Trademark Law – Its Past and Present

This paper has been prepared by
By S. K. Inthu, Advocate, Chennai

1. Introduction
1.1. Trademark has a substantial role in the competitive market and has a remarkable intellectual value which needs to be protected. The recognition and protection of intellectual property rights is considered to be of recent origin. But the instances given in this Article would trace its Origin right from the period of the Ancient Classical Greek and The Imperial Rome. During the course of time, the nations all over the world have recognized the importance of intellectual property rights due to its immense economic values and have enacted laws towards protecting them. The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), is a milestone in the history of the Trade Mark Law as it has influenced the law on trade mark in almost all nations of the world including India. It is a significant international instrument, zealously aiming to protect Intellectual Property Rights across the globe to reward one’s creativity and inventiveness. The member nations to this Agreement have enacted laws in tune with the provisions of the Agreement on TRIPS. India already has sufficient enactments on this area.

1.2. A trademark is a distinctive sign or indicator of some kind which is used by an individual, business organization or other legal entity to uniquely identify the source of its products and/or services to consumers, and to distinguish its products or services from those of other entities. It typically comprises a name, word, phrase, logo, symbol, design, image, or a combination of these elements. The meaning and scope of the term Trade Mark has been explained in the case of Firm Koonerji Bechari Lal vs. Firm Adam Hazi Pir Mohammed as follows:
“a Trade Mark is some symbol consisting in general of a picture label word or words which is applied or attached to goods of a trader so as to
distinguish them as his from similar goods of other traders and to identify them as his goods or as those of his successors in the business which they are produced or put forward for sale.”
It is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well known characteristics of celebrities. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark, particularly in the United States.
1.3. To put it simply, Trade Mark is a property right and law protects that right. The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. However, registration is not required. The owner of a common law trademark may also file suit, but an unregistered mark may be protectable only within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand.
2. Why Trade Mark?
2.1. The use of a trademark indicates that the maker or dealer believes that the quality of the goods will enhance his or her standing or goodwill, and a known trademark indicates to a buyer the reputation that is staked on the goods. Registration of a trademark is necessary in some countries to give exclusive right to it. In the United States, Canada, and Great Britain, the sufficient use of a trademark not previously used establishes exclusive right to it, but registration is provided as an aid in defending that right. People rely on trademarks to make informed decisions about the products they buy. A trademark acts as a guarantee of the quality and origin of a particular good. A competing manufacturer may not use another company's trademark. The owner of a trademark may challenge any use of the mark that infringes upon the owner's rights.
3. How to indicate the presence of Trade mark?
3.1. The presence of trademark protection for the name or logo of a company or product is often indicated by the small symbol of an R in a circle placed near the trademark. The R means that the mark is a registered trademark and is a warning that the law prevents unauthorized use of it. A party may indicate that it is claiming rights to a particular mark by displaying a TM rather than an R symbol. Marks bearing the TM symbol are not registered, but the presence of the symbol shows the intent to register.
4. History and Development of Trademark Law
4.1. According to U.S. History Encyclopedia Merchants and artisans have used trademarks for centuries; the medieval trademark not only allowed artisans to take credit for their work but also permitted guilds to control quality. English common law (the law of court- decisions rather than statutes) protected trademarks beginning in the seventeenth century.
4.2. The trade of goods came into practice long ago, and the use of trademarks is thought to have evolved from that. The origin of trademarks can be traced back as far as the beginning of the circulation of goods. The history of marks is nearly as old as the histories of mankind and religion. Scientists have come across excavated artifacts from places such as ancient Egypt with various symbols carved thereon for religious and superstitious reasons. "Potters marks" appeared in relics left from the Greek and Roman periods and were used to identify the maker (potter) of a particular vessel. Among those who specialize in researching the cultural heritage of marks, the studies surrounding "potters marks" are famous. It would be difficult, however, to say that these marks are trademarks in the sense of the modern meaning.
4.3. Over time, different methods of identification and distinction developed. Loved ones and pets were given names. "Proprietary marks" (in the form of a name or symbol) were affixed to goods to enable one person to distinguish their own possessions from those of others. Craftsmen applied their names, unique drawings, or simple inscriptions to identify goods they created. Even though these marks surely helped in distinguishing goods, it is difficult to say that these marks were trademarks with distinctiveness in the modern sense of the word.
4.4. Symbols on goods used in ancient Rome and other countries near the Mediterranean Sea had similar characteristics to the trademarks of today. Because this ancient region is considered to be the first to actively circulate goods, it is widely thought that trademarks evolved in response to the emergence of a society in which goods circulate in commerce. However, even in those days, a trademark system based on property rights did not yet exist.
4.5. Around the 10th century, a mark called a "merchants mark" appeared, and symbols among traders and merchants increased significantly. These marks, which can be considered one kind of "proprietary mark," essentially were used to prove ownership rights of goods whose owners were missing due to shipwrecks, pirates, and other disasters. Even now, in every part of the world, horses, sheep, and other animals are still branded with a mark identifying the owner. In Japan, a symbol is affixed to lumber that is tied onto a raft and sent down a river to its mouth. These types of marks are reminiscent of the "merchant's mark" of the past.
4.6. In guilds of the middle ages, craftsmen and merchants affixed marks to goods in order to distinguish their work from the makers of low quality goods and to maintain trust in the guilds. These marks, known as "production marks," served to punish the manufacturers of low quality goods for not meeting the guild's standards and to maintain monopolies by the guild's members.
4.7. These production marks helped consumers to identify and assign responsibility for inferior products, such as, goods short in weight, goods comprised of poor quality materials, and goods made with inferior craftsmanship. Because these marks were affixed out of compulsion or obligation, rather than one's own self-interest, they also became known as "police marks" or "responsibility marks".
4.8. They acted not only to distinguish between sources of goods, but to serve as an indicator of quality as well. While modern marks work to ensure the quality and superiority of certain goods, the obligatory marks served to uncover defective goods. "Responsibility marks" were more burdensome than real property, and could not be changed easily once the mark had been adopted.
4.9 Furthermore, it is thought that this type of mark did no more than simply guarantee minimum quality. Finally, these symbols were different from modern marks in that they emerged to benefit the guilds, and were not for the benefit of the production mark owner.
4.10 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. Gradually, the guild systems disintegrated, and free business was established. Marks began to actively identify the source of goods rather than obligatory guild membership. About this time, special criminal laws protecting trademarks were also developed out of early forgery, counterfeiting, and fraud laws. Civil protection was gradually and systematically established against those who would use another's mark without permission ("infringers"). Imitations of a trademark wrong both the owner of the trademark and the buyer, who is misled as to the source of goods, and such infringements of a trademark are punishable by law. Service marks, which are used on services (such as insurance or brokerages) rather than on products, are also covered by trademark laws’.
4.11. 701 A.D. In Japan Taihouritsurei set forth laws on indications. Indications were a system designed to regulate and prohibit the mass production of articles of inferior quality. Thus, the character of an indication was far from that of a modern-day trademark. Literature tells us that the fraudulent use of trademarks has existed since olden times. It is documented that there was a punishment for trademark infringement in the Muromachi period and also that there were regulations on trademarks within the trade associations Za and Kabunakama.
4.12. 1772, in USA George Washington, sought to protect the mark "G. Washington" for use on flour. The purpose of trademark law was to prevent consumer deception as to source. This meant that trademarks were local and goods-specific, as was most trade at the time. A trademark of "Washington's" for flour in Virginia would not extend to "Washington's" on silverware or to "Washington's," even on flour, outside Virginia’.
4.13. 1803, In France, the "Factory, Manufacture and Workplace Act" (Article 16) is internationally noted for establishing a system which made it a crime to pass off another's seal as one's own. Further, the Criminal Acts of 1810 (Article 142) and 1824 (Article 433) made it a punishable crime to abuse the name of others or wrongly use the names of production areas. Even this system was not nearly as advanced as the comprehensive trademark legal structure as we see today.
4.14. 1874, In Germany The Trademark Protection Law (Gesetz der Markenschutz), is considered to be the first German trademark law. It put into place a non- substantive trademark registration and examination system. A later statute, the Trademark Protection Law (Gesetz zum Schutz der Warenbezeichungen) of May 12,1894, followed principles of an examination-based system that was substantively based Germany's 1936 amendment put the law in the form of the modern trademark law (Warenzeichengesetz);
4.15. 1862, In England "The Merchandise Marks Act," focused on provisions dealing with deceptive indications, The " ‘Trade Mark’ Registration Act" was also passed in 1875. The 1905 Act was amended in 1919 and 1937, until a new Act was passed in 1938. This Act fundamentally changed the system in many ways, permitting registration based on intent-to-use, creating an examination-based process, and creating an application publication system. It equipped the English system with advances that surpassed the trademark law of France at that time.
5. Definitions of Trade Mark from dictionaries:
5.1. The Computer Encyclopedia - A trademark is a brand identification for a product or service, the latter technically called a "service mark." The mark can be written text, text in a particular stylized form or a graphic symbol.
5.2. The Investment Dictionary - ‘A symbol, word, phrase, logo, or combination of these that legally distinguishes one company's product from any others. Any infringement on a trademark is illegal and therefore grounds for the company owning the trademark to sue the infringing party’.
5.3. The Financial & Investment Dictionary - ‘Distinctive name, symbol, motto, or emblem that identifies a product, service, or firm. In the United States, trademark rights is the right to prevent competitors from using similar marks in selling or advertising - arise out of use; that is, registration is not essential to establish the legal existence of a mark …’.
5.4. The Marketing Dictionary defines Trade Mark as, ‘Identification mark, as defined by the Lanham Trade-Mark Act of 1946 of United States. "names, symbols, titles, designations, slogans, character names, and distinctive features emphasized in advertising . . . " used by manufacturers, advertisers, and merchants to identify products and to distinguish them from competitive products.
5.5. The Business Dictionary - ‘Insignia or logo that distinguishes one maker's goods from all others; any mark, word, letter, number, design, picture, or combination thereof in any form that is adopted and used by a person to denominate goods that he makes, is affixed to the goods, and is neither a common nor generic name for the goods nor a picture of them, nor is merely descriptive of the goods… ’
5.6. Britannica Concise Encyclopedia defines Trade Mark as, ‘Mark used by a manufacturer or merchant to identify the origin or ownership of goods and to distinguish them from others. Trademarks may be words or groups of words, letters, numerals, devices, names, the shape or other presentation of products or their packages, or combinations of colours.
5.7. US History Encyclopedia - ‘Trademarks are words or symbols used on goods to indicate source.
5.8. Columbia Encyclopedia defines Trade Mark as, ‘trademark, distinctive mark placed on or attached to goods by a manufacturer or dealer to identify them as made or sold by that particular firm or person.
5.9. Law Encyclopedia defines Trade Mark as, ‘Distinctive symbols of authenticity through which the products of particular manufacturers or the salable commodities of particular merchants can be distinguished from those of others’.

