IPR U2

TRADEMARKS
Introduction and Overview of Trademark:
1. A trademark is a type of intellectual property consisting of a recognizable sign,
design, or expression that identifies a product or service from a particular source and
distinguishes it from others.
2. It can be any word, phrase, symbol, design, or a combination of these things that
identifies your goods or services.
3. Trademarks are generally considered a form of intellectual property and may or may
not be registered.
4. Trademarks not only help distinguish products within the legal and business systems
—but just as significantly—with consumers.
Evolution of Trademark:
1. The use of trademarks dates back thousands of years, however, we can’t date their
origins with precision.
2. From the Middle Ages, through “police marks” and “responsibility marks,” modern
trademarks slowly developed as the Industrial Revolution sparked the advent of what
is now modern-day capitalism.
3. The re-appellation of the Trademarks and Merchandise Act gave rise to the Trademark
Act 1999; this was done by the Government of India so that the Indian Trademark
Law is in compliance with the TRIPS obligation on the recommendation of the World
Trade Organisation.
Meaning and Definition of Trademark:
1. A trademark is any sign that individualises the goods of a given enterprise and
distinguishes them from goods of its competitors.
2. As per Section 2 (zb) of the Trademark Act, 1999 a trademark means a mark capable
of graphical representation and which is capable of distinguishing goods and services
owned by one person from those of others in the market and includes the shape of
goods, the combination of colours and their packaging.
3. A trademark gives protection for a symbol, word, phrase, design, logo or combination
of all of them. It gives an identity to a product that represents a source of goods or
services.
Object of Trademark:
1. The primary objective of Trademarks is to enhance the recognition of a brand in the
market.
2. The objective of a Trademark extends not just to brand recognition but also brand
protection.
3. Trademarks are used to distinguish your products and services from that of your
competitors.
Features of a Good Trademark:
1. A good trademark should be unique and reflect the quality of the product.
2. Shorter trademarks are easier to be remembered, while people find it hard to
remember long ones.
3. The trademark should be crafted in such a manner that it shall be easily differentiated
from the competitors, and should be registered to be protected.
Different Forms of Trademark:
1. Word Marks: These are words, letters or numbers used to represent a brand.
2. Service Marks: Service Marks represent the service which a company or business
deals in.
3. Logos and Symbols: A logo is a printed/painted figure/design/character and do not
consist of any letters/words/numerals.
4. Shape of Goods: The shape of goods is categorized in Trade Dress (appearance of a
product) wherein, other than a logo or label a product can also be distinguished based
on its packaging.
5. Series Marks: Service marks are trademarks which have a common syllable, prefix or
suffix, thus denoting as a family of marks sharing a 'common name’.
6. Collective Trademarks: These marks are linked with a group of people and not one
single product or service.
7. Certification Mark: The certification mark is created to show a specific quality
standard that the company has met.
Trademark Registry:
1. The Trademark Registry was established in India in 1940 and presently it administers
the Trade Marks Act, 1999.
2. The main function of the Registry is to register trademarks which qualify for
registration as per provisions of the Trade Marks Act and Rules.
3. It acts as a resource and information centre and is a facilitator in matters relating to
trademarks in the country.
4. The objective of the Trade Marks Act, 1999 is to register trademarks applied for in the
country and to provide for better protection of trademark for goods and services and
also to prevent fraudulent use of the mark.
Register of Trademarks:
1. The register of trademark currently maintained in electronic form contains inter alia
the trademark, the class and goods/services in respect of which it is registered.
2. It includes particulars affecting the scope of registration of rights conferred; the
address of the proprietors; particulars of trade or other description of the proprietor;
the convention application date (if applicable).
 3. Where a trademark has been registered with the consent of the proprietor of an earlier
mark or earlier rights, that fact is also included.
Property in a Trademark:
1. Trademark as Property: A trademark is a type of intellectual property. It consists of
a recognizable sign, design, or expression which identifies products or services of a
particular source from those of others.
2. Rights Conferred: The owner of a registered trademark has the exclusive right to use
the mark in relation to the goods or services for which it is registered. The owner can
prevent all others from using an identical or similar mark for identical or similar
goods or services if it results in a likelihood of confusion.
3. Transfer of Rights: The rights in a trademark can be transferred through assignment,
licensing, or franchising. The owner of the trademark (the licensor) grants a license to
a third party (the licensee) to commercially use the trademark on mutually agreed
terms.
4. Economic Value: Trademarks can have significant economic value. They can be sold,
licensed, used as a security interest to secure a loan, and more.
5. Infringement and Remedies: If a trademark is infringed by unauthorized use, the
owner of the trademark can seek legal remedies, including injunctions to prevent
further use, damages for loss suffered, and account of profits gained by the infringer.

