THE LAW ON TRADE MARKS IN INDIA

* Chandrakanthi.L

** Dr. Sreenivasulu.N.S

Introduction

Trademarks are a very valuable form of intellectual property since they are

always associated with quality and consumer expectations in a product or service.

Trademarks safeguard the interest of both consumer and trader by making out the

origin of goods from a definite trade source. As such it prevents the consumer from

duping with a substandard commodity. Trademark as applied or attached to goods

offered for sale in the market, consumer could distinguish those goods from similar

goods and identify them with a particular trader or with his successor as the owner of

a particular business. For example the trademark ‘Lakme’ distinguishes the goods of

Lakme Lever Co. from those of say the ‘Revlon’1.

What is trademark?

Trademark is a visual symbol in the form of a word, phrase, design, sound,

smell, color, product configuration, numbers, combinations of those, a device, or a

label applied to articles of commerce, which is capable of distinguishing the goods or

services of one person from those of others. It has been defined2 to mean a mark

capable of being represented graphically and which is capable of distinguishing the

goods or services of one person from those of others and may include shape of goods,

their packaging and combination of colors; and

i. A registered trade mark or a mark used in relation to goods or services for

the purpose of indicating or so as to indicate a connection in the course of

trade between the goods or services, as the case may be, and some person

having the right as proprietor to use the mark3; and

1* B.Com., LL.M., Lecturer, Sarada Vilas Law College, University of Mysore, Mysore-570004,

Karnataka, India

** B.Com., LL.M., Ph.D, Faculty of Law, National Law School of India University (NLSIU),

Bangalore, Karnataka, India. Visiting Faculty, Department of Post Graduate Studies and Research in

Law, University of Mysore, Mysore, Karnataka, India? Wadehra B.L, “Law relating to Patents Trade Marks Copyright Designs and Geographical Indications,

Universal Law Publishing Co.Pvt.Ltd., Delhi,2000, P.155.2 Section 2(1)(zb) of Trade Marks Ac of India, 1999.3 In relation to chapter XII (other than section 107) of the Trade Marks Act of India, 1999

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ii. A mark used or proposed to be used in relation to goods or services for the

purpose of indicating or so as to indicate a connection in the course of

trade between the goods or services, as the case may be, and some person

having the right, either as proprietor or by way of permitted user, to use the

mark whether with or without any indication of the identity of that person,

and includes a certification trade mark or collective mark.4

Essential features of a trade mark

Though the trademark defined under the Act is very wide, it can be stated in

short that Trade Mark is a visual symbol used in relation to any goods or services to

indicate some kind of trade connection between the goods or services and the person

using the mark. However to bring a mark within the scope of the statutory definition

of trademark, it should possess certain essential features. The essential features of a

trademark are as follows:

1. It must be a mark, that is a device, brand, heading, label, ticket, name or an

abbreviation of a name, signature, world, letter or numeral shape of goods,

packaging or combination of colors or any combination thereof;

2. It must be capable of being represented graphically.

3. It must be capable of distinguishing the goods or services of one person from

those of others.

4. It must be used or proposed to be used in relation to goods or services;

5. The use must be of a printed or other visual representation of the mark.

6. Such use in relation to goods must be upon, or in any physical or in any other

relation whatsoever to the goods.

7. In relation to services must be use of the mark as or as part of any statement

about the availability, provision or performance of such services.

8. The use must be for the purpose of indicating or so as to indicate a connection

in the course of trade between the goods or services, and some person having

the right to use the mark either as proprietor or by way of permitted user as the

case may be user. It is necessary that the person using the mark should reveal

his identity.

Different types and scope of trademarks

The definition of a ‘mark’ contains a list of various types of marks. The term

‘mark’ has been defined to mean and include a device, brand, heading, label, ticket, 4 In relation to the other provisions of The Trade Mark Act of India, 1999.

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name, signature, word, letter or numeral or any combination thereof5. Meanwhile the

new trademark act has got certain additions to the definition of trademark. As per the

new definition of mark under the Act a mark includes shape of goods, packaging and

combinations of colors also.6 Hence to understand the scope of trademark it is

imperative to know different types of marks. Let us know different types of

trademarks.

1. Device:

Device is a mark, which refers to any pictorial representation, which does not

come under any other category.