6. The International Nature of Trademark Law
6.1. Even though trademarks are regulated by each country independently, because of the fact that goods travel beyond country borderlines and bear trademarks, trademark law has international implications. The Paris Convention is the prime International Convention in the field of Intellectual Property Rights.
7. Paris Convention (relating to the protection of industrial property), also known as Industrial Property Rights Protection Alliance Treaty
7.1. This Convention was concluded in the year 1883 and its interpretation was supplemented in Madrid. It further underwent several amendments. In 1900-Brussels; 1911- Washington, D.C.; 1925 - The Hague; 1934-London; 1958 - Lisbon and 1967 - Stockholm. It was revised in 1979 to the form as we know it today. There are 151 member states as of January 15, 1999, demonstrating that most major countries in the world have joined the treaty. However, because the Paris Convention requires a super majority, it has a tendency to lag behind current developments.
7.2. The following is a list of the major relevant articles of the treaty:
7.2.1. member states protect the trademark rights and other industrial property rights of other member states ;
7.2.2. each member state must maintain the fundamental principle that citizens of other member states receive the same protection as its own citizens; and
7.2.3. member states must recognize the assertion of priority rights.
7.3. The articles that are particularly relevant to the trademark law include:
7.3.1. remedies for cases in which registered trademarks are not used, including sanctions
7.3.2. the independent status of the trademark law ;
7.3.3. protection of well-known trademarks;
7.3.4. adjustment regulations on the transfer of trademark rights;
7.3.5. regulations on trademarks registered in a foreign country;
7.3.6. protection of service marks;
7.3.7. regulations controlling applications for trademark registration made by an agent, among others, without permission of the applicant;
7.3.8. removal of trademark registration limitations based on the disposition of the goods;
7.3.9. protection of collective trademarks;
7.3.10. control of the importation of counterfeit goods;
7.3.11. control of fraudulent indications of country origin;
7.3.12. prohibition of acts of unfair competition;
7.3.13. legal measures to prevent counterfeit goods and others; and
7.3.14. temporary protection of goods exhibited in international expos.
7.4 The Trademark Registration Treaty or "TRT," concluded in the year 1973 under the auspice of the World Intellectual Property Organization (WIPO) [established by the WIPO Convention in 1967] is more up-to-date. This Treaty became effective in February 1980. The Trademark Law Treaty ("TLT") of 1994, however, is even more current
8. Special Agreements
8.1. The major special agreements reached include:
8.1.a. The Madrid Agreement for the prevention of false or misleading indications of country origin.
8.1.b. The Madrid Agreement on international registration of production marks or trademarks.
8.1.c. An Agreement on international classification of goods and services for trademark registration.
8.1.d. The Lisbon Agreement on the protection of the name of the country of production and its international registration.
8.1.e. Trademark Registration Treaty ("TRT").
8.1.f. The Trademark Law Treaty (also called the Trademark Law Harmonization Treaty) of 1994, effective from August 1, 1996.
8.2. The International Application under the TRT becomes effective internationally and domestically as of the application date at the International Bureau, and is treated as a domestic application in any designated member state. The International Bureau issues an International Registration and publishes the mark based only on an examination of formality, and informs each designated state. Subsequently, the designated states conducts substantive examination.
8.3. The international registration becomes effective 15 months after its public announcement, unless the national government office of a designated country issues a notice of refusal of registration to the International Bureau within the 15 months from the date of publication. The registration date of the domestic trademark becomes the international application filing date.
8.5. The Trademark Law Treaty (TLT) applies the regulations of the Paris Convention to the non-member states of the Convention. Article 15 of the TLT states that its member states must observe the regulations concerning marks in the Paris Convention, thus making it a duty for its member states. The amendment added phrases such as "member states of the TLT" into the regulations in the trademark law as well as in the Unfair Competition Prevention Law.
9. Agreements among Multiple States
9.1 In addition to the International Treaties and Agreements discussed previously, there are other accords reached between two or more countries. An example is the Pan-American Treaty of 1929. Also, the European Economic Community (EEC) contemplated a unified trademark law for many years. The European Trademark Law became effective on March 15, 1994, and a European Trademark Office was established in Alicante, Spain.
9.2. Other regional trademark agreements include the Benelux Unified Trademark Law, which was signed in 1962 and went into force on January 1, 1972. This law is applied equally in Belgium, The Netherlands and Luxembourg. There is a proposal, as set forth in the Model Trademark Law of 1956, created by an attorney, Dr. Stefan P. Ladas, for a unified global trademark law, although this is only a vision for the distant future. It was drafted in the International Chamber of Commerce and remains a proposal.
10.1. Comparison of trademark treaties among multiple countries
10.2. There is a close relationship between international treaties and the Japanese Trademark Law, more so than in other areas of law, other than industrial property right laws. However, the relationship is not close enough to call it a unified trademark treaty, in which other countries would apply Japan's trademark laws.
10.3. In the European Trademark Law, the actual body of law in each geographic area is formed by the actual international law as to trademarks registered there under. Under the European Trademark Law, the rights acquired by the trademark registration of the international treaty coexist with the domestic trademark rights, which were previously obtained under the member-state law. Therefore, the treaty is not a completely unified trademark law.
10.4. On the other hand, the Trademark Registration Treaty (TRT) does not grant an independent trademark right. The TRT eases the trademark registration process and is a treaty that the member states merely join for cooperation. The attained trademark right is still under the auspices of each member state and is independent from the trademark rights of other member states. Internationally, trademark registration is facilitated by the World Intellectual Property Organization, under the Madrid Protocol.
11. Types of protected mark
11.1. Trademark law protects marks. Marks can be words, names, symbols or devices. They come in several classes .
11.1.1. Trademark Strictly speaking, is a mark that distinguishes one person's goods from others'. In practice, the word "trademark" is often used to refer to any class of mark that is protected under trademark law
11.1.2. Service mark is similar to a trademark, except that it is used to distinguish one person's services from others'. Service marks can be registered in the same manner as trademarks and are denoted by the ® symbol once they are registered on the Principal or Supplemental Registers. If they are not registered, they often carry a TM symbol if it is a Trade Mark and SM symbol if it is a service mark.
11.1.3. Trade name is a mark used to identify a business, as opposed to a good or service. The Lanham Act does not allow trade names to be registered unless they also function as trademarks or service marks by identifying the source of a good or service. However, many states allow trade names to be registered and protected under state law.
11.1.4. Certification mark is a mark used to certify a good in some way, regardless of its specific source. Seals of approval (e.g. the Good Housekeeping Seal of Approval) and marks of origin (e.g. Roquefort cheese) are examples of certification marks. A certification mark is held by an organization and is protected under trademark law so long as the holder establishes a standard for awarding the mark and polices that standard effectively.
11.1.5. Collective mark is a mark held by a group for the use of its members. Examples include union stamps and franchise marks. Collective marks are treated like regular trademarks and service marks under the Lanham Act.
11.1.6. Trade dress refers to the distinctive packaging of a product. One example of trade dress is the decor of a restaurant chain. Trade dress is protected if it is inherently distinctive.
11.1.7. Product configuration refers to the distinctive design and shape of a product. The best-known example is the glass Coca-Cola bottle. A product configuration must have secondary meaning to be protected, regardless of whether it is inherently distinctive or not. Secondary meaning means that the appearance of the product should indicate its source to a consumer
(Both trade dress and product configuration can be registered as trademarks, but they are more often protected without registration as a "false designation of origin". They pose special problems in trademark law because of their non-verbal nature. Words are easy to protect: more abstract designs are not.)
12. Eligibility for Registration.
12.1. A trademark may be eligible for registration, or registrable, if amongst other things it performs the essential trademark function, and has distinctive character. Registrability can be understood as a continuum, with "inherently distinctive" marks at one end, "generic" and "descriptive" marks with no distinctive character at the other end, and "suggestive" and "arbitrary" marks lying between these two points. A mark must satisfy both sections to become registered.
13. The spectrum of distinctiveness
13.1. In trademark litigation, courts are most frequently asked to parse between suggestive and descriptive marks on the one hand, and between descriptive and generic marks on the other. This is because suggestive marks, like fanciful and arbitrary marks, are presumed to be entitled to trademark protection, while descriptive marks are entitled to protection if they have become known as representing the producer of the goods, and generic marks can never receive protection.
13.2. Fanciful mark has no meaning other than its meaning as a trademark. Examples include Xerox copiers, Lego bricks and Verizon phones.
13.3. Arbitrary marks have a separate meaning, but that meaning has nothing to do with their use as a trademark. Examples include Apple computers, Diesel jeans and Ivory soap.
13.4. Suggestive marks suggest a characteristic of a good or service without actually describing that characteristic. Examples include Coppertone sunblock, Earthlink internet service and jetblue airline service.
13.4. Arbitrary, fanciful and suggestive marks receive highly similar treatment under the law. They are the strongest types of mark in that their holders do not need to prove a secondary meaning in order to protect the mark. Because there is no reason to associate Apple with computers, outside of the popularity of computers made by Apple Computer, third parties have few legitimate reasons to use the name "Apple" on their computers.
13.5. Descriptive marks. A "descriptive" mark is one that identifies a characteristic of the article or service it marks. Examples include American Airlines (a geographic mark) and Dell Computer (a surname mark). Descriptive marks cannot be registered without proof that the mark has a secondary meaning in the eye of the consumer public.
13.6. Even if a descriptive mark has a secondary meaning, its descriptive nature makes it possible to avoid trademark infringement liability through a fair use defense. A person could, for instance, use "American Airlines" in a commercial context to refer to airlines from America, so long as they were not using the term in its trademark sense.
13.7. Generic marks like "laptop computer," cannot receive trademark protection even if they have a secondary meaning. The rule against generic trademarks is particularly important for holders of famous marks, because their marks may lose protection if they become common nouns or adjectives in the public eye. Formerly-trademarked words like "aspirin" and "cellophane" have lost their protection due to genericide.