Registrable and Non-registrable Marks:

1. Registrable Marks: These are marks that can be graphically represented and are
capable of distinguishing the goods or services of one person from those of others.
They include conventional trademarks such as words, letters, numerals, pictorial
devices, and non-conventional trademarks such as shapes, colours, smells, and
sounds.
2. Non-registrable Marks: These are marks that do not meet the criteria for registration.
For example, a mark that is not distinctive, is descriptive, or is likely to cause
confusion with an existing registered trademark would not be registrable.
Basic Principles of Registration of Trademark:
1. Eligibility and Availability: The first step in the registration process is determining
whether the trademark is eligible for registration and conducting a clearance search to
see if there is a similar mark already registered.
2. Application: The registration process in India is on a ‘first to file’ basis. Therefore, it
is important to apply for registration as soon as possible.
3. Rights Conferred: The owner of a registered trademark has the exclusive right to use
the mark in relation to the goods or services for which it is registered. The owner can
prevent all others from using an identical or similar mark for identical or similar
goods or services if it results in a likelihood of confusion.
  Yahoo! Inc. v. Akash Arora & Anr:
1. Parties Involved: The plaintiff was Yahoo! Inc., the owner of the trademark ‘Yahoo!’
and the domain name ‘Yahoo.Com’. The defendants were Akash Arora & Anr, who
adopted the name ‘Yahooindia’ for similar services.
2. Issue: The main issue was whether the defendants had infringed upon the plaintiff’s
trademark by creating a website that was deceptively similar to Yahoo!'s website.
3. Arguments: Yahoo! Inc. argued that the defendants had dishonestly adopted a
trademark similar to theirs and were passing off their services as that of Yahoo! Inc.
The defendants contended that the word “Yahoo!” is a general dictionary word and
could not have acquired any distinctiveness.
4. Court’s Decision: The Delhi High Court ruled in favour of Yahoo! Inc. and held that
the defendants had indeed infringed Yahoo!'s brand by creating a website that was
mainly analogous to Yahoo!'s website.
5. Significance: This case was one of the first in India to address the issue of
“cybersquatting” and set a precedent for the protection of domain names under the
Trademark Act, 1999.
This case highlights the importance of protecting intellectual property rights in the digital age
and provides valuable insights into how courts interpret and apply trademark law in the
context of the internet.

 Coca-Cola Company v. Bisleri International Pvt. Ltd:

1. Parties Involved: The plaintiff was The Coca-Cola Company, the owner of the
trademark ‘MAAZA’. The defendants were Bisleri International Pvt. Ltd., who had
sold the intellectual property rights of ‘MAAZA’ among other brands to Coca-Cola.
2. Issue: The main issue was whether Bisleri International Pvt. Ltd. had infringed upon
Coca-Cola’s trademark by exporting beverages under the ‘MAAZA’ brand to Turkey.
3. Arguments: Coca-Cola argued that Bisleri had breached the agreement by applying
for registration of the trademark ‘MAAZA’ in Turkey and by allowing third-party
companies to sell the products in Turkey. Bisleri contended that they retained the right
to use the ‘MAAZA’ trademark outside of India.
4. Court’s Decision: The Delhi High Court ruled in favor of Coca-Cola and held that
Bisleri had indeed infringed Coca-Cola’s brand by exporting beverages under the
‘MAAZA’ brand to Turkey.
5. Significance: This case set a precedent in India by ruling that the export of goods can
be considered as use of the trademark in the exporting country and can constitute
infringement.
This case highlights the importance of protecting intellectual property rights in international
trade and provides valuable insights into how courts interpret and apply trademark law in the
context of exports.
Deceptive Similarity:
1. Deceptive similarity occurs when one party adopts a trademark that is the same as or
is so similar to an existing mark that, when it is applied to the second user’s goods or
services, the purchasing public is likely to be confused, mistaken, or deceived about
the source of goods or services themselves, or about the relationship between the
parties that make the goods or provide the services.
2. A mark is deemed to be deceptively similar to another mark if it so merely resembles
that other mark as to be likely to or cause confusion.
3. Some examples of deceptive similar marks are PUMA, COMA; NIKE, NUKE;
STARBUCKS COFFEE, SARDARBUKSH COFFEE & CO., etc.
Assignment of Trademarks:
1. Assignment of a trademark means to transfer the owner’s right in a trademark to
another person. The transferring party is called the assignor, and the receiving party is
called the assignee.
2. Both registered and unregistered trademarks can be assigned with or without the
goodwill of the business.
3. There can be four types of Trademark assignment: Complete Assignment, Partial
Assignment, Assignment with Goodwill, and Assignment without Goodwill.

