Author – Priyanshu Mishra & Vaishali Yadav, Students from Shambhunath Institute of Law, Prayagraj
Introduction
A trademark is a product of competing business practices. Every trader wants to sell his product under his own name and specialty. Changes in business practices have also changed the concept and philosophy of trademarks. Therefore, it is essential to understand the essential features and purposes for which the trademark is used. This chapter deals with the general aspects of a trademark.
A trademark is a visual symbol in the form of a word, device or a label, applied to articles of commerce with a view to indicating to the purchasing public, that they are the goods manufactured or otherwise dealt with by a particular person as distinguished from similar goods manufactured or dealt by other persons.
Section 2(zb) of Trademarks Act, 1999 defines “trademark” 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 the shape of goods, their packaging and combination of colours.
Section 2(m) defines “mark” as a device, brand, heading, label, ticket, name, signature, words, letter, numerals, the shape of goods, packaging or combination of colours or any combination thereof.
Characteristics of Trademark –
Based on various judicial verdicts, certain essential characteristics of the mark may be highlighted as under: –
- The definition of “trademark” and “mark” includes within itself a trade name under which articles, goods are sold.
- Trademark is a kind of property and is entitled to protection under the law.
- A trademark is generally transmitted in connection with the goodwill of a business. Therefore, the law does not recognize the transfer of trademark per se; separate from the goodwill of the business.
- A trademark may be registered or unregistered. Registration ensures ownership of the trademark and it enables him to avoid proving his title against any infringement or the mark. But in the case of an unregistered trademark, the only way in which the owner can protect the infringement is the passing off action.
- Trademark has many species such as service marks, certification marks, collective marks and well-known trademarks. Distinctiveness is the basic quality of a trademark.
Functions of Trademark
The function of a trademark is to give an indication to the purchaser or potential buyer about the manufacture or quality of the goods. It gives the buyer a satisfactory assurance of the build and quality of the item being purchased by him. The goodwill of a product is also reflected through its trademark. It may classify the functions of a trademark in the following four categories:
- It identifies the product and its origin.
- It guarantees its established quality.
- It is a means of advertising the product. Every company that wishes to popularize its product among the public has to give its product a trade name and then create its brand value.
- It creates an image of the product in the mind of the public.
Various Forms of Trademarks
A trademark can be visualized in many forms, viz., words, letters, numerals, names and so on. We shall give hereunder some illustrations of various well-known prevalent trademarks found in different forms.
- Brand
- Letters
- Label and Ticket
- Numerals
- Symbol or Logos
- Containers
- Shape of Goods
- Packaging
- Title Device
Types of Trademarks
- A service mark is any symbol name, sign, device or word that is intentionally used in business to distinguish one provider of services from others.
- Collective mark indicates that the marketer, trader or person is a part of the specified group or organization.
- A certificate mark is verification or confirmation of matter by providing assurance that some act has been done or some judicial formality has been complied with. A certification mark indicates certain qualities of goods or services with which the marks are used are certified.
- “Well-known trademark”, in relation to any goods or services means a mark which has become so to the substantial segment of the public which uses such good or receives such services that the use of such mark in relation to other goods or services.
In Enfield India Ltd. v. Deepak Engineering Syndicate, the application registration of a trademark Bullet in respect of diesel oil engines in class 7 claiming user since 1978 has been filed. It was opposed by Enfield India the proprietor of the mark BULLET and having the much-reputed name ENFIELD BULLET in the market. It was held that a person adopting a well-known mark would take advantage of the reputation of that well-known mark which could not be permitted.
- The use of computer and information technology has brought revolutionary changes in business methodology. Internet domain names par a very vital role in the promotion of business. They are valuable corporate assets.
In Card Service International Inc. v. McGee, it was held that the domain same serves the function as the trademark and is not a mere address or like an Ending number on the internet and, therefore, it is entitled to equal protection s trademark. It was further held that a domain name is more than a mere internet address for it also identifies the internet site to those who reach it, much like a person’s name identifies a particular person or more relevant to trademark disputes, a company’s name identifies a specific company.
- – It is sound marks, smell marks, three-dimensional marks, such as the shape of goods, taste marks, feel marks and hologram marks. Courts in India and jurisdictions have also recognized them as trademarks, provided they graphically represented and fulfil the necessary conditions.
- Image of a product in its marketing or sales that is composed of the non-functional elements of design, packaging or labelling. This means that there is a specific way of writing any product name, unique background and other remarkable signs.
Judicial Approach
The absolute and relative grounds for refusal of registration have been the subject matter of judicial interpretation.
- – (Registration refused on the ground likelihood of causing confusion) Deceptive similarity is different than cause confusion. When you deceive a man, you tell him a lie. But you may cause confusion without telling a lie at all.
In Intel Corporation v. Dinakaran Nair, it was held that, ‘ARJ’ and suffix INTEL’ of ‘ARINTEL’ are the prefix pronounced separately, would be similar to INTEL’ and both marks are misleading the public as both are in similar trade.
In Apex Laboratories Ltd. v. Zeventus Health Care Ltd.,’ the Court held that the mark Zinconia’ is phonetically as well as visually dissimilar to “Zincovit’, and hence no confusion.
- Distinctiveness is the primary requirement of a trademark.
In Imperial Tobacco v. Registrar, Trademarks, the distinctiveness has been understood as some quality in the trademark which earmarks the goods so marked as distinct from those of other products or such goods. The burden is on the applicant to prove the distinctiveness of the mark or its capability being distinguished so as to claim monopoly of using the mark.
Conclusion & Suggestions
Intellectual property is not an uncommon concept, in fact, it is a concept discussed in everyday life whether a movie, book, plant variety, foods, cosmetics, electrical gadgets, software etc. It has become a widespread concept in everyday life. Intellectual property protection is because it can promote creativity and discovery and prevent the exploitation of inventions.
Trademarks are a well-recognized standard of law that a trader or an entrepreneur may obtain an exclusive right to use a particular word having a descriptive nature as a trademark if he is satisfied that he has used a significant meaning, it is a persistent user with a secondary meaning or distinctive character. The period of time the use of the word should be to such an extent that it has lost its primary meaning and acquired a distinctive character. The moment it is used, it should remind the consumer of the owner’s goods.
REFRENCES
BOOKS REFERRED:
Prof. (Dr.) M.K. BHANDARI, Law Relating to Intellectual Property Rights, (Sixth Ed., 2021, Central Law Publications).
WEBSITES REFFERED:
https://www.ptc.com/en/documents/policies/copyright-and-trademarks
https://www.indiacode.nic.in/handle/123456789/1993?sam_handle=123456789/1362
STATUTE
The Trademarks Act, 1999