13.8. Non-verbal marks A mark need not be a word or phrase. Besides trade dress and product configuration, discussed above, trademarks can also be found in sounds (e.g. the NBC chimes), colors, fragrances, and other distinctive features of a product. The most important criteria in determining their trademarkability is secondary meaning (whether the feature denotes origin to consumers) and whether the feature is functional. Functional features are not trademarkable: they must be protected under patent law if they are to be protected.
14. Priority Right
14.1. Generally speaking, the owner of a mark is the person who is first to use that mark in commerce. This is known as the race to the marketplace test. In the case of unregistered marks, protection only extends to the areas where marked products are sold or advertised, where their reputation is established, or where the owner is reasonably expected to reach in the normal expansion of their business. Registered marks automatically receive nationwide protection regardless of where they are used.
14.2. If two people use the same mark in the same region, the right to use the mark will be given to the first person to use the mark in that region. If one of the marks is registered, the unregistered mark will only prevail if it was in use before the application for the registered mark was filed, and the unregistered mark will only prevail in the area(s) where it was in use.
14.3. Technically speaking a Priority Right or Right of Priority is a time-limited Right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right belongs to the applicant or his successor in title and allows him to file a subsequent application in another country for the same invention, design or trademark and benefit, for this subsequent application, from the date of filing of the first application for the examination of certain requirements. When filing the subsequent application, the applicant must "claim the priority" of the first application in order to make use of the Right of Priority.
14.4. The Period of Priority, i.e. the period during which the priority right exists, is usually 6 months for industrial designs and trademarks and 12 months for patents and utility models. The period of priority is often referred to as the "priority year" for patents and utility models.
15. Infringement
15.1. Infringement of a Trademark is a violation of the Exclusive Rights attached to it without the authorization of its 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. An owner of a trademark may commence legal proceedings against a party which infringes its registration.
16. Confusion
16.1. Confusing similarity is a test used during the examination process to determine whether a trademark conflicts with another, earlier mark, and also in trademark infringement proceedings to determine whether the use of a mark infringes a registered trade mark. In many jurisdictions this test has been superseded by the concepts of similarity and likelihood of confusion, due to the harmonizing effects of the Agreement on Trade-Related Aspects of Intellectual Property Rights.
16.2. Where mark X is not identical to a registered trademark, the use of mark X may still amount to an infringement if it is "confusingly similar" to the registered trademark. Mark X may share elements of spelling or style that would lead a reasonable observer to believe the trademarks were related. For example, in the computer industry, Microsoft has become such a well known trade name and trade mark that other businesses in the industry may want to use the term "micro" or "soft" in their names. As Microsoft generally does not hold exclusive rights in these terms, it would need to establish that any trade names or trademarks which include these terms is confusingly similar to "Microsoft". The reputation attaching to a trademark is also significant, such that "Microsafe" or "Micro Software", although clearly not identical, could potentially be confusingly similar and amount to an infringement.
16.3. In addition, the style of a trade mark, such as a logo or font, can become relevant. For example, Microsoft products are distinguished in the marketplace by a consistent font. Competitors may not use the same font on their product, particularly when using a name which would not be confusingly similar except for the use of the font. For example, a brand called "Microsystems" would most likely not be confused with Microsoft. However if Microsystems used the same font as Microsoft, it would be confusingly similar. Some styles, like the script used on Coca-Cola(TM) products, are so well known that even a completely different name in a similar script could be held to be confusingly similar. However, courts can also take judicial notice that an infringing mark is confusingly similar if it is obvious to even a casual observer.
16.2. In an action for Infringement, the basic inquiry generally involves a same set of questions. They are
i. How strong is the mark being defended?
ii. How similar are the products in question
iii. How similar are the marks in question
iv. Have consumers actually been confused
v. Which marketing channels have been used
vi. How likely is the consumer to exercise care when purchasing the products in question
vii. What was the defendant's intent in selecting the mark
viii. How likely are the product lines to expand
16.3. The forms of confusion between Trade Marks are as follows:
16.3.1. Confusion between related products: If one product is offered under a mark similar or identical to another, and the products would be confused by the buying public if sold under the same mark, an infringement can be found. Examples from actual infringement cases include Slickcraft and Sleekcraft boats, Bonamine and Dramamine medications, Pledge and Promise cleaners, and Duron and Durox paints.
16.3.2. Confusion as to source. Confusion can also be found when the same or similar mark is applied to different types of goods. One early case, involving Borden milk and Borden ice cream, was deemed to be non-infringing in 1912; in more recent years, such cases have routinely led to findings of infringement.
16.3.3. Confusion as to sponsorship. Even where consumers are unlikely to be confused as to source, they may be confused as to sponsorship. Team logo merchandise is a common example; consumers may expect that they are supporting the New York Yankees by purchasing a Yankees cap.
16.3.4. Initial interest confusion. Sometimes, famous marks are used to lure consumers to different businesses. "Cybersquatting" by registering a well-known trademark as a domain name is one well-known example. Another is the use of meta tags to fool search engines: a little-known adult Web site may attempt to attract visitors by showing up in web searches for more well-known adult entertainment franchises. Both activities can be considered trademark infringement by confusion Post-sale confusion. Post-sale confusion is often used to find infringement in counterfeit goods, such as fake watches and handbags. While the purchaser is likely to understand that they are buying a counterfeit product, the aim is to confuse others into thinking the product comes from a different source.
16.3.5. Reverse confusion. Although confusion cases generally involve a little-known business using a well-known mark, confusion can also be found when a well-known business uses a little-known mark.
17. Dilution.
17.1. Trademark infringement can also be found in the absence of any confusion at all. Many trademarks are deemed to have a distinctive quality, and any third-party use that diminishes this distinctiveness is considered to be dilution, which is an independent cause of action from traditional infringement. Traditional types of distinction include blurring, in which the diluter lessens the ability of the mark to uniquely identify one source of goods or services, and to tarnish the quality, in which the diluter associates the mark with scandalous or obscene material, thus attacking the good character of the mark or its owner.
17.2. The textbook case of dilution is Eastman Photographic Materials v. Kodak Cycle, 15 R.P.C. 105 (Eng. 1898), in which the maker of Kodak cameras brought suit against a company producing Kodak bicycles. There was little chance of cameras being confused with bicycles: the risk was removing the Kodak name's association with cameras.
17.3. The Federal Trademark Dilution Act of 1995 added a dilution statute to the Lanham Act. Dilution can be found whenever a "famous mark" is used by another, "if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark." 15 U.S.C. 1125(c). However, a recent law has made significant changes to the Federal dilution statute.
18. Contributory infringement.
18.1. Trademark law has a contributory infringement doctrine similar to those under patent law and copyright law. Unlike its sister doctrines, however, contributory infringement of trademarks is not a very well-developed doctrine. It has come up in a few contexts, including cybersquatting liability and liability for landlords whose tenants sell counterfeit goods.
19. Defenses to infringement
19.1. Genericide - Many trademarks have been invalidated because they have lapsed from fanciful, arbitrary, suggestive or descriptive status to generic status. Genericide is a defense to trademark infringement: the use of a trademark that has become generic over time is not infringement. Examples include i) Aspirin; - Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921), ii) Cellophane - DuPont Cellophane Co. v. Waxed Products Co., 85 F.2d 75 (2d Cir. 1936), iv) shredded wheat; Kellogg Co. v. National Biscuit Co., 305 U.S. 111 (1938), v) thermos; King-Seeley Thermos Co. v. Aladdin Industries, 321 F.2d 577 (2d Cir. 1973), vi) Murphy bed; Murphy Bed Door Co. v. Interior Sleep Systems, 874 F.2d 95 (2d Cir. 1989)
19.2. Functionality - There is still a sharp divide between patent and trademark law, illustrated by the doctrine that functional marks cannot be protected as trademarks. As stated above, functionality is most common when defending claims for infringement of trade dress and product configuration.
19.3. Abandonment - Under the Lanham Act as amended in 1994, a mark is deemed "abandoned" "when its use has been discontinued with intent not to resume such use." Nonuse for three consecutive years is considered prima facie evidence of abandonment. 15 U.S.C. § 1127
19.4. Non-trademark use - Use of a mark is only infringing if the mark is used as a mark. For instance, mentioning a mark in an article is generally not infringement. Using a mark as the basis of a song is generally not infringement ("Barbie Girl"; see Mattel v. MCA Records, 296 F.3d 894 (9th Cir. 2002)). Likewise, mentioning a mark in the title of a work, as in The Lexus and the Olive Tree or The Devil Wears Prada, is generally not infringement. However, using Star Trek in the title of an unauthorized book about Star Trek would likely infringe the mark, since the mark is used on other books authorized by its holder.
20. Remedies
20.1. Injunction is a standard remedy for trademark infringement. The usual injunction is to halt production and sale of infringing goods and services. In some cases, the court might also award an injunction for corrective advertising, which forces the defendant to pay for an amount of advertising necessary to reverse the damage to the plaintiff's mark.
20.2. Damages for infringement is awarded based on the factors such as i) the Defendant's profits, ii) Damages sustained by the Plaintiff and iii) cost of bringing the lawsuit - 15U.S.C. § 1117. The Plaintiff is responsible for proving the defendant's sales under point i, as well as their own damages and costs under point ii and point iii. The Defendant is responsible for proving their costs to reach a final figure for Defendant's profits
21. Trademark Litigation – Development And Trends:
21.1. Developments in the U.S. Supreme Court - regarding relationship between fair use and likelihood of confusion
21.1.1. In KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 125 S.Ct. 542 (2004) (Souter, J.) The Supreme Court held that, in determining whether a defendant has made fair use of a word or phrase claimed by another party to be a trademark (in this case MICROCOLOR for permanent makeup), the defendant need not prove a lack of likelihood of confusion. It is appropriate to consider some likelihood of confusion factors, however, because they also bear on fair use. For example, intent to adopt another’s mark would suggest that the defendant has not made a good faith fair use. In addition, actual confusion suggests that the defendant may not be using the designation in a descriptive manner, but rather as a trademark.
21.1.2. Moseley v. V. Secret Catalogue, Inc., 537 US 418 (2003)(Stevens, J.) The Supreme Court held that a finding of dilution required a showing of actual dilution supported by evidence of injury to economic value of the mark, such as diminished capacity of the mark to identify and distinguish goods or services sold in stores or catalogs. While mere customer association between similar but not identical marks is not enough to support a finding of dilution, actual loss of sales or profits is likewise not required. The Court noted that this interpretation of federal law is in opposition to many state statutes that require only a likelihood of dilution.
