Author: Priyanka Gambhir, IV year of B.B.A.,LL.B.(Hons.) from Law College Dehradun, Uttaranchal University
Abstract
This article is for knowing what the trademark is under the Trademarks Act,1999. In this article, a trademark is described. The article also contains all the different types of trademarks. Further, the passing off trademark and trademark infringement is explained with the difference between them. The objective of the Trademarks Act,1999 is to register the trademarks and provide protection to those trademarks for goods and services and another objective is to prevent fraudulent use of the registered trademarks. The elements of a passing-off trademark are briefly stated in this article. Types of trademarks infringement are also described with their meaning.
About trademark
A Trademark is a known branch of intellectual property rights. The rights permit the people to carry on the ownership rights of their innovation-al product and creative activities.
A trademark consists of a name, word, or sign that draws a distinction of the goods from the goods of the other businesses. Marketing of the services and the goods by the procedure becomes way easier with a trademark as the recognition of products with a trademark is established and not difficult and simple to understand. The owner can check and prevent the use of his mark or sign by another rival(competitor).
The trademark is that tool that intensifies the financing of the business. A trademark every time is not a brand, but the brand is always a trademark. Sometimes there might be some unsureness between the trademark and brand.
The brand name can directly be a symbol or logo, but the trademark is a distinctive sign or mark or a guide in a business organization as it has a broader implication than the brands. People get more influenced by the distinguishing trademark that imitates the quality of the product. The trademark can be a logo, picture mark or a slogan.
In India, the trademark act, 1999 and the rules reported along with it, is the main source of trademark law. Also, India is the party to the TRIPS convention, and clauses of that convention also form a key source of the trademark law in India.
The trademark act,1999 states that the trademark can be eligible and registered when the mark fulfils the following conditions:
The selected mark must be proficient in being signified graphically
It should be proficient in characterizing the goods or services of one innovativeness from those of others.
It should be used or planned to be used in relation to goods or services to represent or so as to indicate a linking in the course of trade between the goods or services and some person has the right to use the mark with or without individuality of that person.
Section 2(1) (zb) of the Trademark Act,1999, says that a trademark means that the mark which is skilled or is capable of being signified graphically and it is capable of distinguishing the services and goods of one person from those of the others and it may also include the shape of goods or the combination of colours or the packaging of the goods.
The act also provides the provisions for the infringement of the trademarks, it provides punishments and penalties for the offenders too. The Trademark Act, 1999 also deals with the protection, registration, and prevention of deceitful use of trademarks. It bonds with the rights of the holder of the trademark, remedies for the damage as well as modes of transference of the trademark.
TYPES OF TRADEMARKS
The main types of trademarks are as follows:
Generic Mark
The generic mark mainly represents the everyday portrayal of the product or its supplier. They could be mutual words such as "shoes," "watch," or "food." But since these words fit into the public, for example, a restaurant, it cannot be noted as the trademark for the term "restaurant." And correctly so, as such would result in unfair domination over the whole F&B industry. Every other formation could possibly be forced out of business. Hence, a company should add a supplementary modifier restricted to its products for it to prosper for a generic mark.
Suggestive Mark
Suggestive marks record words that suggest the qualities of a product deprived of unavoidable relating to it in an up-front sense. Thoughts from the consumer's conclusion are that the primary assumption is categorizing a mark as suggestive. A service mark is any kind of symbol name, sign, device or word which is purposely used in trade to identify and distinguish the services of one dealer from others. These marks do not cover substantial goods, but only the distribution of services. Service marks are used in day-to-day services such as sponsorship, management and investment, hotel services, etc. A service mark is likely to play a serious role in endorsing and selling a product or service. A product is directed by its service mark.
Descriptive Mark
A Descriptive Mark applies merely to the merchandise. But since these words are considered part of the global language, they are still non-registerable. However, connecting a signifier to describe a notable quality of the product could qualify it for trademark security. Descriptive marks use terms that only describe the good or service. This may well be a mark that utilizes the colour, smell, or ingredients of a good or service. For illustration, the term SOFT is used to define towels. Another example could be the COLD AND CREAMY for the ice cream.
An only descriptive mark cannot be recorded unless it obtains uniqueness. The mark must be enormously used in trade for at least five years before it will acquire any kind of exceptionality. Advertising authorities like to use descriptive marks because it makes it easy for the consumer to recognize the attributes of a good or service, struggle with the urge to take this advice. Because a descriptive mark is weak, it will require a boundless pact of time, effort, and money to police the mark's usage in business while it attempts to gain individualism.
