Transcript TRADE MARKS AND TRADE NAMES By Dr. Basavaraj K. Nanjwade M.Pharm., Ph.D., (LLB) Associate Professor Department of Pharmaceutics KLE University BELGAUM - 590010

TRADE MARKS AND TRADE NAMES
By
Dr. Basavaraj K. Nanjwade M.Pharm., Ph.D., (LLB)
Associate Professor
Department of Pharmaceutics
KLE University
BELGAUM - 590010
TRADEMARKS AND TRADE NAMES
 It deals with good will attached to marketing
symbols, trademarks, trade names or get up by
actual use in relation to some product or service
 Examples – Reebok, Mc Donald’s, Nike, Levis
etc.
 The Trade Marks law is contained in Trade
Marks Act, 1999
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TRADEMARKS
• Trademark is a symbol that indicates who
is responsible for the goods placed in the
market
• Trademarks help to distinguish between
the goods of competing traders
• Trademark helps a customer to buy goods
of a certain quality (e.g. color, size,
weight, fragrance, taste.)
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TRADEMARKS
• Trademarks must be clear and distinct
from each other
• Trademarks may be in form of a letter,
numeral, whole sentence, picture,
combination of words and devices, label
etc.
• Trademark may also be three-dimensional
(e.g. neck of bottle)
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TRADE NAMES
• Trade names are names, terms or designations
that serve to identify and distinguish an
enterprise and its business activities from those
of other enterprise and its business activities
• Whereas the trademark distinguishes the goods
or services of an enterprise, a trade name
identifies the entire enterprise and symbolizes
the reputation and goodwill of the business as a
whole.
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TRADE NAMES
• The main reason for protecting trademark and
trade names against infringement is that the
public might be misled into thinking that two
separate enterprises using same or confusingly
similar trademark or a trade name constitute one
and the same enterprise
• It is not only harmful to the consumers but it also
permits the infringing enterprise to benefit
unfairly.
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SERVICE MARKS
• Where a trademark is used in connection
with services, it may be called “service
mark”.
• Service marks are used by hotels,
restaurants, airlines, tourist agencies,
laundries and cleaners etc.
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TRADE MARKS ACT, 1999
INTRODUCTION
• Patents, designs and copyright are protected
only for a limited period. On the other hand,
in general, a registered trade mark can be
protected in perpetuity subject only to the
following conditions:
It is used and renewed periodically and
The registered proprietor takes prompt
action against infringers.
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TRADE MARKS ACT, 1999
• First TM registered in UK under No. 1 of 1876
consisting of red equilateral triangle in
respect of alcoholic beverage is still in force.
• The present Trade Marks Act, 1999 has
replaced the Trade and Merchandise Marks
Act, 1958. And the Trade Marks Act, 1999 has
been brought into force only on 15th
September 2003. The Trade Mark Rules, 2002
are passed under the Trade Marks Act, 1999.
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OBJECTIVES OF THE TM ACT, 1999
A comprehensive review of TM Law was required
in view of –
 Developments in trading and commercial
practices
 Increasing globalization of trade and industry
 The need to encourage investment flows and
transfer of technology
 Need for simplification & harmonization of trade
mark management systems and
 To give effect to important judicial decisions
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TM Act, 1999 was passed with objectives
a) To provide for registration of trade mark for
services, in addition to goods;
b) Registration of trade marks, which are imitation
of well known trade marks, not to be permitted,
besides enlarging the grounds for refusal of
registration;
c) Amplification of factors to be considered for
defining a well known mark;
d) To provide only a single register with simplified
procedure for registration and with equal
rights;
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TM Act, 1999 was passed with objectives
e) Providing for registration of “collective marks”
owned by associations;
f) Providing an Appellate Board for speedy
disposal
of
appeals
ad
rectification
applications;
g) Providing enhanced punishment for the
offences relating to trade marks;
h) Prohibiting someone else’s trademark as part
of corporate names, or name of business
concern;
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TM Act, 1999 was passed with objectives
i) Provision for filing a single application for
registration in more than one class;
j) Increasing the period of registration and
renewal from 7 to 10 years;
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MEANING AND DEFINITION OF TM
• At times the consumers are duped when they
buy commodities presuming them to have
originated from a certain identified source, when
actually they have not, and after buying such
commodity it is found to be substandard.
