Chapter 1

Introduction

“The ideal trademark is one that is pushed to its utmost limits in terms of abstraction and
ambiguity yet is still readable. Trademarks are usually metaphors of one kind or another. And are,
in a certain sense, thinking made visible.” ~ Saul Bass

The words of author Saul Bass highlights the necessary requirements for a trademark. In layman
terms, a trademark is a mark that can be visually displayed and identifies a person’s goods and
products against those offered by others. It is a form of intellectual property that can include a
term, pattern, symbol, or phrase, etc. A certified or patent trademark is a text, symbol or
combination that identifies a business or a commodity and distinguishes it from others in the
marketplace.

There have been several situations when someone exploits a trademark of a well-known item or
service in order to benefit from the goodwill and reputation of the widely recognized mark. An
unlawful use undermines the respected mark by diminishing its originality and repute. In India,
trademark infringement is defined as a breach of the exclusive benefits provided to a licensed
proprietor under the Trademarks Act, 1999.

Trademarks Act was implemented by Parliament in the fiftieth year of Republic India to modify
and consolidate trademark legislation, to allow registration and promote greater protection of
trademarks for products and services, and to prohibit the use of illegitimate marks. If trademark
abuse is confirmed, the court can restrict the defendant from utilizing the trademark, and the
proprietor may be given financial compensation for the loss suffered by him due to such act of
infringement by the defendant. The case of Theos Food Pvt Ltd & Ors v. Theobroma Foods Pvt
Ltd, highlights the rights and remedies given to the proprietor of registered trademarks under the
Trademarks Act by the Delhi High Court. The plaintiff successfully established the burden of
proof that their trademark was used by the defendant in the course of trade.

Meaning of Trademark
A trademark is the characteristics or combinations of characteristics capable of distinguishing
the goods and/or services of one enterprise from those of other enterprises. Trademarks fall
under the ambit of intellectual property rights and are protected by national and international
laws.
Examples of trademarks include the Nike “Swoosh” symbol, the arched M for McDonald’s or the
bitten apple symbol for Apple computers, etc.
Under The Trade Marks Act, 1999, the word “mark” is defined under Section 2(1)(i)(V)(m) as “a
device, brand, heading, label, ticket, name, signature, word, letter, numeral”. The term “Mark”
under the Act also includes the shape of goods, packaging, or combination of colours or any
other type of combination.
Section 2(1)(i)(viii)(zb) in the Trade Marks Act, 1999 defines trademark as a mark which is:
● capable of being represented graphically;
● capable of distinguishing the goods or services of one person from those of others;
● may include the shape of goods, their packaging and combinations of colours.
Section 2(1)(i)(viii)(zb)(i) in the Trademarks Act, 1999 mentions about registered trademarks for
goods and services and further states that the person has the right to use the mark as the
proprietor.
Section 2(1)(i)(viii)(zb)(ii) in the Act states that a person has the right to use the mark either as a
proprietor or a permitted user whether with or without any indication of the identity of that
person. The proprietor or a permitted user can also use a certification trademark or a collective
trademark in this regard.

Functions of the Trademark

It identifies the good or services of one and distinguishes them from others.
It signifies that all goods bearing a particular trademark come from same source or origin.

It provides assurance that goods are of certain quality and consistency i.e. guarantees its
unchanged quality.
It advertises the goods or services and assists the consumer in making decision about the
purchase of goods.
It creates an image for the goods or services.
It reflects the goodwill or reputation of a particular product.
Following are the requirements of trademark:-
 ● It should be easy to utter.
● It should be easy to remember.
● It should be easy to spell.
● It should be simple in design.
● It should be attractive in sound and appearance.
● It should suggest the desirable qualities of the merchandise.
● It should be different from other trademarks of the same class.
● It should be possible to affix it to the goods with which it is used.
● It should be registerable and protectable.

Kinds of trademark

1) Product mark

It is a mark used for products or goods but not on services. Product mark is used to identify the
provider, the reputation and the origin of the product. Applications for a trademark filed under
class 1-34 The Fourth Schedule To Trade Marks Rules, 2002 are generally termed as product
marks.

2) Service mark
It is similar to a product mark, but it is specifically used to identify a service and not a product.
Applications for a trademark filed under class 35-45 The Fourth Schedule To Trade Marks Rules,
2002 can be termed as a service mark.

3) Word mark

Typically, a trademark is filed under a wordmark or a device mark. In a wordmark, only a word or
text is used to denote a trademark, without any stylization or additional artistic elements. This
type of registration gives the broadest legal protection to a trademark because it allows the
owner to use such a wordmark in all styles, forms and representations. A few examples of
registered work marks are LITTLE HEARTS, COCA-COLA.

4) Certification Mark
A mark used to indicate the particular goods or services are certified by the owner of the sport in
terms of material, origin, quality, or any other characteristics is termed a certificate mark as
given under the Trademark Act.

