trade marks and trade names

TRADE MARKS AND TRADE NAMES

Dr. Basavaraj K. Nanjwade M.Pharm., Ph.D., (LLB)

Associate ProfessorDepartment of Pharmaceutics

KLE University

BELGAUM - 590010

By

11/11/2008 Department of Pharmaceutics 2

TRADEMARKS AND TRADE NAMES

It deals with good will attached to marketing symbols, trademarks, trade names or get up by actual use in relation to some product or service

Examples – Reebok, Mc Donald’s, Nike, Levis etc.

The Trade Marks law is contained in Trade Marks Act, 1999


TRADEMARKS

• Trademark is a symbol that indicates who is responsible for the goods placed in the market

• Trademarks help to distinguish between the goods of competing traders

• Trademark helps a customer to buy goods of a certain quality (e.g. color, size, weight, fragrance, taste.)


TRADEMARKS

• Trademarks must be clear and distinct from each other

• Trademarks may be in form of a letter, numeral, whole sentence, picture, combination of words and devices, label etc.

• Trademark may also be three-dimensional (e.g. neck of bottle)


TRADE NAMES

• Trade names are names, terms or designations that serve to identify and distinguish an enterprise and its business activities from those of other enterprise and its business activities

• Whereas the trademark distinguishes the goods or services of an enterprise, a trade name identifies the entire enterprise and symbolizes the reputation and goodwill of the business as a whole.


TRADE NAMES

• The main reason for protecting trademark and trade names against infringement is that the public might be misled into thinking that two separate enterprises using same or confusingly similar trademark or a trade name constitute one and the same enterprise

• It is not only harmful to the consumers but it also permits the infringing enterprise to benefit unfairly.


SERVICE MARKS

• Where a trademark is used in connection with services, it may be called “service mark”.

• Service marks are used by hotels, restaurants, airlines, tourist agencies,

laundries and cleaners etc.


TRADE MARKS ACT, 1999

INTRODUCTION

• Patents, designs and copyright are protected only for a limited period. On the other hand, in general, a registered trade mark can be protected in perpetuity subject only to the following conditions:

It is used and renewed periodically andThe registered proprietor takes prompt

action against infringers.


TRADE MARKS ACT, 1999

• First TM registered in UK under No. 1 of 1876 consisting of red equilateral triangle in respect of alcoholic beverage is still in force.

• The present Trade Marks Act, 1999 has replaced the Trade and Merchandise Marks Act, 1958. And the Trade Marks Act, 1999 has been brought into force only on 15th September 2003. The Trade Mark Rules, 2002 are passed under the Trade Marks Act, 1999.


OBJECTIVES OF THE TM ACT, 1999

A comprehensive review of TM Law was required in view of –

Developments in trading and commercial practices

Increasing globalization of trade and industryThe need to encourage investment flows and

transfer of technologyNeed for simplification & harmonization of trade

mark management systems and To give effect to important judicial decisions


TM Act, 1999 was passed with objectives

a) To provide for registration of trade mark for services, in addition to goods;

b) Registration of trade marks, which are imitation of well known trade marks, not to be permitted, besides enlarging the grounds for refusal of registration;

c) Amplification of factors to be considered for defining a well known mark;

d) To provide only a single register with simplified procedure for registration and with equal rights;



e) Providing for registration of “collective marks” owned by associations;

f) Providing an Appellate Board for speedy disposal of appeals ad rectification applications;

g) Providing enhanced punishment for the offences relating to trade marks;

h) Prohibiting someone else’s trademark as part of corporate names, or name of business concern;



i) Provision for filing a single application for

registration in more than one class;

j) Increasing the period of registration and renewal from 7 to 10 years;


MEANING AND DEFINITION OF TM

• At times the consumers are duped when they buy commodities presuming them to have originated from a certain identified source, when actually they have not, and after buying such commodity it is found to be substandard.

• Examples: Parachute Oil, Fair and Lovely cream, Lifebuoy soap etc. have many look-a-likes in the market.



• In such case, the reputation of the trader/manufacturer suffers if spurious goods are sold as those originating from him.

• Therefore, the interest of consumer and the trader can be saved if a definite symbol which marks out the origin of goods from a definite trade source is attached. Such symbol is called a trade mark.

• E.g. ‘M’ of Mc Donald written in Yellow in a peculiar shape is a TM. Such symbol is called as TM.



• Trade Mark is a visual symbol in the form of- A word, device or labelApplied to articles of commerceWith a view to indicate to the purchasing

public that They are goods manufactured or Otherwise dealt in by a particular person or

particular organization As distinguished from similar goods

manufactured or dealt by others



• TM is a visual representation attached to goods for the purpose of indicating their trade origin.

• Examples: ‘Lakme’ distinguishes the goods of Lakme Company from that of ‘Revlon’.



• A person who sells his goods under a particular trade mark acquires limited exclusive right to use of the mark in relation to those goods.

• A trade mark may be registered or unregistered. An unregistered trade mark is called common law mark.

• A trade mark when registered gets a stable existence. A registered trade mark can be in relation not only to its existing use but also for a proposed use.



• The proprietor of an unregistered trade mark shall not be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trademark.

• However, such proprietor of unregistered trade mark shall have common law remedy to take action against another person, for passing off goods as goods of the proprietor, or passing off services as services provided by proprietor.


