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A trademark or trade mark is a distinctive sign or indicator of some kind which is used by an individual, business organization or other legal entity to uniquely identify the source of its products and/or services to consumers, and to distinguish its products or services from those of other entities

A trademark is a device which can take almost any form, as long as it is capable of identifying and distinguishing specific goods or services. 

A trademark may be designated by the following symbols:

(for an Unregistered Trademark, that is, a

mark used to promote or brand goods)

  (for an unregistered Service mark, that is, a mark used to promote or brand services)

 (for a registered trademark)

A trademark is typically a name, word, phrase, logo, symbol, design, image, sound or a combination of these elements. There is also a range of non-conventional trademark comprising marks which do not fall into these standard categories, may therefore be visible signs (e.g. colors, shapes, moving images, holograms, positions), or non-visible signs (e.g. sounds, scents, tastes, textures).

Indian Trademark lawIndian Trademark lawIndian trademark law provides protection

to trademarks statutorily under the Trademark Act, 1999 and also under the common law remedy of Passing Off.

Passing off is a common law tort which can be used to enforce unregistered trademark rights. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill.

Statutory protection of trademark is administered by the Controller General Of Patents, Designs and Trade Marks, a government agency which reports to the Department of Industrial Policy and Promotion(DIPP), under the Ministry of Commerce and Industry.

The law of trademark deals with the mechanism of registration, protection of trademark and prevention of fraudulent trademark.

The law also provides for the rights acquired by registration of trademark, modes of transfer and assignment of the rights, nature of infringements, penalties for such infringement and remedies available to the owner in case of such infringement.

HISTORY(Indian Context)HISTORY(Indian Context)The law of trademark in India before 1940 was

based on the common law principles of passing off and equity as followed in England before the enactment of the first Registration Act, 1875.

The first statutory law related to trademark in India was the Trade Marks Act, 1940 which had similar provision like the UK Trade Marks Act, 1938.

In 1958, the Trade and Merchandise Marks Act, 1958 was enacted which consolidated the provisions related to trademarks contained in other statutes like, the Indian Penal Code, Criminal Procedure Code and the Sea Customs Act.

The Trade and Merchandise Marks Act, 1958 was repealed by the Trade Marks Act, 1999 and is the current governing law related to registered trademarks. The 1999 Act was enacted to comply with the provisions of the TRIPS(Agreement on Trade Related Aspects of Intellectual Property Rights).

Though some aspects of the unregistered trade marks have been enacted into the 1999 Act, but they are primarily governed by the common law rules based on the principles evolved out of the judgments of the Courts.

Where the law is ambiguous, the principles evolved and interpretation made by the Courts in England have been applied in India taking into consideration the context of our legal procedure, laws and realities of India.

TrademarkTrademark According to Section 2 (zb) of the Trade

Marks Act, 1999, “trade mark 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 shape of goods, their packaging and combination of colours.” A mark can include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any such combinations

Trademark Classification in IndiaTrademark Classification in India Trademark in India is classified in about 45 different

classes, which includes chemical substances used in industry, paints, lubricants machine and machine tools, medical and surgical instruments, stationary, lather, household, furniture, textiles, games, beverages preparatory material, building material, sanitary material, and hand tools, other scientific and educational products.

These classes again are further sub-divided. The main objective of trademark classification is to group together the similar nature of goods and services. Here are the classes for product and for services.

PRODUCTS Class 1 (Chemicals) Class 2 (Paints) Class 3 (Cosmetics and Cleaning Preparations) Class 4 (Lubricants and Fuels) Class 5 (Pharmaceuticals) Class 6 (Metal Goods) Class 7 (Machinery) Class 8 (Hand Tools) Class 9 (Electrical and Scientific Apparatus) Class 10 (Medical Apparatus) Class 11 (Environmental Control Apparatus) Class 12 (Vehicles) Class 13 (Firearms) Class 14 (Jewelry) Class 15 (Musical Instruments) Class 16 (Paper Goods and Printed Matter) Class 17 (Rubber Goods) Class 18 (Leather Goods) Class 19 (Non-metallic Building Materials) Class 20 (Furniture and Articles Not Otherwise Classified) Class 21 (Housewares and Glass) Class 22 (Cordage and Fibers) Class 23 (Yarns and Threads)

Class 24 (Fabrics) Class 25 (Clothing) Class 26 (Fancy Goods) Class 27 (Floor Coverings) Class 28 (Toys and Sporting Goods) Class 29 (Meats and Processed Foods) Class 30 (Staple Foods) Class 31 (Natural Agricultural Products) Class 32 (Light Beverages) Class 33 (Wines and Spirits) Class 34 (Smokers' Articles)

SERVICES Class 35 (Advertising and Business) Class 36 (Insurance and Financial) Class 37 (Building, Construction and Repair) Class 38 (Telecommunication) Class 39 (Transportation and Storage) Class 40 (Treatment of Materials) Class 41 (Education and Entertainment) Class 42 (Computer, Scientific and Legal) Class 43 (Hotels and Restaurants) Class 44 (Medical, Beauty, and Agricultural) Class 45 (Personal and Social Services)

TRADEMARK REGISTRATIONTRADEMARK REGISTRATIONWHAT ARE THE TYPES OF TRADEMARKS THAT CAN BE

REGISTERED ?

