This article has been written by Pranav Verma.
Table of Contents
Introduction
Trademark is a form of intellectual property consisting of an identifiable symbol, pattern, different expression, etc. which recognizes the specific sources of product and services of others. The owner of a trademark can be an individual, business firms, or any legal organization. A trademark can easily be found on a package of the product, a label, a voucher, or on the product itself.
In general terms, a trademark is a sign, symbol, word, or image that tells us the source of that product and connects the product which manufactures them, in simpler terms, it differentiates a product or service from all other competitors of that kind and helps in identifying the source company’s ownership of the brand.
In common, they can also be called logos. The sign ™ (the trademark symbol) and ® (the registered trademark symbol) is used to show that it is a registered trademark; the latter is only for use by the owner of a trademark that has been registered. Trademarks may or may not be registered and are denoted by the ® and ™ symbols respectively.
Anyone who claims right in the mark can use the TM (Trademark) or SM (Servicemark) to inform the aware public of their designation. It is not compulsory to have registrations or even pending applications to use these marks. This registration sign, ® may be called a registered trademark when the mark is registered.
There is a lot of confusion regarding whether a trademark is similar to copyright, patent, or geographical indication. So let’s erase this myth as a trademark is different from all. A copyright protects an original work of art or literature; a patent protects an invention whereas a geographical indication is used to identify goods having special attributes originating from a definite territory.
History of trademark
There are many sources of origin of trademarks, some say by Europeans, by Egyptians, or by Chinese, but we take all the timelines and show that it is the oldest concept that became an intellectual property in modern times.
The earliest timeline of trademark we can found in 5000 BC ancient Europe which had and still have, in Lascaux Caves in southern France, marking to show their ownership on the walls.
Same timeline but different countries, i.e., in China, people were making pottery which includes their Chinese emperor’s name in power. It also showcased the location where pottery was created.
In ancient Egypt, around 600 BC, a trademark identified a product’s origin with unique signs and images were incorporated by craftsmen to show where the particular product originated and who made it. The idea of emblems and symbols as trademarks became popular in medieval Europe.
The first legislative Act concerning trademarks was passed in 1266 under the reign of Henry III, which said that every bakery would have to use a unique and free from deceptive/confusing mark which represents their for the items they sold.
The first modern and codified trademark laws enforced in the late 19th century came into effect in France, and this Act came into force after it was passed into law in 1857.
The Trade Marks Act, 1938 of the United Kingdom changed the system completely, allowing for the registration of the word/mark based on “intent-to-use”, creating and testing of intellectual based process, and created an application for publishing it.
This Act, which was helpful as a model for similar legislation, contained other concepts such as “associated trademarks”, a consent to use the system, a defensive mark system, and a non-claiming right system and now it has become an intellectual property.
Trademark laws origin in India
Before 1940, trademark laws in India were based on common law principles which were as equally followed in England before the enactment of the first Registration Act, 1875. The first statutory law of trademark in India was the TRADE MARKS ACT, 1940, same as the provision of the U.K. Trade Marks Act, 1938.
The Trade and Merchandise Marks Act, 1958 was later enacted but it was replaced/modified by the Trade Marks Act, 1999 and is the current governing law for registered trademarks. The reason for this Act to be enacted was to comply with the provisions of the Trade-Related Aspects of Intellectual Property Rights (TRIPS) which was enacted by the World Trade Organisation (WTO) in 1999. It is an international agreement administered by the World Trade Organization (WTO) that sets down minimum standards for many forms of intellectual property (IP) regulation.
As per the Trade Mark Act, 1999, trademark defined under Section 2(zb) of the same 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 the shape of goods, their packaging, and combination of colors.
A trademark may be the inclusion of a word, sign, symbols, expression, device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colors or any such combinations.
6th March 2017, the new trademark rule came into effect. These new rules are intended to make the Trademark registration process hassle-free, simpler, and quicker. Some characteristics of the new rules are as follow:
- Sound marks are registered.
- 3D marks are also registered in new rules.
- E-filing is promoted.
- Provisions about the well-known mark.
- Separate fees structure for an individual/ startup/ small enterprise and others.
- Hearing via video conferencing.
