UNIT - I TRODUCTION TO TRADEMARK The Trade Marks Act of 1999 defines a trade mark as: “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours’ To qualify as trade mark it should be a mark that can be represented graphically. The mark used should also be distinctive, ic. it should enable consumers to differentiate the goods of the trader from that of his competitors in the marketplace. It includes: “a device, brand, heading, label ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.” As the list provided is not exhaustive, there is scope to include non-conventional marks as marks.’ The above said definition emphasizes on the communicative ability of a mark. Trade mark is justified as: “it enables those engaged in trade. and the public more generally, to discover quickly and cheaply which signs third parties have already claimed”.* Eunctions of Trademark The trademark performs the role of identifying the goods of a particular manufacturer and gives an indication of its origin, or establishes a connection in the course of trade. It assures quality of the product and acts as a symbol representing the goodwill of the business. Also a trademark advertises the product and protects the user and/or purchaser from confusion and deception by identifying the source or origin of particular goods and services and distinguishes them from other similar products. If consumers believe that all items bearing the symbol come from the same source, the said symbol has acquired the ‘source-identifying’ property of a trademark. Priorly, registration of trademarks was not a prevalent practice; the law based on common law which was substantially the same as England was followed. Thereon, the Trade Marks Registration Act 1875 came into being and it was the Trade Marks Act, 1940 which was the first enactment to institutionalise the machinery for registration and statutory protection of trade marks in India. In order for any subject matter to qualify as property a trade mark had to be “distinctive.” In the matter of General Electric Co. v. General Electric Co Lid.,’ the Court observed that the right [of property in trademark] was an adjunct of the goodwill of a business and was incapable of separate existence dissociated from that goodwill. Therefore, distinctiveness became a notion to define the subject-matter protectable as trade mark. As per S.2(1)(zb) of the Trade Marks Act, 1999, a “trade mark” means, “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and (i) in relation to Chapter XII (other than section 107), 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 mark; and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so 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 collec mark, Furthermore the definition of a mark within the meaning of S. ‘ice. brand.Furthermore the definition of a mark within the meaning of S, 2(1)(m) includes, ‘a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.’ The initial registration of a trademark shall be for a period of ten years but may be renewed from time to time for an unlimited period by payment of the renewal fees. Therefore the term of protection for atrade mark can last till perpetuity. Such long-lasting monopoly-like right requires the trade mark to be one that is capable of performing the necessary function of distinguishing the goods or/and services of one trader from those of the others. This function or capability of distinguishing is referred to as ‘distinctiveness’ of a trade mark. The capability may be some inherent distinctiveness in the mark itself or perhaps acquired distinctiveness through use of the mark over a period of time. Illustratively speaking, the case of Abercrombie Formulation, developed by the 2nd Cireuit Court of Appeals in Abercrombie & Fitch Co. v, Hunting World, Ine,, is a good reference for understanding the spectrum of distinctiveness. Justice Learned Hand has laid down a spectrum which measures distinctiveness on the following categories: Generic—does not qualify for protection Descriptive—sometimes qualifies for protection Suggestive—qualifies for protection Arbitrary or fanciful—qualifies for protection Invented - affords strongest protection Generic: By their nature, generic marks are not distinctive. They do not warrant protection because if one seller could trademark a generic name, other sellers would be unable to describe their products and would thus be at a great disadvantage. For example, it is not permissible to use a word mark "Milk" to brand the product milk or the words "Hiking Boots" to brand boots. Such words which have become publici juris or generic cannot be appropriated as they belong to the public at large. Descriptive: Descriptive terms and symbols generally identify attributes of the product, such as the purpose, size, colour, ingredients, origin, and so forth. Merely descriptive, general marks do not qualify for protection. To qualify for protection, a mark must acquire a ‘secondary meani To acquire a secondary meaning, the public must associate the mark with the manufacturer or seller rather than the underlying product itself. For example, "Jiffy Lube deseribes a speedy lube and oil but has acquired a secondary meaning in the mind of the consumers. A. surname incorporated into a mark is treated as a descriptive mark—it does not qualify for protection until it acquires a secondary meaning. Examples include McDonald's and Hilton Hotels. Suggestive: A suggestive mark does not describe the product; it suggests its nature or characteristics. Although an inference must be made about the product, the product must still bear some relationship to the mark. For example, a Pathfinder suggests something that is at home off-road, but it has no inherent relationship to a four-wheeldrive SUV made by Nissan, Similarly, Titleist" has no inherent relationship to a golf ball, but it does suggest correlation to championship sports equi Arbitrary and Faneiful: Marks that are arbitrary and fanciful do not describe or suggest any characteristic of the product. When the meaning of the symbol