21.1.3. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001) (Kennedy, J.) The Supreme Court held that the existence of a prior patent on features later claimed to be protected by trade dress may have ‘vital significance’ in the trade dress claim because it lends strong evidence of functionality. The Court stated that where the expired patent claimed the same features, the entity that seeks trade dress protection carries the burden of proof to show that the feature is not functional.
21.1.4. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 US 205 (2000)(Scalia, J.) The Supreme Court held that product design is entitled to unregistered trade dress protection where the product design is distinctive and has acquired secondary meaning because design itself is not inherently distinctive.
21.2. Developments in The Circuit Courts - Likelihood of confusion
21.2.1 Beacon Mut. Ins. Co. v. OneBeacon Ins. Group, 376 F.3d 8 (1stCir. 2004) The First Circuit reversed a grant of summary judgment on the grounds that, even though the plaintiff could not prove lost sales, the infringement caused actual confusion among those in a position to influence sales and others, and therefore harmed the plaintiff’s goodwill and reputation. The evidence showed that the parties’ respective use of the ONEBEACON and BEACON MUTUAL marks for worker compensation insurance services caused misdirected communications among injured workers, health care workers, third party insurers, and attorneys. Such confusion, although not directly resulting in lost sales, was found to be commercially relevant and actionable by the First Circuit.
21.2.2. Citizens Financial Group Inc. v. Citizens Nat’l Bank of Evans City,383 F.3d 110 (3d Cir. 2004) In this reverse confusion case involving the CITIZENS mark, the Third Circuit held that the issue was whether confusion was likely in the senior user’s market, not in the larger market of the junior user. Thus, survey evidence must correspond to the senior user’s geographic area. The court also found that the district court erred in molding the verdict to allow the junior user the right to use the mark in the senior user’s market, and directed that an injunction be entered.
21.2.3. Kos Pharmaceuticals Inc. v. Andrx Corp., 369 F.3d 700 (3d Cir.2004) The Third Circuit reversed the district court’s determination that the owner of the ADVICOR mark for a prescription anticholesterol drug was not entitled to a preliminary injunction against the owner of ALTOCOR mark for similar drugs. The court applied the ten-factor Lapp test for likelihood of confusion, and found that the lower court erred in focusing on the heightened care likely to be exercised by medical professionals, when the Lapp factors otherwise favored the plaintiff and the drugs were marketed to consumers in direct competition with each other.
21.2.4. What-A-Burger of Virginia, Inc. v. Whataburger, Inc. of CorpusChristi, Texas, 357 F.3d 441 (4th Cir. 2004) In reversing the lower court’s findings of laches and acquiescence, the Fourth Circuit noted that there was no likelihood of confusion between the marks (WHATABURGER and WHAT-A-BURGER) because the parties used the marks in distinct geographical markets. Thus, an infringement claim cannot be barred by laches or acquiescence until one party shows a likelihood of entering the other’s territory and thereafter delays in enforcing its rights.
21.2.5. Playboy Enterprises, Inc. v. Netscape Comm. Corp., 354 F.3d 1020(9th Cir. 2004) The Ninth Circuit reversed the district court’s order of summary judgment in favor of Netscape, on the grounds that its practice of “keying” certain search terms (including PLAYBOY) so that banner ads of third parties appear when those terms are entered into a search engine may constitute trademark infringement. The court reaffirmed that initial interest confusion is actionable as trademark infringement, and that the 8-factor Sleekcraft test for likelihood of confusion applies.
21.2.6. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin MaisonFondée en 1772, 396 F.3d 1369 (Fed. Cir. 2005) The Federal Circuit affirmed the TTAB’s finding that VEUVE ROYALE was confusingly similar to the opposer’s VEUVE- formative marks, stating that the fame of a mark for likelihood of confusion purposes must be measured in relation to the class of customers and potential customers rather than the general public. The court reversed the TTAB’s finding of likelihood of confusion with respect to the opposer’s WIDOW mark, however, on the grounds that consumers would be unlikely to translate VEUVE to WIDOW, and that the doctrine of foreign equivalents therefore did not apply.
21.2.7. Playtex Products Inc. v. Georgia Pacific Corp., 390 F.3d 158 (2dCir. 2004) The Second Circuit Court affirmed summary judgment for the defendant on the grounds that QUILTED NORTHERN MOIST ONES was not confusingly similar to WET ONES for pre-moistened towlettes. Applying the eight Polaroid factors used to address likelihood of confusion, the court noted that the marks were dissimilar due to the defendant’s prominent use of its house mark, and that there was no evidence of actual confusion or bad faith.
21.2.8. Surfvivor Media, Inc v. Survivor Productions, --- F.3d ---- (9th Cir.2005) In this reverse confusion case, the owner of the SURFVIVOR mark for beachwear, sunscreen, and surfboards sued the producers of the SURVIVOR television show for infringement. The Ninth Circuit affirmed the entry of summary judgment in favor of defendants because no material issue of fact was raised with respect to likelihood of confusion under the Sleekcraft test. The court found that the two marks were similar in sound but dissimilar in appearance. The court also relied on the absence of evidence of actual confusion, the unrelated nature of the goods, and an absence of intent to infringe.
21.2.9. Team Tires Plus Ltd. v. Tires Plus Inc., 394 F.3d 831 (10th Cir.2005) The Tenth Circuit reversed summary judgment on the grounds that the district court failed to analyze the likelihood of confusion caused by the parties’ respective uses of TIRES PLUS in connection with tire stores and franchising, and erroneously treated the differences in services as dispositive.
21.2.10.Gateway, Inc. v. Companion Products, Inc., 384 F.3d 503 (8th Cir.2004) The Eighth Circuit affirmed the trial court’s judgment that a stuffed black-and-white cow toy that was intended to be wrapped around the body of a computer infringed upon Gateway’s black and white cow print trade dress. The court agreed that Gateway’s trade dress had acquired distinctiveness through secondary meaning and was non-functional, and that there was a likelihood of confusion among an appreciable number of consumers.
21.2.11. Dippin’ Dots, Inc. v. Frosty Bites Distrib., LLC, 369 F.3d 1197(11th Cir. 2004) The Eleventh Circuit affirmed the district court’s grant of summary judgment to the defendant, where the plaintiff’s alleged trade dress (size, color, and shape of flash-frozen ice cream product) was functional and the parties’ logos were so dissimilar as to preclude a likelihood of confusion. The district court found that the plaintiff’s trade dress was functional under both the traditional test and competitive necessity test of functionality, and took judicial notice of the fact that color indicates the flavor of ice cream.
21.2.12. Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9thCir. 2004) The Ninth Circuit affirmed the district court’s application of the dilution statute, even though the defendant began using NISSAN.COM and NISSAN.NET prior to its enactment, to authorize prospective relief. The case was remanded, however, to determine whether NISSAN was famous in 1991 when the defendant first made use of the NISSAN mark in a potentially diluting manner. The court affirmed the district court’s rulings that the defendant infringed the NISSAN mark by offering links to automobile-related websites, but not by advertising its own computer-related services. The appeals court found that the injunction violated the First Amendment, however, to the extent that it prevented the defendant from criticizing Nissan Motors on its web site. That issue was remanded to the district court.
21.2.13. AutoZone, Inc. v. Tandy Corp., 373 F.3d 786 (6th Cir. 2004) The Sixth Circuit affirmed summary judgment against the plaintiff on its dilution claim on the grounds that the marks AUTOZONE and POWERZONE were dissimilar and the plaintiff failed to introduce evidence of actual dilution as required by Moseley. Summary judgment was likewise granted and affirmed on the plaintiff’s infringement claim, in light of the differences between the marks and products, absence of actual confusion, and absence of intent to infringe.
21.2.14. Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir.2004) In this nominative fair use case, the Fifth Circuit affirmed the district court’s award of summary judgment to an unauthorized dealer of vacuum cleaners, as its use of the KIRBY mark to truthfully advertise that it sold and repaired KIRBY vacuum cleaners and did not create a likelihood of confusion. In finding that the defendant’s use of KIRBY did not suggest affiliation or endorsement, the court considered the five “digits of confusion” set forth in Westchester. The appeals court agreed with the district court that the plaintiff’s survey could not properly be considered, as the universe of respondents was too limited and it employed leading questions.
21.2.15. Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792 (9thCir. 2003) The Ninth Circuit, applying the Rogers test, held that there was no trademark infringement by photographs of a Barbie doll which referred to Barbie in the title on the BARBIE mark where public interest in free and artistic expression greatly outweighs its interest in potential consumer confusion. With respect to claims of misappropriation of trade dress, the court found that the artist’s use of the doll was protected under the fair use doctrine as nominative use under New Kids on the Block because he used the doll to conjure up associations of Mattel and identify his own work at the same time.
21.2.16. Retail Services Inc. v. Freebies Publishing, 364 F.3d 535 (4th Cir.2004) The Fourth Circuit affirmed the district court’s entry of summary judgment on the grounds that FREEBIES was generic for the services at issue. The mark was found generic even though it was the subject of an incontestable federal registration, as incontestable status bars challenges based on descriptiveness but not genericness. The court noted that federal registration of a mark is strong evidence that the mark is not generic, but the registration presumption simply shifts the burden to the party challenging the registered mark to show, by a preponderance of the evidence, that the mark is generic. In determining whether a mark is generic, the court will look to dictionaries, evidence of the owner’s generic use of the mark , and its meaning among the public.
21.2.17. In re Oppedahl & Larson LLP, 373 F.3d 1171 (Fed. Cir. 2004) The Federal Court affirmed the PTO’s refusal to register PATENTS.COM on grounds of descriptiveness. The court held that the addition of a top level domain indicator (“TLD”), such as .com, generally does not serve as a source-indicating function. The court compared TLD’s to the addition of Co. or Corp., which never possess source indicating significance. The court declined to adopt a bright-line rule, however, and noted that some marks resembling domain names (such as TENNIS.NET) may be sufficiently distinctive to be registerable.
21.2.18. DeGidio v. West Group Corp., 355 F.3d 506 (6th Cir. 2004) In this case, the owner of the domain name LAWOFFICES.NET sued West Group for using LAWOFFICES.COM. The SixthCircuit agreed that summary judgment was properly granted to West Group, as the term LAWOFFICES.NET was descriptive and had not obtained secondary meaning. In evaluating descriptiveness, the district court relied on the 6-factor test set forth in McCarthy treatise, and this was relied upon by the appeals court as well.
21.2.19. Donchez v. Coors Brewing Co., 392 F.3d 1211 (10th Cir. 2005) The Tenth Circuit affirmed a grant of summary judgment, holding that the mark BEERMAN was generic for beer vending and related entertainment services. The court noted that a survey showed 75.9% of interviewees recognized the mark as generic, and that even if BEERMAN was descriptive, the plaintiff failed to provide evidence of secondary meaning.
For information on the European Union Trade mark Law kindly visit http://en.wikipedia.org/wiki/Trade_mark_law_of_the_European_Union http://en.wikipedia.org/wiki/Community_Trade_Mark
22. Indian Trade Mark Law