2. Brand:

Though the precise significance of the word ’brand’ in the definition of mark

is not clear, it refers to those kinds of symbols, which are branded on the

goods, in which case the symbols themselves would constitute the trade mark:

For example “Temple brand” or “Gopuram brand” etc.

3. Heading:

It is also a mark in relation to textile goods. It may contain letters or numerals

or any combination there of.7

4. Label:

It refers to a composite mark containing various features including devices,

words and descriptive expressions, usually printed on paper, which can be

pasted or attached to the goods themselves or their containers.

5. Ticket:

It appears to be something stitched or tagged on the goods and containing the

mark printed or pasted thereon.

6. Name:

It refers to the name of a company, individual or firm. It includes an

abbreviation of a name and also word, letter or numeral.

7. Shape:

Shape of goods and package including case, box, and container etc does form

a trade mark

5 Section (1) (j) 0f Trade Marks and Merchandise Act, 1958.6 Section 2(1)(m) of Trade Marks Act, 1999.7 Section 80 of Trade Marks Act, 1999.

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8. Trade Name:

Definition of ‘mark’ includes ‘name’ as such the term “trade mark’ includes

‘trade name’. What is necessary is the connection or nexus between the marks

used in relation to the goods and the person claiming a right to use the same.8

9. House mark and Product mark:

In trade particularly in the pharmaceutical trade we come across two types of

trademarks. One is product mark, which is used only in respect of one

particular product. It often referred to as brand name of the product. And

another mark is that House mark which is used on all the products of a

manufacturer.

10. Scheme:

Scheme of adoring or scheme of color combination is also considered as a

mark and could be registered.

11. Blanks:

Trademark containing blanks also considered as mark. Often a proprietor of a

mark designs his label leaving some blank space to be filled in with some

additional matter, usually of a descriptive character, which will be varied

depending upon the nature of the goods. In such cases the Registrar may insist

as a condition of registration that the blank space should be filled in only by

matter of specified character.

Historical development of trade marks in India

Prior to 1940, there was no Trade Mark Act in India. At that time there were

substantial problems, especially for the actions of infringement, passing off, etc and

different types of enactments both civil and criminal were managing the trademarks

protection. In particular The Indian Penal Code, 1860 in its Chapter XVII (Sections

463 to 489E) speaks about offences relating to ‘documents and to property marks”.

Further sections 478 to 489 of the same Act speaks about “property and other marks.”

However sections 478 and 480 of the Indian Penal Code, 1860 were repealed by

section 135 and Schedule of the Trade and Merchandise Marks Act, 1958 being the

first trade marks Act of India. Besides the Indian Penal Code, the Specific Relief Act,

1877 also speaks about protection of trademarks and temporary injunctions in case of

infringement.9 Further, the registration aspect was attempted to establish by

prescribing for a declaration as to ownership of a trademark under the Indian 8 Kirloskar Diesel Recon vs. Kirloskar Proprietary (1996) IPLR Bom 284 at 307.

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Registration Act, 1908, which was ignored by the Trade and Merchandise Marks act,

195810. Subsequently in 1889, the then British rulers enacted the Indian Merchandise

Marks Act, 1889 and the Trade Marks Act, 1940 for protecting the trademarks. The

Act of 1940 was enacted in India by following Trade Mark Act of England. It is

however interested to note that, the 1940 Act was not applicable to British Indian

states like Mysore, Patiala, Saurashtra, Hyderabad, Kolhapur and Kapurthala where

separate legislations were there. However, duplicity of trademark law was avoided by

reciprocal arrangement between Government of India and these states.

In 1948, common legislation was enacted covering whole of India except the

state of Jammu and Kashmir. Thus, after independence, significant developments

took place in the field of business and trade. There was a need to bring out a

comprehensive legislation on the subject. Accordingly the Government of India

appointed Trade Marks Enquiry Committee to make suggestions for the reforms in the

Trade Marks Act, 1940. The committee submitted its recommendations but all

members of the committee never had unanimous opinion in this regard. Therefore, the

Government of India appointed Mr. Justice N. Rajagopala Ayyangar of Madras High

Court to examine the report of Enquiry Committee and make recommendations for

the reformations. To give effect those recommendations, the Government of India

appointed Dr. Venkateswaran, officer on Special Duty (Trade Marks, Patents and

Designs) in 1955.

