This article has been written by MS SHAHEEN HIRANI, a 4th year student of Keshav Memorial College Of Law.
Every wise consumer purchases his goods only when he is satisfied with the goods or services are of a good quality and reputation. Every producer or manufacturer wants their products to stand out among varied of similar products in the market. It can only be possible when there is a distinguish symbol or an identification of that quality or brand. This representation or symbol in the world of Intellectual Property is called as TRADEMARK.
TRADEMARK, can be understood as any mark or symbol which is being represented graphically through which one can be able to distinguish the products one from other, which include shape, packaging and colour combination of the respective goods.
Trade marks has certain characteristics which can be illustrated as-
1.Trademark, is a kind of property. It is entitled to protection under the law.
2.Indication to the purchaser.
3.Trademark is not a property in itself. No exclusive rights are given unless there is some deception or mistake.
4.No right in goods.
Evolution of Trademark
As the industrial production started and that facilitated mass production of goods in Europe, the need for trademarks and laws relating to it were felt. One first illustrative trademark system began in France in 1857, not until 1905 when England passed an enactment to regulate trade laws in 1905. Therefore many amendments took place in several years and at last it was settled as Trade Marks Act 1940 in India. Certain deliberations were still made in year 1958 which was finally revised and replaced by The Trade Marks Act 1999.
The contemporary law which is The Trade Marks Act 1999,is in harmony with two major international treaties and those are
.Paris Convention for protection of industrial property
.TRIPS Agreement.
Trademarks is an illustrative concept under the Intellectual Property, it goes with certain functions that must be followed, and few functions of trademarks are:
1.Trademark identifies what the products and goes down to its origin too.
2.Trademark helps us in understanding the quality of the goods.
3.Trademark represents a product and also is liable for its mass advertisement.
4.It creates and lives a mark or reputation in the minds of consumers.
Along with the rules related to trademark another concept under the name ‘well-known trademark’ was introduced in The Trademark Act 1999, section2(zg).
A case law with regard to the infringement of trademarks is:
.TOSHIBA CORPORATION VS S.K.GILL
The plaintiff here is Toshiba Group, which is a well known corporation in relation to electronic goods and thus also enjoys the international reputation. The defendant Mr Gill, use the mark ‘TOSHIBA’ in respect of lifts and escalator and not settled only with selling them but even started advertising them. He also registered a website with the domain name as “ www.toshibaelevator.com” .
The plaintiff held the defendant liable that he has adopted the mark and is enjoying all the benefits attached with the reputation and goodwill of the trademark. Toshiba not only has its market out in India but across the world. Therefore the Delhi High Court to the plaintiff contention and granted a decree of injunction against the defendant.
One another concept under the head of trademark misuse or its infringement is of Passing Off of Trademark.
Passing off can be understood as ‘identity theft’. In this an unregistered trademark attempts to interpret that it’s a registered one in respect of goods of owner of registered trademark.
Objects-
1.To protect the commercial goodwill and to ensure that the purchasers are not exploited
2.Prevent dishonest trading.
3.Test of confusion will cause the man’s average intelligence.
A case law related to passing off of trademark in medicinal and pharmaceutical preparations:
.WIN MEDICAL PVT LTD VS MARIGOLD PHARMA LTD, DELHI
Here the plaintiff is the owner of registered trademark ‘Betadine’ and ‘Eczo-betadin’ which is related to the medicinal preparations. In mean while the defendant started marketing the same product under the name ‘Beectadine’. The plaintiff issued the case in view of deceptive similarity and therefore the defendant was restrained from manufacturing and marketing of the product made.
DECEPTIVE SIMILARITY
One essential requirement of trademark is its distinctiveness. If we want to make a trademark valid it must be unique and should outstand to all the trademarks registered. Under the act of trademark 1999, section 11(1) to discourage dishonesty in commerce –
A trademark will not be registered if its similar to any of the existing the trademarks, if its association with any other mark and that it resembles creating confusion.
A caselaw with relation to trademark and deceptive similarity is and firstly it is importance for us to know that the deceptive similarity or confusion is depended only on the facts and circumstances of each case-
.SHELKE BEVERAGES PVT LTD VS RASIKLAL MANIKCHAND DHARIWAL
In this case the plaintiff and defendant both were carrying out a business of bottling and selling packed drinking water under the names oxyrich and oxycool.
The issue was raised at the Bombay High Court, whether the appellant could carry the same business by using the trademark oxycool and thus was challenged by the respondent.
But it was brought to the court’s notice that the colour, scheme, design, labels were dissimilar to the respondent product and its trademark oxyrich, prior to this an injunction was granted. Later with on going deliberations it was held that ‘OXY’ is derived from oxygen and has become generic and no one can be held liable in using those words and therefore the appellant company was allowed to continue their business.
PROCEDURE FOR REGISTRATION OF TRADEMARK
Under the present act of 1999, the procedure for registration of trademark is inscribed in chapter III, section 18 to 26.
A person who is the rightful owner ,creator or inventor of the trademark can register by applying it to the registrar of trademark.
.Under section 18, the application of registration is made in view of goods and services in a prescribed form.
.Under section 19, acceptance or refusal by registrar is done.
.Under section 20, advertisement of application happens when its accepted. Must be free from all the short-comings and nothing is going ultra-vire.
.Under section 21, opposition to registration of trademark. If any other person has any interest in registration of the mark , may oppose it by paying the prescribed fee and giving a notice which must be presented to the registrar.
.Under section 23, the trademark is registered.
REMEDIES FOR INFRINGEMENT OF TRADEMARKS-
INFRINGEMENT- if a person who is not the proprietor of the assigned or registered trademark, uses the same or similar mark to that of registered one is called as infringement of trademark.
Various forms of Infringement
.Using a deceptive similar mark.
.taking few features from already existing registered mark
.printing labels without any authorisation.
.copying , using others name on the said trademark etc constitutes to infringing.
REMEDIES
If a registered trademark is infringed and to protect it few remedies can be resorted to;
.Civil remedies
.Criminal proceedings
.Administrative remedies.
Intellectual property subjects the minds of the intellects. Trademarks are one of the essential requirement of intellectual property and the protection of trademark has become one of the scarce need, where it can distinguished and will be an eye catchy representation for the customers at large. As it represents the innovative mind of the inventor it must be protected because infringing of such would lead to maximum difficulties and the trademark concepts will not remain as how it is. It is one usual topic which is used in day to day activities, and thus it has become the concept of pervasiveness in everyday life.
REFERNCES
1.indiankanoon.com
2.ipleaders
3.Law relating to intellectual property rights- V.K.AHUJA.
4.legalbites.in
5.academia.edu
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