Types of trademark assignment:

1. Complete Assignment: In this case, all the rights that are vested in the registered
trademark are assigned to a third party. The assignee then enjoys all the rights that the
original trademark owner had.
2. Partial Assignment: The transfer of ownership is restricted only to certain
products/services as decided by the parties and expressed in the Trademark
Assignment Agreement.
3. Assignment with Goodwill: Under this type of assignment, the owner transfers the
value of the trademark along with its rights. After the assignment, the assignee will be
able to use the trademark for any class of goods & services.
4. Assignment without Goodwill: Under this type, the assignor transfers the rights of
the registered trademark with the restriction to use it for the goods & services already
in use by the assignor.

Transmission of Trademarks:
1. Definition: Transmission of a trademark refers to the transfer of the rights of a
trademark through legal proceedings from the assignor to the assignee 1. This means
the rights of the trademark have been transferred due to some legal reasons or by the
legal representatives of the owner after their death1.
2. Registered and Unregistered Trademarks: Both registered and unregistered trademarks
can be assigned and transmitted from one person to another with or without the
goodwill of the business concerned2.
3. Difference between Assignment and Transmission: In case of an assignment of a
trademark, there is a change in the ownership of the registered brand and in case of
 Transmission, the right in the trademark continues to vest with the original owner but
only a few restricted rights to use the brand/mark are given to the third party2.
4. Process of Transmission: The process of transmission involves the transfer of
ownership rights in situations where the original owner passes away or there is a
change in the ownership due to legal proceedings, inheritance or other circumstances 3.
These points provide a basic understanding of the Transmission of Trademarks. It’s important
to note that the specifics can vary based on jurisdiction and the details of the case23.

 Parle Products v Future Consumers case:

1. Parties Involved: The case was between Parle Products Pvt. Ltd. and Future
Consumer Ltd.
2. Issue: Parle Products, the manufacturer of fast-moving consumer goods (FMCGs)
including the world’s largest selling biscuit brand “PARLE-G”, “MONACO”,
“KRACKJACK” and “HIDE & SEEK”, filed a copyright infringement suit against
Future Consumer Ltd. Parle alleged that Future Consumer’s products “CrackO”,
“Kracker King” and “Peek-a-Boo” had packaging that was deceptively similar to their
own.
3. Court’s Observation: The Bombay High Court noted that the similarities between
the packaging of the products from both companies could not be a coincidence. The
court stated that it appeared as though Future Consumer must have had Parle’s
products before them while designing their trade labels and packaging.
4. Court’s Decision: The court granted interim relief in favour of Parle Products,
effectively restraining Future Consumer from infringing the copyright of Parle
Products.

Infringement of Trademark:
1. Definition: Trademark infringement is the unauthorized use of a trademark or service
mark on or in connection with goods and/or services in a manner that is likely to
cause confusion, deception, or mistake about the source of the goods and/or services.
It is a violation of the exclusive rights attached to a trademark without the
authorization of the trademark owner or any licensees.
2. Conditions for Infringement: Infringement occurs when an unauthorized person
uses a mark that is identical or deceptively similar to the registered trademark in
relation to the goods or services in respect of which the trademark is registered. The
term ‘deceptively similar’ means that when an average consumer looks at the mark, it
is likely to confuse him/her of the origin of the goods or services.
3. Types of Infringement: There are two types of infringement: Direct and Indirect.
Direct infringement is defined by Section 29 of the Trademarks Act, 1999. It occurs
when an unauthorized person uses a mark that is identical or deceptively similar to the
registered trademark.
 4. Legal Actions and Remedies: The Trademarks Act, 1999 lays down the rules dealing
with registration, protection, and penalties against infringement regarding trademarks.
Legal actions can be taken against the infringer, and remedies can be sought.

