AMITY UNIVERSITY
RAJASTHAN
AMITY LAW SCHOOL
INTELLECTUAL PROPERTY LAW
TRADEMARK: REGISTRATION AND PROTECTION
Submitted To: Submitted By:
Dr Prateek Deol Sir Thaneshwar Jangid
LL.M. (Corp.) – 2nd Semester
1. Introduction
A trademark or service mark, respectively, is something that clearly identifies a company's
product or service from that of other firms in the relevant jurisdictional market. The phrase
"trademark" is used to differentiate a company's goods or products from those of other firms,
but the term "service mark" is used to distinguish a service-providing company's or firm's
services from those of other service organisations, particularly in the same marketplace. As a
result, a trademark or service mark is nothing more than a distinctive mark, phrase or slogan,
figure or logo, sign or signature, or any other signal that may plainly and scintillatingly
differentiate a company's goods or service in a certain national or international jurisdiction.
The most widely practiced, prominent, and widely known trademarks and service marks in
countries around the world are composed of one or more (a special set) of the following
elements: a letter or word, numeral, sign or symbol, design or graphic image, phrase or
phrasing, 2D or 3D shape, a unique combination of certain colours, label, distinctive packaging,
or a distinct sound or smell. The most essential thing to remember is that every trademark must
be distinct and distinct from other firms' trademarks, and it must be able to be graphically
represented. Partially similar trademarks, phonetic similarity, or a visual resemblance between
the trademarks of two separate individuals or firms might result in trademark opposition or
infringement lawsuit. For example, there are similarities between Encore and Anchor; Ambal
and Andal; or Saffola and Savola; and so on, which might lead to client misunderstanding or
deceit.
There is a globally recognised and acknowledged Trademark Classification List that may be
used to distinguish trademarks in one economic sector from trademarks in other economic
industries. This trademark categorization list covers 45 separate classes that represent
trademarks and service marks in various categories of commerce and industry, professions, and
services. Trademark Symbols are used to ensure and strengthen that any specific trademark or
service mark is correctly registered with any national or international trademarks agency. For
this reason, the trademark symbols used for goods and products of firms are ® [an encircled
capital R] and TM, whereas the trademark symbols used for service-providing organisations
are ® and SM. An unregistered trademark or service mark cannot be represented by the
worldwide trademark sign ®. In the superscript style, any of the above-mentioned trademark
symbols for products and services is usually positioned to the top right of the preceding
trademark or service mark. A corporation can use the sign TM or SM for commercial
transactions or advertisements during the time period between the filing of a trademark
registration application and the grant of the registration certificate.
This article examines the constitutional protections afforded to each country, as well as the
limitations to this basic freedom and the major case law that shaped those exclusions.
2. Functions of a Trademark or Service Mark
A trademark or service mark not only identifies a company's or firm's product or service from
those of other firms in a specific jurisdictional marketplace, but it also reflects the company's
identity and reputation, as well as some noteworthy aspects of the product or service in
question. The major and most important purposes of a trademark or service mark are as follows:
a) It distinguishes products or services, as well as the businesses that provide them.
b) It develops in the eyes of consumers and customers a favourable and remarkable picture
(of the product or firm).
c) It draws attention to items or services
d) It guarantees customers of certain distinctive, fulfilling, and consistent product or
service attributes.
e) It promotes items or services, enhancing their popularity.
Proper and lawful registration of a trademark with the relevant national or international
trademarks office confers on the registered trademark owner certain legitimate and privileged
rights, including authoritative ownership of the trademark, authoritative and exclusive
commercial or professional uses of the trademark, security and protection of the trademark,
hiring and trading of the trademark with any national or foreign person.
3. Benefits of a Trademark Registration
The benefits of trademark registration are numerous. Here are a few of them:
a) Customers will be able to discover you more easily if you have a trademark:
Trademarks set you out from your rivals' services and goods. This signifies that you are
the source and that the quality of your services and goods is consistent. Brand
recognition and goodwill are also enhanced by trademarks.
b) Trademarks assist to avoid misunderstanding in the marketplace: Trademarks serve to
distinguish the origin of products and services.
c) Trademarks are cost-effective marketing tools: Trademarks provide rivals a face value
in the market. Additionally, they grant your company a monopoly on the brand name.
4. Types of Trademarks
Under the Trade Marks Act, 1999 the different types of trademarks that can be registered are:
Product Trademarks: They are trademarks attached to identify the business’s products.
Service Trademarks: They are used to identify the services of the entity. For instance, the
trademark for network and broadcasting service. They help advertise the service provided.
Collective Trademarks: These trademarks are registered in the name of groups or
organizations. They help people associate members with the group during commercial
activities.
Certification Trademarks: They are certifying trademarks which help people judge the
quality, material used, origin and other specific features of goods and services.
5. Trademark Registration in India
Trademarks and service marks are registered in India through the federal registration system,
which is supported by five regional trademark offices in Mumbai, New Delhi, Kolkata,
Ahmedabad, and Chennai. These zonal trademark registration offices register, govern, and
protect trademarks and service marks in accordance with the Trade Marks Act of 1999 and the
Trade Marks Rules of 2002, taking into consideration all revisions made to these laws to date.