He drafted the Trade and Merchandise Marks Bill and in the year 1958 and

the same was enacted in the form of Trade and Merchandise Marks Act, 1958. Since

the passing of the Trade and Merchandise Marks Act, 1958, the Act has been

amended several times. Moreover in view of developments in trade and commercial

practices, increasing globalization of trade and industry, the need to encourage

investment flows and transfer of technology at the international level and the need to

simplify and harmonise trade mark management systems and in the light of mandates

of the TRIPS agreement it has been considered necessary to bring out a

comprehensive legislation on the subject. Accordingly the Trademarks Act 1999 was

enacted with all the necessary adjustments.

9 Sec: 54 of The Specific Relief Act, 1877. Illustrations (w) and (z) of section 54 of the Act, 1877 explains the intention of the framers in protecting the trade marks.10 See: Section 129 of the Trade and Merchandise Marks act, 1958

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Salient features of the trade marks Act11

The object of trademark legislation is to provide for the registration and better

protection of trademarks and for the prevention of the use of fraudulent marks.

Registration of a trademark confers certain statutory rights on the registered proprietor

that enables him to sue for infringement of the trademark irrespective of whether or

not the mark is used. This is an addition to the Common law right to sue for passing

off which is possible only where the mark has been used. The Act inter alia provides

for the following:

1. Single application for registration of a part in different classes sufficient i.e.

doing away with the system of maintaining registration of trademarks in Part

A and Part B with different legal rights.

2. Registration of service marks.

3. Registration of collective marks.

4. Widening of the definition of a mark by recognizing shape of goods;

packaging and combination of colours as marks and trade marks.

5. Simplification of the criterion for registration of a trademark.

6. Elaboration of marks, which are not registrable.

7. Provision for protection of well known trademark, and tests for determination

of marks.

8. Abolition of Part B register.

9. Abolition of the requirement of disclaimer.

10. Extension of period of registration to ten years.

11. Widening of the scope of infringement of registered trademark.

12. Assignment of unregistered trademark without goodwill of business permitted.

13. Simplification of registered user provision and powers to register in this

regard.

14. Non-registered licensing of registered trademark permitted.

15. Provision for licensing of unregistered trademark.

16. Creation of Appellate Board to hear and decide appeals from the decisions of

registrar.

17. Publication of alphabetical index of classification of goods and services.

11 Trade Marks Act, 1999.

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18. Jurisdiction to District Court to entertain suits for infringement and passing off

thus enabling a plaintiff to file the suit in the District Court within whose

jurisdiction he resides or carries on business.

Objective of trade marks law

Every law has got its own objectives on the basis of which it serves the

purposes. The trade marks law has got an objective to provide for the registration,

better protection of trade marks for goods or services and the prevention of the use of

fraudulent marks goods and services. And by providing those provisions the

trademarks law achieves two important objectives one is protection of individual

interest of the proprietor of the trademark and another is protection of interest of the

society. Let we know some more details about these two important objectives.

I. Protection of individual interest of the proprietor of the trademark

The basic objective of the trademark law is to protect the individual interest of

the proprietor or user of the trademark. The protection of individual interest of the

proprietor of the trademark can be studies under three headings.

A: Protection of exclusive right of the proprietor of the trademark over     his

trademark.

The trademark law confers upon the proprietor of the trademark an

exclusive right to use his trademark. The law provides for the relief in case

of infringement of a registered trademark or passing off of a registered or

unregistered trademark, in the form of injunctions, damages and account of

profits. And in case the offence of falsification the law provides for the

penalties in the form of imprisonment and fine.

B. Protection of the Proprietor’s right of assignment.

The law protects the individual commercial interest of the proprietor

of the trademark like other tangible property. The exclusive right over the

trademark conferred upon the proprietor by trademark laws includes his

right to assign in favor of another person for some consideration. Instead

of assigning he may also transfer his right to any interested person by

granting license.

