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Published by Enhelion, 2020-07-20 08:52:19

Module 1

Module 1

MODULE 1
TRADEMARK FILING

1.1 DEFINITION & OVERVIEW OF THE TRADEMARKS ACT

A trademark is a word, phrase, symbol or design, or a combination of words, phrases,
symbols or designs used in the course of trade. It identifies and distinguishes the source
of the goods or services of one enterprise from those of others. A trademark provides
protection to the owner of the mark by giving him the exclusive right to use it, or to
authorize another to use the same in return for payment. The period of protection varies
but a trademark can be renewed indefinitely beyond the time limit on payment of
additional fees.

The definition of “trade mark” under Section 2(1)(zb)1 has been enlarged to mean a
mark capable of being represented graphically and which is capable of distinguishing
the goods or services of one person from others. It may include the shape of goods,
their packaging and combination of color and covers both goods and services.

Marks are defined under section 2(1)(m)2 and “includes a device, brand, heading, label,
ticket, name, signature, word, letter, numeral, shape of goods, packaging or
combination of colors or any combination.” They are capable of being represented
graphically and of distinguishing the goods or services of one person from others.

1.1.1 History of trademark in India

The first case in which the need for trademark was discussed for the first time was
Southern vs. How.3 It was a case of civil deceit where the plaintiff alleged that the
defendant sold him counterfeit jewels. This case referred to an earlier unnamed case
where it was argued that a clothier used to sell the clothes in his name to earn his

1 The Trade Marks Act, 1999.
2 ibid.
3 Popham’s Reports 143, 79 Eng. Rep. 1243 (K.B. 1907).
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livelihood but another clothier used his mark to sell his clothes deceitfully. The Court
held that nobody has the right to represent his goods as the goods of somebody else.

Venetian Law: In the year 1699, a person named John Udyanam invented stained
glasses for the first time and went to Henry IV for mark i.e. common law marks. It was
the first time that protection was given for invention. There were two types of marks
which were granted at that time- merchant marks and production marks. Merchant mark
signified ownership whereas production marks signified origin.

Eventually, it led to the first act of Trade Mark laws and was named as Britain Trade
Mark Act, 1875. The first Trade Mark Act in India came in the year 1940. It was copied
from the British Trade Mark Act of 1938. At that time in India, section 54 of the Special
Relief Act was used in the case of infringement. For the purpose of registration, The
Registration Act, 1908 was used.

After a few years, a new act was introduced in post-independent India in 1958. It was
named the Trade Mark and Merchandise Act, 1958. Justice Ayyangar was the main
person behind this Act. The main objective of the 1958 Act was easy registration and
better protection of Trademarks to prevent fraud. For the first time, a legal right was
provided over trademark.

The Trade Mark and Merchandise Act, 1958 was repealed by the Trade Marks Act,
1999 (hereinafter called the Act). There were various reasons to introduce the
Trademarks Act 1999. These were:
● The act of 1958 was not in compliance with the TRIPS Agreement.
● Legal remedies were not available in the 1958 Act.
● The World Trade Organisation (WTO) recommended various changes in the year

1999.
● Registration of non-traditional marks was introduced.
● The police was given the right to arrest over infringement.
● Exhaustive definitions were provided.
● Well-known trademarks were specifically mentioned.
● Service marks were also included.

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For implementation of the 1999 Act, the Trademarks Rules, 2002 came into existence.
The Rules have been amended from time to time with the latest being in 2017. The
Trademarks Act, 1999 and the Trademarks Rules, 2017 (hereinafter the Rules) define
the following:

● Distinctiveness
● Deceptive similarity
● Domain name
● Smell as a trademark (based on fragrance)
● Shape and sound as a trademark.

1.1.2 Features of the Trademarks Act, 1999

The following are some characteristics of the Act.

● The definition of trademark includes registration of shape of goods, packaging and
combination of colors.

● The concept of a well-known trade mark has been introduced.
● Registration on services, apart from goods, is also provided.
● The time period for renewal and registration was extended from 7 to 10 years.
● The concept of IPAB i.e., Intellectual Property Appellate Board was introduced in

order to review and make appeals against the orders and decisions of the Registrar
of Trade Marks for speedy disposal of cases.
● Criminal remedies are also provided to those persons whose rights are infringed.
● All 45 international classification of goods and services (as earlier used) have been
made applicable to India as well.

