Trademarks: Features, Functions, Registration, Infringement
Date: 23 April, 2020
By: Pradeep Yadav
By: Pradeep Yadav
Index of the Article
1.Introduction to Trademark
2.Features of Trademark
3.Functions of Trademark
4.Domain Names as Trademarks
5.Registration of Trademarks
6.Grounds for refusal of registration: a. Absolute Ground; b. Relative Ground;
7.Infringement and Passing off of Trademark
8.Difference between Passing off and Infringement
9.Trans-border reputation of a trademark
10.Trade Dress in Trademarks
11.Disparagement of Goods and comparative advertising in Trademarks
12.Licensing of Trademarks
1.Introduction to Trademark
2.Features of Trademark
3.Functions of Trademark
4.Domain Names as Trademarks
5.Registration of Trademarks
6.Grounds for refusal of registration: a. Absolute Ground; b. Relative Ground;
7.Infringement and Passing off of Trademark
8.Difference between Passing off and Infringement
9.Trans-border reputation of a trademark
10.Trade Dress in Trademarks
11.Disparagement of Goods and comparative advertising in Trademarks
12.Licensing of Trademarks
Introduction to Trademark
Trademark is a mark which is used in trade, to identify a product or service as having been made or provided by the owner of the Trademarks, and to distinguish the Trademarks owner’s products or services from the products or services of other traders.
Thus it helps in the distinction between the products so that the public can easily choose the products and services of the company who has got a good reputation.
Thus it helps in the distinction between the products so that the public can easily choose the products and services of the company who has got a good reputation.
Any distinctive words, letters, numerals, drawings, pictures, shapes, colors, logotypes, labels etc can be registered as trademarks. There are various non conventional trademarks too which vary from Jurisdiction to Jurisdiction like Shapes, Sounds, images, smells etc. Whenever trademarks are used for services then it will be called as Service marks. Trademarks are a type of intangible, incorporeal property. So the rights of goodwill from the Trademarks can also be bought and sold.
The basic difference between a Property mark and a Trademark is that the former shows the ownership rights and the latter shows the quality of the goods to which it is attached.
Watch my Video on Trademarks
Features of Trademarks Act:
1. Definition of Trade Marks Includes “service”: Now Traders and Businessman can get a registration of their goods and services both.
2. Grounds for refusal of the registration: Now the Trademarks act divides the 2 grounds for the refusal of the registration of a trademark as i) Absolute grounds; ii) relative grounds.
3. Trademarks in computers: Now there is no need to maintain the trademarks in hardcopies. It can be maintained on computers.
4. Registration of Collective marks owned by associations: Collective marks are owned by the members of an association of person. It can be registered under the trademarks act now.
5. Protection to Well Known Trade Marks: Now a Trade Mark is refused registration if it is identical with any well-known trademarks. Even if the registration is not sought for the goods and services which are not similar to the well known Trade Marks.
6. Single application: Now there is a provision of a single application for more than one class of goods and services.
7. Establishment of Appellate Board: Now Trademarks act is having jurisdiction for the Appellate board which can give speedy disposal of cases.
8. Penalties for offences: Now Trademarks act gives penalties in the form of imprisonment and fines for various offences like false application.
9. International Arrangements: This is a special type of arrangement made by one country with other partner countries to give the same privileges of the Trademarks Act as to the parent country and vice versa.
2. Grounds for refusal of the registration: Now the Trademarks act divides the 2 grounds for the refusal of the registration of a trademark as i) Absolute grounds; ii) relative grounds.
3. Trademarks in computers: Now there is no need to maintain the trademarks in hardcopies. It can be maintained on computers.
4. Registration of Collective marks owned by associations: Collective marks are owned by the members of an association of person. It can be registered under the trademarks act now.
5. Protection to Well Known Trade Marks: Now a Trade Mark is refused registration if it is identical with any well-known trademarks. Even if the registration is not sought for the goods and services which are not similar to the well known Trade Marks.
6. Single application: Now there is a provision of a single application for more than one class of goods and services.
7. Establishment of Appellate Board: Now Trademarks act is having jurisdiction for the Appellate board which can give speedy disposal of cases.
8. Penalties for offences: Now Trademarks act gives penalties in the form of imprisonment and fines for various offences like false application.
9. International Arrangements: This is a special type of arrangement made by one country with other partner countries to give the same privileges of the Trademarks Act as to the parent country and vice versa.
