“People recognize intellectual property the same way they recognize real estate. People understand what property is. But it’s a new kind of property, and so the understanding uses new control surfaces. It uses a new way of defining the property...”
By Michael Nesmith.
Introduction:
Trademark:
A
trademark is a distinctive mark, sign or indicator used by a business organisation or other legal entity to identify the products or services to consumers with which the
trademark appears, originating from a unique source and to distinguish its products or services from those of others.
Trademark can be a design, logo, name, word, phrase, symbol, image or it can be the combination of any of the aforementioned examples, sometimes with some subtle distinctions among them based on colour, smell or even sound.
Trademark can also be termed as the ‘Brand name’ of the product.
The functions of the
trademark are as follows:
- It identifies the goods or services and its origin,
- It guarantees its unchanged quality,
- It advertise the goods or services,
- It creates an image or brand name for the goods or services.
According to the Indian Trade Mark’s act 1999, Section 2 (1)(zb) defines "trade mark" as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.
Registration of trademark:
The manufacturers of various products are provided with protection under
trademark. It gives a distinction to the particular product from all other similar products. The
trademark can be registered or unregistered. Under the Indian Trademark Act,1999,
Section 18(1) states that a person willing to register the
trademark which he uses, can do so by applying to the Registrar in the prescribed manner as given in the Act and for proper registration of the
trademark, the application must contain the name of the mark, goods and services, class in which goods and services fall, name and address of the applicant, and the period of use of the mark. The
trademark gives the owner the sole right to use it for his own business or authorize others to use it in lieu of payments. Under
Section 28(1) of the Indian Trademark act, 1999, such registration confers an exclusive right of ownership of the
trademark to the owner and it prevents other manufacturers from misusing it. The procedures for
registration of a trademark are as follows:
- Search for the name, logo, device, and mark which is to be registered.
- Apply for registration.
- Examination of the application by the Registry.
- Replying to the objections, if any, raised by the Registry while examining the application, under any sections of the Act and ask for hearing, and file evidence in support of the application made.
- Advertisement of such trademark in the Official Gazette or trademark journal for the public, for the purpose of opposition filed by them within the time period of 3 months from the date of publication of such advertisement.
If no opposition is made within the time period of 3 months from the date of advertising, a certificate of registration is issued in favour of the applicant. The validity of the certificate will be for 10 years and if further renewal is sought, the same can be done with the payment of the renewal fees as applicable.
Trademark and its infringement:
Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the license). Infringement may occur when one party, the "infringer", uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to the products or services which the registration covers.
According to the Indian Trademark act, 1999, Section 29 lays down the scope, under which a trademark can be said to have been infringed, if,
- the mark used is similar or identical in nature to the registered mark of the owner, and it causes confusion on part of the public, or it is likely to have an association with the registered trademark, or
- it is used in relation to goods and services which are not similar to the goods and services for which it has been registered, or
- if such registered trade mark is used as his trade name or part of his trade name, or name of his business concern or part of the name of his business concern dealing in goods or services in respect of which the trade mark is registered, or
- If a person, who applies such registered trade mark to a material, intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
And for such kind of infringement, remedies which can be sought under the law are
- Injunctions,
- Damages and
- Accounts of Profits.
Case references:
According to LADAS & PARRY LLP, in the famous case of William Grant & Sons Ltd. v. McDowell & Co. Ltd., Grant filed an action to restrain McDowell from copying the trade dress of GLENFIDDICH Scotch whisky. Grant had been exporting various whiskies to India since 1946 and GLENFIDDICH Single Malt Whisky since 1978. The GLENFIDDICH Single Malt Whisky was sold in a green bottle and black cylindrical cartons bearing a label with a distinctive trade dress and unique features, which included a stag device that Grant contended had become exclusively associated with them and a thistle device which Grant alleged was a Scottish symbol indicating origin of the product. Grant claimed trademark infringement and passing off alleging that McDowell used a label with a similar trade dress as the GLENFIDDICH label, including also a green bottle, a black cylindrical carton and stag and thistles devices. To this the Delhi High Court decided to granted an interim injunction on May 27, 1994 restraining McDowell from dealing in alcoholic beverages marked McDowell’s Single Malt Whisky and from using packaging (including bottles, labels and containers) that was a colourable imitation and substantial reproduction of the plaintiff's GLENFIDDICH label. The judge held that GLENFIDDICH whisky had a reputation in India which Grant was entitled to protect and that the right to the exclusive use of the label for this product would be impaired if a similar label were used in relation to a different product. The judge also ruled that McDowell appeared to be aware of the reputation of Grant's product, that the copying was deliberate and not accidental, and that the balance of convenience lay in favour of Grant whose time, money and effort had been expended in designing its label.
