TRADEMARK

Dr. P. K. Barua Dept of Plant Breeding & Genetics AAU Jorhat

What is a Trademark (Trade mark)? A trade mark popularly known as brand name, is an identification symbol which may be a word or name, logo or symbol or phrase or device or label or numeral etc. or a combination thereof used in the course of trade to enable the purchasing public to distinguish one trader's goods or services from similar goods or services of other traders. A trademark used for a service, not goods or product is also referred to as service mark. The terms "trademark" and "mark" are commonly used to refer to both trademarks and service marks. Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. There are four systems of trademark protection: Common (civil) law State registration as in the provincial states of e.g. USA where some individual states provide for registration of trademarks. Federal registration where trademark registration system is according to federal (central) governments law, as in most countries. International registration system under Madrid Agreement In order to gain common law rights in a trademark, the owner must use the mark on goods or services in commerce. These rights may be limited to the area in which the owner is doing business. Countries like India have, only federal registration system for trademarks. However, some countries like USA have provision of registration in any State as well as from the federal trademarks office. In order to secure a State registration, the owner must use the goods or services in commerce and simply file the mark with the Secretary of State. The boundaries of protection for a State trademark are limited to the particular State. A federal trademark registration extends the owner's trademark rights nationwide. The federal registration serves as notice to all other trademark owners and generally trumps any other form of trademark protection, of course with some limitations. Trademarks, which are used in inter-State or foreign commerce, may be registered with the Trademark Office of concerned countries individually or through Madrid Agreement Route. India is, however, not a Member of the Madrid Agreement.

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Similarities between trademark and geographical indication 1. Both TM and GI are sign/ symbol/ logo to identify goods/ product. 2. Both can be maintained perpetually. 3. Both are exclusive rights, protected by registration. 4. Both can be applied together, may be in combination with other IPRs. Example:

Here TATA TEA is trade mark as the tea is a product of Tata Company, whereas Darjeeling is the GI

However, trademark is widely different from geographical indication conceptually, as: 1. Trademark is applicable to both goods and services. 2. TM sign remains same everywhere. 3. It identifies goods/ service of a company/ undertaking/ enterprise to distinguish from that of its competitors. 4. TM is private property of the registered owner. 5. TM can be assigned, licensed or inherited. Functions of a Trade Mark

Geographical indication is applicable to goods only. GI is just name, the sign may not be constant, unless it is registered as logo. Identifies goods to indicate its geographical origin. GI is community right. Only association/ authority can apply for registration. GI cannot be assigned, licensed or inherited.

It identifies the product of its origin. It guaranties its unchanged quality. It advertises the products. It creates an image for products.

For registration of trademark the mark must be distinctive and not deceptive or contrary to law or morality, and not identical or similar to any earlier trademarks for the same or similar goods/ service.