BMW is a Trademark owned by BMW Company
Functions of Trademarks
1. It shows that all the goods which are having a specific trademark are coming from the same source.
2. It also assures the buyers that the goods and services which they are using are of the quality which they are expecting.
3. It is widely used in advertisements. Advertisements play a big role in creating a reputation of a product or a service.
4. It identifies a product of a company and distinguishes it from the products of other rival companies.
2. It also assures the buyers that the goods and services which they are using are of the quality which they are expecting.
3. It is widely used in advertisements. Advertisements play a big role in creating a reputation of a product or a service.
4. It identifies a product of a company and distinguishes it from the products of other rival companies.
Domain Names as Trademarks
Domain names are the addresses of different websites on the internet. It is used because it is easier to remember by everyone than the IP addresses. Today domain names are a part of communication on the internet.
The courts in the United States of America have held that “Domain names may be a valuable corporate asset as it facilitates communication with a customer base”. (ACLU v. Reno 929 F Supp. 824)
So, Domain names act as a trademark and companies try their best to save their names from any unauthorized use by any 3rd party as it would lead to loss of revenue for the company.
The courts in the United States of America have held that “Domain names may be a valuable corporate asset as it facilitates communication with a customer base”. (ACLU v. Reno 929 F Supp. 824)
So, Domain names act as a trademark and companies try their best to save their names from any unauthorized use by any 3rd party as it would lead to loss of revenue for the company.
Registration of Trademarks for Goods and Services
The registration of a Trademark is an important step for a company to save the reputation of its goods and services from unauthorized use. The registered trademark helps the owners of the company to file a suit of infringement of his right.
If a Trademark is not registered then the suit for infringement can’t be filed but the remedy of passing off can be used.
Trademark may be registered if they:
1. Are capable of distinguishing goods of one undertaking from the goods of other undertakings;
2. Are capable of being represented graphically;
3. Do not fall within the absolute grounds for refusal;
4. Do not fall within the relative grounds for refusal;
If a Trademark is not registered then the suit for infringement can’t be filed but the remedy of passing off can be used.
Trademark may be registered if they:
1. Are capable of distinguishing goods of one undertaking from the goods of other undertakings;
2. Are capable of being represented graphically;
3. Do not fall within the absolute grounds for refusal;
4. Do not fall within the relative grounds for refusal;
Procedure for registration of Trademark:
1. Application for registration [Section 18]
2. Acceptance of Application [Section 18]
3. Withdrawal of Application [Section 19]
4. Advertisement for Application [Section 20]
5. Opposition to registration [Section 21]
6. Correction and Amendment of Application [Section 22]
7. Registration of Trademarks [Section 23]
1. Application for registration [Section 18]
2. Acceptance of Application [Section 18]
3. Withdrawal of Application [Section 19]
4. Advertisement for Application [Section 20]
5. Opposition to registration [Section 21]
6. Correction and Amendment of Application [Section 22]
7. Registration of Trademarks [Section 23]
Iphone is a trademark owned by Apple.
Grounds for Refusal of Registration
Largely, there are 2 grounds for refusal of registration:
- Absolute ground: Objections on the mark itself [Section 9]
- Relative ground: Conflict with third party rights [Section 11]
1. Absolute grounds of refusal [Section 9]: Following trademark won’t be registered:
- Which don’t have any distinctive character;
- Any marks which designate quality, quantity, geographical origin etc;
- Marks which have become customary in the current language;
- If it deceives the public or causes confusion;
- If it hurts the religious feelings;
- If it contains scandalous or obscene matter;
- If it is prohibited under the Emblems and Names Act, 1950.
- If it consists of the shape of goods which results from the nature of the goods themselves
- The shape of goods which is necessary to obtain a technical result.
- The shape which gives substantial value to the goods.
2. Relative grounds for refusal [Section 11]: Following trademarks won’t be registered:
- Identity with an earlier trademark
- Similarity with an earlier trademark and the identity or similarity of the goods and services covered by the trademark.
- By Law of Copyright
- By the law of Passing off protecting an unregistered trademark used in the course of trade.
Infringement and Passing off of Trademarks
Infringement of a trademark means taking unfair advantage of the reputation of a registered trademark. Trademarks Act allows infringement action concerning similar, associate and cognate goods. Infringement action is a statutory remedy of a registered trademark which is given in section 29 of the Trademarks Act.
The trademark act does not define passing off. Passing off is a common law remedy of tort. This principle means that 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, device or means, whereby without making a direct 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 purchaser.
