False Trade Description of Trademark Registration

trade

Comments – The definition of “False Trade Description” is to be read in conjunctions with the definition of “trade description”.

  • Trade description which is untrue or misleading in a material respect as regards the goods or services to which it is applied.
  • Or alteration of a trade description as regards the goods or services to which it is applied, whether by way of addition, effacement or otherwise, where that alteration makes the description untrue or misleading in a material respect;
  • Or trade description which denotes or implies there are contained, as regards the goods to which it is applied, more yards or meters than there are contained therein standard yards or standard meters;
  • Or marks or arrangement or combination thereof when applied to goods in such a manner as to be likely to lead persons to believe that the goods are the manufacture or merchandise of some person other than the person whose merchandise of some person other than the person whose merchandise or manufacture they really are;
  • In relation to services in such a manner as to be likely to lead persons to believe that services are provided or rendered by some person other than the person whose services they really are;
  • Or false name or initials of a person applied to goods or services in such manner as if such name or initials were a trade description in any case where the name or initials is or are not a trademark or part of a trademark and or are identical with or deceptively similar to the name or initials of a person carrying on business in connection with goods or services of the same description or both and who has not authorized the use of such name or initials; and or are either the name or initials of a fictitious person or some person not carrying on business in connection with such goods or services, and the fact that a trade description being a false trade description within the meaning of this Act;

This definition is identical with the corresponding provision contained in section 2(1)(f) in the 1958 act, except for the addition of a provision as in sub-clause (b) to 2(1)(1) (4), relating to services. This definition arises in the context of the usage of the term in Chapter 12 providing for offences, penalties and procedure, vide section 101 to 121. Section 101 lays down the law as to when a person is deemed to apply a trademark or trade description to goods or services. In order to constitute a false trade description, the description must be one falling within one or the other categories of “trade description” set out in section 2(1) (za) and is untrue or misleading in a material respect to one falling within one or more paragraphs (2) and (5) of section 2(1)(1).

The law does not expressly state whether the trade description should be something in printed or written form. It would thus appear that the law would include even verbal description. Indeed in the context of infringement of trademarks, section 29(9) expressly enacts that “the trademark may be infringed by the spoken use of those words as well as by visual representation”. Evidently, therefore, the policy of the enactment would seem to be to prevent the sale of goods to which a false trademark or false trade description is applied in any manner or form and, as such when the description, even though verbal or is indirectly applied, is used in manner likely to mislead, it would fall within the scope of “false trade description”.

In Cameron versus Wiggins, the purchaser has asked for New Zealand mutton and the accused, wrote the letters “N.M.” on the invoice in response to a request by the purchaser to indicate that it was New Zealand meat. It was held that the accused had applied the trade description “New Zealand meat” and that evidence of verbal description was admissible. Similarly in Coppon  versus moore, where an inspector asked for English ham and the shop assistant supplied American ham, saying that they were Scotch hams and wrote the word “Scotch” on the invoice, it was held that a false trade description had been applied to the goods. It is also obvious that trade description continuing any untrue or misleading statement in a material respect in an advertisement would fall within the scope of the “false trade description”.

Untrue or misleading in a material respect

A trade description, as set out in section 2(1)(za), becomes a false trade description within the meaning of section 2 (1)(1), when the trade description is untrue or misleading in a material respect as regards the goods or services to which it is applied. It is well settled that “Mens rea” is not necessary to be proved and as such absence of dishonest intention is itself not sufficient to establish that the accused acted innocently and without intent to defraud. In use of words “non-brewed vinegar” was held to be a false trade description, because the word “vinegar” could apply only to a product of double fermentation and that when used alone meant malt vinegar obtained by fermentation. As such, the use of such expression ‘not brewed” in relation to a preparation containing 4-6% acetic acid and caramel, is a false trade description, even if it is shown that the description has been accepted by the trade. Lord Goddard C.J. held that “if the description is false, it matters not whether other people use it or how generally it may be used”.

The section uses the phrase “untrue or misleading in a material respect”, which would seem to indicate that a minor variation between the description and the actual composition of the goods may not constitute a “false trade description” e.g., goods marked “woolen” when admixed with a small percentage of cotton to strengthen the fibers, chemicals containing small percentage of impurities etc.,

Trade description may be false, although scientifically correct

The fact that a description as applied to particular goods is scientifically correct will not prevent it from being a false trade description and the converse is equally true. Many trade names are of very old standing and it might be that with the advance of science some of them will become scientifically incorrect, but proof of that incorrectness will not cause them to be false trade descriptions of trademark if they continue to be understand in the trade as indicating the same substances which they did when those terms first came into use. An example of such incorrect use of a scientific term is ‘sodium hyposulphite’ (photographer’s hypo) for sodium thiosulphate. In such cases the term, although significantly incorrect has acquired a conventional or secondary meaning and has been ‘consecrated by common use’, e.g. ‘Eau de Cologne’; ‘Roman pearls’; and ‘Lavender water’.

False or fictitious name or initials

The application of a false name or initials in such manner as if it were a trade description where the name is not a trade name and is that of a fictitious person not carrying on business, is a false trade description. Where an important of cycles from Glasgow had been selling them stamped with the name of a non-existent company, it was held that the description was a false trade description and the plaintiff was dis-entitled to any relief on that ground. The deceptive use should be such as likely to mislead reasonably well-informed and circumspect customers and also to effect their economic behavior.

Permissible variations to be observed by criminal courts

The use of ‘false trade description’ in relation to goods or services is an offence under the Act. See section 103 of trademarks Act, 1999. Section 121 empowers the Central Government to issue instructions for the limits of variation as regards the number, quantity, measure, gauge or weight, which are to be recognized by criminal court as permissible in the case of any goods. In this connection, the notification issued by the Central Government under section 95 of the corresponding provisions of trade and Merchandise Marks Act, 1958 in respect of cotton piece goods, cotton yarn and cotton thread, which continues to remain in force, is applicable. See appendix of the notification.

As indicated above, there are may trademark names which are old, but which are scientifically incorrect, but proof of the incorrectness will not cause them to be false trade descriptions if they continue to be understood in the trade as indicating the same substances which they did when those terms first came into use. Such terms are regarded as having acquired a secondary meaning and consecrated by common use. India Robber, Indian Ink, Plaster of Paris, Portland cement, Eau de Cologne, Turkish Towels, Lavender water, French fries etc. are examples of such use. See also Merchandise Marks Manual (1957), 5th edition, which contains place names which are accepted as devoid of any geographical significance and also names which, though have no geographical significance, are required to have counter indication of origin, such as “Benedicine” or “Munich beer”; “Burgundy” “Amritsar shawl” etc.,

Law applicable to unregistered trademark also

For the purpose of Chapter 12, which makes provisions for offences and penalties, a trademark is defined to both registered and unregistered. Accordingly, falsifying and falsely applying trademarks, trade descriptions etc. and selling goods or providing services to which false trademark or false trade descriptions is applied are all offences under the Act – see sections 102 to 104 of the Act. The only exception is as provided in section 110(B), where the alleged offence relates to a registered or an unregistered trademark and the act or omission is permitted under any other law for the time being in force. In such case, no act or omission is deemed to be an offence.

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