In common parlance, trade Mark is understood as a visual representation in form of word, phrases, logo on a product used by a company as a brand to give a particular product or class of products a distinctive meaning to make the association of product to particular company or brand somewhat clear. Trade Mark on a product gives an assurance to experts, purchaser, and consumer about a certain level of quality in the product. Accordingly, national legal instruments like Indian trademark Act.1999 and international legal instruments like Paris convention, TRIPS agreement, Madrid Agreement etc. And judicial interpretations of those provisions have given a wider meaning to trademark but have conditionally excluded certain marks like common dictionary words from the ambit of a trademark. Accordingly, proprietor and users of trademarks have been granted certain exclusive rights and mechanism has been explicitly provided for the protection of these rights. The kind of rights and degree of protection depends upon the fact that whether a trademark is registered or unregistered. To fully understand these rights, enforcement of such rights and remedies in case of violation of these rights, it is required that the legal meaning of Trade Mark under Indian legal system, which is in compliance of international conventions, is fully understood.
Legal Meaning of Trade Marks:
To understand the legal meaning of trademark in India we have to understand the provisions of The Trade Mark Act,1999 (hereinafter the Act). Apart from having other essential characteristics and being devoid of prohibited characteristics, a trade Mark shall be a ‘mark’. So legal definition of ‘mark’ as provided under Section 2(1) (m) of the Act is important which says that ‘mark’ includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combinations of colours or any combination thereof. So, the definition is an inclusive definition and not an exhaustive one. So, anything can be considered a mark if it is capable of graphical representation either in single dimensional or two dimensional or in three-dimensional space. So, an emblem of a company is a mark and even a graphical representation of a particular combination of letters, style or combination of different colors on a product or in the name of the company can be classified as a mark.
Similarly, the meaning of Trademark’ has been provided in section 2(1) (ZB) of the Act. This section has been interpreted by the Supreme court:
- That trademark shall be a mark. that is to say that nothing else but a mark as defined under section 2 (1) (m) of the Act is capable of being classified as a trademark if it fulfills other conditionality.
- That such mark shall be capable of graphical representation. That is to say, if a mark is devoid of being represented graphically then it cannot be granted a status of a trademark.
- That such mark must be capable of distinguishing the goods or services of one person from those of others. It means that the mark must have certain distinctive characteristics either phonetically or structurally or visually to make the association of product bearing that mark to a particular proprietor or authorized user without raising much confusion in the mind of consumers. Such distinctiveness can be inherent as in coined and invented words or acquired one.
Succinctly, it can be said that legally a trademark must be a mark which can be graphically represented and has certain distinctive characteristics to make its association with proprietor or user without causing any confusion in the mind of a purchaser of average intellect and imperfect recollection.
Object of Trademarks Law
The object of a legal system for protection of trademarks in India can be analyzed from the analysis of constitutional provisions to protect trade, statutory provisions and common law rights and their judicial interpretation along with fulfillment of international obligations under a various international covenant of which India is signatory country. Trademark Meaning Objective and Infringement
In light of Constitutional provisions related to trade:
Constitution of India had provided freedom of trade and movement as one of the fundamental rights under Article 19 of the constitution. Apart from it, there are various other constitutional rights which guarantee the protection of trade and profession of its citizen as well as to non-citizen including jural/legal persons. So, one of the objects of laws related to Trade Marks is to ensure protection and fulfillment of these constitutional rights. Trademark Meaning Objective and Infringement
In light of Statutory provisions and common law rights
In any civilized country grant of certain civil rights to protect its inhabitant, trade partners and other from any wrong, be it criminal or civil, is imperative to sustain the civilization and its development. Fundamental right to trade freely includes right to start, nurture and make prosperous one’s own business through legal means. Trade Mark being an instrument to advance such cause of one’s own trade, its protection from unauthorized uses is necessary to ensure the protection of rightful owner of a trademark from fraudulent, deceptive and criminal minded individual. Furthermore, a larger public interest can only be served if quality of products and services is protected from deterioration. Such deterioration is always caused by the duplicity of famous and popular product and services by unauthorized users and also due to the inability of an original proprietor to maintain the quality due to loss, in terms of money, reputation and trust of public; caused by the availability of duplicate products in the market. So to protect fundamental, constitutional and civil rights of persons and in furtherance of public interest Trade Marks law has been enacted. Trademark Meaning Objective and Infringement
In the preamble of Trade Marks, The Trade Marks Act, 1999 it is stated that the act is to protect the trademark and to prevent the fraudulent use of trademarks. Similarly, an object of Indian Penal Code includes the protection of civil rights of individuals including the right to develop one’s own business through the development of brand through the use of certain trademark and furtherance of public interest. Thereby, both Acts provide for the punishment for fraudulent use of trade Mark by any unauthorized person.
In light of Judicial Interpretation
The object of trademark law has been explained by the Supreme Court in Dau Dayal Vs State of Uttar Pradesh AIR 1959 Sc 433 in the following words:
“the object of trademark law is to protect the rights of persons who manufacture and sells goods with distinct trademarks against invasion by other persons passing off their goods fraudulently and with counterfeit trademarks as those of manufacturers.”
