This article is written by Shyam Gupta of IPEM Group of Institute.
Trademark
Trademark is a face of business by which it is known among the target audience. It helps to identify goods of one business and distinguish them from other goods sold which protect the public to confusion and duplicity by identifying the origin of particular product as distinguished from other particular products.
A trademark is anything that helps your consumers understand your brand, including a term, logo, sound, image, or even a colour scheme. Although registration is not required, it provides you with the licensing rights under copyright law to stop other companies from registering names that are similar to yours. It enables you to garner royalties via assignment contracts and is a resource that every investor would be keen in noticing you possess.
Nobody with similar business objectives may copy or use your trademark (whatever emblem, name, or mark you pick). It might, however, be copied or applied by someone with a different commercial interest.
In the case of Sunshine Teahouse Pvt. Ltd. vs. MTRM Global Pvt. Ltd popularly known as (CHAAYOS vs. CHAIOPS). Chaayos (Hereinafter referred to as the Plaintiff) is a renowned food chain that serves various kinds of Chai in India. The plaintiff has 200 outlets all over the world. The Trademark “CHAAYOS” is already registered in various classes with the user claim since 2012.
Chaiops (Hereinafter referred to as Defendant) is considered to be a food chain, having 37 outlets. Defendant operates their business in the same goods and services as offered by Plaintiff. Plaintiff filed a suit against Defendant for using a phonetically similar trademark though, the logos and device marks show no similarity. The case is been referred to the Delhi High Court Mediation and Conciliation Centre to resolve the matter.
In the case of COCA COLA VS BISLERI coca cola and bisleri over the trademark Maaza where Bisleri assigned its trademark Maaza to Coca Cola to sell and export products in and from India and immediately after, filed a trademark Application in Turkey. It was held that the rights over the trademark were completely assigned to Coca Cola and Bisleri cannot use the trademark in or outside India.
In the case of WHATMAN INTERNATIONAL LTD V. P MEHTA AND OTHERS famous Indian case where Whatman received a gigantic compensation of 3.85 crores from the Defendant, who traded upon its goodwill and caused damages to various intellectual property rights of Plaintiff in the last 25 years. This was the most trending case where the true value of trademark was realized and the counterfeited filter papers which were the exact copy of Plaintiff’s Filter paper sold under various trademarks by the Defendant and his acts of malafide intentions was permanently stayed.
In the case of ICC DEVELOPMENT (INTERNATIONAL) LTD V ARVEE ENTERPRISES there is one of the 2 cases related to Ambush Marketing (trend where Advertising is done through ambushing the event to compete for exposure) in India till date. Here the Plaintiff had the Registration for “ICC CRICKET WORLD CUP SOUTH AFRICA 2003” and logo and the mascot “Dazzler” in India and worldwide and chose to file a suit to stop the Defendant who was advertising as ‘Philips: Diwali Manao World Cup Jao’ and ‘Buy a Philips Audio System, win a ticket to World Cup’. It was held by the Court that World Cup is a generic word and the Defendant has not used the Plaintiff’s Logo or Mascot ‘Dazzler’, neither is the Event of World Cup protected by any International Treaty or Domestic Law, therefore the advertising campaign offering tickets of the Event cannot be held unlawful.
Trademark Classes
In India, there are 45 distinct types or classes for trademarks. A class can include producing face creams, exporting metal, or making shoes. You must be sure that, when you file for registration, you are registering underneath the appropriate class or section for your type of business.
The trademark act 1999 provides trademark classification with 45 classes for various goods and services.
- Class 1 to 34 deals with goods.
- Class 35 to 45 deals with services.
You have to find out in which class your particular product or service belongs to, based on the kind of product.
For Example: if your product is a musical instrument then it will belong to class 15 or if your service is a legal service it will come to class 45
Your trademark is legally admissible forever. However, the application must be renewed every ten years.
In the case of Sunil Mittal v. Darzi the defendant claims to be engaged in the same nature of goods/services as that of the plaintiffs and has adopted an identical and/or deceptively similar trade name/trademark “DARZI ON CALL” in a manner which cannot be differentiated and distinguished from the plaintiffs trade name/trademark;, immediately on coming to know of the defendant, made enquiries and found that the defendant had also filed TM application for registration of the trade name/trademark “DARZI ON CALL”.
It was stated that the services of tailoring do not fall in Class 24 but rather in Class 40 and the defendant’s TM Application No. 2985596 has been made in Class 40 for tailoring services.