Under the Indian trademark law the following are the types of trademarks that can be registered:

Product trademarks: are those that are affixed to identify goods. Service trademarks: are used to identify the services of an entity, such as

the trademark for a broadcasting service, retails outlet, etc. They are used in advertising for services.

Certification trademarks: are those that are capable of distinguishing the goods or services in connection with which it is used in the course of trade and which are certified by the proprietor with regard to their origin, material, the method of manufacture, the quality or other specific features

Collective trademarks: are registered in the name of groups, associations or other organizations for the use of members of the group in their commercial activities to indicate their membership of the group.

Advantages of Trademark RegistrationAdvantages of Trademark Registration1. Protects your hard earned goodwill in the business2. Protects your Name / Brand Name from being used in

a same or similar fashion, by any other business firm,thus discourages others from cashing on your well built

goodwill3. Gives your products a status of .Branded Goods.4. Gives an impression to your customers that the

company is selling some standard Products or Services5. The exclusive right to the use of the trade mark in

relation to the goods or services in respect of which the trade mark is registered.6. To obtain relief in respect of infringement (misuse by

others) of the trade mark.7. Power to assign (transfer) the trade mark to others for

consideration.

Procedure/Steps for Trademark RegistrationProcedure/Steps for Trademark Registration1. Filing of an application for registration by a person claiming to be the

proprietor of a trademark, in the office of the Trade mark Registry, within the territorial limits of the place of business in India.

2. Examination of the application by the Registrar to ascertain whether it is distinctive and does not conflict with existing registered or pending trademarks and examination report is issued.

3. Publication of the application after or before acceptance of the application in the Trademark Journal.

4. After publication if any person gives notice of his opposition to the registration within three months which may be extended to the maximum of one month.

5. If the opposition has been decided in favour of the applicant of the registration of trademark, the Registrar shall register the Trademark.

6. On the registration of the Trademark the Registrar shall issue to the applicant a Trademark Registration

7. Today, as per the Trademark Rules, 2002, the application fees (similar to a tax) are Rs. 3500 per trademark.

Term/Duration of a Trademark in IndiaTerm/Duration of a Trademark in India The term of registration of trademark is 10 (Ten)

years, but may be renewed subject to the payment of the prescribed fee, in accordance with the provisions of the Trademarks Act, 1999. An application for renewal of a trademark can be filed within six months from Constantia (Body) the expiry of the last registration of trademark.

Use of the .TM. and ® symbolsUse of the .TM. and ® symbols Generally, one who has filed an application (pending

registration) can use the TM (trademark) designation with the mark to alert the public of his exclusive claim. The claim may or may not be valid. The registration symbol, ®,may only be used when the mark is registered.

Intellectual property India websiteIntellectual property India website

http://ipindia.nic.in/tmr_new/default.htm

Trademark InfringementTrademark Infringement Trademark Infringement is a violation of exclusive

rights attaching to a trademark without the authorization of the trademark owner or any licensee. Trademark infringement mostly occurs when a person uses a trademark which may be either a symbol or a design, with resembles to the products owned by the other party. The trademark owner may begin a legal proceeding against a party, which infringes its registration.

Offences shall be punishable with imprisonment for a term of minimum of six months but which may extend to three years and with a minimum fine of fifty thousand rupees but which may extend to two lakh rupees or more. For adequate and special reasons mentioned in the judgement, the court may impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees

Trademark InfringementTrademark Infringement Example Case Example Case

Amul won trademark case in Gujarat HC in 2007Amul won trademark case in Gujarat HC in 2007

It was conclueded that Utterly Butterly Delicious Amul's name cannot be used by any other proprietor even if the company is selling goods other than that sold by the proprietor, who has registered the trademark. In a significant judgment, the Gujarat High Court has ruled that a registered trademark user has the right to restrict others using their trademark for different class or goods. 

HC's judgment was in connection with a case where the Kaira District Co-operative Milk Producers' Union popularly Amul Dairy and the Gujarat Co-operative Milk Marketing Federation (GCMMF) had filed trademark infringement cases against two local shop owners, Amul Chasmaghar and Amul Cut Piece Stores in the district court. While Kaira Union owns brand Amul, GCMMF manages the brand. 

It was on April 25, in 2007 year that the district court had passed an order that it was a clear case of infringement and restrained the two from using Amul trademark. Amul Chasmaghar however had challenged the district court's interim injunction in the HC, where justice D N Patel upheld ruling of the district court. 

ConclusionConclusion The trade mark is for protecting the name of the product or services

rather the product itself; Trade mark assures the customer about the source of a product,

though the quality of the product is not assured by the trade mark; The trade mark should be distinctive; Deceptively similar marks, geographical names etc. can not be

registered as a trade mark; In India, the Trade Mark Act of 1999 is presently in force; The term of trade mark protection is 10 years, which can be renewed

from time to time, indefinitely; Trade mark can be assigned or transmitted; Using deceptively similar marks, falsifying the mark or using

unregistered mark cause infringement under Trade Mark Act; and The penalties against offences related to trade mark can range from

fine to imprisonment.