The Trade Marks Act, 1999 notes — Unit 4

Unlike patents (which protect innovation) or copyright (which protects art), Trademarks protect commercial identity and consumer trust.

⇒Purpose

When a consumer buys a 'Nike' shoe, they expect a certain quality. If another company puts a fake 'Nike' swoosh on cheap, easily broken shoes, the consumer is deceived, and Nike's reputation is destroyed. Trademark law prevents this consumer confusion.

⇒Definition (Sec 2(zb))

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.

The definition is very wide. A 'mark' can include:

• Words: (e.g., 'Google', 'Apple')
• Logos/Symbols: (e.g., The McDonald's Golden Arches)
• Shape of goods: (e.g., The unique contoured shape of a Coca-Cola glass bottle)
• Packaging: (e.g., The specific color scheme of Cadbury purple)
• Sound Marks: (e.g., The Britannia 4-note jingle, the MGM Lion roar, the Netflix 'ta-dum')
• Color Marks: (If a single color or combination has acquired secondary meaning associating it exclusively with one brand).

Section 9 deals with inherent defects in the mark itself. The Registry will outright refuse to register these marks.

⇒1. Devoid of Distinctive Character

A mark must be capable of distinguishing goods. If you try to trademark the word 'Super' for shoes, it will be rejected. It's too generic.

⇒2. Descriptive Marks

Marks which consist exclusively of marks or indications which serve to designate the kind, quality, quantity, intended purpose, or geographical origin of the goods. (e.g., You cannot trademark the word 'Sweet' for chocolates, or 'Kashmiri' for apples, because all merchants need to use those words to describe their products).

There is a massive exception to the Section 9 refusal of descriptive marks.

⇒Acquired Distinctiveness

A descriptive mark shall NOT be refused registration if, before the date of application for registration, it has acquired a distinctive character as a result of the use made of it.

Section 11 deals with conflicts with existing trademarks.

⇒Likelihood of Confusion

A mark shall not be registered if there exists a likelihood of confusion on the part of the public because:

• It is identical with an earlier trade mark and the goods/services are similar.
• It is similar to an earlier trade mark and the goods/services are identical/similar.

(Example: You cannot register 'Reebuk' for shoes because it is confusingly similar to the earlier mark 'Reebok' for identical goods).

Normally, trademark protection is limited to the specific class of goods registered. (If you register 'Delta' for airlines, someone else might register 'Delta' for water faucets).

⇒The Cross-Class Protection

However, Section 11(2) gives extraordinary cross-class protection to "Well-Known Trademarks" (e.g., Tata, Reliance, Google, Rolex).

If a mark is highly reputed across India, the Registry will refuse a similar mark even for totally unrelated goods. (e.g., You cannot launch 'Rolex Biscuits' or 'Tata Matchboxes', because the public will assume they are manufactured by the famous watch/car companies, causing dilution of the famous brand).

Registration is done class-wise (there are 45 classes of goods and services under the Nice Classification).

⇒Term and Renewal

Unlike Patents (20 years) and Copyright (Lifetime + 60), a Trademark can theoretically last forever.

Registration is granted for 10 years, but it can be renewed indefinitely every 10 years by paying the renewal fee. (This is why century-old brands like Coca-Cola still own their trademarks).

⇒Non-Use Cancellation

If you register a mark but don't use it in actual commerce for a continuous period of 5 years and 3 months, anyone can apply to have your mark removed from the register for "non-use" (Section 47).

Infringement is a statutory right available ONLY to registered trademarks.

⇒The Test of Infringement

A registered trade mark is infringed by a person who, not being the registered proprietor, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

⇒Deceptive Similarity

Courts evaluate this from the perspective of an "average consumer with imperfect recollection." (e.g., 'Lakme' vs 'Likme', 'Bisleri' vs 'Bilsery'). If a rushed consumer at a railway station could buy 'Bilsery' thinking it is 'Bisleri', it is an infringement.

What if you have been using a brand name for 10 years, but you never bothered to register it with the Trademark Office? Can someone else copy it?

⇒The Remedy for Unregistered Marks

Section 27 states that no infringement action can be brought for an unregistered trademark. HOWEVER, it explicitly preserves the common law right to sue for Passing Off.

⇒The Principle

"Nobody has any right to represent his goods as the goods of somebody else." Passing off protects the goodwill of the business, not the mark itself.

This is the most critical distinction in Trademark Law.

• Nature of Right: Infringement is a statutory right (Sec 29) for registered marks. Passing Off is a common law tort for unregistered (but established) marks.
• Burden of Proof: In Infringement, you only need to prove that you own the registration certificate and the defendant's mark is deceptively similar. In Passing Off, it is much harder: you must prove (1) You have built 'Goodwill/Reputation' in the market, (2) The defendant made a 'Misrepresentation', and (3) You suffered 'Damage' (The Classical Trinity test).
• Property vs Goodwill: Infringement protects the mark as property. Passing off protects the goodwill/business reputation attached to the mark.

When can you legally use someone else's registered trademark?

⇒1. Honest Concurrent Use (Sec 12)

If two separate businesses honestly and independently started using the same mark in different regions decades ago without knowing about each other, the Registrar can allow both to register the mark with territorial limitations.

⇒2. Descriptive Use (Sec 30)

Using a trademark merely to describe the characteristics of your own goods. (e.g., A mechanic putting up a sign saying "We repair Maruti and Hyundai cars." They are not claiming to be Maruti, they are just using the mark to describe the service).

⇒Premium Advice for Top Marks

• Infringement vs Passing Off: This is a 100% guaranteed question in any IPR exam. Create a clear comparison table. Emphasize the 'Classical Trinity' (Goodwill, Misrepresentation, Damage) required to prove Passing Off.
• Absolute vs Relative Grounds (Sec 9 vs 11): Explain the difference conceptually. Sec 9 is about the mark itself (is it too generic/descriptive? like 'Super Shoes'). Sec 11 is about the mark compared to others (is it too similar to 'Nike'?).
• Acquired Distinctiveness: When writing about Sec 9 (descriptive marks), you must mention the 'Secondary Meaning' exception. Use the 'Apple' computer example to show how a dictionary word can become monopolized through massive brand reputation.