C. Protection of the goodwill and reputation of the traders and businessmen.

Trade marks used in the course of business or trade identify

themselves with the ‘goodwill’ or ‘reputation’ of the traders and

businessmen with respect to the ‘goods and ‘services’ with which their

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trade marks are associated. For example trademark of golden arches with

the trade name ”Mc Donald” is identifiable with the fast food with the

worldwide reputation.12 Trademark law protects trademark directly as soon

as the article having assumed a vendible character is launched in the

market. It is based on a settled principle of law that nobody has a right to

represent his goods as the goods of somebody else and sell it in the market

for his own aggrandizement.

II. Protection of the interest of the society

Trademark identifies the origin of the ‘goods’ or ‘services’. Use of trademark

should not indicate the false origin of goods and therefore trademarks should not be

used on false goods or services. In Laxmikant Patel vs Chetanbhai Shah13 the

Supreme Court of India held that the law does not permit anyone to carry on his

business in such a way as would persuade the customers or clients in believing that

the goods or services belonging to someone else are his or are associated therewith.

The reasons of honestly, fair play are and ought to be the basic policies in the world of

business. When a person adopts or intends to adopt a name in connection with his

business or services, which already belong to someone else, it results in confusion and

has probability of diverting the customers and clients of someone else to himself and

thereby resulting in injury to the former. Further the trademark also indicates the

quality of the ‘goods’ and ‘services’. It has been held in the case Sumant Prasad Jain

vs Shajahan Prasad and State of Bihar14 that trade mark not only identifies itself with

its proprietor but also with the qualities of the goods with which it is associated.

Property in a trademark

A trader acquires a right of property in a distinctive trademark merely by using

it upon or in relation to some goods irrespective of the length of such use or the extent

of his trade15. As between two who are each desirous of adopting the same mark it is

entirely a question of who gets there first. Property in a trade mark which is only

proposed to be used in relation to some goods can be obtained by registration16.There

is no right to the exclusive ownership of a trademark apart from its use or application

12Wadehra B.L, “Law relating to Patents Trade Marks Copyright Designs and Geographical Indications, Universal Law Publishing Co.Pvt.Ltd, Delhi,2000, P.158.13 (24) PTC 1 (SC) 200214 AIR 1972 SC 248815 According to Trade and Merchandise Marks Act, 1958.16 Section 2(1)(m) of Trade Marks Act, 1999.

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of it in connection with some vendible commodity. Property in a non-distinctive trade

mark as for example a distinctive work, surname, geographical name could be

acquired by the extensive use of mark in relation to some goods resulting in the

goods becoming distinctive of other goods in the market. Property in a trade mark

could be lost by non-use for a length of time or by unregistered piracy. In case of

registered trade mark property in the mark could be lost for non-payment of renewal

fee.

Trademarks, which are registrable

All marks used in the trade are not registrable. The trademark law does not

provide for the registration of all marks used in trade and business. Marks those

satisfy certain requirements are only registrable. Therefore a mark which satisfies the

prescribed requirements could be registered. Here it is very pertinent to know the

requirements that a mark should satisfy for registration. The requirements that a mark

should satisfy are as follows.

1. The mark should be capable of being represented graphically.17

2. The mark should be capable of distinguishing the goods or services of one

from those of others.

3. The mark must be used in relation to goods or services for the purpose of

indicating or so as to indicate a connection in the course of trade between the

goods and services.

Trademarks, which are not registrable

Certain trademarks are not registrable either in the public interest or due to the

prohibition of such marks from registration under the statute for various reasons. The

following marks are accordingly not registrable.

Mark that contains or comprises of any matter likely to hurt the religious

susceptibilities of any class or section of the citizens of India;

Mark that comprises or contains scandalous or obscene matter;

Mark which has the nature as to deceive the public or cause confusion;

17 Section 2(1)(e) of Trade Marks Act, 1999, ‘a mark, capable of distinguishing the goods and services in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified and registerable as such under chapter IX in respect of those goods or services in the name, as proprietor of the certification trade mark of that person.’

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Mark prohibited under the Emblems and Name (prevention of Improper

use) Act, 195018;

Mark consisting exclusively the shape of goods which results from the

nature of the goods themselves;

Mark containing the shape of goods which is necessary to obtain a

technical result or the shape, which gives substantial value to the goods19.

Registration of trademarks

A mark which satisfies the above mentioned requirements could be registered

provided it does not fall under the category of prohibited marks. The registration of a

mark involves three different phases20.

