IPR relating to
Trademarks –
Concept, Functions of Trade Mark, types, trademarks that
cannot be registered, Registration of Trade Marks and rights of the proprietor
of Trade Marks. Procedure for registration of Trade Marks., Infringement of
Trademarks & Remedies.
CONCEPT
2.(1) (zb) "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 colors ,
and
in relation to Chapter XII
(other than section 107), a registered trade mark or 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 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 to 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.
FUNCTIONS OF TRADE
MARK
A trademark serves the purpose of identifying
the source or the origin of goods. Trademark performs the following four
functions.
- It
identifies the product and it’s origin.
- It
proposes to guarantee its quality.
- It
advertises the product. The
trademark represents the product.
- It
creates an image of the product in the minds of the public particularly the consumers or the prospective
consumers of such goods.
https://www.advocatekhoj.com/library/lawareas/trade/functions.php?Title=Trademark&STitle=Functions%20of%20a%20Trademark
TYPES
1. Section 2.(1)(c) "associated trade Marks" means
trade marks deemed to be, or required to be, registered as associated trade
marks under this Act;
2. Section 2.(1) (e)
"certification trade mark"
means a mark capable of distinguishing the goods or service 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 service not so certified and registrable as such under Chapter
IX in respect of those goods or service in the name, as proprietor of the
certification trade mark , of that person;
3. Section 2.(1) (g)
"collective mark" means a
trade mark distinguishing the goods or services of members of an association of
persons (not being a partnership within the meaning of the Indian Partnership
Act, 1932 (9 of 1932) which is the proprietor of the mark from those of others.
4. Section 2.(1) (zg)
"well-known trade mark" in
relation to any goods or service, means a mark which has becomes 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.
5. Section 24. Jointly
owned trade marks.-
(1) Save as provided in sub-section (2), nothing in this Act
shall authorize the registration of two or more persons who use a trade mark
independently, or propose so to use it, as joint proprietors thereof.
(2) Where the relations between two or more persons interested
in a trade mark are such that no one of them is entitled as between himself and
the other or others of them to use it except-
(a) on behalf of both or all of them, or
(b) in relation to an article or service with which both or all
of them are connected in the course of trade.
Those persons may be registered as joint proprietors of the
trade mark, and this Act shall have effect in relation to any rights to the use
of the trade mark vested in those persons as if those rights had been vested in
a single person.
6. SERVICE MARKS
7. SOUND TRADEMARKS
8. SHAPE TRADEMARK
Trademarks that cannot be registered
Section 9 - Absolute grounds for refusal of registration
(1) The trade marks--
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of 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 service;
(c) 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, shall not be registered:
Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.
(2) A mark shall not be registered as a trade mark if--
(a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).
(3) A mark shall not be registered as a trade mark if it consists exclusively of--
(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.
Explanation.--For the purposes of this section, the nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration.
Section 11 - Relative grounds for refusal of registration.
(1) Save as provided in section 12, a trade mark shall not be registered if, because of--
(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(2) A trade mark which--
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark.
(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented--
(a) by virtue of any law in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or
(b) by virtue of law of copyright.
(4) Nothing in this section shall prevent the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration, and in such case the Registrar may register the mark under special circumstances under section 12.
Explanation.For the purposes of this section, earlier trade mark means--
1[(a) a registered trade mark or an application under section 18 bearing an earlier date of filing or an international registration referred to in section 36E or convention application referred to in section 154 which has a date of application earlier than that of the trade mark in question, taking account, where appropriate, of the priorities claimed in respect of the trade marks;]
(b) a trade mark which, on the date of the application for registration of the trade mark in question, or where appropriate, of the priority claimed in respect of the application, was entitled to protection as a well-known trade mark.
(5) A trade mark shall not be refused registration on the grounds specified in sub-sections (2) and (3), unless objection on any one or more of those grounds is raised in opposition proceedings by the proprietor of the earlier trade mark.
(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he considers relevant for determining a trade mark as a well-known trade mark including--
(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;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) 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;
(iv) the duration and geographical area of any registration of or any application for registration of that trade mark under this Act to the extent that they reflect the use or recognition of the trade mark;
(v) 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.
(7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a relevant section of the public for the purposes of sub-section (6), take into account--
(i) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the goods or services;
(iii) the business circles dealing with the goods or services, to which that trade mark applies.
(8) Where a trade mark has been determined to be well known in at least one relevant section of the public in India by any court or Registrar, the Registrar shall consider that trade mark as a well-known trade mark for registration under this Act.
(9) The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely:--
(i) that the trade mark has been used in India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of the trade mark has been filed in India;
(iv) that the trade mark--
(a) is well-known in; or
(b) has been registered in; or
(c) in respect of which an application for registration has been filed in, any jurisdiction other than India, or
(v) that the trade mark is well-known to the public at large in India.
(10) While considering an application for registration of a trade mark and opposition filed in respect thereof, the Registrar shall--
(i) protect a well-known trade mark against the identical or similar trade marks;
(ii) take into consideration the bad faith involved either of the applicant or the opponent affecting the right relating to the trade mark.
(11) Where a trade mark has been registered in good faith disclosing the material informations to the Registrar or where right to a trade mark has been acquired through use in good faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration of that trade mark or right to use that trade mark on the ground that such trade mark is identical with or similar to a well-known trade mark.
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