Class 40. “Treatment of materials”
Where we do any work where there is a treatment of material for example frozen of foods or any process by which there is a valuable output for the same was always comes under class 40 of trademark.
Types of services come under Trademark Class 40
- Services relating to the transformation of an object or substance and any process involving a change in its essential properties.
- Services of material treatment which may be present during the production of any substance or object other than a building; for example, services which involve cutting, shaping, polishing by abrasion or metal coating.
The following services are NOT classified under Class 40:
- Repair services
List of Services under Trademark Class 40
- Abrasion
- Air Purification
- Air Deodorising
- Air Freshening
- Rental Of Air Conditioning Apparatus
- Applying Finishes To Textiles
Blacksmithing
Boiler making
Rental Of Boilers
Bookbinding
Burnishing By Abrasion
Cadmium Plating
Chromium Plating
Cloth Edging
Cloth Cutting
Cloth Waterproofing / Fabric Waterproofing
Cloth Fireproofing / Fabric Fireproofing / Textile Fireproofing
- Cloth Dyeing
- Cloth Pre-shrinking
- Clothing Alteration
- Colour Separation Services
- Crease-resistant Treatment For Clothing
- Cryopreservation Services
- Custom Fashioning Of Fur
- Custom Tailoring
- Custom Assembling Of Materials For Others
- Decontamination Of Hazardous Materials
- Services Of A Dental Technician
- Destruction Of Waste And Trash
- Dressmaking
- Dyeing Services
- Electroplating
- Embroidery Services
- Production Of Energy
- Fabric Bleaching
- Flour Milling
- Food Smoking
- Food And Drink Preservation
- Framing Of Works Of Art
- Freezing Of Foods
- Fruit Crushing
- Fulling Of Cloth
- Fur Conditioning
- Fur Mothproofing
- Fur Glossing
- Fur Staining
- Fur Dyeing
- Galvanization
- Rental Of Generators Gilding
Glass-blowing
Gold Plating
Grinding
Incineration Of Waste And Trash
Key Cutting
Knitting Machine Rental
Laminating
Laser Scribing
Leather Staining
Leather Working
Lithographic Printing
- Magnetization
- Metal Plating
- Metal Treating
- Metal Tempering
- Metal Casting
- Millwork
- Nickel Plating
- Offset Printing
- Optical Glass Grinding
- Paper Finishing
- Paper Treating
- Pattern Printing
- Permanent-press Treatment Of Fabrics
- Photo composing Services
- Photographic Film Development
- Photographic Printing
- Photogravure
- Planing [Saw Mill]
- Pottery Firing / Firing Pottery
- Printing
- Processing Of Cinematographic Films
- Processing Of Oil
- Quilting
- Recycling Of Waste And Trash
- Refining Services
- Saddlery Working
- Sandblasting Services
- Sawing [Saw Mill]
- Shoe Staining
- Silkscreen Printing
- Silver Plating
- Skin Dressing
- Slaughtering Of Animals
Soldering
Sorting Of Waste And Recyclable Material [Transformation]
Rental Of Space Heating Apparatus
Stripping Finishes
Tanning
Taxidermy
Textile Dyeing
Textile Treating / Cloth Treating
Textile Mothproofing
Timber Felling And Processing
Tin Plating
- Material Treatment Information
- Upcycling [Waste Recycling]
- Vulcanization [Material Treatment] Warping [Looms]
- Waste Treatment [Transformation]
- Water Treating
- Welding Services
- Window Tinting Treatment, Being Surface Coating
- Woodworking
- Wool Treating
References
Sunshine Teahouse Pvt. Ltd. vs. MTRM Global Pvt. Ltd
Trademark Act 1999
Sunil Mittal v. Darzi
COCA COLA VS BISLERI
WHATMAN INTERNATIONAL LTD V. P MEHTA
ICC DEVELOPMENT (INTERNATIONAL) LTD V ARVEE ENTERPRISES
Aishwarya Says:
Law students often face problems, which they cannot share with their friends and families. We have started a column on our website Student’s Corner. In this column we are talking to several law students about the challenges that they face. Students who are interested in participating in the same, can fill this Google Form.
IF YOU ARE INTERESTED IN PARTICIPATING IN THE SAME, DO LET ME KNOW.
The copyright of this Article belongs exclusively to Ms. Aishwarya Sandeep. Reproduction of the same, without permission will amount to Copyright Infringement. Appropriate Legal Action under the Indian Laws will be taken.
If you would also like to contribute to my website, then do share your articles or poems to aishwarya@aishwaryasandeep.com
Join our Whatsapp Group for latest Job Opening