used in the mark is not inherently related to the product, the product is more likely to be associated with the symbol, ensuring that the consumer recalls the arbitrary association drawn by use of the unrelated symbol for identifying a product. Examples include Apple for computers, Yamaha for motoreycles, Chevron for gasoline and Maytag for appliances. These words have no inherent relationship with their products and are thus understood to be fanciful. Invented words are afforded strongest protec owing to their inherent newnHerein it may be noted that the Trade Marks Act 1999 prohibits the registration of a trade mark which consists exclusively of marks or indications which may serve to designate the geographical origin of the goods, such that only those geographical names which do not serve in trade may be registrable. For instance, the use of geographical names in an arbitrary or fanciful manner, For example, North Pole bananas. Moreover, Rule 102 of the Trade Marks Rules 2002 allows parties to request the Registrar to refuse or invalidate a registered trade mark on account of the following: The trade mark contains or consists of a geographical indication with respect to goods or class or classes of goods not originating in the territory of a country, or a region or locality in that territory which such geographical indication indicates, if the use of such geographical indication in the trade mark for such goods, is of such nature as to confuse or mislead the persons as to the true place of origin of such goods or elass or classes of goods; or The trade mark contains or consists of geographical indication identifying goods or class or classes of goods notified under $.22(2) of eth Geographical Indications of Goods (Registration and Protection) Act 1999. The Trademark Act, 1999 has adopted the expression ‘distinctive character’ in the mark which (0 the ‘capability of distinguishing.” By that, words such as ‘best’, ‘superior’ ete (used for the quality of transport services such as “Best Bus’ services) are not distinctive of the goods/services but merely descriptive of the qualitative aspects of the good/service, hence it cannot constitute a distinetive trade mark, $.9 (1) of the Trade Marks Act, 1999 provided that even a descriptive trade mark may be registered if before the date of application of registration, the mark acquires a distinctive character on account of the use or has become a well-known trade mark. Such descriptive trade mark may be registrable owing to the mark having acquired a ‘secondary meaning’ in the minds of the consumers. The Hon'ble Supreme Court in the matter of Godfrey Philips India Ltd v.Gimar Food & Beverages (P) Lid’ elucidates upon the protection accorded to descriptive trademarks in the following manner: ‘a descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product or as being from a particular soure Trademark law unlike patent law allows the proprietor of a distinctive mark to enjoy exclusive rights with respect to its use even without registration. However, the advantages of registering a trademark are as follows It confers on the proprietor certain exclusive rights to use a particular mark in relation to specified commercial activities. In contrast to passing off, it enables the traders to protect their marks before they are introduced onto the market. |. Once a mark is registered, there is a presumption, not guarantee although, that the Registration reduces the possibility of disputes. This is because, it confers on the trademark proprietor increased certainty as it determines the scope of the property protected as trademark. Notably, registering a trademark doesn’t necessarily mean a party cannot successfully sue the proprietor for passing off:8When an applicant applies for the registration of a trademark, the registry may or may not accept the application. There are several grounds of refusal on which the Registrar may base the rejection. Any mark may be registered as a trademark unless a specific ground for refusal exists. The grounds for refusal are divided into two classes: ‘absolute’, which relates to the intrinsic qualities of the mark, and ‘relative,’ which relate to conflicts with earlier trade mark rights belonging to third partiesarlier trade mark rights belonging to third parties, ABSOLUTE GROUNDS FOR REFUSAL: (SEC. 9 OF TRADE MARKS ACT, 1999.) According to the Trademarks Act, a trademark can only be registered if itis distinctive in nature. An invented word can also be registered as long as it is not descriptive. There is a provision in the Act which deals with well-known trademarks wherein a trademark which has become so popular that the people immediately associate the product with the mark, then such a mark can be registered as well. The Act further provides that The mark should not cause confusion The mark should not be devoid of distinctiveness The marks which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade should not be registered The mark should not hurt religious sentiments The mark should not be obscene Marks, which are protected under the Emblems and Names (Prevention of Improper Use) Act, 1950 should not be registered. ‘A mark shall not be registered as a trade mark if it consists exclusively of The shape of goods which results from the nature of the goods themselve: ii, ‘The shape of goods which is necessary to obtain a technical result: or iii, ‘The shape, which gives substantial value to the goods. To elaborate upon the aspect of confusion, reliance is placed upon the Supreme Court's observation in the matter of Amritdhara Pharmacy v. Satya Deo Gupta,’ which is stated below: [I]t will be noticed that the words used in the sections and relevant for our purpose are “likely to deceive or cause confusion.’ The Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular facts, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. On an application to register, the Registrar or an opponent may object that the trade mark is not registrable by reason of clause (a) of S.8, or sub-section (1) of S.10 (of Trade Marks Act 1940), as in this case."” Further, as per Section 9 of the Trade Marks Act,1999 the following are the grounds on which the Registrar can refuse the registration of a certain trademark: if the mark is of a non-distinetive character, descriptive, generic, contrary to public policy or morality, likely to deceive publie, prohibited by law or are in bad faith. For a mark to be valid, it must not fall within any of the following three grounds, namely- it should not be of a non-distinctive character, should not be descriptive in nature and should not be generic. The section has a proviso that a sign, which falls within any of these provisions isn’t to be treated as invalid, if, as a result of use, it ha distinctive character i.e.. secondary meaning in the minds of the consumers.distinctive character Le., secondary meaning in the minds of the consumers. In order to assess if a mark has attained secondary meaning, customer's perception displaced primary meaning, exclusivity of use, manner of use, duration of use, volume of goods marketed, advertisement, consumer surveys have to be factored in, In making the predictive assessment, the relevant class from whose perspective the sign must be assessed has been defined as comprising the average consumers of the category of goods, who are reasonably well informed and reasonably observant and circumspect. A mark will normally be viewed as a whole: a sign will not be rejected just because parts of the sign lack distinctiveness or are descriptive or customary in trade. In order to exclude marks, which do not even perform the distinguishing function, it is important to assess whether the mark is devoid of distinctive character. The focus is again on how the trademark would be perceived by the relevant public. This ground excludes those signs, which the average consumer doesn’t identify as reliably indicating the commercial origin of the product. There is no requirement for the sign to be inventive, innovative, imaginative, unusual, creative, ete- signs are excluded only if they are devoid of degree of distinctive character is enough. However, simple colour marks are likely to be treated as devoid of distinctive character. A colour per se isn’t inherently capable of distinguishing the goods of a particular undertaking. Moreover, limited number of colours makes it not preferable to marking them. However, shades, narrowing the scope of specification can be fine." In determining the question of shapeas a distinetive trade mark, one must see if the shape significantly departs from the norm or customs of the sector and thereby fulfils its essential function, So it ought to be noted whether there is anything unusual or idiosyncratic about the shape, such that the relevant consumer would notice and remember it, So the assessment is to be made for measuring whether the relevant consumer shall think of the shape as indicative of the source, rather than being merely functional or decorative." The shape ought to be distinctive in that itis a significant departure from those ordinarily used in the sector and has the capability to enable a consumer to view it as indicative of trade origin, so much so that the consumers can perceive the difference between the shape in question and other shapes. One of the aims of Trade Marks is to protect the public interest by keeping descriptive signs or indications for use by all traders. Trademarks are only excluded on this ground if they consist exclusively of signs, which characterize the goods and services. The mark as a whole must be descriptive for it to be excluded. So marks that are made up of descriptive and non-descriptive matter can be protected. For a sign to be descriptive, the association between the sign and goods must be sufficiently specific and direct to show that that sign enables the relevant public to identify those goods and services immediately. This test is also applicable for pictures, shapes, colours, ete and not just words. Furthermore, there is a two-fold reason to exclude customary and generic marks- one is that such signs are incapable of distinguishing the goods; second, signs which are customary in the trade ought to remain available for the benefit of all other traders as well. However, the proviso provides that if the use is for so long that it became synonymous with the good, then the mark can be registered, So even if a mark is inherently lacking distinctiveness. is possible to register the mark, if it does in fact become distinctive through use. Consumer recognition is the ultimate litmus test. Finally, the marks contrary to public morality such that they may hurt religious sentiments, or be objectionable in content or if they are protected under the Emblems and Names (Preven jon of Improper Use) Act, 1950 ought not be registered. RELATIVE GROUNDS FOR REFUSAL (SEC. 11 OF THE TRADE MARKS ACT, 1999) S. 11 deals with the relative grounds for refusal of registration, The absolute grounds of refusal prevent registration prima facie, whereas relative grounds for refusal deal with the mark in connection to other earlier marks. For example, the trademark for a spare-parts manufacturer being deceptively similar to an earlier trademark for an automobile manuf’ ‘turer may mislead or III O <being deceptively similar to an earlier trademark for an automobile manufacturer may mislead or confiase the consumer as being associated with each other owing to the common trade connection. The Section provides that a mark can be refused because of its identity and association with an earlier trademark and similarity of goods or services covered by the trademark or, its similarity to an earlier trademark and the identity or similarity of the goods or services covered by the trademark. This helps in reducing the likelihood of confusion in the public who would assume the newly registered mark is somehow connected or associated to the previous trademark. It also provides that objections can be raised in case of any similarity between the earlier marks. However, an applicant can register such trademark if the proprietor of the earlier mark has given his/her approval or the mark is registrable under S.12 by virtue of honest concurrent use, It is the duty of the Registrar to protect a well-known trademark against the identical or similar trademarks. Primarily, protection of public interest and the interest of, other bonafide traders who are entitled to object if the use of the trade mark proposed for registration will enable the applicant’s goods/services to be passed off’ as such other traders’ goods. Given the above, 8.11 prescribes that any mark which is similar toa mark which is already registered (earlier wademark) or is used for similar goods will not be allowed registration Well-known Marks Well known marks are defined under the Trade Marks Act, 1999, as“... 