1.1.3 Object of Trade Mark Laws

The object of trademark law has been explained by the Supreme Court in Dau Dayal
v. State of Uttar Pradesh4, in the following manner:

4 AIR 1959 SC 433.
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“The object of trade mark law is to protect the rights of persons who manufacture and
sell goods with distinct trade marks against invasion by other persons passing off their
goods fraudulently and with counterfeit trade mark as those of the manufacturers.
Normally, the remedy for such infringement will be by action in Civil Courts. But in
view of the delay which is incidental to civil proceedings and the great injustice which
might result if the rights of manufacturers are not promptly protected, the law gives
them the right to take the matter before the Criminal Courts, and prosecute the
offenders, so as to enable them to effectively and speedily vindicate their rights.”

1.2 FILING

Section 18(1) defines who can file a trademark application. It states that “any person
claiming to be the proprietor of a trade mark used or proposed to be used by him, who
is desirous of registering it” may apply for the registration of a Trade Mark. The
application is filed before the Registrar in the prescribed manner. The Registrar then
conducts an inspection and examination by collecting evidence.

1.2.1 Procedure to file document(s)

The general requirements for filing documents are provided under section 18. The
procedure for registration of a trademarks application is given in Chapter II, Rules 23
to 38 of the Rules. For the purpose of filing the documents, the Trade Marks Registry
(TMR) mainly depends on the territorial jurisdiction of the place where the business is
situated or the main branch or head office is situated. Rule 16 of the Rules describes
the appropriate office for various categories of applicants. Rule 16(1) states:
“Every application for registration of a trademark shall state the principal place of
business in India, if any, of the applicant, or in the case of joint applicants, of such of
the joint applicants, a principal place of business in India and the same shall be the
address of the applicant.”

There are various ways to file the documents:-
● delivery at the front office personally
● Sending them by post

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● Submitting electronically

The offices of the Trade Marks Registry for receipt of fee bearing documents are open
from 10 am to 3.30 pm, and for non-fee bearing documents, they can be filed at any
time during office working hours. The filing of electronic documents can be done at all
hours (24x7).

1.2.2 Requirement from the applicant

The documents that are required are provided mainly under Rules 25, 26 and 30 of the
Rules. They are:
● The statement of user needs to be given. The trademark application can also be filed

on a proposed to be used basis. In case use of the trademark is claimed before filing
the application, an affidavit of use can be given.

Rule 25 states:
“(1) An application to register a trademark shall, unless the trademark is proposed
to be used, contain a statement of the period during which, and the person by whom
it has been used in respect of all the goods or services mentioned in the application.
(2)In case, the use of the trade mark is claimed prior to the date of application, the
applicant shall file an affidavit testifying to such use along with supporting
documents.”

● Representation of trademark is given in Rule 26. It states the various forms in which
a trademark has to be represented. It reads:
“(1) Every application for the registration of a trademark, and where additional
copies of the application are required, every such copy, shall contain a clear and
legible representation of the trademark of size not exceeding 8 cm x 8 cm.

(2) Where an application contains a statement to the effect that the applicant wishes
to claim combination of colours as a distinctive feature of the trademark, the
application shall be accompanied with reproduction of the trademark in that
combination of colours.

(3) Where the application contains a statement to the effect that the trademark is a
three dimensional trademark, the reproduction of the trademark shall consist of a
two dimensional graphic or photographic reproduction as follows, namely:—
(i) the reproduction furnished shall consist of three different view of the trademark;
(ii) where, the Registrar considers that the reproduction of the trademark furnished
by the applicant does not sufficiently show the particulars of the three dimensional

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trademark, he may call upon the applicant to furnish within two months, up to five
further different views of the trademark and a description by words of the
trademark;
(iii) where the Registrar considers the different views or description of the
trademark referred to in clause (ii), still do not sufficiently show the particulars of
the three dimensional trademark, he may call upon the applicant to furnish a
specimen of the trademark.

(4) Where an application for the registration of a trademark consists of shape of
goods or its packaging, the reproduction furnished shall consist of at least five
different views of the trademark and a description by word of the trademark.
(i) If the Registrar considers the different views or description of the trademark
referred to in clause (i) do not sufficiently show the particulars of the shape of goods
or its packaging, he may call upon the applicant to furnish a specimen of the goods
or packaging, as the case may be.

(5) Where an application for the registration of a trademark consists of a sound as
a trademark, the reproduction of the same shall be submitted in the MP3 format not
exceeding thirty seconds’ length recorded on a medium which allows for easy and
clearly audible replaying accompanied with a graphical representation of its
notations.

(6) If the Registrar is not satisfied with any representation of a trademark, he may
at any time require another representation satisfactory to him to be substituted
before proceedings with the application.”