What does TRIPS Agreement say about trademark? Four articles (15-18) of the TRIPS Agreement under SECTION 2 provide the standards for trademarks.
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Article 15: Protectable Subject Matter Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Article 16: Rights Conferred The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owners consent from using in the course of trade identical or similar signs for identical or similar goods or services. Article 17: Exceptions Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties. Article 18: Term of Protection For initial registration or each renewal of registration, not less than 7 years. The registration shall be renewable indefinitely. Relevant Forms and Procedure for obtaining Trademark in India The aim of the Trademarks Registry is to provide for registration and better protection of trade marks in India and for the prevention of the use of fraudulent marks on merchandise. What are the benefits of trademark registration? A. Trademark registration protects the goodwill of a business and also helps to identify and distinguish the source of the goods or services of one party from those of others. Trademark registration is an evidence of ownership of the trademark and also confirmation of the constructive notice nationwide issued of the trademark owner's claim on it. Trademark registration in India can also be used as a basis for obtaining registration in foreign countries. How to select a Trade Mark? The trademark may be selected with following precautions: A trademark may be a word, letter a device or numeral or any combination thereof. It is better if it is simple in design. If it is a word, it should be easy to speak, spell and remember. The ideal word for a trademark is an invented or coined word. A word which are laudatory or which directly describes the character or quality of the goods or services should not be adopted. Geographical names connected with the reputation or quality of the goods for which registration is sought should not be adopted. Are all Trade Marks registrable? No. It is not possible to register a trademark which is confusing with a trademark of another trader who has been using the trademark earlier for the same goods or a trademark or which describes the
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character or quality of the goods which other traders may reasonably want to use in the course of their business. The mark should not conflict with a trademark already registered or pending registration in respect of similar goods. Also some marks are prohibited from registration under the directions of the Government. Who can file an application for trademark registration? An individual person, corporation, authority or partnership who is owner of the trademark can apply. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark. What rights does registration of the mark bring? The registration of a trade mark confers on the registered proprietor of the trade mark the exclusive right to use the trade mark in relation to the goods/ service in respect of which the trade mark is registered and the right to take legal action against others who may infringe the registered trade mark or one resembling it in relation to similar goods/ service. Is Registration of a Trade Mark compulsory? No. Registration of a trade mark is not compulsory, but without registration the owner of a trade mark cannot initiate a legal action for infringement to protect his mark if it is used or imitated by others. Suing for infringement of a registered trade mark is much simple than launching a common law action for passing off to protect an unregistered trade mark since the owner of a registered trade mark can base his case simply upon the fact that his mark has been registered. What trademarks can be registered? A trade mark which consists of at least one of the following essential particulars can be registered. the name of a company, individual or firm represented in a particular or special manner; the signature of the applicant for registration; one or more invented words; one or more words having no direct reference to the character or quality of the goods any other distinctive trade mark; a mark which has acquired distinctiveness by use over a prolonged period of time, may be registered by its owners; Some marks are not registrable as trademarks: Generic terms: For example, if a machine tool manufacturer intends to register the trademark "Drill" to sell a drilling machine. Descriptive or laudatory terms: For example, terms such as RAPID, BEST, CLASSIC or INNOVATIVE. Deceptive trademarks: For example, marketing a non-gold item of jewellery under the trademark PURE GOLD.
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Marks considered as contrary to public order or morality: For example, a trademark with a logo showing cruelty to an animal would not be allowed. Flags, armorial bearings, official hallmarks and emblems of states and international organizations that have been communicated to the International Bureau of WIPO are excluded from registration. Common names and surnames: Common names and surnames are normally not registrable as they are not distinctive. Safeguards to be taken by the owner of a registered trade mark to protect his rights: 1. S/He should use and renew the trade mark regularly once in every decade wef date of registration. 2. If his/her trademark is copied by others, s/he should file a suit for infringement and passing off* and also take criminal action. In E&IT sector, detecting of infringers is easy by way of keeping constant watch of Internet Websites. 3. S/He should keep a watch in respect of trademarks advertised in the Trademarks Journal published by the Trademark Office and institute timely opposition proceedings if identical or deceptively similar trademarks are published. 4. S/He should initiate rectification proceedings if an identical or deceptively similar trademark is registered. (*Both the terms infringement and passing off mean violation of rights of the IP owner. In case of infringement, the remedy will be according to the IPR law, whereas in case of passing off, the protection will be given by common laws. Trademark registration is optional. If a trademark of an organization is not registered, and unauthorizedly used by other parties for commercial benefits, it will be considered as passing off action.) How can one find out whether a mark is already registered? In order to determine whether any person or company is using a particular trademark, a trademark search can be conducted either through the Trademark Registry Mumbai or some attorneys who have the requisite national database of Indian Trademarks. How long does a trademark registration last? A trademark registration is valid for ten years from the date of filing. You have to apply for renewal during this time-period in every decade with effect from said date. Do I have to be an Indian citizen to obtain a trademark registration? No. However, an applicant's citizenship must be set forth in the record. If an applicant is not a citizen of any country, then a Statement to that effect is sufficient. If an applicant has dual citizenship, then the applicant must choose which citizenship will be printed in the Official Gazette and on the certificate of registration. Is a trademark registered in India valid outside the country as well? No. Certain countries, however, do recognize a trademark registration in India as a basis for registering the mark in those countries. Registration has to be according to the laws of each country.
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Can the ownership of a trademark be assigned or transferred from one person to another? Yes. A registered mark, or a mark for which an application to register has been filed is assignable or transferred by license. How do I contest someone else using a trademark similar to mine? There are several ways to dispute use of your trademark by a third party. It can be by way of filing a suit in a District Court where infringement has occurred or follow the path of arbitration proceedings or enter into an out of court settlement against some new contract/ consideration. Organizational structure for administration of trademarks in India The Trade Marks Registry is a subordinate office under the Department of Industrial Development, Ministry of Industry, Govt. of India. It is headed by the Controller General of Patents, Designs and Trade Marks. The Head Office of the Trade Marks Registry is located at Mumbai with branches at New Delhi, Chennai, Kolkata and Ahmedabad. The Head Office of the Trade Marks Registry, Mumbai is headed by the Joint Registrar of Trade Marks and the branch offices by the Deputy/ Assistant Registrar of Trade Marks. Website of Indian Patent, Design, Trademark and GI Office: www.ipindia.nic.in Other forms of trademarks Collective marks: These are used to distinguish goods or services produced or provided by members of an association or a common trademark is used for various different products from a company/ undertaking. Certification marks: These are used to distinguish goods or services that comply with a set of standards and have been certified by a certifying authority. Examples: Agmark, ISI mark, Woolmark, Silkmark