A flawless registration of any newly established trademark or service mark with any of these
zonal trademark offices ensures that the trademark owner's trademark rights are fully protected
across India. It should also be noted that appropriate and complete registration of a trademark
with the relevant national trademark office serves as the basic foundation for all international
trademark registrations globally. The fact that India is a respected member of most international
conventions and treaties related to trademarks in the world [mentioned in the previous section],
the trademark classification list used in India [given in the Fourth Schedule of the Trade Marks
Rules of 2002] also contains 45 classes, eleven of which are associated with services in various
sectors, and the remaining 34 are allotted to goods and products of various kinds.
Application must be made to the immediately concerned zonal trademarks office, based on the
applicant company's location, in order to get one's newly-invented trademark registered in
India. Creation of a trademark [or service mark]; Trademark Search and Infringement Analysis;
Filing of a Trademark Application [Form TM-1]; Official Examination and Verification; and
Trademark Prosecution for registration are the major and main tasks or activities associated
with trademark [or service mark] registration. In most cases, each Indian divisional trademark
register office completes the registration procedure in less than a year. The procedure of
trademark registration, however, may take longer depending on the state and status of the filed
brand's originality and distinctiveness, as well as instances of opposition or infringement
charges by other firms. At the moment, the government-mandated price for registering a
trademark in India is INR-5,000/- [this amount does not include the consultation fee, lawyer's
fee for preparing and filing the application for registration, fee for dealing with opposition
cases, and trademark prosecution service charge]. A trademark that has been registered for the
first time is valid and functional for 10 years from the date of registration. For protecting
trademark rights for the following 10 years, an application for Trademark Renewal is filed in
Form TM-12 with the appropriate regional trademark office well before the end of this term,
together with a stipulated renewal cost of INR-10,000/-.
The revised Indian Trade Marks Act of 1999, as well as the Trade Marks Rules of 2002,
currently provide for the following duties and services:
a) According to a 2010 change to the Trade Marks Rules of 2002, the number of classes
for service marks has been raised to eleven, ranging from class 35 to class 45.
b) APPLICATION WITH MULTIPLE CLASSES - There is now a single application that
may be used to register trademarks from several classifications.
c) It is possible to register collective marks.
d) Under Section 2(1) (zb) of the Trade Marks Act of 1999, the shape of goods, packaging
design, and a particular distinctive combination of colours have been included in the
definition of a trademark.
e) The validity term for the first registration of a trademark or service mark has been
increased from 7 to 10 years.
6. Grounds of Absolute Refusal
Section 9 of the Act defines absolute reasons for denial of registration. Trademarks that may
be devoid of distinguishing qualities or consist solely of markings or signals that might be
used in commerce to represent the kind, fine, amount, alleged grounds, values, or geographical
origin.
Also, a time of creation of things or rendering of offers, or various features of goods or
offerings, consisting entirely of signs or signals that have become common in today's language.
That mark is ineligible for registration. Unless it is proven that the mark has acquired a new
character as a consequence of usage prior to the application date.
It states that a mark cannot be registered as a trademark if the following conditions are met:
a) It deceives or confuses the people.
b) There is everything that can stifle religious sensitivity.
c) There is an obscene or scandalous matter.
d) Its usage is forbidden. It states that a mark cannot be registered as a trademark if it only
comprises, the shape of products that form the nature of goods, the shape of goods that is
required to accomplish a technical result, or the shape of goods that contributes
considerable value to goods.
Test of Similarity
Finally, if one mark appears to be deceptively similar to another, the important aspects of both
must be analysed. They should not be put next to one other to see if there are any design
differences or if they are of the same character to avoid one design being mistaken for the other.
It would suffice if the contested mark bears such a striking resemblance to the registered mark
that a person who is used to dealing with one would mistakenly accept the other if it were
presented to him. Apart from structural, visual, and phonetic similarity or dissimilarity, the
question must also be considered in terms of human intelligence and incomplete collecting.
"It is general knowledge that 'bidis' are utilised by those belonging to the impoverished and
uneducated or semi-literate class," the court said in Mohd. Iqbal v. Mohd. Wasim.1 They don't
have a lot of knowledge. It is unrealistic to expect children to comprehend and comprehend the
subtle variations between the two labels that may be found by comparing the two labels. Given
the foregoing, the two labels appear to have a misleading resemblance."
7. Grounds of Relative Refusal
The Act's Section 11 lays forth the relevant grounds for a trademark's rejection to be registered.
A trademark cannot be registered if there is a likelihood of confusion due to I its identity with
an earlier brand and resemblance of products or services, or (ii) its likeness to an earlier trade
mark and similarity of goods.
It also states that a trademark that is identical or similar to an earlier brand cannot be registered.
Also, if, or to the extent, the previous trademark is well recognised in India, it must be
registered for products and services that are not identical to those for which an earlier trademark
is registered in the name of a different proprietor.