● Name or description of goods or services on a trademark are given in Rule 30. It
reads as follows:
“Name or description of goods or services on a trademark. — (1) Where the name
or description of any goods or services appears on a trademark, the Registrar may
refuse to register such trademark in respect of any goods or services other than the
goods or services so named or described.

(2) Where the name or description of any goods or services appear on a trademark,
which name or description in use varies, the Registrar may permit the registration
of the trademark for those and other goods or services on the applicant giving an
undertaking that the name or description will be varied when the trademark is used
upon goods or services covered by the specification other than the named or
described goods or services. The undertaking so given shall be included in the
advertisement of the application in the Journal under section 20.”

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1.2.3 Filing of Trade Mark Application

Section 18(1) defines the persons who can file the trade mark application. It states that
a person who claims to be the proprietor of the trade mark in relation to goods or
services may apply for the registration of a trade mark. Person in this section includes:
● A natural born person
● A body incorporate,
● A partnership firm,
● A Hindu Undivided Family(HUF),
● Association of persons (in case of collective trademarks),
● Joint proprietors
● A trust,
● A society, or
● A government authority/undertaking

The trademark being applied for registration may be:
● already in use or
● proposed to be used or
● intended to be used or intended to be assigned to a company that is about to be

formed and registered under the Companies Act, 2013 with a view to use thereof in
relation to those goods and services by the company.

1.3 RENEWAL

The registration of a trade mark is valid for a period of ten years (10 years) from the
date of registration which may be renewed from time to time in accordance with the
provisions of the Act and the Rules5. Section 25 of the Act allows registration of a trade
mark for a period of 10 years. In keeping with the generally accepted international
practice and to reduce the work-load of the Trade Marks Office, section 25 allows
renewal of registration for successive periods of 10 years, from the date of the original
registration or the last renewal. With a view to facilitate renewal of registration, section
25(3) provides for a grace period of six months for payment of renewal fee after expiry

5 Section 23(1) & 25(1) of the Trade Marks Act, 1999.

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of registration. Sub-section (4) provides for restoration of the trade marks to the register
and renewal of the registration on payment of renewal fees.
Rule 57 states that an application for renewal of registration of trade mark shall be made
in Form TM-R at the appropriate office or the head office of the Trade Marks Registry,
at any time one year before the expiration of last registration of the trade mark.
Restoration and renewal of registration: Rule 60 talks about restoration of trademarks.
It states that an application for the restoration of a trademark and its renewal under
section 25(4) is to be made in Form TM-R within one year from the expiration of the
trademark’s registration. It should be accompanied with the prescribed fee.
1.4 FORMS & FEES
The various important forms under trademarks law are the registration form, renewal
form, assignment form, opposition form and rectification form. These forms are
available on the official website i.e. ipindia.nic.in. The fee for the forms varies
depending on each form. The formats of the forms are given below:

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1.5 CLASSIFICATION

There are different goods and services which are divided into various classes from
classes 01 to 45. They are mentioned under the Fourth Schedule of the Rules. This is
according to the international classification under the NICE Agreement (NICE
Classification).

1.6 TRADEMARK SEARCH

It is the search or research by any person who is willing to register his mark as a
registered trademark in the market. It includes search at two levels- national and
international.

1.6.1 Trademark Search in India

In India, before filing a trademark application, one should check and make sure that the
trademark which he or she is planning to use is not excluded from protection under the
Indian law. One should also check whether the sign which a person is planning to use
as a trademark in India has been applied for before or is already registered as a
trademark for the same goods or services. The official website of IP India allows the
public to make three types of searches. These are:
● word mark searches
● design mark searches
● phonetic searches

1.6.2 Trademark Search at the Global Level

Before filing an application at the international level to protect the mark, one should
check if the sign which is being planned to use as the trademark belongs to anyone else
in the market. Under this, one should search for identical or similar marks already
protected in the markets for the same goods and services.
TMview (https://www.tmdn.org/) is an online trademark information platform,
designed by 51 trade mark offices from across the globe (including India’s TM
Registry). It aims at making trade mark data widely available and easily accessible to
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the public, without charging any fee. TMview offers the possibility to explore the
overall trade mark landscape in many countries (including ten in Asia, thirty six in
Europe, twenty in Africa and four in the Americas) in a user-friendly way. It provides
access to information on more than 40 million trade mark applications and registrations
having effects in those countries and international registrations under the Madrid
system which includes data regarding the trademark name, applicant’s name, trade
mark type, graphic representation, legal status, list of goods and services, class codes,
etc. It allows the public to carry out trademark searches at any time. The accuracy of
the data shown in TMview is the sole responsibility of the participating trademark
offices providing it. Since the introduction of TMview in April 2010, the tool has served
more than 29 million searches from 155 different countries.6

To explore the trade mark landscape abroad, there is the Global Brand Database - an
online gateway managed by the WIPO. It contains more than 28 million records from
35 national and international collections, including data on trade mark, appellations of
origin and armorial bearings, flags and other state emblems protected in various
countries around the world, as well as the names, abbreviations and emblems of
intergovernmental organizations.7

1.7 OFFENCES AND PENALTIES

Sections 101 to 121 of the Act define matters related to offences and penalties. The
important provisions are as follows:
● Section 103 states the penalty for applying false trade mark and trade description.