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 first- mentioned goods or services”. The constituents of a well known mark according to the above definition are as follows: i. a mark (say, mark ‘TATA’ of Tata Sons Ltd. ) which the substantial segment of the public uses, for particular goods or services ii, issued by another person for other goods or services (say, TATA diamonds) iii, is likely to indicate a connection between Tata Sons Ltd, and TATA diamonds" This definition appears to be based on Article 16.3 of the Trade Related Aspects of Intellectual Property (TRIPS) Agreement, One important point of difference between the definition of a well known mark under the Trade Marks Act, 1999 and Article 16.3 of the TRIPS is the lack of emphasis on ‘damage to interests of the owner of the registered trademark’ under the Indian Act. Another aspect of well known trademarks evident from Section 2(zg) is that well known marks receive protection beyond the goods or services they are used for — hence they receive wider protection than other trademarks i, To prevent unfair use of a mark’s reputation In the Benz decision of 1994, while restraining use of the Benz tristar logo (well known mark) on under garments, (unrelated goods), it was held that trademark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else's reputation with reference to goods, especially so when the reputation extends world wide." ii, To prevent harm to the reputation of a markii, To prevent harm to the reputation of a mark Another rationale for protecting well known marks originates from the doctrine of dilution — where use ofa mark on goods or services unrelated to those of the proprietor is restrained, even when there is no consumer confusion, where such unauthorized use harms or is likely to harm the reputation of the mark, also known as tarnishment, or dilutes the ability of the mark to indicate the source of the goods or service in question, also known as blurring.” iii. To prevent consumer confusion As is evident from Section 2(1)(zg), well known marks are recognized to avoid a situation where connection in the course of trade or rendering of services between the right holder and an unauthorized user of the mark is likely. Criteria for recog, a well known mark While the Trade Marks Act, 1999 does not set criteria for courts to decide whether a mark is well known, it does lay down such criteria for the Registrar of Trademarks to consider when deciding a mark is well known, Given that ‘well known’ status gives the right holder great ammunition against unauthorized users of the mark, this status is accorded in limited cases. Under Section 11 of the Trade Marks Act, while determining whether a trade mark is a well-known trade mark, the following facts maybe considered: i. The knowledge or recognition of that trade mark in the relevant section of the public including knowledge in India obtained as a result of promotion of the trade mark. The following facts may be considered in this regard + the number of actual or potential consumers of the goods or services; the number of persons involved in the channels of distribution of the goods or services; the business circles dealing with the goods or services, to which that trade mark applies. The duration, extent and geographical area of any use of that trade mark; The duration, extent and geographical area of any promotion of the trade mark, including, advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies; The duration and geographical area of any registration of or any application for n of that trade mark under this Act to the extent they reflect the use or The record of successful enforcement of the rights in that trade mark; in particular, the extent to which the trade mark has been recognised as a well-known trade mark by any court or Registrar under that record. Further, under Section 11(9) of the Trade Marks Act, 1999, the following are not required as a prerequisite for a well known trademark: i, that the trade mark has been used in India; ii, that the trade mark has been registered: that the application for registration of the trade mark has been filed in Indi iv. that the trade mark. a. is well known in; or b. has been registered in; or ¢. in respect of which an application for registration has been filed in, any jurisdietion other than India; or that the trade mark is well-known to the public at large in India, forcement of well known trade markfe f well known trade marks In India, the concept of trade mark dilution is recognized under the Trade Marks Act, 1999 which seeks to enforce well known trade marks. Section 29(4) of the Trade Marks Act provides as follows: A registered trademark is infringed by a person who not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which- (a) is identical with or similar to the registered trade mark and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered: and (©) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. Therefore, all well known trademarks in India qualify for protection against dilution under Section 29 (4), Trade Marks Act, 1999 since they enjoy reputation in India. However, declaration of a trademark as well know is not a prerequisite under Section 29 (4) and marks with reputation that are not declared well known in India should also be protected under Section 29 (4). Further. marks having reputation in India include marks with trans border reputation in India” finding of confusion is required under Section 29 (4) of the Trade Marks Act."