5) Shape Mark

A mark used to indicate the shape of goods, their packing, etc., are termed Shape Mark as
provided by the Trademark Act. It is used only when it is likely to present the product’s shape.
These shape marks make it different from the other products. If the form has some distinctive
features, such effects can be registered under the Trademark Act.

6) Pattern Mark
A mark that comprises a pattern capable of identifying the product or services that originate
from a particular undertaking and can be distinguished from the other project can be termed the
Pattern Trademark as provided by the Trademark Act. The method of evaluation is similar to
other trademarks.

7) Sound Mark
A sound mark is a mark used when a specific sound performs the purpose of uniquely classifying
the source of a product or a service; it is termed a sound mark. In such cases, such sound is
connected with a company or its products or services. It is provided by the Trademark Act.

LEGAL FRAMEWORK

Trademark protection in India is governed by the Trade Marks Act, 1999, and the Trade Marks
Rules, 2017. This legislation establishes a robust framework for the registration, enforcement,
and protection of trademarks within the country[5]. Under the Trade Marks Act, 1999,
trademarks are defined broadly to include names, symbols, logos, and even three-dimensional
shapes that can be graphically represented and used to distinguish goods or services. Here are
some key aspects of trademark legislation in India:

. Registration Process: The Act outlines the procedures for registering trademarks with the
Office of the Controller General of Patents, Designs, and Trade Marks. It offers protection
for registered trademarks for a period of ten years, renewable indefinitely.
 . Infringement: The Act provides remedies against trademark infringement, including
injunctions, damages, and orders for the removal of infringing labels or marks.

. Well-known Trademarks: India recognizes “well-known” trademarks, even if they are not
registered in the country, offering them additional protection.

. Assignment and Licensing: Trademarks can be assigned or licensed, allowing owners to

monetize their intellectual property.

. Online Infringement: The legislation addresses issues of online trademark infringement

and provides mechanisms for protecting trademarks in the digital space.

The Trade Marks Act, 1999, provides a comprehensive legal framework for trademark protection
in India. It aligns with international standards and conventions, making it essential for businesses
to understand and navigate when seeking to establish and protect their brands within
the Indian market.

Chapter 2
Infringement of Trademark in India

What is trademark infringement

Infringement occurs when other person uses a trademark that is same or similar to registered
trademark for the same or similar goods/services. Section 29 of the Indian Trade Marks Act,
1999, talks about various aspect of infringement of registered trademarks.

According to Section 29 of the Act, a registered trademark is infringed when an unlicensed

proprietor uses the a forementioned mark for business and commercial motives. Section 29(4)
also emphasises that the word ‘dilution’ provides the base for trademark infringement. While
assessing whether a trademark has been infringed or not, the following factors are considered:

. If the disputed trademark is identical to or deceptively similar to the patented mark and
is related with identical or comparable products or services provided by the trademark’s
owner.
 owner.
. Moreover, if the mark is similar and relatively equivalent that it might generate confusion in
the eyes of the general masses owing to the affiliation of the mark with the registered
trademark.
. If a mark is marketed and as a consequence, it takes unfair advantage, is contrary to
honest practises, or is detrimental to the unique character and prestige of the registered
trademark. This is taking undue advantage of the circumstance and is regarded
as infringement.
. If the trade name is identical to a registered trademark, it may be considered infringement.
. A person infringes a registered trademark if he utilizes the mark as his trade name or
component of his trade name, or the name of his business concerned or part of the name,
of his business concerned dealing in products or services for which the trademark is
registered.
. A mark that seems to be similar to one that has a great reputation in India. In such
circumstances, trademark infringement might occur even if the mark is utilised for
products and services that are unaffiliated to the original.
. Where the distinctive elements of a registered trademark consist of or integrate words,
both the verbal and visual representation of those words may violate the trademark, and
references to using a trademark in this section should be construed as such.

Types of Trademark Infringement

1) Direct Infringement

Section 29 of the Trademark Act, 1999 lays down the law related to direct infringement of the
trademark. As per the law, direct infringement has been defined as in the following cases:

● Similar or Deceptive: If the trademark is identical to that registered trademark or somehow

creates confusion in people's minds with the registered one, it also falls under direct
infringement.
● Used without Owner's Permission: If the use of a registered trademark has been done
without the owner's authorization.
● Use of a similar trademark in the same class: For the infringement of the trademark, the
unauthorized use of the mark has to be used for the propagation of goods or services that
fall under the same class of the registered trademark.

2) Indirect Infringement
2) Indirect Infringement

● Vicarious Infringement: When a person can control the actions of a direct infringer to
infringe, then it is said to be vicarious infringement.
● Contributory Infringement: Cases when the person either knows of the infringement,
contributes to direct infringement, or influences the principal infringer for direct
infringement come under contributory infringement.