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TRADE MARKS
Introduction & Meaning
A trade mark is a visual symbol in the form of a word, a device, or a label applied to
articles of commerce with a view to indicate to the purchasing public that they are the
goods manufactured or otherwise dealt in by a particular person as distinguished from
similar goods manufactured or dealt in by other persons.

A trademark is a word, phrase, symbol, design, sound or anything that identifies

the source of the goods or services of one company from those of other companies.

WORD PHRASE Symbols

Design.

HISTORY
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 law of trademark in India before 1940 was based on the common law
principles of passing off and equity as followed in England before the enactment of
the first Registration Act, 1875.
The first statutory law related to trademark in India was the Trade Marks Act,
1940 which had similar provision like the UK Trade Marks Act, 1938.
In 1958, the Trade and Merchandise Marks Act, 1958 was enacted which
consolidated the provisions related to trademarks contained in other statutes like,
the Indian Penal Code, Criminal Procedure Code and the Sea Customs Act.
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.

Representation Trade Marks:

(for an UNREGISTERED TRADEMARK, that is, a mark used to promote or brand

goods)

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SM (for an unregistered SERVICE MARK, that is, a mark used to promote or brand
services)

(for a REGISTERED TRADEMARK)

TRADE MARKS ARE IDENIFIED/REGISTERABLE UNDER VARIOUS CLASSES

FOR VARIOUS PRODUCS & SERVICES
PRODUCTS
Class 1 (Chemicals) Class 19 (Non-metallic
Class 2 (Paints) Building Materials)
Class 3 (Cosmetics and Class 20 (Furniture and
Cleaning Preparations) Articles Not Otherwise
Class 4 (Lubricants and Classified)
Fuels) Class 21 (Housewares and
Class 5 (Pharmaceuticals) Glass)
Class 6 (Metal Goods) Class 22 (Cordage and
Class 7 (Machinery) Fibers)
Class 23 (Yarns and
Class 8 (Hand Tools)
Threads)
Class 9 (Electrical and
Class 24 (Fabrics)
Scientific Apparatus)
Class 25 (Clothing)
Class 10 (Medical
Apparatus) Class 26 (Fancy Goods)
Class 11 (Environmental Class 27 (Floor Coverings)
Control Apparatus) Class 28 (Toys and
Class 12 (Vehicles) Sporting Goods)
Class 13 (Firearms) Class 29 (Meats and
Class 14 (Jewelry) Processed Foods)
Class 30 (Staple Foods)
Class 15 (Musical
Instruments) Class 31 (Natural
Class 16 (Paper Goods and Agricultural Products)
Printed Matter) Class 32 (Light Beverages)
Class 17 (Rubber Goods) Class 33 (Wines and
Class 18 (Leather Goods) Spirits)

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Class 34 (Smokers' Class 41 (Education and

Articles) Entertainment)
Class 42 (Computer,
SERVICES Scientific and Legal)
Class 35 (Advertising and Class 43 (Hotels and
Business) Restaurants)
Class 36 (Insurance and Class 44 (Medical, Beauty,
Financial) and Agricultural)
Class 37 (Building, Class 45 (Personal and
Construction and Repair) Social Services)
Class 38
(Telecommunication)
Class 39 (Transportation
and Storage)
Class 40 (Treatment of
Materials)

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 Passing off is a common law tort used to enforce unregistered trademark rights. Passing off
essentially occurs where the reputation in the trademark of party A is misappropriated by
party B, such that party B misrepresents as being the owner of the trademark or having some
affiliation/nexus with party A, thereby damaging the goodwill of party A. For an action of
passing off, registration of a trademark is irrelevant.
Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action
against violation of trademarks in India. In India, a combined civil action for infringement of
trademark and passing off can be initiated.

Relief in Suits for Infringement/Passing Of

Civil Litigation : A suit can be initiated either under the law of passing off or for infringement under the
Trade Marks Act, 1999 depending on whether the trade mark is unregistered, pending registration or
registered respectively.
Jurisdiction and Venue: The suit for passing off and/or infringement can be initiated either in the
District Court or in the High Court depending on the valuation of the suit. The suit can be at the place
where the rights holder or one of the rights holders actually and voluntarily reside or work for gain or
carries on business.

Elements of the Complaint: In the complaint, the rights holder is required to demonstrate that
(a) the alleged infringing act involves a mark that is identical or similar to a trade mark of the rights holder;
(b) the infringing representation of a trade mark is being used in connection with goods or services and
might lead to confusion in public regarding the origin of the infringing goods/services;

(c) the unlawful act interfered with the trade mark holder's rights of exclusive use or caused the rights
holder economic loss Section 135 expressly stipulates that the relief which a Court may grant in any suit
for infringement or for passing off referred to in Section 134 includes injunction (subject to such terms, if
any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits,
together with or without any order for the delivery up of the infringing labels and marks for destruction or
erasure.

The system of international registration of marks is governed by two treaties:

The Madrid Agreement, concluded in 1891 and revised at Brussels (1900), Washington (1911), The
Hague (1925), London (1934), Nice (1957), and Stockholm (1967), and amended in 1979, and the
Protocol relating to that Agreement, which was concluded in 1989, with the aim of rendering the Madrid
system more flexible and more compatible with the domestic legislation of certain countries which had not
been able to accede to the Agreement.
The Madrid Agreement and Protocol are open to any State which is party to the Paris Convention for the
Protection of Industrial Property. The two treaties are parallel and independent and States may adhere to
either of them or to both. In addition, an intergovernmental organization which maintains its own Office for
the registration of marks may become party to the Protocol. Instruments of ratification or accession must
be deposited with the Director General of WIPO. States and organizations which are party to the Madrid
system are collectively referred to as Contracting Parties.