* Non-Conventional Trademarks The trade mark system requires the register to depict accurate information about the mark. Graphical representation that can be easily fixed on paper or electronic medium ean act as a point of reference.” This function of the trade mark was clearly stated by the European Court of infringed the mark.* This utility of the graphical representation is also recognized by the Indian Trade Mark Office in its Draft Trade Mark Manual.” In order to answer whether olfactory marks, sound marks, colour marks and shape marks qualify as trade marks it is ne the question as to whether it can be represented graphically and also distinguish goods and services of the trader. Smell Marks Olfactory or smell marks pose specific problems as it cannot be represented graphically. Further, there are also concerns about durability and distinctiveness of olfactory marks. Sumitomo Rubber Company was granted an olfactory mark in 1996 for rubber tyres that smelled like rose." In 1999, an application for olfactory mark that claimed ‘freshly cut grass as applied to tennis balls" was approved on the ground that the deseript n provided was sufficient and that the application satisfied the graphical representation requirement. Subsequently in 2000, John III O <application satisfied the graphical representation requirement. Subsequently in 2000, John Lewis of Hungerford claimed an olfactory mark on cinnamon smell that is used in relation to furniture.* However, the UK Trade Mark Office rejected the application as it was not capable of graphical representation.” Further, it also reasoned that granting trade mark for a cinnamon aroma in furniture would prevent other traders from legitimately using it in other articles. * Lack of consistency in granting olfactory marks created confusion in the EU which was laid to rest in the Seickmann Case.” Ralf Seickmann filed a trade mark application in Germany that claimed to register smell mark described as “balsamically fruity with a hint of cinnamon”. To meet the requirement of graphical representation the applicant represented the smell by writing its chemical name, methyl cinnamate and also the structural formula “C6H5- CH=CHCOOCH3”. Further, he also submitted a container with the sample of the smell and also indicated the laboratories that can provide the sample of the smell, Seickmann’s application was rejected by the German Patent and Trade Mark Office which was ultimately decided on appeal by the European Court of Justice (ECI" The ECJ rejected the application stating that the smell had not been graphically represented. ECJ opined that submitting samples of the scent will not serve the purpose as the smell is not durable. It was of the opinion that the scent can change depending on its exposure to the local environment and is also likely to change over a period of time. The ECJ opined that atrade mark needs to be represented graphically and should also be “clear, precise, self contained, easily accessible, intelligible, durable and objectiv The position in India is similar to EU as the Trade Marks Act, 1999 requires all marks to be capable of being represented graphically. Therefore, for an olfactory mark to be a valid trade mark, it should be graphically represented, This means that a mark has to be visually represented on a form before it is registered by the Registrar. This makes it almost impossible for someone to depict smell marks in a graphical form as it may not satisfy the requirements stated in the Seickmann case. Sound marks The Yahoo yodel, Metro Goldwyn Mayer's roar of the lion or Nokia tunes do remind us something about the sound being related to a particular product. As a result of this, consumers over a period of time tend to associate certain sounds as a sourve identifier or as a badge of origin. Sound mark can be in the form of an onomatopoeia and musical notes.” This raises the question as to whether sound can qualify as a trade mark. Would the Seickmann criteria laid down by the ECJ be satisfied by sound mark? ‘The ECJ opined in Shield Mark v Joost Kist h.o.d.n, MEMEX" that any sound, be it musical notes or onomatopoeia are perceptible by humans. If marketed and advertised properly then consumers can come to associate that certain sound marks are used as a badge of origin.**It observed that sound marks can also be represented graphically without causing any confusion. Thus, in principle, the ECJ indicated that sound marks can get trade mark registration. However, it added that graphical representation has to meet the criteria specified in Sieckmann case, ie it should be clear, precise, intelligible, stable, durable, objective, self-contained and easily accessi Further, the EU has also granted sound marks to non-musical representation of sound like the ‘Tarzan’s yell and the Metro Goldwyn Mayer’s roar of the lion if the same application is accompanied by a spectrogram or sonogram images." Devices that clearly indicate the rise and fall in pitch and also record the frequency can clearly and precisely indicate the scope of the sound mark.” Thus, all applications accompanying non-musical sound marks should contain spectrogram or sonogram images that contain frequency and time graphs." The Trade Marks Act, 1999 does not specifically bar the registration of sound marks. If a sound mark can be represented graphically and also be capable of distinguishing goods, it may be registered. In recent years the Yahoo Yodel and the ICICI jingle have been registered as sound III O <PROCEDURE FOR REGISTRATION OF TRADEMARKS Any person claiming to be the proprietor of a trademark used or proposed to be used by him. may apply in writing to the Registrar in the prescribed manner for the registration of his trademark." A single application may be madefor registration of