TRADEMARK

The Intellectual Property Law in India now stands enriched by our Parliament enacting the Trade Marks Act 1999, the Geographical Indications of Goods Act 1999, the Designs Act 2000, the Semiconductor Integrated Circuits Layout Design Act 2000 and the Information Technology Act 2000. The Patents (Second Amendment) Bill 1999, the Protection of Plant Varieties and Farmer’s Rights Bill 1999 are on the anvil.

Naturally, in the present work, the chapters relating to Industrial Designs and Trade Marks have been rewritten in conformity with the new Designs Act and Trade Marks Act.

For convenience of reference the full texts of the Patents Act, Designs Act, Trade Marks Act and Copyright Act and the notification in respect of India’s Ratification of Paris Convention and relevant extracts from GATT and TRIPS agreements have been placed in the Appendices providing, at the same time, an overall picture of the Intellectual Property Law in India as it stands at present.

Patents, registered designs and copyright are protected only for a limited period. On the other hand, in general, a registered trade mark can be protected in perpetuity subject only to the conditions that it is used and renewed periodically and the registered proprietor takes prompt action against infringers. it is interesting to note that the first trade mark registered in UK.

An unregistered trade mark, called a common law trade mark can be kept alive and protected for as long as it continues to be used provided the owner of the mark takes appropriate action against infringers by a passing off action or by criminal proceedings.

The statute law of trade marks in india till now was governed by the Trade and Merchandise Marks Act 1958. This Act has now been replaced by the Trade Marks Act 1999. This Part on Trade Marks is based on the new Act of 1999. The Trade Marks Rules "2002 deals with the various proceedings required to implement the provisions of the Act.

A trade mark is a visual symbol in the form of a word, a device, or a label applied to articles of commerce with a view to indicate.

Trade Marks Registry and Register of Trade Marks Designs. He is assisted by a Joint Registrar, Deputy Registrars, Assistant Registrars, Examiners of Trade Marks and a Componentry of Clerical staff. The Branch Offices are in the charge of Deputy Registrar or Assistant Registrar assisted by Examiners and a clerical staff. The Joint Registrar; Deputy Registrar and Asst. Registrar exercise the same powers as the Registrar in respect of any matter under powers delegated to them by the Registrar.

Apart from the Register of Trade Marks the Registry maintains indexes of:

• Registered trade marks,
• Applications for registration,
• The names of proprietors of trade marks, and
• The names of registered users. The branch offices keep a copy of the register and copies of the indexes.

Under the new Act the register may be maintained in computer floppies or diskettes-ms.

Trade Marks Registry and Register of Trade Marks

An office called the Trade Marks Registry has been established for the puirmse at registration of trade marks, maintenances LF the register and matters incidental there to. The Head Office of the Registry is at Mumbai. It has branch offices at Kolkata, near, Chennai and Ahmedabad.

The Trade Marks Registry is under the charge of the Registrar of Trade Marks who is also the Controller-General of Patents and Designs. He is assisted by a Joint Registrar, Deputy Registrars, Assistant Registrars, Examiners of Trade Marks and a Componentry of Clerical staff. The Branch Offices are in the charge of Deputy Registrar or Assistant Registrar assisted by Examiners and a dericall staff. The Joint Registrar; Deputy Registrar and Asst. Registrar exercise the same powers as the Registrar in respect of any matter under powers delegated to them by the Registrar.

There is now provision for registration of service marks in India under the new act. Such marks or names used by business rendering various kinds of services can, therefore, be protected by an action for infringement if registered.

Licensing of patent, a registered design or a copyright is allowed by law without any restriction. This is because in the case of a patent the monopoly right consists in the manufacture of an article under the patent. If a third person is given a licence by the owner of the patent to manufacture the product, there is no question of any public interest involved. In fact if the patentee does not work the patent within a certain period the statute provides for compulsory licensing which is considered to be in the public interest. Similarly if a copyright owner licenses a third person to reproduce the work it is not considered to be against public interest. In many cases the only way in which the copyright owner can enjoy the benefits of copyright is by licensing a third person to exploit the work..

In respect of trade marks the position is different. The function of a trade mark being to indicate origin of the product it was considered deceptive to allow the trade mark to be used on goods which originate from a different source. Unrestricted licensing of trade mark was considered as trafficking in trade mark which is against public interest. However, development of modern industry and commerce has necessitated the Licensing of trade marks, particularly registered trade mark under suitable conditions and safeguards. The statute has provided for licensing of registered trademarks as registered users.

