by Bata India Limited.
(3) Protection by Law of Passing off/copyright : A trade mark shall not be registered if its use in India is liable to be prevented
a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or
(b) by virtue of law of copyright.
But where the proprietor of the earlier trade mark or other earlier right consents to the
registration, in such case the Registrar may register the mark under special circumstances under section 12. [ Sec 11 (3) and (4)]
(1) Application for registration
(a) Any person claiming to be the proprietor of a trade mark used or purposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark. The application can be made in the name of an individual, partners or a firm,a corporation,any Govt. department,trust or joint applicants.
(b) A single application may be made for registration of a trademark for different classes of goods and services and fee payable therefor shall be in respect of each such class of goods or services.
(2) Place of Filing Application :
As per Section 18(3), Every application shall be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business in India 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 situated
PROVIDED that where the applicant or any of the joint applicants does not carry on business in India, the application shall be filed in the office of the Trade Marks Registry within whose territorial limits the place mentioned in the address for service in India as disclosed in the application, is situated.
(3) Acceptance or Refusal of Application :
(a) Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.[Section 18(4)]
(b) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision [Section18(5)]
(c) Withdrawal of acceptance
Section 19 lays down that
Where after the acceptance of the application but before the registration of the Trade Mark, the Registrar is satisfied that :
i. the application has been accepted in error; or
ii. in the circumstances of the case, the trade mark should not be registered
iii. 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.
(4) Advertisement of application
According to section 20 : When an application for registration of a trade mark has been accepted whether absolutely or subject to conditions or limitations, the Registrar shall, cause the application to be advertised in the prescribed manner along with the conditions or limitations, if any, subject to which it has been accepted.
(5) Opposition to registration :
According to section 21 :
(i) Notice of Opposition Within three months from the date of the advertisement or re-advertisement of an application for registration or further maximum period of one month as allowed by the Registrar, any person may give notice in writing in the prescribed manner to the Registrar, of opposition to the registration.
(ii) Counter Statement by the Applicant According to sub-section 2, the Registration shall serve a copy of the notice on the applicant for registration and within two months from the receipt of the notice, the applicant shall send his counter-statement of the grounds on which he relies for his application. In case the applicant does not file his counter statement, he shall be deemed to have abandoned his application.
(iii) Notice of Counter Statement to the opponent. Upon Receipt of the counter-statement, the Registrar shall serve a copy thereof on the person giving notice of opposition.
(iv) Evidence and Hearing of Parties Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard, if they so desire.
(v) Permit registration : After hearing the parties and considering the evidence, the ground of objections. The Registrar shall decide whether, the registration is to be permitted and if it is to be permitted subject to what conditions or limitations.
(6) Certificate of Registration : Section 23 makes it mandatory on the Registrar to register the trade mark where the procedure for registration of a trade mark has been completed.
Section 25 provides that the Registration of trademark shall be for a period of 10 years and is effective from the date of application. It can be further renewed for a further period of 10 years in the prescribed manner for by paying the prescribed renewal fees. The Trade Mark shall be removed from register if it is not renewed but can be restored if a request is made within one year from the date of expiry of registration or last renewal.
In case of registered trade mark, the holder of trade mark shall be entitled to institute any proceeding to prevent or to recover damages for the infringement of a registered trade mark.
However, a person shall not be entitled to institute any proceeding to prevent, or to recover damages for the infringement of an unregistered trade mark. For such person common law remedy of passing off action is maintainable.
Essentials of Infringement
1. Mark Identical/similar - Goods/services also similar Section 29 (2) & 3(1) A person who is not a registered proprietor or a permitted user but still in the Course of trade uses a mark which is likely to cause confusion in Public or is likely to have an association with the registered trade mark because the mark is :
a) identical to the registered trade mark for the similar goods/services.
b) Similar to the registered trade mark for identical or similar goods
c) Identical with the registered trademark for identical goods/services.
2. Mark Identical/similar - Goods not similarAccording to S. 29 (4)
A person who is not a registered proprietor or a permitted user to use a trade mark and in the course of trade uses a mark
a) identical or similar to the registered trade mark
b) for the goods or services which are not similar and
c) the registered trade mark has reputation in India; and
d) the use of mark without due cause
i) takes unfair advantage of or is detrimental to ,
ii) the distinctive character or reputation of the registered trade mark.