a trademark for different classes of goods and services and fee payable therefor shall be in respect of each such class of goods or services. Where a single application under section 18(2) is filed from a convention country for one or more classes of goods or services, the applicant shall establish a sufficient ground to the satisfaction of the Registrar for the date of filing of application in all such classes. The application for registration of a trademark is to be filed in the office of the Trademarks Registry within whose territorial limitsthe principal place of business in India of the applicant or, in the case of joint applicants, the principal place of business of the first applicant is situated. However, where the applicant or any of the joint applicants does not carry on business in India, the application is to be filed in the office of the Trademarks Registry within whose territorial limits the place mentioned in the address for service in India as disclosed in the application is situated. Section 18, Trademarks Act, 1999 The Registrar may, subject to the provisions of the Act, refuse the application or accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.In case of a refuusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for refusal or conditional acceptance and the materials used by him in arriving at his decision. After the acceptance of an application for registration of a trademark but before its registration, if the registrar is satisfied that the application has been accepted in error or that in the Afier the After the acceptance of an application for registration of a trademark but before its registration, if the Registrar is satisfied that the application has been accepted in error or that in the circumstances of the case the trademark should not be registered or should be re; to conditions or limitations or to conditions additional to or different from the con limitations subject to which the application has been accepted, then the Registrar may withdraw the acceptance after hearing the applicant if he so desires, and proceed as if the application has not been accepted. Advertisement of the Application According to Section 20, when an application for registration of a trademark has been accepted whether absolutely or subject to conditions or limitations, the Registrar shall cause the application to be advertised as accepted together with the conditions or limitations, if any subject to which it has been accepted. The Registrar may, however, cause the application to be advertised before acceptance if it relates to a trademark to which section 9(1) and section 11(1) and (2) apply, or in any other case where it is expedient by reason of any exceptional ircumstances so to do. Opposition to Registration Section 21 enables a person to give notice of opposition to registration in writing to the Registrar within four months fiom the date of advertisement or re-advertisement of an application for registration. A copy of such notice of opposition is to be served upon the applicant. III O <Opposition to Registration Section 21 enables a person to give notice of opposition to registration in writing to the Registrar within four months from the date of advertisement or re-advertisement of an application for registration. A copy of such notice of opposition is to be served upon the applicant. Under Section 21, notice of opposition may be given to the Registrar by any person opposing registration and the applicant may, in reply thereto, file a counter-statement. Thereafter, the Registrar is required, after giving an opportunity of hearing to the applicant and his opponent, to decide whether registration is to be permitted absolutely or subject to such conditions or limitations as he may deem fit to specify A trademark is registered under Section 23. When an application for registration of a trademark has been accepted and either - (I) the application has not been opposed and the time for notice of opposition has expired; or (ii) the application has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall register the said mark within eighteen months of the filing of the application unless the Central Government directs otherwise. A trademark shall be registered as of the date of the making of the said application, The date of application is to be deemed to be the date of registration. ASSIGNMENT AND LICENSING Assignment The term ‘assignment’ is defined as a transfer or making over to another of the whole of any property, real or personal, in possession or in action, or of any estate or right therein.1 What assignment is to intangible property, sale is to tangible property—in that sense they can be analogized. IP is transmissible by assignment as personal or movable property. By assigning his IP to another, the owner transfers his legal title to the assignee. In assignment the ownership rights of the IP pass from seller to buyer and it is a one-time activity. An assignment conveys full rights in the underlying IP. Usually, assignment involves compensation in the form of a lump sum payment in one go but it might also be deferred to be made dependant on certain factors, such as the success of the commercialization of the transferred IP. The assignment of intellectual property permits a greater freedom to the assignee in marketing of the products produced by the IP concerned than could be the case with a license. License A license is the formal granting of permission by the owner of IP to the licensee. A license is a promise not to sue a party for actions that would otherwise constitute infringement. Law confers exclusive rights to the owner of IP to do various acts. An infringement occurs if any one of these acts is done without license, A license, therefore, passes no interest but merely makes lawful that Th which would otherwise be unlaw a patent license is a waiver by the patent owner of his right to exclude the licensee from making, using, selling, offering for sale or importing the claimed invention. The extent of rights granted in a license may