Chiragkumar Agrawal, GLS Law College, Gujarat University
1. Understanding Trademark
Trademark is a distinctive mark or sign which identifies the goods and services of one company from those of another. A trademark helps consumers to identify and choose products/services based on their reputation and quality.
In simple words, trade mark is a mark/sign which distinguishes one’s product/service from those of others. It provides distinctiveness or uniqueness to a particular product or service.
Ex. Apple i-phone, Mercedes-Benz car. (visual logo)
Trademark under Trademark Act 1999
A 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 the shape of goods, their packaging and a combination of colours.
According to the Trademark Act 1999,
· Mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.
· Package includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork
· Name includes any abbreviation of a name.
2. Various types of Trademark
Though the Trademark Act, of 1999 explicitly mentioned about collective marks and certification marks, there are also various other types of trademarks which can be registered.
Product Mark
A product mark is a mark that is used on a good or on a product rather than on service. This type of trademark is used to recognize the origin of the product and helps in maintaining the reputation of a business. Trademark applications filed under trademark class 1-34 could be termed as a product mark, as they represent goods.
Service Mark
A service mark is similar to a product mark, but a service mark is used to represent a service rather than a product. The main purpose of the service mark is that it distinguishes its proprietors from the owners of other services. Trademark applications filed under trademark class 35-45 could be termed service marks, as they represent services.
Collective Mark
A collective mark is used to inform the public about certain distinguishing features of a product or service used to represent a collective. A group of individuals can use this mark so that they are collectively protecting a goods or service. The mark holder can be an association or can be a public institution, or can also be a Section 8 Company.
In a collective mark, usually the standards of the products are fixed by the regulator owing the mark. Others associated with the collective are held responsible to adhere to certain standards while using the mark in the course of business. A commonly known collective mark in India is the Chartered Accountant designation.
Certification Mark
Certification mark is a sign that denotes a products origin, material, quality or other specific details which are issued by the proprietor. The main purpose of a certification mark is to bring out the standard of the product and guarantee the product to the customers. A certification mark can also be used to uplift the product’s standard amongst the customers by showing that the product had undergone standard tests to ensure quality. Certification marks are usually seen on packed foods, toys and electronics.
Shape Mark
Shape Mark is exclusively used to protect the shape of the product so that the customers find it relatable to a certain manufacturer and prefer to buy the product. The shape of a particular product can be registered once it is recognized to have a noteworthy shape. An example of a shape is the Coca-Cola bottle or Fanta bottle, which has a distinctive shape identifiable with the brand.
Pattern Mark
Pattern marks are those products that have specific designed patterns that come out as the distinguishing factor of the product. Patterns which fail to stand out as a remarkable mark is generally rejected since it does not serve any purpose. For a pattern to be registered, it has to show evidence of its uniqueness.
Sound Mark
A sound mark is a sound that can be associated with a product or service originating from a certain supplier. To be able to register a sound mark, when people hear the sound, they easily identify that service or product or a shows that the sound represents. Sound logos are called as audio mnemonic and is most likely to appear at the beginning or end of a commercial. The most popular sound mark in India is the tune for IPL.
3. What is a Well-known Trademark?
A ‘well-known trademark’ as defined under Trademark Act 1999 enumerates “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.
Unlike other trademarks whose goodwill and reputation is limited to a certain specified geographical area and to a certain range of products, well-known trademarks have its goodwill and reputation protected across the nation and across categories of goods and services. It is law that restricts the Trade Mark Registry to allow and register any mark as a trademark which is deceptively similar to any of the well-known trademark.
Ex. Google has been registered as a well-known trademark of Alphabet Inc., which thereby means only Alphabet Inc. can register the term 'Google' for any category of goods and services. Even if the service is not related to the Internet industry, no other company but Alphabet Inc. can register 'Google' as its trademark.
4. Determination of well-known Trademark
Section 11(6) of The Trademarks Act, 1999 lists down the factors to be considered while deciding if a trademark is Well-known or not. These factors are:
· Knowledge and Recognition of the Trade Mark in a relevant section of the public
· Duration, extent and geographical area of any use of the trade mark;
· Duration, extent and geographical area of any promotion of the trade mark
· Duration and geographical area of any registration of or any application for registration of that trade mark
· Recognition of trademark as a well-known trademark by court or registrar, successful enforcement of rights in that trademark
A registrar may take into account any of the above-mentioned factors that seem relevant to him to determine a Trademark as a ‘well-known’ trademark.
Further, it is significant to note that as per section 11(7) of the Trademark Act 1999, While determining the knowledge and recognition of the trademark in the relevant section of the public as mentioned above, the Registrar will have to take account of-
· the number of actual or potential consumers of the goods or services;
· the number of persons involved in the channels of distribution of the goods or services;
· the business circles dealing with the goods or services to which that trademark applies.
5. Advantages of attaining the status of the well-known Trademark
· Once a trademark is acknowledged as well- known trademark by a Registrar of Trademark; the Trade Mark Registry has limitations under the law to not register any trademark that is similar or identical.
· Once declared well-known it will be protected across all classes of goods and services. At the time of infringement proceeding, a well-known trademark can be emphasized against infringer even if who is infringing is dealing in entirely different products or services.
6. Important rulings & judgements related to well-known Trademark
Daimler Benz v. Hybo Hindustan[1]
The defendant had been using the plaintiff's logo and the word 'Benz' for which the plaintiff sought an injunction against such use of his logo. The court while recognizing plaintiff's logo as a well-known trademark on the ground of trans-border reputation and goodwill granted injunction against the impugned use of logo by the defendant.
Rolex Sa v. Alex Jewellery Pvt Ltd & Ors.[2]
the defendants were using the trade name "Rolex" of the plaintiff while dealing in artificial jewellery, for which the plaintiff brought an action against the defendant in order to prevent him from using his trade name further. The court held that the plaintiff's business dealt with watches, and the section of public using watches recognizes the trade name Rolex, for which it is a well-known trademark. The same segment of people if finds artificial jewelleries with the same trade name might assume the artificial jewellery to be from plaintiff's business. For the same reasons, the court considering Rolex to be a well-known trademark granted injunction against the acts of the defendants.
N.R. Dongre And Ors. V Whirlpool Co. And Anr.[3]
The Whirlpool Corporation (Whirlpool Corp.), an American entity and TVS Whirlpool, an Indian company, filed a suit against N.R Dongre and others (Defendants) in India at the Delhi High Court. The Appellant-Defendants were using the name "Whirlpool" (mark) in India for manufacturing and selling washing machines. Whirlpool Corp. claimed that they were the prior users of the mark and there was a trans-border reputation indicating that any goods marketed with the use of the mark gave an impression of it being marketed by Whirlpool Corp.
The Indian Supreme Court in this case for the first time recognized a multinational company's common law right to use its well-known trademark and obtain an injunction. Thus, the concept of trans-border reputation was formulated in this case. The case held that registration of a trademark is not necessary to seek the common law remedy of passing off. It emphasised that the owner of a well-known mark is eligible to seek an injunction in cases of misappropriation.
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