INTELLECTUAL PROPERTY ACT – TRADE MARKS ACT, 1999Q1. What is trade mark? State its Function and Object?A1. Introduction & Meaning 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 to the purchasing public that they are the goods manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt in by other persons. A person who sells his goods under a particular trade mark acquires sort goods. Such a right acquired by use is recognized as a form of property in the trade mark. Statutory definition of trade mark-section 2(1) of the 1999 act Trade mark must be a mark which includes a device, brand, shape of goods, packaging or combination of colors or any combination thereof— s. 2(1) (m). 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 in 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 by registration under the Act or by use in relation to particular goods or services. The right of proprietorship acquired by registration is a statutory right which requires no actual user but only an intention to use the mark. Function of a trade mark Under modern business conditions a trade mark performs four functions: (1) it identifies the product and its origin, (2) it guarantees its unchanged quality, (3) it advertises the product, and (4) it creates an image for the product. The object of trade mark law The object of trade mark law is to deal with the precise nature of the rights which a person can acquire in respect of trade marks, the mode of acquisition of such rights, the method of transfer of those rights to others, the precise nature of infringement of such rights, and the remedies available in respect thereof.Q2. What is a good trade mark?A2. Apart from distinctiveness or capable of distinguishing a good trade mark should possess the following attributes: It should be easy to pronounce and remember, if the mark is a word. In the case of device mark the device should be capable of being described by a single word. -.
It must be easy to spell correctly and write legible. It should not be descriptive but may be suggestive of the quality of the goods, It should be short, It should appeal to the eye as well as to the ear. It should satisfy the requirements of registration. It should not belong to the class of marks prohibited for registration. In general a manufacturer of goods is free to adopt any mark to distinguish his goods.Q3. Explain the procedure for Registration of Trade Marks?A3. Trade marks registry- sections 5 and 6 An office called the Trade Marks. Registry has been established for the purpose of registration of trade marks, maintenance of the register and matters incidental thereto. The Head Office of The Registry is at Mumbai. It has branch office at Kolkata, Delhi, Chennai and Ahmedabad. The Trade Mark Registry has a seal. The Trade Mark 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 Register, Deputy Registers, Assistant Registrars, Examiners of Trade Marks and a Complement of Clerical staff. Procedure for registration The procedure for registration of trade marks is contained in sec. 18-24 of the Trade Mark Act 1999. Step 1: Preliminary advice and search Before or after applying for registration he may also request for the Registrars opinion as to the distinctive-character of the mark. The Registrars search report or opinion is not, however, binding on him. Step 2: Examination and objections The Registrar will cause the application to be examined and communicate to the applicant any objection to the mark which mainly relates to distinctive character and similarity with already registered marks. The applicant can put forward his case either in writing or at a hearing. If the application is accepted, it will be advertised in the Trade Marks Journal. If refused, the applicant may go on appeal to the Appellate Board. If the application is refused on the ground of lack of distinctive character, the applicant may, after some years of use, make a fresh application. Step 3: Opposition to registration – section 21 Every application accepted will be advertised in the Trade Marks Journal (an official publication.) any person may object to the registration by following the procedure for the prescribed purpose. The Registrar may either accept-the application; with or without condition or limitations or refuse the application. Conditions are in the form of disclaimer of certain parts of the mark or as to mode of use. Limitations may be in the form of amendment of the goods or as to area of the use of the mark or as to mode of use. Step 4: Onus The onus of establishing a case for registration is on the applicant. Step 5: Duration and renewal of registration- sections 25 and 26 If the application for registration after its advertisement is unopposed; or if opposed decided in favor of registration the mark will be registered as of the date of the application for