22.1. India too has an ancient history of Using Trademarks. The concept of identifying the source of manufacture by a mark was in practice in ancient days. Signatures of craftsmen have been found engraved on goods sent to Iran from India some 3000 years ago! But trademark gained importance after the industrial revolution when large-scale production and distribution of goods all over the world became possible and publicity through print and audio-visual media became necessary.

22.2.The use of modern trade mark as a distinctive sign to indicate the origin or source of the product, carrying with it an association of high quality, goes back to the eighteenth century England, as in the case of cutlery trade. The real boost to trade mark came with Unilever. It marketed its soap under the brand Sunlight, emphasising not the product as such but the brightness that its use will bring to the clothes cleaned with it. The similarity of the products in the same market has necessitated the marking of goods by a symbol, which could distinguish one’s products from similar goods made by others.

22.3. In 1940 the then British Government of India passed the Trade Marks Act for uniform and systematic registration of trade marks in India, which came into force on June 1, 1942. This was replaced by The Trade and Merchandise Marks Act, 1958, which came into effect from November 25, 1959. In the year 1999, with India joining the World Trade Organisation(WTO), as an original member, it became necessary to effect changes in its Trademark Law in consonance with TRIPS. Hence new Trade Mark Act, 1999, was enacted repealing the Act of 1958.