It is punishable with imprisonment for a term which shall not be less than six
months but which may extend to three years along with the fine which shall not be
less than fifty thousand rupees and which may extend to two lakh rupees.

6 ‘India joins TMView’ EUIPO (April 2017) available at <https://euipo.europa.eu/ohimportal/en/news/-

/action/view/3556039?TSPD_101_R0=085d22110bab200069d7ba21b63c6442103ba84aa1a2b2918020

729a21514d18e70639ea08efa4a2087b993522143000a971b6695efc4496d954265c4e72c28118797028e

7fa3b05505d3d7eda948d8bb565e7420ac4591bec4549ac2399fa57>
7 ‘The Madrid Protocol: A Route to Global Branding’ (January 2018) Intellectual Property India.

Available at

<http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_93_1_THE_MADRID_PRO

TOCOL.pdf>

12 | Page

● Section 105 states the enhanced penalty on second or subsequent conviction for
the offences committed under sections 103 and 104. It provides punishment with
imprisonment which shall not be less than one year but may extend up to three years
along with a minimum fine of one lakh rupees which may extend to two lakh rupees.

● Section 106 provides penalty for removing piece goods, etc., in violation of Section
81 dealing with stamping of piece goods, cotton yarn and thread. This section
provides for forfeiture of goods to the government and a fine of up to one thousand
rupees.

● Section 107 makes it an offence if a person falsely represents a trade mark as
registered. It has been clarified that use of symbols like “®” in relation to an
unregistered trade mark would constitute an offence. The punishment for such
offence is imprisonment for a term which may extend to three years or with fine or
with both. It is also clarified that where the mark in question is registered under the
law of the country outside India, the use of the word or other expression to denote
such registration in foreign country is permissible.

● Section 108 states that the use of any words which would lead to the belief that a
person’s place of business is officially connected with the Trade Mark Office shall
be treated as an offence and be punishable with imprisonment for a term which may
extend to two years or with fine or with both.

● Section 109 contains provisions for penalty for falsification of entries in the
register. This offence is punishable with imprisonment not exceeding two years or
with fine or with both.

● Section 114 deals with offences by companies and provides that where a person
committing the offence is a company, every person in charge of and responsible to
the company for the conduct of its business at the time of commission of an offence
will be liable. Where a person accused proves that the offence was committed
without his knowledge or he has exercised all due diligence to prevent the
commission of such offence, he will not be liable. However, where it is proved that
an offence has been committed with the consent or connivance or is attributable to
any neglect of any Director, Manager, Secretary or any other officer of the
company, he shall be deemed to be guilty of the offence. The explanation to this
section defines a company to mean a body corporate and includes a firm or other
association of individuals.

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1.8 INFRINGEMENT AND PASSING OFF

Section 29 of the Act explains the meaning of infringement under trademark laws. It
states that when a person, other than the proprietor or the registered user, uses the same
or a deceptively similar mark in relation to the same goods or services, the right of the
registered user or proprietor provided by the Act is violated. This constitutes an
infringement of the trademark.

1.8.1 Essentials of infringement

There are various essentials of infringement are:
● Use of a registered trademark by a person other than the registered proprietor or

user.
● Use of a registered trademark by additions or alterations by any other user other

than the registered proprietor.
● Use of a trademark which is identically similar to a registered trademark.
● If a trademark causes confusion in the mind of the public vis-a-vis a registered

trademark.
● If unfair advantage is taken over the rights of a registered proprietor or user.

1.8.2 Forms of infringement

There are three types of infringement-
● Using a deceptively similar mark
● Taking substantial features of a registered mark: In this type of infringement,

features like colour or design or shape or size is copied in order to create confusion
or deception in the minds of consumers and also to take advantage over the rights
and goodwill of the registered proprietor.
● Copying a mark identically: Under this infringement, a trademark is identically
similar to a registered trademark.