In light of international obligations of India:
India Being signatory country of various international treaties like TRIPS and by virtue of being part of various conventions and agreement under these conventions like Paris convention and Madrid Agreement, is obliged to consolidate its municipal law in consonance with such treaties and conventions. Also, It has to protect trade interests of domestic traders from unnecessary harm caused by unbalanced competition from the outside. Keeping these objects in mind India has transformed its trademark laws into a robust and updated legal system.
RIGHTS OF PROPRIETORS AND USERS
Under The Trade Marks Act, 1999 proprietor and user of registered trademark have been given protections and rights but the act doesn’t extinguish common law rights and remedy (like suit of passing off which can be instituted on the basis of prior adoption and use even against a proprietor of registered trademark) and related rights of proprietors and users of unregistered trademark. So it is beneficial to get one’s trademark registered as soon as it is possible to do so as it provides certain benefits and edge in the competitive market. It will not only protect their intellectual properties but will also give certain exclusive rights over one’s trademarks and protection from a civil and penal action brought about by the opponent or competitors. Furthermore, registration of trademark grants both civil and criminal remedies (both under The Trademark Act,1999 and Indian Penal Code, 1860) to a proprietor of the registered trademark in case of its infringement by unregistered or unauthorized users. There is provided under the Trade Mark Registration Act,1999 which provided for punishment and fine for those who are found to infringe a registered trademark. Apart from the right to prosecute against infringement of trademark, right to claim damages and compensations also accrues to the proprietor of Trademark. Trademark Meaning Objective and Infringement
INFRINGEMENT OF REGISTERED TRADEMARK
Infringement very broadly means taking unfair advantage or being detrimental to the distinctive character or reputation of the trademark. Keeping this in mind, Section 29 of The Trade Marks Act, 1999 has provided a concerned scenario and has explained that when possibly infringement of the trademark is caused and by whom ( i.e. classes of persons like unauthorized persons or persons not having right through permitted use or advertisers etc.) it is said to be caused.
This section provides a definition of the use of trademarks by a person which is very extensive and includes even spoke use of trademark if there is a word. To understand the legal meaning of infringement it is imperative to understand essential keywords as defined in section 29 along with its judicial interpretations if any.
What constitutes the use of a trademark:
According to Section 29(6) of The Trade Mark Act,1999 a person is said to use the mark if, in particular, he
- affixes it to goods or the packaging thereof;
- offers goods for sale under registered trademarks
- exposes goods for sale under a registered trademark
- puts goods in a market under registered trademarks
- Stocks goods for sale or to expose them for sale or to put them
- in a market under registered trademark.
- Offers or supplies services under the registered trademarks
- imports or exports goods under a registered trademark
- uses the registered trademark on business papers
- uses the registered trademarks in advertising
When the infringement of Trade Marks is caused
It is too necessary to clarify here that mere use of a registered trademark by a person doesn’t mean infringement of a trademark in every case as it depends upon certain other criteria like characteristics of marks used, who the user is and why and in which manner the person used the trademarks. The construe the use of a trademark as its infringement certain statutory conditions have to be met. So general conditions laid down in section 29 (1), 29(2) and 29 (3) are :
- A trademark of which infringement is caused must be a registered trademark
- A person using the trade mark shall not be the registered proprietor of the concerned trademark
- A person using the trademark shall not be a person using it by way of permitted use
- it should be used in course of trade
In addition to these general conditions, specific conditions are laid down in each subsection of section 29(1), 29(2) and 29(4) of the Act to cover diverse scenario when infringement of a registered trademark is said to be caused. Section 29 (1) of the Act lays down following additional conditions
- mark so used must be either identical with or deceptively similar to the registered trademark
- use must be in relation to goods or services in respect of which the trademark is registered
- it should be used in such a manner that will render such use of marks likely to be taken as being used as a trademark.
All of the above additional conditions must be satisfied to constitute infringement. To clarify further, even if one of the above conditions is not met then it will not constitute the infringement of a registered trademark.
Similarly section 29(2) of the Act covers such cases of infringement when the use of mark which is likely to cause confusion on the part of public or which is likely to have an association with the registered trademark due to
- its identity with the registered trademark and the similarity of the goods or services covered by such registered trademark or
- its similarity to the registered trademark and the identity of the goods or services covered by such registered trade mark or
- its identity with the registered trademark and the identity with the goods or services covered by such registered trade mark. In this case, court shall presume that it is likely to cause confusion on the part of the public (Section 29 (3)).
In nutshell, it can be stated that even one of the above conditions is met then the suit of infringement of registered trademark under the plea of the prevalence of confusion in the mind of the public as to the association of goods or services provided under impugned mark to those of registered trademark. So, people who are planning to start a business or a trade have to be extra careful while devising their trademark and shall keep themselves informed about the existence of similar or identical registered trademark.