span from a mere permission to use the licensed property in some limited manner (non-exclusive license) to all but ownership of property (exclusive license). A license can also be appreciated as a legal instrument through III O <INFRINGEMENT AND PASSING OFF A well — recognized legal principle is that once the Parliament has codified the law in a particular domain by statute, common law rights in that domain cease to exist. An exception to this principle can be found in trademark law that expressly recognizes the co-exi of common law rights and statutory rights. In this regard, reference may be had to Section 27(2) of the Trademarks Act, 1999. As per that section, the rights granted by the Trademarks Act do not affect the rights of action against any person for passing of goods/ services as the goods’ services of another person. In other words, the owner of a mark may exercise rights under two heads: (i) Statutory rights for infringement of a registered trademark (ii) Common law rights for passing off with respect to an unregistered mark Therefore, even if the trademark is not registered, the owner of the mark is not rendered remediless and can file an action for “passing off”, Rights conferred by registration The rights conferred by a registration are codified in Section 28 of the Act. According to Section 28(1) of the Act, the registration of a trademark gives to the registered proprietor of the trademark the following rights (i) The exclusive right to the use of the trade mark in relation to the goods or servives in respect of which the trade mark is registered and (ii) The exelusive right to obtain relief in respect of infringement of trademark Let’s take an example: Let’s say the company McDonalds obtains a registration for the trademark McSwirl with respect to food items. Firstly, McDonalds gets the exclusive right to use the trademark MeSwirl with respect to food items ie.no other person can use the same or deceptively similar trademark with respect to food items. Secondly, if a person uses the trademark McSwirl for food items, then McDonaldshas the right to file a suit for infringement and obtain relief for infringement of trademark. The hallmark of a trademark infringement action is consumer confusion. A person is said to have infringed a registered trademark if she uses a mark in the course of trade such that it is likely to cause confusion in the minds of the consumer. The confusion may be caused for one of the following reasons: a. Use of a mark that is identical to the registered trade mark for goods which are similar to the goods or services covered by such registered trademark; or b. Use of a mark that is similar to the registered trade mark with respect to identical or similar goods or services covered by such registered trade marl . Use of a mark that is identical to the registered trade mark with respect to goods or services covered by such registered trade mark Likelihood of Confusion In the year 1962, the Supreme Court” clarified that the likelihood of confusion must be judged from the eyes of an unwary consumer with average intelligence and imperfect recollection. It is important to recognize that consumers do remember each and every element of a trademark and III O <Likelihood of Confusion In the year 1962, the Supreme Court” clarified that the likelihood of confusion must be judged from the eyes of an unwary consumer with average intelligence and imperfect recollection. It is important to recognize that consumers do remember each and every element of a trademark and do not determine the etymological meaning of marks at the time of purchasing goods or availing services. Thus, even if a critical comparison of the two names may disclose some points of difference, but an unwary purchaser of average intelligence and imperfect recollection may still be deceived by the overall similarity of the two names sine an unwary consumer is merely has a somewhat vague recollection that he had purchased similar goods on a previous occasion with a similar name. An interesting question that arises in this context is this: does the test of “unwary purchaser of average intelligence and imperfect recollection” also apply to purchasers of more expensive goods or goods that are bought after much consideration and thought? For instance, can it be said consumer who purchases real estate property running into several crores of rupees will be confused by a wrongful use of a trademark? Does such a consumer make enough enquiries to ensure that the goods/ services originate from the rightful proprietor? Courts have held that where the goods are expensive articles that are bought generally by literate persons, this fact must be considered.” Similarly, where doctors, who are literate persons, prescribe medicines the likelihood of confusion is considered to be lesser ymparison of Marks The following rules have emerged from case law regarding the method of comparison of the marks in trademark infringement actions: 1) Side by side comparison is inappropriate: The test of comparison of the marks side by side is not a sound one. This is because a purchaser seldom has the two marks side by side before him when he makes a purchase. The eye and the mind is not an accurate recorder of visual detail and marks are remembered by general impression or by some significant detail rather than by any photographic recollection of the whole”. Simply put, meticulous comparison is not the correct 2) Visual and phonetic similarity between the wo marks must be seen: The following, oft ~ quoted passage from an old English case on overall visual and phonetic similarity is instructive: “You must take the two words. You must Judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trademarks is used in a normal way as a trade mark for the goods of the respective owners of the marks.”” 