1.8.3 Persons entitled to sue for infringement
● Registered proprietor
● Legal successor of the registered proprietor
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● Registered user of trademark
● Foreign proprietor of a trademark registered in India.

1.8.4 Who can be sued?

Persons who can be sued are:
● Infringer
● Master for servant
● Agents
● Director of a company

1.8.5 Actions taken in case of infringement
● Injunction restraining further use
● Damages / account of profit
● Quia Timet Action (preventive relief in case of apprehension): In Mars

Incorporation vs. Kumar Krishan Mukharjee,8 the plaintiff filed a quia timet suit
for permanent injunction against the defendant for infringing their registered
trademark “MARS” as they apprehended loss of goodwill and reputation if the
defendant succeeded in starting its company, Mars Foods Pvt. Ltd. The court passed
an order in favour of the plaintiff and granted an injunction.

1.8.6 Types of Injunctions
● Anton Piller Order is to inspect the defendant's premise without notice.
● Mareva Injunction is when the court provides the right to freeze the defendant’s

assets. They cannot be given for mortgage or sale without the court’s permission.
● Interlocutory Injunction is when the court provides interim relief pre-trial.
● Permanent Injunction is an injunction granted post trial.

8 2003 (26) PTC 60 (Del).
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1.9 PASSING OFF

Section 27 of the Act defines passing off. It states that no action can be taken in case of
infringement of an unregistered trade mark. Passing off means misrepresenting one’s
goods as being that of another. If it is a well known trademark and suffers false
representation, then the action of passing off of their goods and services can be taken.

1.9.1 Essentials of passing off
● There should be a similarity between the marks and the goods.
● There should be misrepresentation.
● The act of the defendant should create deception in the minds of the average

customer.
● The defendant should have tried to take advantage of the goodwill and reputation

of the plaintiff.
● A reasonable user should be able to differentiate between the two i.e. the normal

good and a well-known trademark.
● There should be likelihood of damages in reputation as well as economic damage.

1.9.2 Forms of passing off
● Direct false representation.
● Adoption of trademarks with same colourable imitation in which the shape and

design can differ but the colour combination can be deceptively similar.
● Adoption of a trademark with essential parts of the trader's name.

The Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna
Pharmaceutical Laboratories9 explained the difference between passing off and
infringement as follows:
“While an action for passing off is a common law remedy being in substance an action
for deceit, that is, a passing off by a person of his own goods as those of another, that
is not the gist of an action for infringement. The action for infringement is a statutory
remedy conferred on the registered proprietor of a registered trade mark for the
vindication of the 'exclusive right to the use of the trade mark in relation to those goods.

9 AIR 1965 SC 980.
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The use by the defendant of the trade mark of the plaintiff is not essential in an action
for passing off, but is the sine qua non in the case of an action for infringement.”

In the case of Paresh Chandra Saha v. Prakash Chander Dass10 the court stated the
factors to issue interim injunction in case of passing off. These are as under:
● If the plaintiff is using it for a long time and the defendant used it recently.
● There has not been much delay in filing a suit.
● Both the parties have the same or similar nature of activity.
● The goods of the plaintiff have acquired distinctiveness and are associated in the

mind of the general public as the plaintiff’s goods.
● The use of the trademark by the defendant is likely to cause confusion and deception

in the minds of the public and injury to the business reputation of the plaintiff.
● The market of consumption of the parties’ goods is the same.
● The consumers of the plaintiff are such who are capable of being deceived or

misled.

In Erven Warnink v. Townend,11 the plaintiff was one of the primary market producers
of a dutch liquor made from a blend of hen egg yolks and spirits which was sold under
the name of Advocaat. The defendant produced a similar alcoholic drink by using egg
and Cyprus wine which was sold as Keeling’s Old English Advocaat. The court in its
judgment held that the defendant Townend was passing off their goods as those of the
plaintiff, Warnink. The court established five criteria for claiming extended passing off:
● Misrepresentation
● By a trader in course of trade
● To prospective consumers of his or ultimate consumers of goods and services

supplied by him
● That is calculated to injure the business or goodwill of another trader
● Causes actual damage to the business or goodwill of the party bringing the suit

10 (2000) 1 CALLT 388 HC.
11 [1979] AC 731
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1.9.3 Distinction between Passing off and Infringement

PASSING OFF INFRINGEMENT

● It is a common law remedy. ● It is a statutory right.

● Intention does not matter nor is it ● Intention is relevant under

relevant in case of passing off. infringement.

● Registration of a trademark is not ● Registration of trademark is necessary

required under passing off to avail the rights.

● Damage of goodwill is required. ● Damage of goodwill is not required

but damage of legal right is required.

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