- The number of forms has been cut down to 8 from existing around 75 forms.
Types of trademarks
There are seven types of Trademarks as per Trademark Act, 1999:
- Service Mark
- Collective Mark
- Product Mark
- Certification Mark
- Shape Mark
- Pattern Mark
- Sound Mark
Service marks
A service mark is any word, mark, sign, symbol, device, or any inclusion of used or intended to be used in trade to identify and distinguish the services of oneself from others and to show the source of services. It is denoted by the word SM.
For example, a company, such as Amazon, may brand certain products with a trademark, but use a service mark on the internet searching service that it provides/FedEx is a registered courier delivery service provider.
Collective mark
A collective mark is a mark used by members of cooperative organizations, unions or collective groups, or other groups to recognize their source of goods and services. Collective marks are normally used to inform the public about a particular characteristic of the product for which the collective mark is used. They are “badges of origin” which indicates the specific source of the individual, his/her products, and services.
Example: A lawyer can use the word “Bar Council” device as he is a registered member/ bench of the judiciary.
Product Mark
A product mark is the same as a trademark. The difference between both is trademark is for product and services but product mark is for a product not for services.
Example: MUSTANG is a product mark used for a particular automobile that is sold under the FORD house mark.
Certification Mark
The certification mark is used to define that the product is standard/standardized. Certification mark defined in a legal term as a mark showing that the goods or services in which, it is directly related to the certification by the proprietor of the mark in association with beginning/origin, matter, and in procedure/manner of manufacture of goods, in performance of services, attribute, accuracy, or other features.
Examples: Food products, Electrical goods, Cosmetics have marks to specify their safety and quality standard, etc.
Shape Mark
As per the Indian Trademark Act, 1999, a trademark may also include the shape of goods, their packaging as a Trademark. Any graphical representation which is able to produce products can register as a shape mark.
Examples: Ornamental Lamps, specially designed bottles of perfume, etc.
Pattern Mark
A Pattern Mark is a trademark wherein, the pattern can distinguish products of other brands. This mark consists of a pattern which is able to identify the goods/ services as originating from a particular undertaking. It should have evidence of uniqueness.
Examples: Repetitive diamond pattern on the cloth, speaker grill of a musical instrument amplifier.
Sound Mark
Due to the increase in the importance of the role of sound in an advertisement, we immediately came to know about it, and therefore, it is regarded as a trademark, a sound logo technically referred to as an audio mnemonic.
Example: The MGM’s roar of a lion.
Infringement of trademark
Trademark infringement is a breach of the original rights of the trademark holder without taking the license of the trademark from the owner or any authorization. Generally, infringement may occur when other parties the ‘infringer’, uses a trademark that is identical or similar to the products or services than the owner may commence legal action against the infringer because an infringement of trademark usually affects him by potential loss of potential customers, finances and reputation.
Trademark infringement has been defined in Section 29 of the Trade Marks Act, 1999.
Elements of infringement of a trademark in India
- Unauthorized Person: When other than the owner/licensee of registered trademark use the Trademark.
- ‘Identical’ or ‘Deceptively similar’: It is a test to compare the difference between the mark, Whether they are identical or making confusion in mind among the public if consumers get confused then there is infringement.
- Registered Trademark: Infringement only applies to trademark. For an unregistered trademark, the common law concept of passing off will apply.
- Goods/Services: To present infringement of goods/services the infringer’s trademark must be identical or similar to goods/services that the registered trademark of the owner represents.
The above element is an example of direct infringement. There is another infringement present in India known as “Indirect Infringement”.
Indirect Infringement
Indirect Infringement is a common law principle which not only holds accountable to direct infringers but also the person who induces them to do infringement. Indirect infringement has two categories: Contributory Infringement and Vicarious Liability.
Under contributory infringement, a person will be liable in two situations
- When a person knows about the infringement.
- When the person materially contributes or allows/induces direct infringers to infringe.
Under vicarious liability, a person will be liable in the following circumstances:
- When the person has a sound mind and still participates/induces direct infringers to do Infringement.
- When the person gets financial benefits from the trademark infringement.
- When the person knows about the infringement and still contributes/induces for doing it.