8. Trademark Registration and Protection Worldwide
Proper registrations of the pertinent trademarks under one or more international trademark
treaties are required for expanding one's business to foreign frontiers. There are four major and
relevant international trademark conventions or treaties in place today to defend the legitimate
1
AIR 2002 MP 162, 2001 (4) MPHT 357
rights of trademark owners in international arenas. The following are the wonderful and well-
known treaties:
8.1 The TRIPS Agreement (Trade Related Aspects of Intellectual Property Rights)
The World Trade Organization (WTO) is in charge of administering this international
agreement, which was established in 1995 and now has over 150 member nations from all
over the world.
8.2 Conventions of Berne or Paris
The Berne Convention holds the distinction of being the world's oldest convention for
intellectual property protection. The Berne Convention of 1886 was amended in Paris in
1971. This well-known treaty has been signed by over 170 countries from all around the
world.
8.3 Madrid Protocol
The Madrid Protocol was created as a result of the Madrid Agreement of 1989 and entered
into force in 1995. The Multinational Bureau of the World Intellectual Property
Organization (WIPO), Geneva, Switzerland, is in charge of this crucial mechanism for
international firms. There are now 91 nations in the globe that are members of the Madrid
Protocol. India joined this international convention for trademarks in 2013, giving all local
enterprises the unique chance to protect their marks across all foreign jurisdictions by
completing a single application with a single set of costs.
8.4 European Community Trademark
With a European Community Trademark (CTM), any firm may easily register and defend
its trademark in any or all of the European Union's member nations, with a single
application filed with the CTM Office in Alicante, Spain.
Any corporation or firm that wishes to expand its operations to any of the above-mentioned
international trademark treaties, of which the desired country is a member, can do so by
selecting one of the above-mentioned international trademark treaties. As previously stated,
each of these accords has a considerable number of signatory nations. Again, each of these
treaties allows an applicant corporation to simply and quickly register and defend its trademark
in any or all of the party nations by completing a single application.
9. Case Laws
a) HEARST COMPANY VS DALAL AVENUE VERBAL EXCHANGE LTD. 2
The court ruled that a trademark is infringed when a person uses a mark that is identical
to or deceptively similar to the trademark in relation to the products for which the
trademark is registered in the course of business. The use of the mark by such a person
must be done in a way that is more likely to be interpreted as a trademark.
b) AMRITDHARA PHARMACY VS SATYA DEO GUPTA3
The Supreme Court declared in this decision that two terms that are deceptively similar
must be taken to determine the relationship in two words relevant to an infringement
action. And you should assess them based on how they seem and how they sound. The
things to which they are to be applied must be taken into account. The character and
type of consumer who is likely to purchase those things must be considered. In reality,
the surrounding conditions must be evaluated, as well as what is likely to happen if each
of those trademarks is used in common ways as a trademark for the goods of the
respective trademark owners.
They arrived to the conclusion that there would be confusion after analysing all of the
conditions. This is to suggest that it is unlikely that one guy would be wounded and the
other will obtain an illicit advantage, but there will be a shambles in the public
perception, leading to confusion in the products, and the registration may be refused.
c) AMERICAN HOME PRODUCTS CORPN. VS. LUPIN LABORATORIES LTD.
When it comes to trademark infringement, the court found that it is well-established
law. It's critical to understand the distinction between a search for infringement and a
search for passing off the trial. In a passing off action, the courts appear to be looking
for deception, whereas in an infringement case, it is important to remember that the
2
(1995) 2 CALLT 346 HC
3
1963 AIR 449
Trademark Act grants the owner an exclusive right to use the mark, which will be
infringed in the case of indistinguishable marks, and infringement can still occur in the
case of related marks even if there is deception.
d) KAVIRAJ PANDIT DURGA DUTT SHARMA VS. NAVARATNA
PHARMACEUTICAL LABORATORIES4
The Apex court held that there are some differences between the trial for passing off
and trial for infringement of a trademark
10. Conclusion
The term "intellectual property" denotes that the subject body is the result of the mind or
intellect. It may be exchanged, acquired, donated, and reserved since it is the result of a
productive and creative intellect. All of this is possible, but there are challenges to be resolved.
Trademarks are highly significant components of intellectual property, and trademark
protection has grown more crucial in recent years since every manufacturer of a commodity or
service wants his mark to be unique, eye-catching, and easily distinguished from others.
Designing a mark like this is tough, and when the mark is infringed upon, the manufacturer
will face the greatest trouble. Capital protection is critical, and progress toward a Global
Intellectual Property Order should be made; without IPR protection, innovative activity will
cease. The purpose of intellectual property protection is to encourage creativity and discovery
while also preventing invention exploitation.
Here, public policy aims to maintain an Intellectual Property system that encourages innovation
through protection programmes while also ensuring that this does not come at the expense of
social interests. In this sense, the World Intellectual Property Organization's challenge would
be to incorporate public policy implications in applications with poor nations, such as raising
knowledge of available international intellectual property treaty flexibilities.
4
1965 AIR 980, 1965 SCR (1) 737
Intellectual property is a topic that is addressed in everyday life, whether it be a movie, book,
plant variety, food item, cosmetics, electronic devices, software, or anything else. It has become
an idea that is all-pervasive in daily life. Every year on April 26th, the World Intellectual
Property Day is commemorated