3. Use of Trade Name
Section 29 (5) lays down that A registered trade mark is infringed by a person if
iv. he uses such registered trade mark, as his trade name or part of his trade name,
v. or name or part of the name of his business concern dealing in goods or services in respect of which the trade mark is registered.
4. Affixation on Goods/Packaging/business paper/import-export
1. According to S. 29 (6) A registered trade mark is infringed by who being no duly authorized uses the registered mark, if, in particular, he-
(a) affixes it to goods or the packaging thereof,
(b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark.
(c) imports or exports goods under the mark, or
(d) uses the registered trade mark on business papers or in advertising.
2. Section 29(7) lays down that A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labeling or packaging goods as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
3. Section 29(8) lays down that A registered trade mark is infringed by any advertising of that trade mark if such advertising-
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters, or
(b) is detrimental to its distinctive character, or
(c) is against the reputation of the trade mark
4. According to section 29(9)
Where the distinctive elements of a registered trade mark consists of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
According to S. 30
(1) The use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor shall not be prevented by S. 29 provided the use-
(a) is in accordance with honest practices in industrial or commercial matters, and
(b) is not to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.
(2) A registered trade mark is not infringed where-
(a) The use is in relation to goods or services to indicate
i. the kind, quality, quantity, intended purposes, value, geographical origin,
ii. the time of production of goods
iii. or rendering of services or
iv. other characteristics of goods or services.
(b) The use of a trade mark in a manner outside the scope of registration where the trademark is is registered subject to any conditions or limitations
(c) Where a person uses the mark in relation to goods or services for which the registered owner had once applied the mark, and had not subsequently removed it or impliedly consented to its use.
(d) A trade mark registered for any goods may be used in relation to parts and accessories to other goods or services and such use is reasonably necessary and its effect is not likely to deceive as to the origin.
(e) The use of registered trade mark, being one of two or more registered trade marks which are identical or similar, in exercise of the right to the use of that registered trade mark.
(3) There shall be no infringement
Where a person sells the goods in the market or otherwise deals with them when the person has lawfully acquired the goods with a registered trade mark AND for the reason that
(a) after the acquisition of those goods, the registered trade mark has been assigned by the registered proprietor to some other person, or
(b) the goods have been put on the market under the registered trade mark by the proprietor or with his consent.
(4) However, where the condition of the goods, has been changed or impaired after they have been put on the market where there exists legitimate reasons for the proprietor to oppose further dealing in the goods in particular, then provisions of sub-section (3) shall not apply.
1. Civil Remedies
2. Criminal Remedies
3. Administrative Remedies
1. Civil Remedies
(a) Section 134 of the Trade marks Act, 1999 provides for filing of Suits in the District Court in whose jurisdiction the person instituting the suit resides at the time of instituting the suit for
a) Infringement of a registered trademark or
b) Any right in a registered trade mark or
c) For passing off arising out of the use of any trademark which is identical or deceptively similar, whether registered or unregistered
The suit may be instituted within 3 years of the infringement against the infringer or its agents or the company and its promoters and directors by :
1. Proprietor/Joint Proprietor of the Registered Trade Mark or his legal heirs
2. A registered user/A permitted user of a registered trade mark
3. An applicant for registration of a Trade Mark
4. A Foreign Proprietor when Trade Mark is registered in India and infringement occurs in India
(b) Section 27 of the Act further provides for action to prevent or to recover damages for infringement of registered Trademarks. Section is couched in negative language and lays down that No person shall be entitled to institute to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.
Section 27(2) also protects the rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.
(c) Section 135 of the Trade Marks Act, 1999, provides that the following reliefs may be claimed for 'infringement' or 'passing off' of the trademark :
According to sec.135 (1)
i. injunction (subject to such terms, if any, as the court thinks fit) and
ii. either damages or an account of profits, at the option of the plaintiff
iii. the delivery-up the infringing labels and marks for destruction or erasure.
Criminal Remedy The Trade Mark is a valuable intangible property and its unauthorized use can land the user in criminal proceedings as well as defined in Indian Penal Code. Civil and Criminal, both the remedies can be availed simultaneously as there is no bar to initiation of criminal proceedings even if the recourse has been taken to civil proceedings.
Administrative Remedy If a deceptively similar trade mark has been registered, an application can be made to the Trade Mark Registry for removal of such Trade Mark.
Even at the time of registration of a Trade Mark, an opposition petition can be filed to oppose the grant of a similar trade mark which is already registered.