 Patel Field Marshal Agencies Ltd v P.M Diesels Ltd case:

1. Parties Involved: The case was between Patel Field Marshal Agencies and P.M.
Diesels Ltd.
2. Issue: The respondent, P.M. Diesels Ltd, was the registered owner of three
trademarks, all of which had the common feature of the words “Field Marshal”. Patel
Field Marshal Agencies filed a suit for infringement of trademark and rendition of
accounts of profit for the use of the mark “Marshal” by the appellant.
3. Court’s Observation: The Supreme Court dealt with an important question of the
Trademark Law in the case and it adjudicated on Sections 46, 56,107,111 of the Trade
and Merchandise Marks Act, 1958.
4. Court’s Decision: The Supreme Court addressed the dispute regarding the process
followed in the rectification pleadings and rested the anomalies concerning the issue
of invalidity and the recourse available remedies S.47, S.57 and S. 124 of the
Trademarks Act,1999 in an infringement suit.

This case highlights the importance of intellectual property rights and the legal consequences
of infringing upon these rights. It also underscores the significance of unique packaging and
branding in the FMCG sector,

Passing off, Domain name protection, and registration:

1. Definition: Passing off is a common law tort used to enforce unregistered trademark
rights. It occurs when an unauthorized person uses a mark that is identical or
deceptively similar to the registered trademark. The tort of passing off protects the
goodwill of a trader from misrepresentation.
2. Misrepresentation: The action of passing off takes place when one party
misrepresents the goods or services of another person as his or her own. It leads to
confusion among customers and consumers, as well as proves detrimental to the
business of the original or legitimate owner of the trademark.
3. Goodwill: Goodwill is a crucial element in passing off cases. The plaintiff must prove
that they have a reputation or goodwill associated with the goods sold under the brand
name.
4. Damage: The plaintiff must also demonstrate that they have suffered or are likely to
suffer damage due to the defendant’s misrepresentation.
5. Remedies: The law provides remedies for passing off, which may include an
injunction to prevent further use, damages for loss suffered, and legal costs.

Domain Name Protection

Domain protection is the process of keeping your website’s unique name, or domain name,
safe from risks. It uses different safety steps like locking your domain, adding an extra
password step, and keeping your domain details private to stop online threats and keep your
online identity safe. Domain privacy protection hides your personal information from the
public WHOIS record, protecting you from spam, scams, and hackers.
 1. Domain Name Registration: Domain names are user-friendly forms of internet
addresses commonly used to find websites. Domain names are created as per the
procedures and rules of the Domain Name System (DNS), and the names registered in
the DNS are domain names.
2. Domain Naming Conventions: Domains can contain the English-language letters a-
z, and the digits 0-9. Hyphens can also be used but it cannot be used at the beginning
and at the end of a domain name. Two hyphens together are usually not permitted and
also hyphens cannot appear at both third and fourth positions.

Infringement of trademarks is a serious offence and can lead to both civil

and criminal penalties.

1. Civil Action: The trademark owner has the right to sue the offender in court on a civil
basis. If the infringement is found guilty, they may be forced to pay compensation or
cease using the brand.
2. Criminal Action: The trademark owner also has the option of charging the infringer
with a crime. The Trademark Act, 1999 recognises infringement of trademarks as a
cognizable offence i.e., a police complaint can be lodged, and the infringers can be
prosecuted directly.
3. Penalties: The infringer can face imprisonment for a minimum period of 6 months
which can extend up to 3 years. The infringer may also end up paying a fine ranging
from Rs.50,000 to Rs.2,00,000.
4. Other Remedies: Apart from these serious punishments, the court can also order a
temporary and permanent injunction, the destruction of goods with infringed
trademark, compensation for damage, and the cost of legal proceedings.

S.47, S.57 and S.124 of the Trademarks Act 1999

1. S.47 - Removal from register and imposition of limitations on ground of non-use:

This section provides for the removal of a registered trademark from the Register and
imposition of limitations on grounds of non-use. A cancellation may also be filed on
the grounds of mala fide registration, or wrongly remaining on the Register.
2. S.57 - Power to cancel or vary registration and to rectify the register: This section
provides the framework for addressing the issue of trademark invalidity raised by a
plaintiff in response to a defendant’s assertion of rights based on the registration of
their trademark.
3. S.124 - Stay of proceedings where the validity of registration of the trade mark is
questioned: This section provides the framework for staying proceedings where the
validity of registration of the trademark is questioned.