22.4. The Act of 1999 makes important departures from the Act of 1958 in two important respects:
1. Shape of goods is recognised as a trade mark; and
2. Trade Marks are now granted for services also, besides goods.

22.4.1. Goods is defined as anything which is the subject of trade or manufacture. Service means service of any description offered to users. Banking, finance, insurance, transport, energy supply, construction, hotels, entertainment, information and broadcasting etc. are all examples of areas where services are offered in connection with business, industry or commerce. Definition of service is meant to be all subsuming.
22.5. The Registration of Trade Mark Law is done in Mumbai where the Trade Mark Registry is situated. There are branch offices of the Registry at Calcutta, Delhi and Chennai with separate jurisdictions.

23. What is a trade mark in India?
23.1. A trade mark, as currently recognised in India, is a visual symbol (in the form of a word, a name, a device, a symbol, or a label) which identifies any merchant's or manufacturer's goods or services and distinguishes them from similar goods or services of competitors in the trade. It may include shape of goods, their packaging and combination of colours. Recently, non-visual signs have made a strong claim for recognition as trademark. Smell and sound signs fall under such category though they are not yet recognised in India. Several broadcasting organisations and film producers have specific signature tunes to identify their programs.

23.2. The Act makes a distinction between a trademark and a well-known trademark. If a substantial segment of public associates a trade mark with a particular class of goods and services, and if this trade mark is used for other goods or services, and the public is inclined to associate the new goods/services with the earlier goods/services, then the mark is a well known trade mark. If the proprietor of a trademark is an association of persons, who do not make a partnership within the meaning of the Indian Partnership Act, 1932, the trademark is called a collective mark.

23.3. A special class of trademark is termed as certification trademark. These trademark do not indicate the origin of the goods, but are certified by the proprietor of the mark as conforming to certain characteristics, like quality, ingredients, geographical origin etc. Agmark used for food items in India is a certification mark.
24. A good Trademark as per Indian Law:
24.1. A trade mark should be distinctive. Distinctiveness may be inherent or acquired. An invented word may be inherently distinctive as a trade mark e.g. RIN. Other trade mark may have acquired distinctiveness through usage e.g. TATA, Reliance, Revlon. Most brands acquire distinctiveness through use. A brand may depend on the class of goods e.g. Hawkins and Prestige are two distinctive brands in pressure cookers. If the trade name is a word, it should be short and easy to spell, pronounce and remember; if it is a device it should be expressible in a word.

