trademarks and trade names

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TRADE MARKS AND TRADE NAMES

Dr. Basavaraj K. NanjwadeM.Pharm., Ph.D., (LLB)Associate Professor

Department of PharmaceuticsKLE University

BELGAUM - 590010

By


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11/11/2008 Department of Pharmaceutics 2

TRADEMARKS ANDTRADE NAMES

It deals with good will attached to marketingsymbols, trademarks, trade names or get up by

actual use in relation to some product or service

Examples Reebok, Mc Donalds, Nike, Levis

etc.

The Trade Marks law is contained in Trade

Marks Act, 1999


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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.)


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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)


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TRADE NAMES

Trade names are names, terms or designationsthat serve to identify and distinguish anenterprise and its business activities from thoseof other enterprise and its business activities

Whereas the trademark distinguishes the goodsor services of an enterprise, a trade nameidentifies the entire enterprise and symbolizesthe reputation and goodwill of the business as a

whole.


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TRADE NAMES

The main reason for protecting trademark andtrade names against infringement is that thepublic might be misled into thinking that twoseparate enterprises using same or confusinglysimilar trademark or a trade name constitute oneand the same enterprise

It is not only harmful to the consumers but it alsopermits the infringing enterprise to benefitunfairly.


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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.


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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 beprotected in perpetuity subject only to thefollowing conditions:

It is used and renewed periodically andThe registered proprietor takes prompt

action against infringers.


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TRADE MARKS ACT, 1999

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

The present Trade Marks Act, 1999 hasreplaced the Trade and Merchandise MarksAct, 1958. And the Trade Marks Act, 1999 has

been brought into force only on 15thSeptember 2003. The Trade Mark Rules, 2002are passed under the Trade Marks Act, 1999.


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OBJECTIVES OF THE TM ACT, 1999

A comprehensive review of TM Law was requiredin view of

Developments in trading and commercial

practices Increasing globalization of trade and industry

The need to encourage investment flows andtransfer of technology

Need for simplification & harmonization of trademark management systems and

To give effect to important judicial decisions


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TM Act, 1999 was passed with objectives

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

b) Registration of trade marks, which are imitationof well known trade marks, not to be permitted,

besides enlarging the grounds for refusal ofregistration;

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

d) To provide only a single register with simplifiedprocedure for registration and with equalrights;


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e) Providing for registration of collective marksowned by associations;

f) Providing an Appellate Board for speedy

disposal of appeals ad rectificationapplications;

g) Providing enhanced punishment for the

offences relating to trade marks;

h) Prohibiting someone elses trademark as partof corporate names, or name of business

concern;


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i) Provision for filing a single application for

registration in more than one class;

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


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MEANING AND DEFINITION OF TM

At times the consumers are duped when theybuy commodities presuming them to haveoriginated from a certain identified source, whenactually 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.


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In such case, the reputation of thetrader/manufacturer suffers if spurious goodsare sold as those originating from him.

Therefore, the interest of consumer and thetrader can be saved if a definite symbol whichmarks out the origin of goods from a definitetrade source is attached. Such symbol is calleda trade mark.

E.g. M of Mc Donald written in Yellow in apeculiar shape is a TM. Such symbol is called asTM.


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Trade Mark is a visual symbol in the form of-

A word, device or label

Applied to articles of commerce

With a view to indicate to the purchasingpublic that

They are goods manufactured or

Otherwise dealt in by a particular person or

particular organization

As distinguished from similar goodsmanufactured or dealt by others


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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 ofRevlon.


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A person who sells his goods under a particulartrade mark acquires limited exclusive right to useof the mark in relation to those goods.

A trade mark may be registered or unregistered.An unregistered trade mark is called commonlaw mark.

A trade mark when registered gets a stable

existence. A registered trade mark can be inrelation not only to its existing use but also for aproposed use.


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The proprietor of an unregistered trade markshall not be entitled to institute any proceedingto prevent, or to recover damages for, theinfringement of an unregistered trademark.

However, such proprietor of unregistered trademark shall have common law remedy to take

action against another person, for passing offgoods as goods of the proprietor, or passing offservices as services provided by proprietor.