3) Expansion of the test t0 similarity of ideas: In the early years of the development of Indian trademark law, the focus was on the visual, structural and phonetic similarity of the two trademarks. Over the years, as Courts have better understood the way in which consumers interact with trademarks, the test has expanded to similarity in the idea of the two trademarks. This expansion is owing to the recognition of the fact that while a side — by — side comparison of the two marks may reveal many visual or phonetic differences, the ideas that the two marks III O <the two marks may reveal many visual or phonetic differences, the ideas that the two marks convey may be the same and a consumer cannot be expected to recall the exact visual or phonetic details while consuming goods. An oft — cited example of is that of a mark represented as a football game. Another mark may show the players in a different dress and in different positions and may thus convey the same impression/ idea of a football game leading to consumer confusion.” In other words, the first impression conveyed by a mark is the correct test" 4) Copying of essential features is relevant: The Defendant must have copied the essential features of the Plaintiff" registered trademark. Other considerations while determining trademark infringement 1) The class of consumers Ina trademark infringement action, the identity or similarity of the class of consumers may also be a relevant consideration for determining the likelihood of confusion. It is often argued that if the class of consumers of the Plaintiffs’ goods/ services is completely different from the class of consumers of the Defendants’ goods/ services, there is no likelihood of confusion and thus no trademark infringement. While this argument has been successfull in a few cases, Courts are increasingly giving less weightage to this difference in class of consumers caused by a difference in the price of the goods of the parties. For instance, in a recent case* involving the trademark HAAGEN DAAZ for ice creams, the Defendants who were using the mark D’DAAZS argued that the price of their ice creams for much lesser than that of the Plaintiffs and thus there is no likelihood of confusion, The Court held that since the consumers of the ice ~ creams were little children who would be confused by the Defendants’ use of a deceptively similar trademark notwithstanding the difference in the price of the goods. This position of law has even been adopted with respect to real estate products and hotels, wherein Courts have cited the possibility of booking hotels online as reason enough for confusion to occur irrespective of the difference in price between the Plaintiff's and Defendants’ services.” 2) Actual confusion or deception need not be proven It is not necessary for the plaintiff to adduce evidence of actual deception in order to prove the ¢ of inftingement and the mere likelihood of confusion is required to be shown. However, where instances of actual confusion do exist, they can add significant strength to a Plaintiff's case 10 not only show likelihood of confusion but also that the reputation associate Plaintiff's trademarks. Further, where the marks are identical and are used with respect to identical goods or services, likelihood of confusion is presumed, Passing Off As explained above, an owner of a mark can also exercise common law rights in a trademark, A person is said to impinge on another’s common law rights in a mark if the former passes off his goods and services as originating from the latter. The law relating to this tort ~ “passing off" was succinctly explained by the Supreme Court in the case of Laxmikant V. Patel vs. Chetanbhat Shah and Another, and an oft — cited passage of the case is extracted hereunder under: ‘A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in{to] believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise, The reasons are III O <It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought t0 be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury: The elements of a passing off action In a landmark decision regarding the infringing use of a trademark as a domain name, the Supreme Court in the case of Satyam Infoway Ltd vs Siffynet Solutions Pvt. Ltd. held that the tort of passing off has the following three elements: 1. Firstly, the Plaintiff must establish distinetiveness/ reputation in the trademark. The action of passing off is normally available to the owner of a distinctive trademark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. It is not essential for the plaintiff to prove long user to establish reputation in a passing off action. It would depend upon the volume of sales and extent of advertisement. 2. The second element is misrepresentation. A plaintiff in a passing off action must prove misrepresentation by the defendant to the public. The word misrepresentation does not mean that the plaintiff has to prove any malafide intention on the part of the defendant. Ofcourse, if the misrepresentation is intentional, it might lead to an inference that the reputation of the plaintiff is such that it is worth the defendant's while to cash in on it, An innocent misrepresentation would be relevant only on the question of the ultimate relief that would be granted to plaintiff. What has to be established is the likelihood of confusion in the minds of the public, that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such confusion the courts must allow for the "imperfect recollection of a person of ordinary memory 3. The third element of a passing off action is loss or damage by the misrepresentation or the ikelihood of it The Supreme Court in the landmark case of Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited” identified the following factors as relevant for deciding the question of deceptive similarity: a) The nature of the marks ive. whether the marks are word marks or label marks or composite marks, i.e. both words and label works. b) The degree of resembleness between the marks, phonetically similar and hence similar in idea. ) The nature of the goods in respect of which they are used as trade marks. d) The similarity in the nature, character and performance of the goods of the rival traders, III O <