24.2. The word should be an invented word. Zen, Avon, RIN, Flex are all fine examples. The mark can be denied if it is not considered distinctive. A trade mark consisting of parts of a chain wheel and chain to cover a business in chains and chain wheels is not considered distinctive. However, distinctiveness alone is not sufficient for registration of a trade mark. It may also depend on whether other traders, without any improper motives want to use the same mark.
25. Functions of trade mark
25.1. A trade mark performs five main functions:
(a) To identify the origin or source of goods and services and distinguish them from similar products or services of other enterprises. Trade mark facilitate the choice to be made by the consumer when buying certain products or making use of certain services.
(b) To signify that all goods bearing the same trade mark have a single source.
(c) To signify that all goods bearing the same trade mark are of the same quality. However, it is to be understood that there is no legal obligation on the trade mark owner to maintain a specific quality. In fact the House of Lords, UK has approved application of some trade mark to products of different quality in different countries. The brand owner is free to enhance or reduce the quality of the product. The check against deterioration of quality lies with the consumer. If a brand does not give at least the quality that the consumer associates with it, she will switch on to another brand. However, the brand owner is bound to offer the quality features as declared under trade description.
(d) To serve as the principal instrument in advertising and selling of goods and services.
(e) A fifth function, particularly in the case of registered trade mark, has acquired importance over the years, viz. to protect the trade and business interests of the owner of the brand, as also the goodwill associated with the brand, in case of infringement of trade mark.

26. Registration of Trade Mark
26.1. In India an office of the Registrar of trade mark has been established for the maintenance of the trade mark Registry. Controller General of Patents and Designs is also the Registrar of trade mark. The Register of trade mark contains the record
of all registered trade mark, with names, addresses and description of proprietors and users, assignments and transmissions, and conditions and limitations and the name of registered users.
24.1. Any person who claims to be a proprietor of a trade mark can apply to the Registrar of trade mark for its registration. The application may be made in the name of an individual, partners of a firm, a Corporation, any Government Department, a trust or joint applicants claiming to be the proprietor of the trade mark.
25. Application
25.1. Application in the prescribed form has to be filed in the office of the trade mark Registry within whose territorial limits the principal place of business in India of the applicant, or the first applicant in the case of joint applicants, is situated. The Registrar is required to classify goods and services in accordance with the international classification for registration of trade marks. A single application is sufficient for registration of a trade mark for different classes of goods and services; however, the fee is payable for each class separately.

25.2. Every application for registration of a trade mark shall contain a representation of the mark in the place provided in the form for the purpose. Five additional representations of the mark have to be supplied with the application. The application can either be accepted completely or accepted subject to amendments or rejected. It is possible that an application is accepted and later, before registration, the acceptance is found to be in error. In such a case the Registrar, after hearing the Applicant may withdraw the acceptance.

26. Advertisement
Soon after acceptance, the application is advertised in the Trade Mark Journal to provide the public an opportunity to oppose the registration. Any person may, within three months from the date of the advertisement or within such further period not exceeding one month, give notice in writing to the Registrar of opposition to the registration. When the procedure for registration, including the opposition, if any, is satisfactorily complete, the Registrar is mandated to register the mark. The registration of a trade mark is for a period of ten years, but it may be renewed from time to time indefinitely.
27. What kind of trade marks can be Registered?
27.1. A trade mark which consists of at least one of the following essential characteristics can be registered.
a) The name of a company, individual or firm represented in a particular or special manner;
b) The signature of the applicant for registration;
c) One or more invented words;
d) One or more words having no direct reference to the character or quality of the goods except the exceptions listed in the next section;
e) Any other distinctive trade mark ; and
f) A trade mark which has acquired distinctiveness by use over a prolonged period of time.

27.2. A part of trade mark can be registered separately in addition to a whole trade mark if it satisfies the requirements of registration of a trade mark. The Act also provides for registration of the same or similar trade mark by more than one proprietors in the case of honest concurrent use or other special circumstances.

28. Trademarks not Registrable
28.1. The Act debars a trade mark from registration if it is not distinctive, or consists exclusively of marks or indications which have become customary in the current language and practice. Also, mark falling in any of the following categories is not registerable:
28.1.1. a mark which is identical with or deceptively similar to a trade mark already registered in respect of the same goods or goods of the same description;
28.1.2. a mark the use of which would be contrary to any law or which would be disentitled for protection in a court of law;
28.1.3. a mark comprising or containing scandalous or obscene matter;
28.1.4. a mark comprising or containing any matter likely to hurt the religious susceptibilities of any class or section;
28.1.5. a word which is commonly used and accepted name of any single chemical element or compound, in respect of chemical substances; and
28.1.6. a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India.

28.2. Shape trade mark attract prohibition from registration in certain conditions which may arise in a very limited number of cases, and it would be difficult in those cases to satisfy the distinctiveness criterion. A mark cannot be registered as a trade mark, if it consists exclusively of the shape of goods
(a) which results from the nature of goods themselves. For example, shape of an apple used for apples or their packaging;
(b) which is necessary to obtain a technical result. An exclusively technical shape will be the one if no other shape will perform its function;
(c) which gives substantial value to the goods. There may be difficulty in interpreting this provision.
28.3. The word exclusively is to be noted here. If a mark has a shape of any of the descriptions given above but has other additional features, it could be considered for registration subject to other essential qualifications for a trade mark. Also, an
unregistered trade mark can continue to have a shape of a description that makes it ineligible for registration. There are also relative grounds for refusal of registration.

28.4. If a trade mark is identical with an earlier trade mark, or if it is similar to an earlier trade mark and covers identical goods and services so as to cause confusion in the mind of the public, it will not be registered.

28.5. If a trade mark has similarity or identity with an earlier well-known trade mark but is sought to be applied to a different category of goods, it will not be registered, as it seeks to exploit a well known brand for an unfair advantage or may harm the reputation of the earlier, well known trade mark.
28.6. If a trade mark violates any law, in particular the law of passing off protecting an unregistered trade mark, or the law of copyright, it shall not be registered.

29. The Act provides for registration of same or similar trade mark by more than one proprietor in case of honest, concurrent use. The trade mark is considered to be an incorporeal property of the owner of the mark. So it is assignable and transmissible as in the case of other forms of property. But considering the peculiarities of the property in trade mark, it is subject to a number of restrictions on assignability. A registered trade mark has to be used on the goods it was applied for. If it is not used for long, it can be taken off the register on application made by any aggrieved person to the Registrar or to the Appellate Board on the ground that its owner had no intention to use it while registering it.

30. Similar and Deceptively Similar Trade Mark
30.1. The word similar is not defined in the Act. However, a trade mark is said to be deceptively similar to another if it so nearly resembles that other mark as to be likely to deceive or cause confusion. The deceptively similar mark includes not only confusion but deception also. Near resemblance is mentioned in the Act in connection with registered trade mark in the name of the same proprietor which may closely resemble each other, so as to deceive or cause confusion in the mind of a user. The Registrar may require them to be registered as associated trade mark.The following factors are to be taken into consideration when deciding the question of similarity:
30.1.1. The nature of the marks;
30.1.2. The degree of resemblance;
30.1.3. The nature of goods in which they are likely to be used as trade mark;
30.1.4. The similarity in nature, character and nature of goods in which it is used;
30.1.5. The nature of the potential class of consumers; and
30.1.6. The visual and phonetic similarity.

