TRADEMARKS ACT, 1999
03 Objective 05 Different forms of
01 History and Trade Mark
Evolution
06 Registry and
04 Features of Register
02 Meaning and
good trademark
Definition
1
History & Evolution
01
10th century- “ Merchants Mark”
It is a kind of Proprietary mark
To prove ownership of goods – potteries, crafts
In middle ages- merchants and craftsmen affixed marks to
goods
To distinguish their goods from other low quality goods
1266- bakers Marking law (Anglo- Indian Trademark Law)-
Mark on the bread- made and sold by them
2
Evolution in India
Trademarks Act, 1999
Indian Merchandise marks Act, 1889 (First
legislation)
Trademarks Act, 1940
Trade Marks Act, 1999 (Registration & statutory protection) = English TM Act
• Registration: Indian Registration Act, 1908
• India party to TRIPS Agreement • Infringement: S.54 of the specific relief act, 1877
• TM law = TRIPS (mandatory)
• party to Paris convention for the protection Trade and Merchandise marks Act, 1958
of Industrial property, 1883 (Indian Merchandise marks Act, 1889 and Trademarks Act,
1940)
• 4 decades
• Need felt for simplification and harmonization
3
• Right to arrest in case of infringement.
• 1999 act is a modification of the 1958 act, it
• It has provided exhaustive definitions of terms frequently used
• enhanced punishment for offenders, increased the period of
registration, registration of non- traditional trademarks.
• The rules of this act are called as Trademark Rules 2002.
• Trademark Act 1999 and Trademark rules 2002 presently govern
Indian Trademark Laws in India
MEANING AND DEFINITION S. 2(1)(zb): “trade mark” means a mark
capable of being represented graphically
and which is capable of distinguishing the
goods or services of one person from those
02 of others and may include shape of goods,
their packaging and combination of
colours
Essentials:
1. It should be a mark
2. It should be capable of being represented graphically
3. It should be capable of distinguishing the goods and
services of one person from others
4. It may include shape of goods, their packaging and
combination of colours
5. It must be used or proposed to be used in relation to goods
or services
6. The use must be for the purpose of indicating a connection
between goods or services and the proprietor.
5
“mark” includes a device, brand, heading, label,
Mark
S. 2(1) (m):
ticket, name, signature, word, letter, numeral, shape
of goods, packaging or combination of colours or
any combination thereof;
Represented
Graphically
“graphical representation” means the representation
R. 2 (k) of a trade mark for goods or services in paper form;
Distinctiveness Inherent qualities and distinctive feature
6
1. It protects the public from confusion and
Objective deception by identifying the source or origin of
particular products as distinguished from other
similar products
2. It protects the trademark owner’s trade and
03 business as well as the goodwill which is attached
to his trademark. (mohanlal v. Sona paint &
hardwares)
Cadbury India Limited v. Neeraj food products
spirit, intendment and purpose of the trademark legislation is
to protect the trader and consumer against dishonest adoption
of one’s trademark by another with the intention of
capitalizing on the attached reputation and goodwill.
7
Features of good trademark
1. The Trademark must not be confusing or leading
to doubts regarding the nature of the product or
service.
2. The Trademark must be simple, easy to
pronounce, spell and read.
04 3. If the Trademark is another language, it must be
easier for the general public to translate it.
4. The Trademark must not contain any word, image
or some other part which is offensive to any caste,
gender, age or religion.
5. The Trademark must not be similar or deceptively
identical to an already registered Trademark.