Licensing unregistered trademarks or a registered trademark except under the provisions of registered users.although not prohibited, is not recognized by law. However many large companies particularly companies which have trading in different countries license their trademarks, registered or unregistered under terms and conditions are similar to those accepted for registration of permitted use.

As regards unregistered trade marks courts have recognised licensing of unregistered trade marks as legitimate and lawful provided proper control over the use of the mark by the licensed is maintained and care taken to see that the ownership of the mark is indicated to the public. This is called common law licensing.

There is a species of trade mark called certification trade mark whose function is not to indicate trade origin as an ordinary trade mark but to indicate that the goods bearing the mark have been certified by the proprietor of the mark as to certain characteristicS of the goods like geographical origin, ingredient and so on.

The new Act provides for registration of a species of trade mark called collective marks which is a trade mark distinguishing the goods or services of members of an association of persons ( being a partnership firm) from those of others. The proprietor of the mark is the association.

A service mark is one which distinguishes the service rendered by one person from those of others. Service means service of any description which includes services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport and so on.

• Trade mark must be a mark which includes a device, brand heading, label, ticket, name, signature, word, letter, numeral: shape of goods, packaging or combination of colours or any combination thereof .
• The mark must be capable of being represented graphically.
• It must be capable of distinguishing the goods or serviceS of one person from those of others.
• It may include shape of goods, their packaging and Combination of colours.
• It must be used or proposed to be used in relation to goods or services.
• The use must be for the purpose of indicating a connection m the course of trade between the goods or services and some persons having the right as proprietor to use the mark.
• The right to proprietorship of a trade mark may be acquired
• The right of proprietorship acquired by registration is a statutory right which requires no actual user but only an intention to use the mark. On the other hand the right acquired by mud user in relation to particular goods or services, is a common law right which is attached to the goodwill of the business concerned.
  A registered trade mark can be protected against unauthorised use by others by an action for infringement. This is a statutory remedy. An unregistered trademark can be protected against unauthorised use by others by an auction for passing off which is a common law remedy.
  A mark may cover the whole of the visual surface of the goods. Further a distinctive colour combination or scheme, 2 colouring can be a trade mark. A container in three dimensions form is also a trade mark. A two dimensional drawing of. container could be a trade mark. A trade mark should be visit}: to the purchaser when purchasing the goods.

by registration under the Act or by use in relation to particular goods or services.

If the mark is a registrable one the best way to protect it is b~ registration. Infringement of the mark can be easily established you If the infringing mark is identical and the goods covered 5, registration, the success in an action for infringement is almost.

certain unless the registration can be attacked on the ground of invalidity of registration or the defendant could establish honest concurrent user, or acquiescence on the part of the registered proprietor, or prior user. If the marks are not identical but only Similar then the plaintiff will have to establish that the defendants: mark is deceptively similar, that is to say, the similarity is such as to be likely to deceive or cause confusion which is a proposition not easy to establish. Ultimately the question of similarity is one for the judge to decide on which opinion may often differ.

In the case of unregistered marks and marks which are not registrable the only way they can be protected is by an action fer passing off. The plaintiff will have to prove sufficient use of the mark so as to create valuable goodwill of the business connected with the goods bearing the mark. See Chapter 26 on Passing Off.

Criminal action against the infringer is possible whether the mark is registered or unregistered provided the marks are very close. Though mens really i.e. intention to deceive need not be proved, evidence of fraudulent intention will be an important factor in favour of the complainant.

The value of a trade mark, whether registered or not can be maintained only if the proprietor uses it and takes prompt action against infringers by an action for infringement, or passing off or by criminal proceedings.

If infringement of the mark is not prevented the mark is likely to become generic words, i.e. the name of the goods (this happening in respect of goods once patented) or common to the trades as it is called by the use of the mark or a similar mark by others. The distinctiveness of the mark will be lost or eroded or diluted if other traders use the same or similar mark in relation to the same or similar goods or sometimes to even totally different goods.

A well chosen and well protected trademark is the most valuable of industrial property and the strongest.

Apart from distinctiveness or capable of distinguishing a good trade mark should possess the following attributes: