Definition of trademark with some real time examples

Definition of trademark

definition

Trademark means a mark capable of being represented graphically or pictorial and which is capable of differentiating the goods or services of one individual person from those of other rivals and may include appearance of goods, their packaging methods and used combination of colors; and

  • In relation to chapter 12 (other than section 107) a registered trademark or a mark used in relative goods and services for the usage of indicating or so as to indicate a connected 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 proprietor to be used in relation to goods or services for the purpose of indicating or so as to notify 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 condition of the identity of that person, and includes a certification trademark or collective mark.

The definition corresponds to section 2(1)(v) of the 1958 Act with some important changes. This definition has enlarged the concept of trademark to mean a mark capable of being represented graphically and to include shape of goods, their packaging and combination of colors. The expression would apply to both goods and services. Within the scope of the definition is also included certification trademark as well as collective mark. In relation to Chapter 12, dealing with offences and penalties, (other than section 107, which makes provision for penalty for falsely representing a trademark as registered) the expression trademark would include registered as well as unregistered trademarks. The definition is comprehensive to include trade dress, which ‘involves the total image of product, including features such as size, shape, color combinations, texture, or graphics. See Vision Sports Inc. verses Melvile Corp., where it was held that “trade dress protection is huge in source than trademark protection, both because it prevents features of packaging and product design that cannot be registered for trademark protection and because evaluation of trademark infringement claims requires the court to focus on the plaintiff’s entire selling image, rather than the narrower single facet of trademark. The present definition in the Trade Marks Act, 1999, codifies the judicial approach in the matter. The representation of a trademark for goods or services should be in a manner that can be put on the register. The essence of a trademark is that it is some distinctive thing, which points out that the goods are on the goods of AB. A trademark has no sense except in connection with a trade. A quality mark can be a trademark. The test is whether the applicant for the mark can be said to be trading in goods. There can be a trademark for a natural product, which undergoes no treatment before sale.

Mere description of marks in words

On the question whether a trademark may consist of a mere description of the mark in words, it has been held in Swizzels Matlow Ltd’s Application that is was inadequate to constitute a graphical representation. In this case, the application was for a three dimensional mark containing the description, viz. “the trademark consists of a circular compressed tablet bearing a raised heart outline on both flat surfaces and containing within the heart outline on one side any of  several different words or phrases”. Similarly description of the mark as “a chewy sweet on a stick” was held to be not capable of being represented graphically.

Mark and Design distinguished

A trademark and a design are two quite different things, ordinarily speaking. A design forms part of the goods themselves. A mark is something which is extra, which is added to the goods for the purpose of denoting the origin of the goods and speaking generally, of trade and design, the same thing is not a trademark and design. The fundamental difference between a trademark and design is that trademark signals to the mind the source or identifies of the producers or manufacturer of the article whereas ‘design’ appeals to the eye and attracts the consumer or purchaser. It need not necessarily reveal the identification of the producer to the consumer though in certain well known designs the identification even may get conveyed. The registration of design is governed by the Designs Act, 2000. Unlike the exclusive right in a trademark, which is perpetual unless abandoned by the proprietor, the exclusive right in respect of a registered design is for the duration of registration, which is limited.

Capable of being represented graphically

Graphical representation means the representation of a trademark for goods or services represented or capable of being represented in paper from and includes representation in digitized from – Rule 2(1)(k) of the Trademarks Rules, 2017.The purpose of graphical representation has been explained thus: “it is essential for traders to be able to identify with clarity what the registered trademark is. The first question that arises when infringement is in issue is whether or not the alleged infringing make is identical to the trademark registered. If it is, and is used in relation to the same goods, the trademark has an absolute monopoly. Where, however, the mark is not identical but merely similar, the monopoly is restricted to uses, which create the necessary likelihood of confusion on the part of the public. This is the fundamental aspect of the law and it is for this reason that the graphical representation, being the means by which the trademark is defined, must be adequate to enable the public to determine precisely what the sign is that is the subject of registration”.

Capable of distinguishing the goods or services

The tribunal will consider the definition whether the word is one which is so apt for normal description of the article that a monopoly in the use of it should not be acquired and will refuse registration if it will unduly fetter the freedom of action of other traders. Thus trademark registration will be refused where the mark does not possess sufficient inherent capacity to distinguish and there is no evidence of factual capability to distinguish.

For the purpose of indicating or so as to indicate

When the Act requires that a mark to be qualified for registration as a trademark must have been used for the purpose of indicating the origin of the goods in connection with which it is used. “ I do not think that any deliberate resolution to that effect on the part of the user of the mark is contemplated. It is enough if in practice the mark has been so used as to denote the origin of goods. I do not think it is essential to prove in addition that the market has accepted it as a distinguishing mark, although such evidence may be valuable in fortification”.