Arbitrary Mark/Fanciful Mark
An Arbitrary Mark draws words or phrases from the everyday language. However, these words should absolutely be unrelated to the products they specify. The red flag then becomes the increased cost of advertising strategies. Efforts should focus on socializing the audience with the new semantic association. However, this should not discourage, as success would mean noteworthy returns. Let's say, for example, Apple, a brand named after a fruit. It sells electronic products well known not just as extra luxurious devices, but also quite fatefully as complex goods. A significant portion of their success is attributable to the collaboration of their effective advertising and careful Intellectual Property organization.
The fanciful trademark is certainly the easiest one to record. It only wants a new word that does not currently hold any meaning to the general public. Although it is easier to file, unbelievable marks require informed consideration, too. In precise, the company should cautiously examine how the viewers would receive the brand. It is best to have careful research on whether it would be easy to think of, spell, or speak. Brands would most probably want their work to gain positive acknowledgements, so companies would also consider their fanciful mark's cultural implications. As it can be seen that what kind of the mark we select gives a big influence on the amount of defence, it has afforded, so we must choose a strong one.
The passing off and infringement of the trademark
PASSING OFF
Passing Off means when a person trades his goods as the goods of another then it is called passing off trademark. The opinion on passing off is that no one has the right to signify his goods as the goods of somebody else. The passing off is generally used for the protection or to upkeep the goodwill that is attached to an unregistered trademark. When the trademark has been registered by the owner and infringement happens, then it becomes a suit for infringement, but if the trademark is not recorded and then infringement happens, it becomes the situation of passing off.
The law of passing off changed over time. Earlier it only applied to the goo It now, also, extends to the business and non-business activities, trade, and services. It similarly applies to the forms of unfair trade and unfair competition where the goodwill related to the activities of another person is injured.
According to Duhaime’s law dictionary, Passing Off is “making some false representation likely to induce a person to believe that the goods or services are those of another. [i]”
The law of passing off is given under Section 134 1(c) of the Trademark Act,1999.
The section is as follows:
(c) for passing off arising out of the use by the defendant of any trademark which is identical with or deceptively similar to the plaintiff’s trademark, whether registered or unregistered shall be instituted in any court inferior to a District Court having jurisdiction to try the suit.[ii]
The passing off law prevents a person from concealing his goods or services as that of another person.
In simple terms, passing off means when a trader or some other person make a false depiction to his/her customer or buyer, to make him/her have faith in that the goods or services he/she is providing are of another individual.
Elements of Passing-Off
In the Case-law of Reckitt and Colman Ltd. vs. Borden Inc.[iii], the House of Lords gave the three main elements are as follows:
1. Reputation
2. Misrepresentation
3. Damage
It stated that the plaintiff must set up that:
The Goodwill is attached to his/her goods/services.
The person should be able to prove that the misrepresentation is done to him by the defendant.
The person should also, prove that he/she has suffered the loss due to the defendant’s misrepresentation.
The Modern Elements of Passing-Off are mentioned in Honda Motors Co. Ltd v/s Charanjit Singh and others[iv] which are as follows:
1. Misrepresentation- It is made by a person in the course of trade
2. To potential customers of his/her final clients of goods or services supplied by him/her
3. To harm the Goodwill of another individual’s business
4. Origins the real harm to the plaintiff’s business Goodwill
The passing off arises only when there is any misrepresentation or harm to the plaintiff’s reputation. Under In this action, the plaintiff must be able to prove that the trademark he/she is using for their business has a dissimilar individuality for his/her product and if somebody uses the same thing, it will create misunderstanding in the minds of people and it will be a harm to his/her business status.
In Cadila Health Care v. Cadila Pharmaceutical Ltd.[v], The Supreme Court apprehended that it’s insignificant whether the plaintiff and the defendant trade in the same field or in the same or similar goods. The court laid down certain conditions to see and regulate passing off of an unregistered trademark:
The nature of the marks (word, label, or composite);
The degree of similarity between the marks;
The nature of products for which the trademarks are used;
Similarities within the nature, atmosphere, and performance of products of competing traders;
The class of buyers who are expected to buy products bearing the marks;
The technique of purchasing the goods or placing orders; and
Further circumstances which will be relevant.