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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 orcombination of colours or any combination

thereof.

Example M written in a particular style with

yellow colour for MacDonalds; 555/777numerical used for detergent soaps; signature

used as a mark for alcohol etc.


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TRADE MARK: Section 2 (1) (zb)

Trade mark is defined as a mark capableof being represented graphically and that

is capable of distinguishing the goods orservices of one person from those ofothers and may include shape of goods,their packing and other combination ofcolours.

E.g. Colgate, Bata, Pantene etc.


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SERVICE MARK: Section 2 (1) (z)

It means service of any description that is madeavailable to any potential users and includes theprovision of service in connection with business

of any industrial or commercial matters such asbanking, communications, education, financing,insurance, chit funds, real estate, transport,storage, material treatment, processing, supplyof electrical or other energy, boarding, loadingentertainment amusement, construction, repair,conveying of news or information andadvertising.


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WELL KNOWN TRADE MARK: Section 2(1) (zg)

Well known trade mark in relation to any goods orservices, means a mark which has become so to thesubstantial segment of the public which uses such goods

or receives such services that the use of such mark inrelation to other goods or services would be likely to betaken as indicating a connection in the course of trade orrendering of services between those goods or servicesand a person using the mark in relation to the first-

mentioned goods or services.Example: Coco Cola, Frooti, Bata.


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COLLECTIVE MARK: Section 2(1) (g)

A Trade mark distinguishing the goods or services ofmembers of an association of persons not beingpartnership firm from those ofothers

The proprietor of the mark is the association.

The goods and services of a company or group ofcompanies like GODREJ or HINDUSTAN UNILEVERLTD. may be the subject matter of collective Trademark. It is not to be registered if it is likely to deceive orcause confusion to the public.


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CERTIFICATION TRADE MARK: Section2 (1) (e)

There is a species of trade mark called as

Certification Trade mark. Its function is toindicate that the proprietor of the mark hascertified the goods bearing the mark as tocertain characteristics of the goods.

e.g. Geographical origin, ingredients andso on such as ISI, AGMARK, FPO


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PROPERTY MARKS

Section 479 of Indian Penal Code, 1860

provides that A mark used for denoting that

moveable property belongs to a particular personis called a property mark.

The distinction between trade mark and

property mark is not recognized in English Law.

However in India, the distinction between a

trade mark and a property mark is as follows:


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Trade Mark Property Mark

It denotes manufacture

or quality of the goods towhich it is attached

It denotes the

ownership of them

It concerns the goods

themselves

It concerns the

proprietor of the goods


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FUNCTIONS OF TRADE MARK

TM may be used to indicate that the goods areof a particular maker

The goods of that maker are of a particular kindor quality.

Trader may indicate his best quality by one TM,and his second best quality by another TM andso on. E.g. MRF with the symbol of personholding tyre is good quality and MRF written

plainly indicates the second quality. It serves the purpose of identifying the source oforigin of goods.


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FUNCTIONS OF TRADE MARK

As per modern business conditions a TM performsfollowing 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 Mahalfor a particular quality of tea which will be different inquality 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. Courierservices such as DHL, DTDC, GATI etc.


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ESSENTIAL FEATURES OF TM

A Trade mark should have the following essentialelements:

1. A Trademark should have DistinctiveCharacter (Distinctiveness of the Trademark)

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


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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 anotherclass of goods.

The TM may be united wholly to one or more

specified colours and this colour combinationmay become the distinctive character of the

particular mark.


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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 aredistinctive due to the inherent quality of why being

invented words.


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2. 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 beeasy to pronounce and remember. E.g. Lux for

soap, Maruti Zen for car, Mercedes for cars, Levisfor jeans, Reynolds for pens, Parker for pens etc.

4. In case of a device mark, the device should becapable of being described by a single work. E.g.

Camel for Camel Ink, Kingfisher bird for KingfisherBeer.

5. Trade mark should be easy to spell correctly andwrite legibly.


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6. It should not be descriptive but may be suggestiveof the quality of goods. For example, a mark A-Iwould 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 prohibitedfor registration. E.g. Mark prohibited under theEmblems and Names (Prevention of Improper Use)

Act, 1950


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