The trademark act does not define passing off. Passing off is a common law remedy of tort. This principle means that 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, device or means, whereby without making a direct 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 purchaser.
So passing off in common words is to stop the defendant from passing off its goods or services to the public as that of the plaintiffs. This is important to save the reputation of the plaintiffs and safeguard the public from the wrong products and services.
There is 3 requirement of a passing-off action to save the Plaintiff:
1. He must establish goodwill or reputation attached to the goods or services which he supplies.
2. He must demonstrate a misrepresentation by the defendant to the public, which makes the public believe that the products sold by the defendant are the products of the plaintiff.
3. He must demonstrate that he suffers damage due to this act of the plaintiff.
There is 3 requirement of a passing-off action to save the Plaintiff:
1. He must establish goodwill or reputation attached to the goods or services which he supplies.
2. He must demonstrate a misrepresentation by the defendant to the public, which makes the public believe that the products sold by the defendant are the products of the plaintiff.
3. He must demonstrate that he suffers damage due to this act of the plaintiff.
Difference between Passing off and Infringement:
1. Infringement is based on the property acquired by the registration of a trademark.
1. Registration is not relevant in Passing off action. This is based on the goodwill of the business.
2. If the marks are identical or similar no further proof is required in Infringement .
2. Identity or similarity is not sufficient; the use of the mark must be to confuse. (Passing off)
3. Use of the mark need not cause any damage or injury to the plaintiff. (Infringement)
3. Use of the mark must be likely to cause injury or damage. (Passing off)
4. Infringement is a statutory remedy.
4. Passing off is a common law remedy.
1. Registration is not relevant in Passing off action. This is based on the goodwill of the business.
2. If the marks are identical or similar no further proof is required in Infringement .
2. Identity or similarity is not sufficient; the use of the mark must be to confuse. (Passing off)
3. Use of the mark need not cause any damage or injury to the plaintiff. (Infringement)
3. Use of the mark must be likely to cause injury or damage. (Passing off)
4. Infringement is a statutory remedy.
4. Passing off is a common law remedy.
The trans-border reputation of a Trademark
The concept of trans-border reputation is evolved in the 21st century where many Multi-National Corporations have successfully established their businesses in many countries of the world. This concept means that a well-known trademark owner company can file a suit even in those countries which do not have its office.
If the foreign MNC can prove 3 elements of passing off- reputation, confusion and damage then a case of passing off can be established against the defendant.
If the foreign MNC can prove 3 elements of passing off- reputation, confusion and damage then a case of passing off can be established against the defendant.
Trade Dress in Trademarks
Trade dress is the cloths of the products which are been sold in the market my various enterprises or individuals. It is the external appearance of the goods. Trade dress includes Packaging, Logo, Slogans, Shape, Color combination etc.
Nowadays every company is having a full right to stop other companies from using its trade dress as it can lead to a misunderstanding between the consumers related to the product.
Nowadays every company is having a full right to stop other companies from using its trade dress as it can lead to a misunderstanding between the consumers related to the product.
Disparagement of Goods and Comparative advertising in Trademarks
Comparative advertising is comparing the products of a rival/competitor company with the products of the company which is giving the advertisement.
Disparagement of goods is a statement given about the goods of a competitor which is untrue or misleading. This disparagement of goods can affect the market of the buyers of that good.
Disparagement of goods is a statement given about the goods of a competitor which is untrue or misleading. This disparagement of goods can affect the market of the buyers of that good.
Following are the principles of comparative advertising which are given in the case of Reckitt v. Colman of India Ltd. V. Kivi TTK Ltd:
1. A tradesman is entitled to puff up or declare his goods as the best in the world.
2. He can say that his goods are better than competitors even if the statement is untrue.
3. He can compare the advantages of his goods with other competitors.
4. There must be no defamation to the goods of the other competitors.
5. He cannot say that the goods of his competitors are bad.
1. A tradesman is entitled to puff up or declare his goods as the best in the world.
2. He can say that his goods are better than competitors even if the statement is untrue.
3. He can compare the advantages of his goods with other competitors.
4. There must be no defamation to the goods of the other competitors.
5. He cannot say that the goods of his competitors are bad.
Licensing of Trademarks [Section 48-56]
Licensing of Trademarks means the permission given by the owner of the trademark to third persons to use the mark with or without any conditions. It is a common practice by the owners of a trademark to give the license to the third party to use their trademark for better profit to both the parties.