TRADEMARK INFRINGEMENT
Trademark Infringement is when an individual makes unlawful use of a trademark. As detailed above, the law of passing off is for unregistered trademarks though trademark infringement is for the registered trademarks. Section 29 of the Trademark Act 1999 deals with trademark infringement. It says that if a person practices with the same trademark which is registered by another corporation or individual and generates misunderstanding in the minds of people, it will be legally responsible for the trademark infringement. Simply to state it, it means when an unlicensed being used a trademark that is 'identical' or 'deceptively similar to a recorded trademark, it is known as infringement.
Types of Infringement of trademark
Direct Infringement
It is defined by Section 29 of the Trademarks Act,1999. Main elements of Direct Infringement of trademark:
1. The necessity of an unauthorized person i.e. who is not the owner of the registered trademark is one of the main essentials.
2. Identical or dishonestly similar: This means that the test for determining whether there is a chance for confusion among the public.
3. Registered Trademark: this element says that there can be any infringement of a registered trademark.
4. Goods or Services: For the infringement of trademark, the goods or the services must be similar to the goods/services of that registered trademark.
Indirect infringement
Indirect Infringement has no provision in the Trademarks Act,1999 but that does not mean that there is no liability for the indirect infringement. The principle of indirect infringement is based on the universal law principle.
There are largely two forms of indirect infringement:
a. Vicarious liability
According to section 114 of the trademarks act, it says that if a company commits an offence under this act, the company will be liable. So, every person responsible for the company will be liable except for those who acted in good faith and had no knowledge of the infringement.
The essentials of vicarious responsibility are as follows:
1. When the person can control the activities of the major infringer.
2. When the person knows about the infringement and contributes to it.
3. When the person may arise financial gains from that infringement.
The only exception in this is when the company did it in good belief and had no knowledge about the infringement.
b. Contributory Infringement
There are three basic elements under this infringement are as follows:
1. The person knows of the infringement
2. When the person materially contributes to direct infringement
3. When the person induces the principal infringer to commit infringement
There is no exception under this infringement since there exists no chance of the act to be in good faith in this kind of infringement of trademarks.
Difference between the Passing Off and Infringement of Trademark
1. Passing off and trademark infringement can be poles apart. Trademark Infringement offers safety to registered goods and services whereas Passing Off offers defence to unregistered goods and services. This is one of the significant differences between Passing Off and trademark infringement.
2. The other difference is that in Passing off the respondent doesn't have to use the trademark of the plaintiff to carry an action of passing off but then again in trademark infringement, it is significant to use it.
3. In the instance of trademark infringement, the burden of proof rests on the plaintiff which is not similar in the matter of passing-off.
4. Passing off is a common law remedy, however, Trademark infringement is a statutory remedy.
5. For trademark infringement, a suit under criminal remedy is rather easy as related in the case of Passing off.
6. In case of Passing off, the remedy has to be sought under Section 20 of Civil procedure code 1908, although, trademark infringement suits can be resolved under Section 134 of the Trademarks Act 1999.
7. For trademark infringement registering is important while for passing off Goodwill, damage, misrepresentation is significant.
8. From time to time the same facts give rise to entitlements for both trademark infringement and passing off.
Conclusion
The Trademarks Act,1999 offers, inter alia, for registering service marks, filing of multiclass requests, the term of registration of a trademark as well as the appreciation of the concept of well-known marks and many more concepts. Under the Trade Marks Act, both civil and criminal remedies are at the same time available against infringement and passing off. Infringement of trademark is an abuse of the exclusive rights approved to the registered owner of the trademark to use the same. A trademark is said to be infringed by a person, who, not being a legalized user, uses an identical/ similar/ misleadingly similar mark to the registered trademark without the permission of the registered proprietor of the trademark. Infringement of a trademark is a cognizable offence and criminal proceedings can be originated against the infringers. Passing-off essentially happens where the reputation in the trademark of party A is embezzled by party B, such that party B misrepresents as being the owner of the trademark or having some association/relationship with party A, thereby damaging the goodwill of party A.
[i]Duhaime’s law dictionary, the legal definition of Passing Offhttps://lawcirca.com/what-is-the-difference-between-passing-off-and-infringement-of-trademark/
[ii] Section 134 (1)(c )https://indiankanoon.org/doc/933825/
[iii][1990] 1 All E.R. 873
[iv]101 (2002) DLT 359, 2003 (26) PTC 1 Del
[v]2001 (2) PTC 541 SC