31.1. Exploiting Trade Marks – The Owner of a Trade mark can exploit his mark to his best advantage by either assigning and transmitting or by Licensing.


32. Assignment and Transmission
32.1. The registered trade mark is assignable and transmissible, in respect of either some or all the goods or services for which the trade mark is registered. The assignment or transmission of a must be in writing. Transmission means transfer by operation of law, devolution to the representative of a deceased person and any other mode of transfer other than assignment. If assignment or transmission of a trade mark would create multiple exclusive rights in more than one person, which might deceive or cause confusion, restrictions could be imposed on such assignment or transmission. The confusion or deception could be in relation to same goods or services, same description of goods or services goods or services, or description of goods or services which are associated with each other.

33.1. Licensing and Registered Users
33.2. The proprietor of a trade mark can assign or licence it to a third party for use. The third party can be either a registered user or an unregistered user. If some one wants to be a registered user of a trade mark, he has to make an application in a prescribed manner jointly with the proprietor of the trade mark, to the registrar, enclosing a copy of the agreement between them stating the trade mark and the specific uses to be covered by the user, the degree of control to be exercised by the proprietor, and whether there would be any more registered users permitted by the proprietor. For an unregistered user, permitted by the proprietor, the use of trade mark shall be deemed to have been made by the proprietor and not by the person permitted by the proprietor.

33.2. The right to the use of the mark is not assignable and transmissible. Subject to any agreement between the parties, a registered user may sue for infringement as if he were the proprietor of the trade mark and make the registered proprietor a defendant in the case.


34. Infringement
34.1. If a person, who is not the owner of a registered trade mark, without permission from the owner uses the same trade mark, or a deceptively similar trade mark in the course of trade mark, he infringes the trade mark and is liable to be sued for legal remedies by the rightful owner, or persons so authorised. No action for infringement is available in respect of unregistered trade mark; however, common law rights for action against ‘passing off’ are not affected.
34.2. Specifically, infringement is caused in the following cases:
34.2.1. the mark is identical and is used for similar goods/services;
34.2.2. the mark is similar to the registered mark and is used for the same or similar goods/services as covered by the registered trade mark;
34.2.3. the mark is identical with the registered trade mark and is used for identical goods; and the mark is therefore likely to cause confusion on the part of the public.
34.3. If a trade mark has a reputation in India, the use of a mark identical with or similar to it, on goods or services which are different, constitutes infringement as such use, without due cause, would take unfair advantage of a reputed trade mark or harm its distinctive character. The Act prohibits adoption of a registered trade mark by another person as trade name, i.e. the name of an enterprise.
34.4. A suit for infringement of registered trade mark must be filed in the district court within whose territorial jurisdiction, the plaintiff (or if there are more than one such person, any one of them) instituting the suit or proceeding actually and voluntarily resides or carries on business or personally works for gain.
35. Offences and Penalties
35.1. A person making a registered trade mark or a deceptively similar mark is deemed to falsify a trade mark if he is doing it without the consent of the proprietor of the trade mark. Any alteration, addition, effacement of a genuine trade mark also amounts to its falsification. A person who, without authorisation, applies registered trade mark or a deceptively similar mark to goods or services or any package containing goods is deemed to falsely apply the genuine trade mark. If any person uses any package bearing a mark which is identical with or deceptively similar to the registered trade mark for the purpose of packing, filling or wrapping any goods other than the genuine goods of the proprietor of the trade mark he is guilty of falsely applying the trade mark.
35.2. Offence under the Act is committed if a person makes, disposes of, or has in his possession, any die, block, machine, plate or other instrument for the purpose of falsifying or of being used for falsifying a trade mark:
1. applies any false trade description to goods or services, or
2. applies a false indication of the country or place where the goods were produced or name and address of the manufacturer, or of the person for whom they are produced.
3. tampers with, alters or effaces an indication of origin which has been applied to any goods to which it is required to be applied.
35.3. The above mentioned offences shall be punishable with imprisonment for a term of minimum of six months but which may extend to three years and with a minimum fine of fifty thousand rupees but which may extend to two lakh rupees. For adequate and special reasons mentioned in the judgement, the court may impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees.
35.4. Penalty for selling goods or providing services to which false trade mark or false trade description is applied is punishable with imprisonment for a minimum term of six months but which may extend to three years and with a minimum fine of fifty thousand rupees but which may extend to two lakh rupees.
35.5. Enhanced penalty can be imposed on second or subsequent conviction. Such offences shall be punishable with imprisonment for a term between one to three years and with fine between one lakh rupees to two lakh rupees.
35.6. A person, who represents an unregistered trade mark as a registered trade mark, shall be punishable with imprisonment for a term which may extend to three years, or with fine, or with both.
35.7. The penalty for falsification of entries in the register is imprisonment for a term, which may extend to two years, or a fine, or both. The use of words, which may falsely suggest that a person’s place of business is officially connected with the trade mark office, attracts imprisonment for a term up to two years or a fine or both.
35.8. If the person committing an offence under this Act is a company, the company as well as every person in charge of, and responsible to, the company for the conduct of its business at the time of the commission of the offence shall be deemed to be guilty of the offence. A company means any corporate body and includes a firm or other association of individuals. Abetment of any offence is punishable as if the abetter himself committed that offence.
For more information on Indian Trademark registration procedures kindly visit http://ipindia.nic.in/tmr_new/default.htm

36. Indian Trade Mark Act, 1999: Salient Features
36.1. Some major changes brought about in the law of trade marks in India by the Trade Mark Act, 1999 are summarised as under:
36.1.a. Inclusion of trade mark for services in the definition of trade mark;
36.1.b. A new provision for registration of Collective Marks;
36.1.c. Prohibition of registration of certain marks which are mere reproductions of or imitations of well known mark;
36.1.d. Provision for filing a single application for registration in more than one class of goods and/or services;
36.1.e. Increasing the term of registration of a trade marks from 7 to 10 years and providing a grace period of six months for payment of renewal fees;
36.1.f. Amplification of circumstances in which validity of registration can be contested;
36.1.g. Vesting the final authority in the Registrar for disposing of application for registration of Certification Trade Mark ;
36.1.h. Harmonizing penal provisions of the trade marks law with The Copyright Law;
36.1.i. Provision for establishment of an Appellate Board.
37. Amendments - For the original pdf text of The Amendment Bill to be introduced in Lok Sabha for the amendment of the Act 1999, kindly visit http://www.prsindia.org/docs/bills/1187934649/1187934649_Trade_20Marks.pdf

REFERENCE
1.Trade Mark Act, 1999 (Bare Act),
2.Trade Mark Act, 1958 (Bare Act),
3. Legislations on Trade Mark of EU, US, France, Germany, Japan etc.,
4. Intellectual Property Law-Prof. A. Chandrasekaran
5. Law relating to Patents, Trademarks, Copyright, Designs & Geographical Indications- B.L.Wadhera
6. Intellectual Property Law – P.Narayanan
7. Cochin Law Review
8. Kashmir Law Review
9. www.indlaw.com
10. http://www.wipo.int/treaties/en/ip/tlt/
11. http://www.wipo.int/freepublications/en/marks/900/wipo_pub_900.pdf
12. http://en.wikipedia.org/wiki/Trademark_distinctiveness
13. http://en.wikipedia.org/wiki/Priority_rights
14. http://en.wikipedia.org/wiki/Trademark_infringement
15. http://ipindia.nic.in/tmr_new/default.htm
16. www.prsindia.org/docs/bills/1187934649/1187934649_Trade_20Marks.pdf 17. http://en.wikipedia.org/wiki/Trade_mark_law_of_the_European_Union
18. http://en.wikipedia.org/wiki/Community_Trade_Mark