Filing and acceptance of Application;

Application should be in writing and filed by its proprietor who has used or

proposes to use. If the applicant is single, then the application should be filed in the

office of the Registry within whose territorial limits the principal place of business of

the applicant is situated. In case of joint applicants the application shall be filed before

the office of the Registry within whose territorial limits the principal place of business

in India of the applicant whose name is mentioned in the application is situated.

Single application is enough for different classes of goods and services but fee shall

be payable in respect of each class of goods. The application for the registration of a

mark would be accepted if the application is filed by the user or proposed user of the

mark and if the mark could be validly claimed. The registrar shall classify goods and

services, in accordance with the international classification of goods or services for

the purpose of registration of trademarks. He may publish an alphabetical index of

classified goods and services. The registrar has the power to reject the registration if

the mark claimed is not a valid mark to be registered. The registrar’s decision is final

in case of dispute regarding the registration (18). The Registrar before the registration

of trademark may withdraw his acceptance on valid and reasonable grounds.

Otherwise the application would be considered for the further process of registration.

Advertisement of the accepted application

The registrar after the acceptance of the application advertises it in the

prescribed manner which will provide an opportunity to the persons who have

18 Section 9(3) of Trade Marks Act, 1999.19 Sections 18 to 23 Trade Marks Act, 1999.20 Section 7 of Trade marks Act, 1999.

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opposition to the registration. Persons opposing the registration may within three

months from the date of advertisement serve a notice on the registrar in the form of

application along with prescribed fee. The registrar should serve a copy of the notice

of objection on the applicant. It confers an opportunity to the applicant to file counter

statement which he should with in two months from the date of receipt of copy of

such notice of opposition. If the applicant for registration does not send a counter

statement, he is deemed to have abandoned his application. A copy of the counter

statement should be served on the person giving notice of opposition. The Register

should conduct hearing of the parties and on the basis of the points of evidence

produced in the hearing decision should be made.

Grounds for refusal for registration

According to the trademarks law grounds for refusal for registration can be

divided into two headings as absolute grounds and relative grounds. The following

grounds are considered as absolute grounds for the refusal of the registration of a

mark.

1. Trade mark is devoid of any distinctive character;

2. Trade mark consists exclusively marks or indications which may serve in trade

to designate the kind, quality, quantity, intended purpose, values, geographical

origin or the time of production of the goods or rendering of the service or

other characteristics of the goods or services;

3. Trade mark consists exclusively of marks or indications which have become

customary in the current language or in the bona fide and established practices

of trade;

Registration of a mark and its effect

Where the application has not been opposed or if opposed decided in favor of

the applicant, the Registrar registers the trademark by issuing a certificate to that

effect. It is well established that a person can become proprietor of a trademark either

by virtue of its use or by its registration. Though, the registration of trademarks under

the trademark law is not compulsory, it is true that the registration of trademark is

very much beneficial to the proprietor of the trademark. Registration confers

exclusive right to use the trademark and registration is the prima-facie evidence of the

validity of the trademark. The registered proprietor of a trademark may institute

proceedings either to prevent or to recover damages for the infringement.

Infringement and passing off trade mark

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Registration confers exclusive rights on the part of the proprietor to use the

mark. Without the consent or authorization of the proprietor no one can use the mark.

Unauthorized use of the registered trademark amounts to infringement of the mark

leading to violation of rights of the proprietor conferred on him through registration.

In case of violation of rights, the registered proprietor of a trademark may institute

legal proceeding against such violation. In case of unregistered marks the user of the

mark can sue for passing off. At this juncture it is very pertinent to know what

constitutes infringement. What are the yardsticks to measure infringement?

What Constitutes Infringement?

