Trade Mark Registration Law in India:What is a Trade Mark?
According to the Trade Mark Act, 1999, under Section 2, trade mark is a mark having the ability to be represented graphically. It is capable of discerning the goods & services of a company or person from those of others and includes the shape of products, packaging, a combination of colours etc.The law also provides “mark” definition under Section 2(m) which specify a mark to include a brand, heading, label, ticket, signature, name, word, letter, products shape, a combination of colours or any other combination.Requirements for Trade Mark Registration:Mark should be capable of being represented graphically:According to the Section 2(1)(k) of Trade mark registration rules, 2007, the graphical representation of a trade mark of products or services should be capable of showcasing it in paper form and also include representation in digital form. This representation also encompasses within its scope shape of products, packaging, colours combination, or in short, it brings a “trade dress”. This requirement of a trade mark registration for validation merely means that the trade mark can be represented on the register in a physical form and can also be published. It was further explained by European Trade Mark rules, wherein it mentioned two main reasons for the geometrical representation of the trade mark:It empowers traders to identify properly what other companies are using for trade mark, and for what productsIt empowers the public to distinguish the sign with clarity forming the subject of trade mark registration.Ability to determine Products and Services of one company from those of others:As per the above-mentioned definition of trade mark, it should be capable of determining the products and services of one company from those of others. Therefore, if the mark or symbol is not able to distinguish the products, then the trade mark would not qualify for the protections under the Trade Mark Act.Grounds on which Trade Mark Registration face refusal:The grounds on which Trade Mark Registration can face are enumerated on Section 9 of the Trade Mark Act, 1999. Here those are:Marks that lack any distinctive appearance or characterMarks which shows kind, quality, intended purpose, values, geographical origin or the time of production of goods;Marks which have got customary in the current culture or in the establishment routines of trade;Marks which can make people confusedMarks which can hurt religious sentiments of any class of people;Marks which are scandalous or obsceneMarks which are prohibited under the Emblems and Names Act;Marks giving substantial value to the productsMark that lack any distinctive character:
As per this requirement, the mark should be a distinguishable character. Finding the mark to be distinguishable or not, it needs to observe that the mark doesn’t have any direct or close resemblance to the character and product’s quality. In order to rule, whether one mark is anyhow similar to another, it is not mandatory to place them side by side to find out if there are any differences. It would be enough if the questionable mark bears a similarity to the registered mark which can mislead a person usually dealing with one to accept the other if offered to him.What is Trade Mark Infringement?Section 29 of the Trade Mark Act, provides clauses for the Trade Mark Infringement. The grounds on which a trade mark is entitled infringed are:A mark is infringed when the company owner uses a mark which is either identical or quite similar to an already registered mark in relation to products or services in respect of the registered trade mark.
When the owner is not a registered proprietor takes use of a registered trademark which can cause confusion in public because of the trade mark identity and similarity of goods & services.A registered trademark is infringed by any advertising of that trademark if such advertising takes unfair advantage and is detrimental to its distinctive character.Under this Section, we deal with all the cases related to trade mark infringement. How to determine chances of confusion between disputed trade marks?For such finding, the main features of the two marks, and the sole idea, if any, underlying both marks which a purchaser of normal IQ and imperfect memory would retain in his mind, after seeing the minds would notice. After this, it is required to check whether they are almost the same or there is overall resemblance and similarity. Then need to check whether this semblance is such that there is enough probability of confusion or deception. In this complete process, it is mandatory that the purchaser must be of average intelligence, and have imperfect memory or recollection, and should not be a dubious and thoughtless person.Secondary Significance of the Trade Mark:The law specifies that if a trade mark has a secondary meaning should not be refused registration even it comes under the categories as enumerated under Section 9. It means that in common language words and names cannot be exclusively used by an owner until & unless such names have acquired great reputation or goodwill in the market that the common language word has assumed a secondary significance. The secondary significance here would mean that other traders in that line of trade acknowledge that such common word has come to denote the goods belonging to a particular trade. A normal common word can be exclusively used by a company as a trade mark if the word has acquired a secondary significance but if the word is coined, fancy, slag, or meaningless then you can use it as a trade mark exclusively without proving the existence of secondary significance.