Rights & remedies of trademark Owner
The owner of the registered trademark may issue legal notice for trademark infringement done by the infringer to prevent them for unauthorized use of that trademark Legal proceedings can also be held in an unregistered trademark but an unregistered trademark may be protectable within the geographical area used in or in geographical area it can be reasonably expanded.
There are only two main remedies given to the owner in unauthorized using of a trademark by the third party, these remedies are:
- An action for infringement can be done under a registered trademark.
- An action for passing off should be done when it is the case of an unregistered trademark.
India, being a common law country, follows not only codified law but also follows common law principles and provides for infringement and also passing off actions against violation of trademark. Section 135 of the Trademarks Act undertakes both these actions.
The first one is a statutory remedy but the second one is a common law remedy. In an act of infringement or passing off, the court may grant relief of injunction or liquidated damages under loss of business/confiscation/destruction of infringing labels and tags, etc.
What steps should an owner/organization take to stop this trademark infringement?
The right owner of the trademark should hire a watch service so they can monitor trademark journals to alert them to any published, deceptive/similar trademarks, or descriptive articles which may help them to find infringement.
It is advisable to the owners of the trademark that along with filing a trademark application in India, they should also make press releases, public cautionary notices and advertise about their marks so that the public, business organization, and other institutions are aware before entering into the market. Also, this protects them from third party violation.
Criminal remedies
An action bought for infringement/passing off trademark, a criminal complaint can also be filed under the provisions of the Trademark Act, 1999. The offence is considered to be of cognizable nature. Hence, a police complaint can be filed.
Civil remedies
- Injunction/stay for using an unauthorized trademark.
- Monetary compensation can be claimed.
- Accounts and handing over of their profits.
- Appointment of a local commissioner by the court which akin to an “Anton Pillar Order” means search, seizure, and taking them in custody/sealing of infringing materials/accounts and preparation of inventory, etc.
- Restraining the infringer from disposing of or dealing with assets in a manner that may directly affect the plaintiff’s business to recover damages, cost, or pecuniary remedies which may be finally awarded to the plaintiff.
The court may grant an injunction and direct the custom authorities to hold the infringing goods/their shipment or prevent from any manner to protect the rights of owners of their intellectual property.
This proposition can be done with/without the involvement of the concerned parties in the suit. The relief which a court may issue usually grants for a permanent or interim injunction, damage or accounts of profits, delivery of the infringing goods for the destruction of goodwill, and cost of legal proceedings.
Most recent cases for trademark violation in India
Brilliant Public School Society v. Brilliant Public School
This appeal arises out of order dated 17.7.2019 by which, the plaintiff/appellant (Brilliant Public School Society) grant of a temporary injunction order 39 Rule 1&2 read with Section 151 IPC has been rejected.
The plaintiff is a society registered under the M.P. Society Registration Act, 1973 and runs a school at Bilaspur, Chhattisgarh, whereas, the defendant has a school under a trust of B.D. Sah Foundation Trust in Sitamarhi, Bihar.
Both organizations are engaged in the education sector by imparting school education but from different locations. Plaintiff filed suit seeking an injunction against defendant based on infringement of their registered trademark “Brilliant Public School” and also passing off action on pleading, inter alia, the plaintiff in the trade name “Brilliant Public School”.
The plaintiff established and was running the school since 2000 and they have duly registered under the Trade Marks Act and pleaded that defendant doesn’t have a trademark. However, the defendant argued that they weren’t located in the same place and were running the school for a long time since 1995 before it was named ‘Brilliant Coaching Institute’ and after changed it to ‘Brilliant Public School Sitamarhi’.
After taking aforesaid considerations from both sides and on the basis of a provision under Sections 28 & 29 of the Trade Marks Act, 1999, the court passed the order in the favour of the appellant and temporary injunction against the defendant is allowed. Moreover, the defendant was restrained from using the plaintiff’s trademark “Brilliant Public School”.
Dr. Reddys Laboratories Limited v. Eros International Media Limited
The plaintiff, Dr. Reddys Laboratories Limited, is a multinational pharmaceutical company engaged in the business of manufacturing, marketing and distribution of pharmaceutical, nutritional and cosmetic products and has its headquarters located in Hyderabad.