Infringement is an unauthorized use of he registered trademark. Without the

consent or authorization of the owner if any one uses the registered mark commits

infringement. Further use of a similar mark to the registered mark does also constitute

infringement of the registered mark. In a Atlas Cycle (Haryana) Ltd. Vs. Atlas

Product Pvt. Ltd., the Atlas cycle (Harayana) Pvt. Ltd21 the question as to what

constitutes infringement came to the forefronts of the court. In this case the plaintiff

was engaged in the business of manufacture of bicycles and their parts under one

trade mark. The plaintiff registered the trademark in 1952 and he is the registered

proprietor of the trademarks. But latter the defendants infringed the mark by using the

trade name ”House of Atlas” with respect to bicycles and bicycle parts manufactured

by them. Justice D.K. Jain of Delhi High Court viewed it an infringement and held

that; even in conjunction with the words of ‘House of’ is likely to cause of confusion

or deception in the minds of purchaser. Therefore unauthorized use of mark or use of

mark similar to the registered trademark constitutes infringement. Following are the

circumstances under which a person is deemed to have infringed a registered

trademark:

1. Where a person uses a trademark which is identical or similar to the registered

trademark used in the course of trade for the similar goods or services not

being a ‘registered proprietor ‘or ‘permitted user’ (19) and cause confusion on

the part of the public.

2. Where the registered trade mark is used in the course of trade for the goods or

services which are not similar, but has reputation in India and use of the mark

21 Section 27 (2) of Trade Marks Act, 1999.

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by the person without due cause, takes unfair advantage of or is detrimental to

the distinctive character or repute of the registered trade mark.

3. Where a person who is not being duly authorized by the registered proprietor

uses the trade mark on a material intended to be used, for labeling or

packaging goods, as business papers or for advertising goods or services.

4. Where a person uses registered trademark as his trade name or part of his trade

name; or as name of his business concern or part of the name of his business

concern dealing in goods or services in respect of which trademark is

registered.

5. Where a person advertises a trademark, such advertising takes unfair

advantage of and is contrary to honest practices in industrial or commercial

matters, or is detrimental to distinctive character or is against the reputation of

the registered trademark.

6. Where the distinctive elements of a registered trademark consists of or

includes words, the trademark may be infringed either by spoken use of those

words or visual representation of those words.

Passing off of the registered and unregistered trade marks

Earlier when there was no trademark law to provide for the registration and

protection of trademarks the proprietor of an unregistered trademark was protected

under the common law of torts. Such protection was given not only for unregistered

trademark but also for registered trademark22. Common law offers protection through

passing off action. Passing off action depends upon the simple principle that nobody

has any right to represent his goods as the goods of somebody else.23 In Jolen Inc. vs.

Doctor and Co.,24 the plaintiff was using trade mark ‘JOLEN’ for crème bleach used

to lighten/decolour facial hair, hair on the arms, legs and any part of the body that a

person desires to bleach. He registered his mark in other countries but not in India.

The defendant had copied the plaintiff’s trademark in its entirety including the

distinctive style in which the plaintiff for his own crème bleach writes the JOLEN.

Since the mark is not registered in India the Delhi High Court held it as passing off

and passed a decree to restrain the use of trademark JOLEN in India by the defendant.

22 ICC Development (International) Ltd. Vs. Arvee Enterprises, 2003 (26) PTC 245 (Del).23 2002 (24) PTC 29 (Del)24 Section 135 of Trade Marks Act, 1999.

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Therefore in case of unregistered trademarks action against passing off is the proper

channel to obtain remedies.

Remedies for infringement or passing off

Remedies are made available in case of infringement or passing off in order to

compensate the loss suffered by the registered owner of the mark or the user of the

mark. Trademark law in case of registered trademarks and common law in case of

unregistered trademarks offer certain remedies. A person who is aggrieved either by

infringement or by passing off may obtain following remedies through filing a suit in

the court of law.25 The proprietor or user of a valid trademark can obtain following

remedies.

Injunction

It is an important sort of remedy and is effective in preventing the

infringement of registered trademark or passing off of the unregistered trade mark. It

involves an order by the Court prohibiting the infringer or unauthorized user from

using the mark. It is the proper measure to prevent a person from encashing the

reputation and goodwill earned by the other. In Mahendra and Mahendra Paper Mills

Ltd. Vs. Mahindra and Mahindra Ltd.,26 the Supreme Court upheld the injunction

order granted by the High Court in favor of the plaintiff in which the defendant was

restrained from the use of trade name “Mahendra and Mahendra”. Since the trade

name “Mahendra and Mahendra” used by the defendants is deceptively similar (in

phonetically, visually and structurally) to the trade name “Mahindra and Mahindra”,

the trade name of the plaintiff. In another case Bata India Ltd. Vs. M/s Pyrelal and

Co.27 case, the Bata India Ltd (plaintiff) which is famous for its own kind of articles

and its name ‘Bata’ has earned reputation all over. But the M/s Pyrelal and Co (the

defendant) started using the trade name “Bata’ for mattresses, sofa cushions and other

articles. The Allahabad High Court granted injunction order in favor of the plaintiff

and restrained the defendant from using the trade name ‘Bata’ even for those goods,

which were not similar to the goods with which the well known trade name ‘Bata’ is

associated. According to the above decision usage of similar mark even on different

goods and services is not allowed.