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Notice of Trademark The showing of the symbols , TM, SM or other equivalent symbols next to a trademark is not a statutory requirement. However, such marking of a trademark serves as a warning to possible infringers and counterfeiters. Classification of goods and services Name of the classes (Fourth schedule of TM Rules, 2002) Class 1. Chemical used in industry, science, photography, agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesive used in industry Class 2. Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordents; raw natural resins; metals in foil and powder form for painters; decorators; printers and artists Class 3. Bleaching preparations and other substances for laundry use; cleaning; polishing; scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices Class 4. Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels(including motor spirit) and illuminants; candles, wicks Class 5. Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparation for destroying vermin; fungicides, herbicides Class 6. Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores Class 7. Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs Class 8. Hand tools and implements (hand-operated); cutlery; side arms; razors Class 9. Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus Class 10. Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials Class 11. Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying ventilating, water supply and sanitary purposes
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Class 12. Vehicles; apparatus for locomotion by land, air or water Class 13. Firearms; ammunition and projectiles; explosives; fire works Class 14. Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and other chronometric instruments Class 15. Musical instruments Class 16. Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks Class 17. Rubber, gutta percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal Class 18. Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery Class 19. Building materials, (non-metallic), non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal. Class 20. Furniture, mirrors, picture frames; goods(not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl, meerschaum and substitutes for all these materials, or of plastics Class 21 . Household or kitchen utensils and containers(not of precious metal or coated therewith); combs and sponges; brushes(except paints brushes); brush making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes Class 22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes) padding and stuffing materials(except of rubber or plastics); raw fibrous textile materials Class 23. Yarns and threads, for textile use Class 24. Textiles and textile goods, not included in other classes; bed and table covers. Class 25. Clothing, footwear, headgear Class 26. Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers Class 27. Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings(non-textile)
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Class 28. Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees Class 29. Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats Class 30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces, (condiments); spices; ice Class 31. Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt Class 32. Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages Class 33. Alcoholic beverages (except beers) Class 34. Tobacco, smokers' articles, matches SERVICES (service marks) Class 35 .Advertising, business management, business administration, office functions. Class 36 .Insurance, financial affairs; monetary affairs; real estate affairs. Class 37 . Building construction; repair; installation services. Class 38. Telecommunications. Class 39. Transport; packaging and storage of goods; travel arrangement. Class 40. Treatment of materials. Class 41. Education; providing of training; entertainment; sporting and cultural activities. Class 42. Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software. Class 43. Services for providing food and drink; temporary accommodation. Class 44. Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services. Class 45. Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

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Steps to be taken before applying for registration: 1. Market survey through an investigating agency, etc. to ascertain whether any identical or deceptively similar mark is used for the same goods or services by any other person /party in the market. 2. It is desirable to seek (Form No. TM-55 with the prescribed fee of Rs.50/) for preliminary advice from the Registrar regarding the distinctiveness of the mark. 3. Also desirable to request on form TM-54 with fee of Rs.50/- to obtain an official report to ascertain whether any identical or deceptively similar trade mark is pending for registration in respect of the same goods services. 4. Desirable: Personal inspection or search through the records of the Trade Marks Registry (fee of Rs.50/- per hour). Application for a trademark 1. 2. 3. 4. 5. In Form TM-1 in triplicate + 10 copies of additional representations of the mark. Prescribed fee for registration: Rs.2500/ for TM, Rs.10000/ for collective or certification mark. Renewal fee: Rs. 5000/ Apply at the appropriate Registry office. One application per class of goods/ service.