6. The mark must be easily adaptable.
8
Different forms of Trade Mark
1. Smell marks
2. Sound marks
3. Taste marks
05
4. Colour Marks
5. Moving images, holograms, gestures
6. 3D trade marks
9
Registry and Register
06
10
Section 5: The trademark Registry
established under the trademark and
merchandise marks act, 1958 =
Trademark Registry
TRADEMARK REGISTRY Head office: Mumbai
Branch office: Kolkata, Delhi, Chennai,
Ahmedabad
Territorial limits- Central Government
11
Register - s. 6(1) for the purposes of the act, a record called the register of trademarks
shall be kept @ Mumbai Head office
Control and management of the Registrar
Official record of trademarks
Particulars: Registered trademarks with names, addresses and description of the
proprietors, notification of assignment, transmissions, the names, addresses and
descriptions of the registered users, conditions, limitations and other prescribed
matters
s. 6(2): computer floppies, diskettes or in any other electronic form
12
JURISDICTION
. Principal place of business
. Place of residence
13
A copy of Register @ all branch offices
Documents u/d S. 148- Public Inspection
i. the register and any document upon which any entry in the register is
based
ii. every notice of opposition to the registration of a trademark
application for rectification before the registrar, counter - statement
thereto and any affidavit or documents filed by the parties in any
proceedings before the registrar
iii. all regulations deposited under section 63 or 74 and all applications
under section 66 or 77 for varying regulations
iv. the indexes mentioned in section 147 and
v. such other documents as the central government specify
14
Indexes:
under the direction and supervision of the registrar following
indexes or kept
i. an index of registered trademarks and
ii. index of trademarks in respect of which applications for
registration or pending
iii. an index of the names of the proprietors of registered
trademarks and
iv. an index of the names of registered users
Rectification of Register: S. 57 - 60
S. 57- Aggrieved person- Appellate board/ Registrar
S. 58- Registrar can make correction
S. 59- Alteration of Trademark – not substantially
affecting the identity
S. 60- No amendment as to addition of goods or
services
Registrability of trademark
What can be registered and what cannot be registered
subject matter of registration
1. refusal of registration
(a) absolute grounds (s. 9)
(b) relative grounds (s. 11)
2. Prohibition of registration of names (s. 13)
3. Registration of trademark, indicating connections with
persons
S. 9: Absolute grounds of refusal: A trademark is not registered if
(b) It is against the public (c) It consists exclusively
(a) It is not distinctive interest shape of goods which
(i) It is devoid of any distinctive (a) it is of such nature as to (a) results from the nature of the
character, that is to say, not deceive the public or cause goods themselves; or
capable of distinguishing the confusion;
goods or services of one person (b) is necessary to obtain a
from those of another person; (b) it hurts the religious technical result; or
susceptibilities of any class or
(c) gives substantial value to the
(ii) it consist exclusively of marks section of the citizens of
goods of any class or section
or indications which may serve in India;
of the citizens of India;
trade to designate the kind,
quality, quantity, intended (c) it comprises or contains
purpose, values, geographical scandalous or obscene
origin or the time of production of matter;
the goods or rendering of the
service or other characteristics of
(d) its use is prohibited under
the goods or service; the Emblems and Names
(Prevention of Improper Use)
Act, 1950 (12 of 1950).
(iii) it consist exclusively of marks
or indications which have become
customary in the trade.
S. 11: Relative grounds of refusal
(a) Likelihood of confusion because of its
(i) Identity with the earlier trade mark and similarity of goods or services covered
by the trade mark
(ii) Similarity to an earlier trademark and of goods or services covered by the
trademark
(b) Its being identical or similar to a well-known (S. 2(zg)) earlier trademark for
goods or services which are not similar to be registered in the name of different
proprietor
(c) Its use is likely to be prevented by virtue of any law of copyright
Registration on the grounds of (b) and (c) mentioned above cannot be refused
unless objection is raised in opposition proceedings by the proprietor of the earlier trademark (s. 11(5))
well-known trademark: S.2 (zg)
• A well-known trademark is a popular mark, logo or a symbol that
represents a brand and also it’s hard earned goodwill and reputation. A
trademark becomes a well-known mark depending on:
• The degree of recognition it receives in the relevant sector;
• The duration of recognition;
• The extent & geographical area of recognition; and
• The value associated with it.
2. Prohibition of registration of names (s. 13)
It prohibits the registration of names of chemical elements or international non- proprietary
names. It provides that no word:
(a) Which is commonly used and accepted name of any single chemical element or any
single chemical compound (as distinguished from a mixture) in respect of a chemical
substance or preparation; or
(b) Which is declared by the WHO and notified in the prescribed manner by the registrar
from time to time, as an international non- proprietary name of which is deceptively
similar to such names,
Shall be registered as a trade mark
Registration of trademark, indicating connections with persons
Section 14: deals with the registration of trade mark which uses names and representation
of living persons or persons recently dead.
Within 20 years prior to the date of application for registration of the trade marks
Consent in writing- if not refused
Section 15: permits the registration of a part of a trademark as well as trademark as
series (‘MC’ series- puff, veggie, nuggets, cafe).
When a trademark consist of several matters, its registration shall confer on the proprietor
exclusive right to use of the trade mark as a whole.
Deceptive Similarity
The plaintiff has to establish that the mark is identical enough to create confusion in the
minds of the buyer and hence would be misleading
These needs to be an element of resemblance, so strong to cause a deception in the minds of
the buyers
The ultimate judge of similarity is the consumer who would be misled into distinguishing
between two marks
Deception arise with regard to:
Deception as to goods
Deception as to trade origin
Deception as to trade connection
LAKME - LIKEME
ASSIGNMENT AND TRANSMISSION OF TRADE MARKS: Chapter V – Section:
37 – 45
Power of registered proprietor to assign and give receipts
Registered trademark is assignable and transmissible, with or without goodwill
(subject to provisions)
Unregistered trademark is assignable and transmissible, with or without
goodwill
If the result of A&T creates exclusive right to the use of trademark in more than
one person and in different parts of India.
Certification trademark cannot be A or T without the consent of the registrar
(AGMARK for agricultural products, ISI mark for electric products, BIS mark
for gold ornaments)
Registration of A&T is necessary to establish title