25 2002(24) PTC 121 (SC).26 AIR 1985 All 242.27 The United Nations specialized agency dealing with Intellectual Property Rights has its headquarters in Geneva.

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Damages

Damage is another kind of remedy made available to the proprietor or user of

the trademark. Damages could be granted to the owner or user of the mark if his mark

is used by the infringer without his consent or authorization. Damages serve the

purpose of compensating the proprietor or the user the loss which he has suffered due

to such unauthorized use. Damages could be awarded to compensate the plaintiff for

the legal injury caused by the defendant. The quantum of damages will be decided by

the court taking into consideration the reputation that the mark, the business of the

proprietor or the user and the length of the course of infringement. Damages are the

notional compensation paid to the plaintiff by the order of court from the defendant

irrespective of the actual amount of loss suffered by the plaintiff.

Accounts of profits

Court may award accounts of profits to measure the actual benefit that the

infringer has gained due to the unauthorized use. The actual profits which the

defendant has made by infringing the legal rights of the plaintiff will be measured.

Though this is not compensatory in their nature, profits earned by the defendant

should be given to the plaintiff. Court may award damages also along with accounts

of profit as a measure of punishment or penalty on the infringer for using the mark

without the authorization of the proprietor or the user.

International aspects of trademark

The protocol route is available to the applicants who are national of, domiciled

in or has a real and effective industrial or commercial establishment in a protocol

country. A national application must first be made and the international application

may be submitted to WIPO (The World Intellectual property Organisation)(27)

requesting protection in different states by designation. The WIPO conducts a formal

examination at designated national offices, where the applications are treated in the

same way as the domestic applications in those states. The offices have eighteen

months time to complete the procedure for the registration including adjudication of

oppositions if any. If the application is not rejected, the trademark is treated as

protected in the UK through the Madrid protocol as international trademark.

Registration is for ten years and it can be renewed. Registration has to be published

through WIPO. If the application remains pending for five years from the date of

filing with the home national office, and if the protection is not jeopardized in all

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other states designated by the applicant, instead, the international application could be

converted into national application in such states.

External influences on domestic intellectual property law are always there.

Because no longer trade is confined to local or national markets and piracy and

counterfeiting (copying both of trade mark and product) are also not confined to

domestic markets. This warrants evitable international co-operation at both

international and regional level over procedural and substantive law. So in order to

meet the international co-operation, at first, countries made arrangement of bilateral

agreement to have reciprocity of treatment among them. Subsequently, bilateral

agreement grew as multilateral agreement to include many states as members. And at

the same time, organizations were created to administer these agreements or treaties.

Among them WIPO is remarkable one as it is dedicated to promote the use and

protection of works of human spirit (intellectual property). There are many

international conventions on intellectual property rights but only three conventions

speaks on trademarks namely; Paris convention on Industrial property, Madrid

Agreement and the TRIPS agreement.

Paris Convention on Industrial Property28

The convention speaks about industrial property protection. The convention

considers patents, trademarks, designs etc as the industrial property since these

properties are mostly associated with industries and their business. The later

conventions consider patents, trademarks, designs etc., as intellectual property rights

on the basis of the labor that gives rise to these property rights. The Paris convention

doesn’t make any difference between the property made through physical labour and

the property made through mental labour. However the later conventions do

diffentiate between physical labour and mental labour. The convention provides for

the reciprocity of treatment of intellectual property including trademark and

establishes the principle of priority.

Madrid Agreement29

This agreement established a system of deposit for trademark registered

nationally with WIPO. This deposit leads to protection in other designated member

states after twelve months, if there is no objection in those states. The major

disadvantage of this system is that a central attack on the validity of a trademark

28 The Paris Convention was adopted in the year 189129 The Madrid agreement was adopted in the year 1989 but came into force in 1996.