The system makes it possible to protect a mark in a large number of countries by obtaining an
international registration which has effect in each of the Contracting Parties that has been designated.

Marks into four categories, based on the relationship between the mark and the underlying product or
service
1. Arbitrary or Fanciful: which are having meaning but looking fanciful and attract the
customers
2. Suggestive: Which advice or suggests the customer to purchase the product/service.
3. Descriptive: which carries some description about the product/service.
4. Generic : All general names, general symbols

TERM OF PROTECTION
India provides ten years with effect from the commencement of Trademarks, Act, 1999.

TRADE SECRETS
Requirements for a Trade Secrets:
There are three basic requirements for any information to be considered a trade
secret and thus be legally protected:

1. Not generally Known to the public

2. Economic Benefit
3. Reasonable Effort on Owners part to maintain secrecy

Identifying Trade Secrets

The extent to which the information is known outside of ones

business;
The extent to which it is known by employees and others involved in
ones business;
The extent of measures taken by one to guard the secrecy of the
information;
The value of the information to one and ones competitors; the
amount of efort or money expended in developing the information;
The ease or difficulty with which the information could be properly
acquired or duplicated by others.
TRADE SECRET MISAPPROPRIATION
This occurs where someone acquires, uses and/or discloses your trade secrets
without your permission and in an improper manner
Existence. The trade secret must be proven to exist. The courts will make
this determination with a consideration of the six factors of a trade secret as
set forth in Section 757 of the First Restatement of Tort.
Ownership. It must be proven that the plaintiff had ownership rights to the
trade secret information.
Access. It must be proven that the defendant had access to the trade secret
information.
Notice. It must be proven that the defendant knew or should have known
that the information was a trade secret of the plaintiff.
Use. It must be proven that the trade secret information was actually used by
the defendant.
Damages. It must be proved that a remedy exists within the power of the
court to apply.

UNFAIR_COMPETITION

The law of unfair competition is based upon the notion that individuals should be protected from
deceptive (looking down) and improper conduct in the marketplace.

The law of unfair competition continues to evolve as new methods of conducting business arise,
such as electronic offers and sales through telemarketing, television infomercials, and the
Internet.

The most common types of unfair competition are discussed more fully in this chapter but can be
briefly summarized as follows:
Passing off (or palming off), Passing off occurs when one party attempts to pass off or
sell his or her goods or services as those of another.

Misappropriation
Right of Publicity
False advertising

Dilution, Either tarnishing anothers mark or causing it to lose its distinctiveness through
blurring is actionable as dilution

Infringement of trade dress, adopting the overall concept of anothers distinctive

packaging or product image, generally called its trade dress, so as to deceive
consumers is an infringement of trade dress.
1.9 Intellectual Property Appleate Board:
IPAB exercises jurisdiction over Trademarks, Patents and geographical indications as on date.

IPAB was established by the Central Government, which was notified in the Official Gazette on
15th Sept 2003.

The IPAB was conferred by this Act with the jurisdiction to hear all appeals from the order or
decision of the Registrar and all cases pertaining to rectification of register and all such cases
which were then pending before any High Court stood transferred to the IPAB by S.100 of the
Trademarks Act 1999.

The Geographical Indications of Goods (Registration and Protection) Act 1999 was enacted to
provide for the registration and better protection of geographical indications relating to goods.
Among the salient features of the Act was the provision of appellate remedy before the IPAB
established under the Trademarks Act.

The Patents (Amendment) Act 2002 was enacted to bring our patent regime in line with the
TRIPS agreement. The IPAB was conferred by this Act with the jurisdiction to hear all cases
against any order or decision of the controller and all cases pertaining to revocation of patent
other than on a counter claim in a suit for infringement and rectification of registers and all such
cases which were pending before the High Courts stood transferred to the IPAB by S.117-G of
this Act

The IPAB has its headquarters at Chennai. The Registry is situated at Chennai, where sittings are
also held. Circuit sittings are held at present at Delhi, Mumbai, Kolkata and Ahmedabad.

OVERVIEW OF LAWS RELATED TO INTELLECTUAL PROPERTY RIGHTS

IN INDIA
The Rules and Laws governing Intellectual Property Rights in India are as follows:

1. The Copyright Act, 1957, The Copyright Rules, 1958 and International Copyright Order,
1999

2. The Patents Act, 1970 The Patents Rules, 2003, The Intellectual Property Appellate Board
(Patents Procedure) Rules, 2010 and The Patents (Appeals and Applications to the
Intellectual Property Appellate Board) Rules, 2011

3. The Trade Marks Act, 1999, The Trade Marks Rules, 2002, The Trade Marks (Applications
and Appeals to the Intellectual Property Appellate Board) Rules, 2003 and The Intellectual
Property Appellate Board (Procedure) Rules, 2003
 4. The Geographical Indications of Goods (Registration and Protection) Act, 1999 and The
Geographical Indications of Goods (Registration and Protection) Rules, 2002

5. The Designs Act, 2000 and The Designs Rules, 2001

6. The Semiconductors Integrated Circuits Layout-Design Act, 2000 and The Semiconductors
Integrated Circuits Layout-Design Rules, 2001

7. The Protection of Plant varieties and Farmers Rights Act, 2001 and The Protection of Plant
varieties and Farmers Rights Rules, 2003

8. The Biological Diversity Act, 2002 and The Biological Diversity Rules, 2004
9. Intellectual Property Rights (Imported Goods) Rules, 2007.