• Examples: Parachute Oil, Fair and Lovely
cream, Lifebuoy soap etc. have many look-alikes in the market.
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MEANING AND DEFINITION OF TM
• In such case, the reputation of the
trader/manufacturer suffers if spurious goods are
sold as those originating from him.
• Therefore, the interest of consumer and the
trader can be saved if a definite symbol which
marks out the origin of goods from a definite
trade source is attached. Such symbol is called
a trade mark.
• E.g. ‘M’ of Mc Donald written in Yellow in a
peculiar shape is a TM. Such symbol is called as
TM.
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MEANING AND DEFINITION OF TM
• Trade Mark is a visual symbol in the form ofA word, device or label
Applied to articles of commerce
With a view to indicate to the purchasing
public that
They are goods manufactured or
Otherwise dealt in by a particular person or
particular organization
As distinguished from similar goods
manufactured or dealt by others
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MEANING AND DEFINITION OF TM
• TM is a visual representation attached to goods
for the purpose of indicating their trade origin.
• Examples: ‘Lakme’ distinguishes the goods of
Lakme Company from that of ‘Revlon’.
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MEANING AND DEFINITION OF TM
• A person who sells his goods under a particular
trade mark acquires limited exclusive right to use
of the mark in relation to those goods.
• A trade mark may be registered or unregistered.
An unregistered trade mark is called common
law mark.
• A trade mark when registered gets a stable
existence. A registered trade mark can be in
relation not only to its existing use but also for a
proposed use.
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MEANING AND DEFINITION OF TM
• The proprietor of an unregistered trade mark
shall not be entitled to institute any proceeding
to prevent, or to recover damages for, the
infringement of an unregistered trademark.
• However, such proprietor of unregistered trade
mark shall have common law remedy to take
action against another person, for passing off
goods as goods of the proprietor, or passing off
services as services provided by proprietor.
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STATUTORY DEFINITIONS
• MARK: Section 2(1) (m) of TM Act, 1999 defines
‘Mark’ as “Mark includes a – Device, brand,
heading, label, ticket, name, signature, word,
letter, numeral, shape of goods, packing or
combination of colours or any combination
thereof.”
Example ‘M’ – written in a particular style with
yellow colour for MacDonalds’; 555/777
numerical used for detergent soaps; ‘signature’
used as a mark for alcohol etc.
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STATUTORY DEFINITIONS
• TRADE MARK: Section 2 (1) (zb)
Trade mark is defined as a mark capable
of being represented graphically and that
is capable of distinguishing the goods or
services of one person from those of
others and may include shape of goods,
their packing and other combination of
colours.
E.g. Colgate, Bata, Pantene etc.
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STATUTORY DEFINITIONS
• SERVICE MARK: Section 2 (1) (z)
It means service of any description that is made
available to any potential users and includes the
provision of service in connection with business
of any industrial or commercial matters such as
banking, communications, education, financing,
insurance, chit funds, real estate, transport,
storage, material treatment, processing, supply
of electrical or other energy, boarding, loading’
entertainment’ amusement, construction, repair,
conveying of news or information and
advertising.
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STATUTORY DEFINITIONS
• WELL KNOWN TRADE MARK: Section 2(1) (zg)
Well known trade mark in relation to any goods or
services, means a mark which has become so to the
substantial segment of the public which uses such goods
or receives such services that the use of such mark in
relation to other goods or services would be likely to be
taken as indicating a connection in the course of trade or
rendering of services between those goods or services
and a person using the mark in relation to the firstmentioned goods or services.
Example: Coco Cola, Frooti, Bata.
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STATUTORY DEFINITIONS
• COLLECTIVE MARK: Section 2(1) (g)
“A Trade mark distinguishing the goods or services of
members of an association of persons not being
partnership firm from those of others”
The proprietor of the mark is the association.
The goods and services of a company or group of
companies like GODREJ or HINDUSTAN UNILEVER
LTD. may be the subject matter of collective Trade mark.
It is not to be registered if it is likely to deceive or cause
confusion to the public.