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registration in one state leads to the revocation in every state designated for protection

though the mark might have been unobjectionable in those countries. The Madrid

Agreement was amended by the Madrid System30 which comprises of the Madrid

Agreement and Madrid Protocol. The Madrid agreement and protocol together form a

special union called Madrid union, which has got recognition under the Paris

Convention.

TRIPS Agreement

This agreement is administered by the WTO. It establishes minimum level of

harmonization of intellectual property law across the world. The agreement mandates

the member states to amend their intellectual property laws to bring in harmony with

the agreement. The least developed countries have been given an extended period to

make the necessary changes in their respective intellectual property laws including

trademark law. It imposes an obligation on its participant states to apply the Paris

convention standards relating to trade marks. It broadened the definition of the signs

capable of being marks, by extending registration to marks for services. There are

certain important principles postulated in the international agreements. The following

are the basic principles on the basis of which the pertinent international agreements

have been made, executed and implemented.

Priority:

This principle creates an obligation on the part of the owner of intellectual

property to make an application as early as possible for the protection of his right.

Because in some spheres intellectual property is significant as is the ability to seek

protection in several countries by making application as early as possible. According

to this principle a priority date will be given to the application in one state with

completed multiple applications in other states, if filed within a prescribed period.

National Treatment:

The nationals of one member state to an agreement shall receive the same

treatment as national in any other member states. This principle mandates the member

states to treat the intellectual property rights of a person hailing from other country

equally with that of the intellectual property rights its citizen. The application filed by

a foreign for the protection of his intellectual property shall be treated equally with

that of the application filed by the citizen of that particular country.

30 The Madrid system was brought in, in the year 1994.

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Reciprocity:

It is an exception to the rules of national treatment. In this case parallel

protection in one member state will be provided to another member state to the certain

extent to which that equivalent protection is available in that member state for the

nationals of the first state.

Independence of rights:

This principle ensures that an intellectual property right legitimately acquired

in one state will not automatically be affected by the decisions taken in other member

states in the same regarding.

Most favored nation’s treatment:

It is a new principle postulated by the TRIPS agreement. According to this

principle any advantage, privilege, favor or immunity granted to nationals of any state

must be accorded to all nationals of all the WTO member states.

Conclusion:

Trademarks are considered as a form of (intellectual) property. Hence

trademarks could be sold, purchased, assigned, and licensed in the lines of any other

property. The very different feature of the trademark is that it is a symbol of goodwill.

So the transfer of trademark requires much care and caution than that of the transfer

of other properties. It is a very valuable asset in the field of business since it involves

goodwill, reputation and the market. Reputation and good will could be earned only

through hard work for years. Here we can appreciate the importance of trademarks by

remembering the words “this hard-earned right is as important as money in the

bank.”Hence people are willing to invest large sums of money to acquire, assign or

license trade marks. Protection of trade marks has always been safeguarded by the

courts and the law in the interest of the business world as well as the consumer. The

reforming of the laws with respect to trademark to meet the challenges of the

technological business world is very much required and the same has been guaranteed

by the international agreements like the TRIPS agreement.

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References

1. Cornish W.R.,”Intellectual Property”, Universal Book Trader, Delhi, 1995.

2. David Bainbridge, “Intellectual Property”, Pearson Education (Singapore)

Pte.Ltd., Delhi,2002.

3. Holyoak and Torremans, “Intellectual Property Law”, Butterworths,

London,1998.

4. Meenu Paul, “Intellectual Property Laws”, Allahabad Law Agency, Faridabad,

2004.

5. Narayanan P.,”Law of Trade Marks and Passing off”, Eastern Law House,

New Delhi, 2000.

6. Narayanan P., “Intellectual Property Law”, Eastern Law House, New Delhi,

1999.

7. Sarkar J.S., “Trade Marks Law and Practice”, Kamal Law House, Calcutta,

1997.

8. Wadehra B.L., “Law relating to Patents Trade Marks Copyright Designs and

Geographical Indications”, Universal Law Publishing Co. Pvt. Ltd., Delhi,

2000.

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