Connection in the course of trade

The expression for the purpose of indicating or so as to indicate a connection in the course of trade” is wide enough to cover any person who handles the goods commercially in the course of trade; thus it will include an importer, manufacturer, selector, wholesaler or retailer. The connection could be by virtue of manufacture, selection, dealing with or offering for sale. “A connection in the course of trade in my opinion means, in the definition section, an association with the goods in the course of their production and preparation for the market. After the goods have reached the consumer, they are no longer in the course of trade. Trading in them has reached its objective and its conclusion in the acquisition by the consumer”. In the same case, it was further held that the limitation in definition of the Act of 1938 “in the course of trade” sufficiently, in my opinion, preserves the essential and characteristic function of the mark. The proprietor is required to be a trader who places the goods before the public as being his goods. This is the vital connection. It is to be noted that “connection in the course of trade” does not cover advertisement Medias like gifts of goods wholly different from the goods of the proprietor of the mark. It will not include repair service, once the goods have reached the consumers. There is no doubt that a person dealing with the goods of another may have goodwill in business of dealing with them. An agent who is agent for the sale of goods of others may have goodwill in his agency business.

In Lacteosote Ltd. Ld V. Alberman, where the plaintiff registered his manufacturers label as plaintiffs trademark and tried to prevent the import of the manufacturer’s goods by the third person with the same work, it was held that the registration was bad. It I possible for an importer to get a valuable reputation for himself and his wares by his care and selection or his precautions as to transit or storage or because his local character is such that the article acquires a value by his testimony as to his genuineness; and if therefore goods, though of the same make, are passed off by the competitors as being imported by him he will have a right of action.

In Westend Watch Co. Versus Berna Watch Co., it was held that the importer, who by popularizing and raising the sale of goods under a particular mark prevents a huge popularity for the mark in relative to the goods provided by him, is entitled to the prevention of the court for that mark in the country of importation, even against the producer of the goods. Importers can only protect marks indicating importation by them. If importation is not indicated by the marks but otherwise, as for instance by the style and the name under which they trade as importers, they could not sue to restrain the use of the marks, a trademark which represents not the importers reputation but the manufactures, must therefore be under the control and protection of the latter, not of the former. In Impex Electrical Ltd versus weinbaum, it was observed that “if a manufacturer having a mark abroad has made goods and imported them into this country with the foreign mark on them, the foreign mark may acquire in this country this characteristic, that it is distinctive of goods of the manufacturer abroad. If that be shown, it is not after words open to somebody else to register in this country that mark, either as an importer of the goods of the manufacturer or for goods of manufacturer or for any other purpose.

Used or proposed to be used

The mark applied for may be one which is already in use or may be one which is proposed to be used. But if the applicant does not use the mark he must have at the time of registration “some definite and present intention to deal in certain goods or description of goods, and not a mere general intention of extending his business at some future time to anything which he may think desirable”. The intention must be to use the mark as a trademark by the applicant himself in respect of the goods for which registration is sought. Under section 56(1), the application in India of trademark to goods to be exported from India would constitute use of the definition of trademark in India.

Right as proprietor to use the mark

There is no definition of the word ‘proprietor in the Act or the Rules. However the expression registered proprietor in relation to a trademark has been defined to mean “the person for the time being entered in the register as proprietor of the trademark”. Section 28 enacts that the registration of the trademark, if valid, shall give to the registered proprietor the exclusive right to the use of the trademark in relation to the goods or services in respect of which the trademark is registered and to obtain relief in respect of infringement of the mark in the manner provided in the Act. On the other hand the proprietor of an unregistered trademark is not entitled to institute proceedings for infringement but the common law right of action against the person passing of goods or services and the remedies in respect thereof are specifically safeguarded under section 27.

In Vitamins Ld.’s Appl. (No.2), Lloyd-Jacob said: “A proprietary right in a mark sought to be registered can be obtained in a number of ways. The mark can be originated by a person or can be acquired, but in all cases it is necessary that the person putting forward the application should be in possession of some proprietary right which, if questioned, can be substantiated”. Where another person in the same way of business had already put forward a claim to be the proprietor of the identical definition of trademark and had withdrawn the application for trademark merely to avoid controversy and expense the party who had by opposition secured that result cannot claim a few weeks later proprietary rights in the same mark merely because of the other person’s withdrawal of his application. It would seem, therefore, that as between two persons who apply to register the same mark or two nearly resembling marks, both marks being proposed to be used upon the same goods or description of goods, the person who files the application which is prior in point of time, is, in the absence of any other circumstances, entitled to have his mark registered and to oppose the other mark being registered or if it has been registered, to have the entry expunged on the ground that it was wrongly made in the Register.