Additional representations 1. The mark, name and address of the applicant, class of goods/ service and date from which the mark has been used etc. 2. A trademark in preferably a black and white bromide prints (8 cm x 8 cm). 3. If colour is an attribute in the Trademark, coloured photographs/ print to be provided. Remedies against infringement 1. Issuance of a permanent injunction to stop the infringing activity. 2. Payment of damages. 3. Destruction of the infringing goods. 4. Disposal of the goods, outside the channels of commerce. Differences between Passing off and Infringement: They are slightly different. - Statutory remedy is available for infringement whereas the action for passing off is a common law remedy. - For infringement it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark but in the case of a passing off action, the need is to prove that the marks
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are identical or deceptively similar which is likely to deceive or cause confusion and damage to the business of the company. - When a trademark is registered, registration is given only with regard to a particular category of goods and hence protection can be given only to these goods and action of infringement would be taken; but in a passing off action, the defendants goods need not be the same, they may be related or even different. Cases of Infringement 1. No one can use the trademark which is deceptively similar to the trademark of other company. As in the case of Glaxo Smith Kline Pharmaceuticals Ltd. v. Unitech Pharmaceuticals Pvt. Ltd. [1] the plaintiff claimed that defendants are selling products under the trademark FEXIM that is deceptively similar to the plaintiffs mark PHEXIN, which is used for pharmaceutical preparations. The defendants were selling anti-biotic tablets with the trademark `FEXIM' with the packing material deceptively similarly to that of the plaintiff, whereby intending to not only to infringe the trademark but also to pass off the goods as that of the plaintiff as the two marks are also phonetically similar. The Court restrained the defendant from using the trademark `FEXIM' or any trademark deceptively similar to the trademark of the plaintiff `PHEXIN', any label/packaging material deceptively similar and containing the same pattern as that of the plaintiff. 2. If a party using the deceptively similar name only for a single shop and not spreading its business by use of that particular name then also that party could be stopped from using the trade name of other company. This is given in M/s Bikanervala v. M/s Aggarwal Bikanerwala[2] where the respondent was running a sweet shop in with the name of AGGARWAL BIKANERVALA and the plaintiff was using the name BIKANERVALA from 1981 and also got registered it in the year 1992. hence they applied for permanent injunction over the use of the name AGGARWAL BIKANERWALA for the sweet shop by the defendant. Court held in favour of the plaintiff and stopped defendant from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in food articles for human consumption under the impugned trade mark/trade name/infringing artistic label 'AGGARWAL BIKANER WALA' or from using any trade mark/trade name/infringing artistic work containing the name/mark 'BIKANER WALA/BIKANERVALA' or any other name/mark/artistic work which is identical or deceptively similar to the plaintiff's trademark 'BIKANERVALA'. 3. Even if a company is not doing business in country, but it is a well known company or well known goods, then also it would be entitled to get authority over its trademark. As given in case of N.R. Dongare v. Whirlpool Corp. Ltd. where the defendants have failed to renew their trademark WHIRLPOOL and in the mean time the plaintiffs have got registration of the same. In this case court said that though there was no sale in India, the reputation of the plaintiff company was travelling trans border to India as well through commercial publicity made in magazines which are available in or brought in India. The WHIRLPOOL has acquired reputation and goodwill in this country and the same has become associated in the minds of the public. Even advertisement of trade mark without existence of goods in the mark is also to be considered as use of the trade mark. The magazines which contain the advertisement do have a circulation in the higher and upper middle income strata of Indian society. Therefore, the plaintiff acquired transborder reputation in respect of the trade mark WHIRLPOOL and has a right to protect the invasion thereof.

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A Case of Passing Off Even if the goods are not same or similar to each other, then also no one can use the registered trademark of a company for any kind of goods which may result in the harm to the business and reputation of the company which is the owner of the trademark. In Honda Motors Co. Ltd. v. Mr. Charanjit Singh and Ors defendant Company was using the trade name HONDA for Pressure Cookers which they are manufacturing in India and even when their application for registration of this trademark had been rejected by the registrar they continued using it and again applied for registration and hence plaintiff has brought this plaint. Plaintiff is the well known company having presence all over the world in the field of Motor Cars, Motorcycles, Generators and other electronic appliances. They are doing business in India in association with the Siddharth Shriram Group with the name Honda Siel Cars India Ltd. Plaintiff has established that his business or goods has acquired the reputation and his trade name has become distinctive of his goods and the purchasing public at large associates the plaintiff's name with them. The use of trademark HONDA by respondents is creating deception or confusion in the minds of the public at large and such confusion is causing damage or injury to the business, reputation, goodwill and fair name of the plaintiff. Hence court has restricted the defendants from using the trademark HONDA in respect of pressure cookers or any goods or any other trade mark/marks, which are identical with and deceptively similar to the trade mark HONDA of the plaintiff and to do anything which amounts to passing off to the goods of the plaintiff. International protection Trademarks used in international trade may be registered with the Trademark Offices of concerned countries individually or through the provisions of the Madrid Agreement. Madrid System for the International Registration of Marks The Madrid system functions under the Madrid Agreement (1891) and the Madrid Protocol (1989). It is administered by the International Bureau of WIPO, Geneva, Switzerland. 56 Countries are party to Madrid Agreement (1891) 83 Countries are party to Madrid Protocol (1989)

India is not party to the Madrid Agreement or Protocol.

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