The Times Of India, in another case, discussed, where Amul Dairy won a case of infringement in Gujarat HC. It stated that in a significant judgment, the Gujarat High Court has ruled that a registered trademark user has the right to restrict others using their trademark for different class or goods. It went ahead stating that the HC's judgment was in connection with a case where the Kaira District Co-operative Milk Producers' Union popularly Amul Dairy and the Gujarat Co-operative Milk Marketing Federation (GCMMF) had filed trademark infringement cases against two local shop owners, Amul Chasmaghar and Amul Cut Piece Stores in the district court. While Kaira Union owns brand Amul, GCMMF manages the brand. It was on April 25, this year that the district court had passed an order that it was a clear case of infringement and restrained the two from using Amul trademark. Amul Chasmaghar however had challenged the district court's interim injunction in the HC, where justice D N Patel upheld ruling of the district court.
In another scenario, where the Trademark has not been registered, relief can be served in the form of ‘Passing Off’. Passing off is a common law tort which can be used to enforce unregistered trademark rights. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill. The law of passing off prevents one person from misrepresenting his or her goods or services as being the goods and services of the claimant, and also prevents one person from holding out his or her goods or services as having some association or connection with the plaintiff when this is not true.
The requisites for a Passing Off or the Classical Trinity as restated by the House of Lords in the case of RECKITT & COLMAN LTD V BORDEN INC. :
- Goodwill owned by the trader
- Misrepresentation
- Damage to goodwill
Under the case of ErvenWarnink B.V. v. J. Townend& Sons (Hull) Ltd., [1979] AC 731, [1980] R.P.C. 31, its stated that Warnink was one of the primary market producers of a Dutch liqueur made from a blend of hen egg yolks, aromatic spirits, sugar, and brandy, which it sold under the name "Advocaat". Townend produced a similar alcoholic drink but using egg and Cyprus wine which it sold as "Keeling's Old English Advocaat". The Court held that Townend was passing off their goods as those of Warnink. In applying the test for passing off, the Court developed what is known as the "extended" tort of passing off which included any situation where goodwill is likely to be injured by a misrepresentation. The expression of ‘ extended Passing Off’ was coined by Lord Diplock , where he expounded the essential requirements to claim such ‘extended Passing Off’ as a misrepresentation made by a trader in the course of trade to prospective customers of his or ultimate consumers of goods and services supplied by him, which is calculated to injure the business or goodwill of another trader, and which causes actual damage to the business or goodwill of the trader bringing the action.
In another case
Honda Motors Co. Ltd. v. Mr.Charanjit Singh and Ors[5] India Ltd
. Plaintiff, established that his business or goods has acquired the reputation and his defendant Company was using the trade name HONDA for ‘Pressure Cookers’ which they were 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. Plaintif, f on the other hand is a 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 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 created deception or confusion in the minds of the public at large and such confusion caused damage or injury to the business, reputation, goodwill and fair name of the plaintiff. Hence court 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.
Trade-related aspects of Intellectual Property Rights:
The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is an international agreement administered by the World Trade Organization (WTO) that sets down minimum standards for many forms of intellectual property (IP) regulation as applied to nationals of other WTO Members. It was negotiated at the end of the Uruguay Round of the General Agreement on Tariffs and Trade (GATT) in 1994.The TRIPS agreement introduced intellectual property law into the international trading system for the first time and remains the most comprehensive international agreement on intellectual property to date.
TRIPS contains requirements that nations' laws must meet for copyright rights, including the rights of performers, producers of sound recordings and broadcasting organizations; geographical indications, including appellations of origin; industrial designs; integrated circuit layout-designs; patents; monopolies for the developers of new plant varieties; trademarks; trade dress; and undisclosed or confidential information. TRIPS also specify the enforcement procedures, remedies, and dispute resolution procedures. Protection and enforcement of all intellectual property rights shall meet the objectives to contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.
Section 2, Article 15 of the TRIPS Agreement gives the overview on what are the types of Trademark and how it can be registered under this international Agreement. The definition is quiet simple. The agreement states that, ‘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. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible’.
Whereas, Article 16 of the Agreement sketches out the rights of the registered trademark owner, where he enjoys the exclusive right of ownership of the trademark registered and any violation of the trademark by infringement of its right, gives the registered user to proceed for legal remedies.
Conclusion:
India has emerged as one of the prominent states in the world who contributes enormously to the world’s economy. India is considered to be a great source of exported products which mainly concerns food grains, steel, minerals of different kinds, clothing materials, beverages, and also in technologies. Due to such huge economic growth, India has also become particular about its rights, and one of such rights being the Intellectual Property Rights, which it formulated very recently to give the economy of India a much more concrete stand so that it can compete with the world economy.
The protection of our intellectual rights has given India the boost and the assurance which inspired more new inventions, innovations and developments and trademark plays a very integral part in the technological development of the country. The scope of intellectual property rights is different for all the countries and the protection given under the law for any infringement is also different. So for protection of any intellectual rights such as trademark, one must be aware of the law.
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