Identity of the proprietor

Section 2(1) (zb) (2) uses the expression “with or without any indication of the identity of that person” in the definition of “trademark”. The function of a trademark is to give an indication to a purchaser of the trade source from which the goods come or the trade hands through which they pass on their way to the market. Though the purchasers are aware of the trademark and as a warranty that the goods come from the particular manufacturer of the goods with which have hither to been pleased, they may not know the identity or name of the maker of the goods. A person whose name is not known but those mark is imitated is just as mush injured in his trade as if his name was known as well as his mark. His mark, as used by him has given a reputation to his goods. His trade depends greatly on such reputation. His mark sells his goods. A rival who imitated his mark can hardly help deceiving buyers and injuring him, and fore such injury, if proved he can obtain redress. It is not necessary for the plaintiffs to prove that the ultimate purchasers, who are likely to be misled, know the name of the plaintiff’s firm. Whenever a designation is used on the goods by a person whereby the goods get a reputation, he is understood to be the maker whether the customers know his name or not. It may be true that the customer does not know or care who the manufacturer is, but it is a particular manufacture that he desires and it is the trademark which would give him his information.

Function of trademark

The principle protection of fair trade has been simplified and developed by legislation so as to enable a trader who has established that a mark, device or the like, really denotes his goods only, to register his title and to avoid the necessity of proving it against every defendant. It is held that the function of a trademark is to give an indication to the purchaser or a possible purchaser as to the manufacturer or quality of goods – to give a notification to his view of the trade scope from which the goods come, or the trade hands through which they pass on their way to the market. A trademark after all is simply intimation upon the goods that they are the goods of the owner of a mark. That is in one compendious phrase the entire law of trademarks. It is a legal right to have a particular trademark to designate a commodity” – This right cannot properly be described as a copyright, I is in fact a right, which can be said to exist only and can be tested only by its violation. It is a right which any person designating his wares or commodities by a particular trademark, as it is called, has to prevent others from selling wares which are not his with the trademark, in order to mislead the public and so incidentally to injure the person who is the owner of the trademark. A trademark only confers, on the person whose mark it is, a right to say, “Do not imitate my mark in connection with goods like mine, so that yours may be mistaken for mine”. There is no exclusive right to the mark, except in connection with goods to prevent deception, or mistake. Still less does a trademark confer any exclusive right to make or sell the kind of the goods denoted by the mark. Unless a person has a patent for his goods, similar goods may be made and sole by anyone. The European Court of justice held that “according to the settled case law of the Court, the essential function of the trademark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any cause of confusion, to differentiate the product or service from others which have some another origin of source. For the definition of trademark to be able to fulfill its necessary role in the system of undistorted competition which the Treaty (establishing EEC) seeks to establish, it must offer a guarantee that all the goods or services applying it have implemented under the control of a single undertaking which is responsible for their quality. The adequate protection to trademark is necessary from the point of view of consumers has been highlighted by the Delhi High Court in Hindustan Pencil P. Ld., versus India Stationary Products Co.

Trademark do not create monopolies

Not infrequently, courts, lawyers and clients refer to trademarks as creating monopolies or discuss them in terms which suggest that that is so. But trademark rights do not create monopolies in the true sense. Although as discussed below, trademarks give rise to exclusive rights as an indication of source and quality of goods; it is only when relating to goods that they have life or value. A trademark is not a type of copyright. A proprietor does not obtain a monopoly in the mark as such. Mere copying a mark, for example by writing it down on a piece of paper, even in the course of business, does not per as infringe any trademarks rights. The result is the same or similar marks can be owned by different proprietors in respect of dissimilar goods or businesses. This is an everyday experience. The name “Lloyds” is used as a mark by amongst others, a pharmacy chain, a bank and an insurance market, and the mark “Granada” has been used by unrelated companies in respect of motor cars and television rental business. A mark is always associated with the particular goods. It is for this reason that there is an International classification of goods for trademark application purposes.

Quality Concept

In the same case the Chancery Division went on to explain: “A trader may decide that he wants to sell his products as being of, say, two different qualities. He may choose one trademark for one quality and another mark for the other. The first will be used by the proprietor for saying “these are goods from me which are of first quality and which I am prepared to stand by”, while the other will be shorthand for the equivalent statement in respect of the second quality goods.  Similarly a trader may wish to sell some goods under definition of a trademark and others without a trademark. It is only in respect of the former that a sign will be used saying “these goods are from me and are of a quality which I am prepared to stand by. So long as there is a proper connection in the course of trade between the proprietor and the goods, there could be use of more than one trademark alongside.

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