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STATUTORY DEFINITIONS
• CERTIFICATION TRADE MARK: Section
2 (1) (e)
There is a species of trade mark called as
Certification Trade mark. Its function is to
indicate that the proprietor of the mark has
certified the goods bearing the mark as to
certain characteristics of the goods.
e.g. Geographical origin, ingredients and
so on such as ISI, AGMARK, FPO
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STATUTORY DEFINITIONS
PROPERTY MARKS
Section 479 of Indian Penal Code, 1860
provides that “A mark used for denoting that
moveable property belongs to a particular person
is called a property mark.”
The distinction between ‘trade mark’ and
‘property mark’ is not recognized in English Law.
However in India, the distinction between a
‘trade mark’ and a ‘property mark’ is as follows:
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STATUTORY DEFINITIONS
Trade Mark
Property Mark
It denotes manufacture
It denotes the
or quality of the goods to ownership of them
which it is attached
It concerns the goods
themselves
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It concerns the
proprietor of the goods
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FUNCTIONS OF TRADE MARK
• TM may be used to indicate that the goods are
of a particular maker
• The goods of that maker are of a particular kind
or quality.
• Trader may indicate his best quality by one TM,
and his second best quality by another TM and
so on. E.g. MRF with the symbol of person
holding tyre is good quality and MRF written
plainly indicates the second quality.
• It serves the purpose of identifying the source of
origin of goods.
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FUNCTIONS OF TRADE MARK
• As per modern business conditions a TM performs
following functions:
 It identifies the product and origin.
 It guarantees its unchanged quality.
 It advertises the product.
 It creates an image for the product.
 e.g. ‘Zip Drive’ associated with Santro Car; Taj Mahal
for a particular quality of tea which will be different in
quality from Brooke Bond; SONY is associated with
electronic items etc.
• The functions of service marks in relation to services are
similar to that of a TM in relation to goods. E.g. Courier
services – such as DHL, DTDC, GATI etc.
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ESSENTIAL FEATURES OF TM
A Trade mark should have the following essential
elements:
1. A Trademark should have Distinctive Character
(Distinctiveness of the Trademark)
 A trade mark would be considered a good
trade mark when it is distinctive.
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ESSENTIAL FEATURES OF TM
Features of Distinctiveness
• Distinctiveness may be class dependent.
What is distinctive in relation to one class of
goods may not be so in relation to another
class of goods.
The TM may be united wholly to one or more
specified colours and this colour combination
may become the distinctive character of the
particular mark.
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ESSENTIAL FEATURES OF TM
• Distinctiveness may be inherent or acquired.
 Inherent distinctiveness means that the mark or get
up is distinct in itself from everything else and no one
can justifiably claim the right to use it. E.g. ‘RIN’,
‘ZEN’.
 Acquired distinctiveness means –
Distinctiveness through use. E.g. the trade marks
Yashica, Hawkins, Surf and Lux have acquired
distinctiveness through use as also they are
distinctive due to the inherent quality of why being
invented words.
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ESSENTIAL FEATURES OF TM
2. Trademark should preferably be an invented word.
The best trade marks are invented words. E.g. ZEN
( a car) , DIO (non-geared scooter).
3. Trademark, if it is a word, or name, then it should be
easy to pronounce and remember. E.g. Lux for
soap, Maruti Zen for car, Mercedes for cars, Levis
for jeans, Reynolds for pens, Parker for pens etc.
4. In case of a device mark, the device should be
capable of being described by a single work. E.g.
Camel for Camel Ink, Kingfisher bird for Kingfisher
Beer.
5. Trade mark should be easy to spell correctly and
write legibly.
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ESSENTIAL FEATURES OF TM
6. It should not be descriptive but may be suggestive
of the quality of goods. For example, a mark A-I
would generally suggest superior quality. Avon (A-1)
cycles for instance.
7. It should be short. E.g. ‘Flex’, ‘Bru’, ‘Rin’.
8. It should appeal to the eye as well as ear.
9. It should satisfy the requirements of registration.
10. It should not belong to the class of marks prohibited
for registration. E.g. Mark prohibited under the
Emblems and Names (Prevention of Improper Use)
Act, 1950
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THANK YOU
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