It is registered proprietor of the word mark ‘DRL’ dated 09 February 2007 in class-05. The plaintiff does its business using the ‘DRL’ mark and uses it for promotion materials, press reports, and other publications.
Defendant No.1, Eros International Media Limited, is a leading global motion movie production and distribution company incorporated in 1981. It is producing and releasing a movie (Haathi Mere Saathi) which is directed by Mr. Prabhu Somo (Defendant No.2).
The plaintiff sought an urgent interlocutory injunction to restrain the release of a feature film named ‘Haathi Mere Saathi’ via any media platforms such cinemas, OTT, etc. has disparaged the plaintiff’s registered trademark/brand ‘DRL’.
In the last week of February 2020, the plaintiff discovered the defendant media portraying the plaintiff’s wordmark/brand ‘DRL’ in the trailer of the video as a part of the name ‘DRL township ‘ in a derogatory manner.
The infringed scene contained the eradication of the organisation named ‘DRL’ for the construction of its ‘DRL Township’.
The plaintiff was aggrieved that they have thrown poor light of their mark and harmed their reputation and goodwill with a mala fide intention against their brand. The plaintiff issued a notice, on 3rd March 2020, for deletion of the scene but no reply was received.
Thus, on consideration of the facts and circumstances, the plaintiff had failed to prove a three-pronged test for granting the injunction. The plaintiff did not have a prima facie case in favour of them and the defendants had not infringed the trademark of the plaintiff.
Larsen & Toubro Limited v. Radheshyam Singh on 17 March 2020
This present suit was filed under Section 134, 135 & 27 of the Trade Marks Act, 1999 and Section 51 of the Copyright Act, 1957 for permanent injunction restraining the defendants from infringement & passing off the trademark.
The suit has been filed by the plaintiff nos. 1 & 2, which are companies incorporated under the Companies Act, 1956. Plaintiff no. 1 is a technology, engineering, construction, and manufacturing company. It is one of the largest and most respected companies in India’s private sector. L&T has an international presence with a global spread of offices. The plaintiff, over a while, has been using word/mark Larsen & Toubro/L&T as a trademark. It uses the mark in various formats/stylized, for example, Larsen Toubro, L&T, LT, LK, and this mark is duly registered in India under the Trade Mark Act, 1999.
Plaintiff no. 2 is a registered proprietor of Trademark GIC/GIC in class 9 with electrochemical control for electronic goods, products such as analogue time switches, auto reset synchronous timers, and programmable time switches under the Copyright Act, 1957.
It is also mentioned on the products that the products are manufactured by plaintiff no. 1 and marketed by plaintiff no. 2.
The defendants (Radheshyam Singh & Pradeep Jain) are engaged in selling, manufacturing, marketing, purveying, supplying, soliciting trade of various analogue time switches, electrical and electronics goods, and other allied/related products.
To the best of the plaintiff’s knowledge, the defendants are acting in collusion and in connivance of each other and started using the trademark viz Larsen & Toubro, Larsen, Toubro, L&T, LT, LK, GIC/GIC to their impugned goods and business in a combination of logo/label form.
This mark is giving false trade descriptions, identical and deceptively similar to the plaintiff’s trademark. Due to this activity of defendants, the plaintiffs are suffering huge losses in the business and reputation and all these losses are in monetary terms.
Therefore, the plaintiffs filed suit against the defendants and the court after considering the facts from both sides said that the suit of plaintiffs is decreed to the extent that the defendants, its promoters, proprietors, shareholders, directors, its agents, servants, employees, successors, assignees, licensees, etc. or any other person is permanently restrained from using the trademarks similar to plaintiffs similar and deceptively mark. The plaintiff is held entitled to appropriate damages assessed at Rs. 1,00,000/- to be paid by both the defendants jointly and severally.
Conclusion
In conclusion, it can be found that due to increase in promotion and competition among several companies, new cases and concepts are coming out so this sector is growing quickly and that’s why the Indian trademark law must be updated. New amendments may come due to the growth of the manufacturing and service sector which requires new methods of knowledge to all law pursuers and people.
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