STATUTORY DEFINITIONS

• MARK: Section 2(1) (m) of TM Act, 1999 defines ‘Mark’ as “Mark includes a – Device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packing or combination of colours or any combination thereof.”

Example ‘M’ – written in a particular style with yellow colour for MacDonalds’; 555/777 numerical used for detergent soaps; ‘signature’ used as a mark for alcohol etc.



• TRADE MARK: Section 2 (1) (zb)Trade mark is defined as a mark capable of being represented graphically and that is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packing and other combination of colours. E.g. Colgate, Bata, Pantene etc.



• SERVICE MARK: Section 2 (1) (z)It means service of any description that is made available to any potential users and includes the provision of service in connection with business of any industrial or commercial matters such as banking, communications, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, loading’ entertainment’ amusement, construction, repair, conveying of news or information and advertising.



• WELL KNOWN TRADE MARK: Section 2(1) (zg)Well known trade mark in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services. Example: Coco Cola, Frooti, Bata.



• COLLECTIVE MARK: Section 2(1) (g) “A Trade mark distinguishing the goods or services of members of an association of persons not being partnership firm from those of others”The proprietor of the mark is the association.The goods and services of a company or group of companies like GODREJ or HINDUSTAN UNILEVER LTD. may be the subject matter of collective Trade mark. It is not to be registered if it is likely to deceive or cause confusion to the public.



• CERTIFICATION TRADE MARK: Section 2 (1) (e)There is a species of trade mark called as Certification Trade mark. Its function is to indicate that the proprietor of the mark has certified the goods bearing the mark as to certain characteristics of the goods.e.g. Geographical origin, ingredients and so on such as ISI, AGMARK, FPO



PROPERTY MARKSPROPERTY MARKSSection 479 of Indian Penal Code, 1860 Section 479 of Indian Penal Code, 1860

provides that “A mark used for denoting that provides that “A mark used for denoting that moveable property belongs to a particular person moveable property belongs to a particular person is called a property mark.”is called a property mark.”

The distinction between ‘trade mark’ and The distinction between ‘trade mark’ and ‘property mark’ is not recognized in English Law.‘property mark’ is not recognized in English Law.

However in India, the distinction between a However in India, the distinction between a ‘trade mark’ and a ‘property mark’ is as follows:‘trade mark’ and a ‘property mark’ is as follows:



Trade Mark Property Mark

It denotes manufacture or quality of the goods to which it is attached

It denotes the ownership of them

It concerns the goods themselves

It concerns the proprietor of the goods


FUNCTIONS OF TRADE MARK

• TM may be used to indicate that the goods are of a particular maker

• The goods of that maker are of a particular kind or quality.

• Trader may indicate his best quality by one TM, and his second best quality by another TM and so on. E.g. MRF with the symbol of person holding tyre is good quality and MRF written plainly indicates the second quality.

• It serves the purpose of identifying the source of origin of goods.


FUNCTIONS OF TRADE MARK

• As per modern business conditions a TM performs following functions: It identifies the product and origin. It guarantees its unchanged quality. It advertises the product. It creates an image for the product.e.g. ‘Zip Drive’ associated with Santro Car; Taj Mahal

for a particular quality of tea which will be different in quality from Brooke Bond; SONY is associated with electronic items etc.

• The functions of service marks in relation to services are similar to that of a TM in relation to goods. E.g. Courier services – such as DHL, DTDC, GATI etc.


ESSENTIAL FEATURES OF TM

A Trade mark should have the following essential elements:

1. A Trademark should have Distinctive Character (Distinctiveness of the Trademark)

A trade mark would be considered a good trade mark when it is distinctive.



Features of Distinctiveness• Distinctiveness may be class dependent.

What is distinctive in relation to one class of goods may not be so in relation to another class of goods.

The TM may be united wholly to one or more specified colours and this colour combination may become the distinctive character of the particular mark.



• Distinctiveness may be inherent or acquired. Inherent distinctiveness means that the mark or get

up is distinct in itself from everything else and no one can justifiably claim the right to use it. E.g. ‘RIN’, ‘ZEN’.

Acquired distinctiveness means –

Distinctiveness through use. E.g. the trade marks Yashica, Hawkins, Surf and Lux have acquired distinctiveness through use as also they are distinctive due to the inherent quality of why being invented words.


ESSENTIAL FEATURES OF TM2. Trademark should preferably be an invented word.

The best trade marks are invented words. E.g. ZEN ( a car) , DIO (non-geared scooter).

3. Trademark, if it is a word, or name, then it should be easy to pronounce and remember. E.g. Lux for soap, Maruti Zen for car, Mercedes for cars, Levis for jeans, Reynolds for pens, Parker for pens etc.

4. In case of a device mark, the device should be capable of being described by a single work. E.g. Camel for Camel Ink, Kingfisher bird for Kingfisher Beer.

5. Trade mark should be easy to spell correctly and write legibly.



6. It should not be descriptive but may be suggestive of the quality of goods. For example, a mark A-I would generally suggest superior quality. Avon (A-1) cycles for instance.

7. It should be short. E.g. ‘Flex’, ‘Bru’, ‘Rin’. 8. It should appeal to the eye as well as ear. 9. It should satisfy the requirements of registration.10. It should not belong to the class of marks prohibited

for registration. E.g. Mark prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950


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trade marks and trade names

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