registration. The first registration is for a period of ten years which can be renewed from time to time by paying the renewal fee. Although registration is antedated to the date of application, no infringement action can be instituted before the mark is actually entered on the register. If the mark is not renewed, it will be removed from the register but can be restored if a request is made to that effect within one year from the date of expiry of registration or last renewal. Step 6: Certification trade mark- sections 69-78 Trade marks indicate trade sources or trade connection. There is a class of marks the purpose of which is to indicate that the goods on which it is impressed have been certified by some competent person in respect of some characteristic of the goods like origin, composition, mode of manufacture or quality.Q4. Explain the provisions relating to Infringement of Trademarks?A4. Infringement of trade marks- section 27 and 29(1) A registered trademark will be infringed if the person in course of the trade, in relation to the same goods for which the mark is registered, uses without authority the same mark or deceptively similar mark. if the whole of the registered mark is taken the addition of the other matter will not affect the issue. Fraudulent intention is not necessary to prove infringement. The mark must be used in the course of trade as a trade mark and use must be of a printed or other visual representation of the mark. Use on advertisement, invoices or bills would be infringement. Use of the mark as part of the trading style of the defendant is also an infringement. Use on reconditioned or second hand articles will infringe the registered mark even if it is made clear that the goods are not original but only reconditioned. Where the mark registered consists of a descriptive word, surname or geographical name, any bonafide use of that word or name by others for descriptive purposes is protected and will not be an infringement. Infringement under section 29(2) to (9) Under s. 29(2) & (3) the following uses of the registered trade mark which are likely to cause confusion or likely to have an association with the registered mark also constitute infringement of the registered trade mark: marks identical and goods or services similar; marks similar and goods or services identical or similar; Marks identical and goods or services identical. Section 29(4) Marks identical or similar, and goods or services not similar; and the registered trade mark has a reputation in India: and the use of the mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark. Section 29(5) Mark used as a trade name or part of trade name or name of business concern dealing in the goods or services in respect of which the trademark is registered. Section 29(6) For the purpose of this section (i.e.s.29) a person uses a registered trade mark if, in particular he-
a. Affixes it to goods or to the packaging thereof; b. Offers or exposes goods for sale, puts them on the market, or stocks them for there purposes under the registered trade mark; c. Imports or exports goods under the mark; or d. Uses the registered trade mark on business papers or in advertising. It would appear that this sub-section will apply to all kinds of infringement where the marks are similar and/or the goods are similar. Section 29(7) Unauthorized application of the registered trade mark to a material intended to be used for labeling packaging goods as a business paper, or for advertising goods or services, provided that such person when he applied the trade mark knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee. Section 29(8) Any unauthorized advertisement of the registered trade mark if such advertisement. a. takes unfair advantage of and is contrary to honest practices in industrial or commercial matters, or b. is detrimental to its distinctive character; or c. Is against the reputation of the trade mark. This refers to comparative advertisement. Section 29(9) Unauthorized spoken (oral) use of words, which constitute distinctive elements of a registered trade mark. The various types of infringement listed under s.29(2) to (9) involves expressions like similar mark, similar goods or services, use of the mark without de cause, taking unfair advantage, detrimental to distinctive character or repute, contrary to honest practices in industrial or commercial matters, against the reputation of a trade mark, and distinctive elements of a registered trade mark.Q5. Explain the law relating to the passing of Property under Intellectual property Act?A5. Classical formulation of passing off No man is entitled to represent his goods as being the goods of another man, and no man is permitted to use any mark, sign or symbol, devise, or other means, whereby, without making a direct false representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer. This principle also applies to business share no goods are involved. It is an actionable wrong for any person to pass off his goods or business as and for the goods or business of another person by whatever means that result may be achieved. Passing off is a form of tort The law of passing off, based on common law, has remained substantially the same over more than a century though its formulation has changed over the time. The object of this law is to protect the goodwill and reputation of a business from encroachment by dishonest competitors. Passing off by misrepresenting connection
In certain circumstances passing off action will lie when there is a representation to the effectthat the defendants goods or business is connected or associated with the goods or business ofthe plaintiff.Modern formulation of the law of passing offThe essential characteristics which must be present in order to create a valid cause of actionfor passing off ahs been stared as follows: a. misrepresentation, b. made by a person in the course of trade, c. to prospective customers of his or ultimate customers of goods or services supplied by him, d. which is calculated to injure the business or the goodwill of another trader (in the sense that is reasonably foreseeable consequence).