INTRODUCTION:

To protect the interest of consumers and safeguard reputation and goodwill of the proprietors of certain works used on goods, the Trade and Merchandise Marks Act, 1958 was enacted. It was a comprehensive piece of legislation dealing with registration and protection of Trade marks. It was a central unitary law applicable to the whole of the country. With the development in trade and commerce, globalization of trade and industry and need to encourage investment and transfer of technology and for simplification and harmonization of trade marks management systems, Trade Marks Act, 1999 was enacted repealing the Trade and Merchandise Marks Act, 1958, with the object to provide for registration and better protection of trade marks for goods and services and for the prevention of use of fraudulent marks.

Some of the features of the Trade Marks Act, 1999 are: 1. Registration of trade marks for services besides the goods; 2. Not to permit imitations of trade marks; 3. Factors to be considered for defining a well known trade mark; 4. Simplifying the procedure by producing only a single register and simple application for registration in more than one class; 5. Enlarging the scope of permitted use; 6. Providing for enhanced punishments for offences; 7. Providing for Appellate Board.

“A trademark is any sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors.” This definition comprises two aspects, which are sometimes referred to as the different functions of the trademark, but which are, however, interdependent and for all practical purposes should always be looked at together.

In order to individualize a product for the consumer, the trademark must indicate its source. This does not mean that it must inform the consumer of the actual person who has manufactured the product or even the one who is trading in it. It is sufficient that the consumer can trust in a given enterprise, not necessarily known to him, being responsible for the product sold under the trademark.

The function of indicating the source as described above presupposes that the trademark distinguishes the goods of a given enterprise from those of other enterprises; only if it allows the consumer to distinguish a product sold under it from the goods of other enterprises offered on the market can the trademark fulfill this function. This shows that the distinguishing function and the function of indicating the source cannot really be separated. For practical purposes one can even simply rely on the distinguishing function of the trademark, and define it as “any visible sign capable of distinguishing the goods or services of an enterprise from those of other enterprises.”

1. CLASSIFICATION SYSTEM Various kinds of Goods and services, which are classified according to the International Classification of goods and services, are covered under trade mark. Currently schedule IV of the Trade Marks Act, 1999 provides a list of such goods and services falling in different classes. 2. REQUIREMENTS FOR FILING TRADE MARK APPLICATION Any person claiming to be the proprietor of a trade mark used or proposed to be used can apply for trade mark registration. Following are the requirements for filing trade mark application. a. Name & Address of the Applicant Company / Person
b. Trademark / Logo (10 copies)
c. Class(es)
d. Description of goods / services
e. Original priority documents, if priority is claimed. (can be filed within two months from the date of filing in India).
f. Power of Attorney duly notarized (can be submitted later).

3. REGISTERATION PROCEDURE An undisputed registration process would take around twelve to fifteen months involving phases a) Filing of TM Application, b) Examination Report and reply thereof, c) Hearings, if required, d) Acceptance before Advertisement, e) Publication in TM Journal, and f) Issuance of Registration Certificate. The registration process is further clarified though the following flow chart.

After the trade mark is published in the TM Journal any person can file opposition within four months from the date of publication. After hearing both the parties the Registrar of Trade Mark shall decide accordingly and register or reject the trade mark.

4. TERM & RENEWAL OF TRADE MARK The term of a trademark is ten years. It can be renewed further after every ten years. The application for renewal has to be made within six month from the date of expiry of the trade mark. 5. LICENSING AND ASSIGNMENT Trade Mark can be assigned or licensed in respect of all or portion of the goods or services for which they are registered. Assignment or License Agreements of Trade Marks must be made in writing and recorded with the Registrar of Trade Marks for its validity and enforcement. 6. ENFORCEMENT The remedies available to the owner of a trade mark for unauthorized use of his mark by third party are a) an action for infringement in case of a registered trade mark, and
b) an action for passing off in case of an unregistered trade mark. The action for infringement is a statutory remedy and action for passing off is a common law remedy. In a suit for infringement or for passing off, the relief that the court may grant includes injunction, damages, account for profits and/or order for delivery of the infringing labels and marks for destruction.

PROTECTION OF TRADEMARK RIGHTS: A trademark can be protected on the basis of either use or registration. Both approaches have developed historically, but today trademark protection systems generally combine both elements. The Paris Convention places contracting countries under the obligation to provide for a trademark register. Over one hundred and fifty States have adhered to the Paris Convention. Nearly all countries today provide for a trademark register, and full trademark protection is properly secured only by registration. Use does still play an important role, however: first of all, in countries that have traditionally based trademark protection on use, the registration of a trademark merely confirms the trademark right that has been acquired by use. Consequently, the first user has priority in a trademark dispute, not the one who first registered the trademark.

Grounds for Refusal of Registration of Trademarks

Ask any businessman and he will tell you that recognition is the key to success. A business should establish itself in the mind of the consumer and in order to succeed. To remain in the memory of the consumer, it is important that the consumer associates the business with a brand name or a symbol. This symbol or brand name will ensure instant recognition from the public. Such a symbol or brand name is called a trademark. A trade mark in layman’s language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish one undertaking from another. A strategically chosen trademark could be the key to a successful business.

A Trademark not only represents your business but also identifies the goods or services and its origin. It guarantees its unchanged quality. A trademark is also a helpful advertising tool as it advertises the goods/services as well as associates the business, goods and the brand in the minds of the consumers. It also creates an image for the goods/ services.

The basic requirements of registration of trademarks are that:
1. It should be capable of distinguishing the goods or services of one undertaking from those of others. For example the word ‘car’ cannot be registered to sell luxury cars.
2. It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.
3. The selected mark should be capable of being represented graphically (that is in the paper form). It does not exclude trademarks with respect to smell or sound as long as it can be represented graphically.

However. it is important to note that not all marks can be registered. The registration of a mark can be refused on Absolute grounds and Relative grounds. These grounds for refusal are provided under Section 9 and Section 11 of the Trademark Act respectively. The following grounds for refusal should be kept in mind before creating a trademark for your business.

Absolute Grounds for Refusal:

According to the Trademarks Act, a trademark can only be registered if it is distinctive in nature and to a certain extent unique. An invented word can also be registered as long as is not descriptive. There is a provision in the Act which deals with well-known trademarks wherein a trademark which has become so popular that the people immediately associate the product with the mark, then such a mark can be registered. The Act also provides that the mark should not a. cause confusion, b. be devoid of distinction c. marks which consists exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade d. hurt religious sentiments, e. should not be obscene f. marks which are protected under the Emblems and Names (Prevention of Improper Use) Act, 1950. g. A mark shall not be registered as a trade mark if it consists exclusively of - (a) the shape of goods which results from the nature of the goods themselves; or (b) the shape of goods which is necessary to obtain a technical result; or (c) the shape which gives substantial value to the goods.

Relative Grounds for Refusal:

Section 11 deals with the relative grounds for refusal of registration. The absolute grounds of refusal prevent registration prima facie, whereas relative grounds for refusal deal with the mark in connection to other marks.
Section 11 provides that a mark can be refused because of its identity and association with an earlier trademark or its similarity to an earlier trademark. This helps in reducing the confusion in the public who would assume the newly registered mark is somehow connected to the previous trademark. It also provides that objections can be raised in case of any similarity between the earlier marks. However, an applicant can register such trademark if the proprietor of the earlier mark has given his approval.

It is the duty of the Registrar to protect a well known trademark against the identical or similar trade marks.

Conclusion:
If the trademark meets all requirements of the Act, the trademark will be accepted for registration. If there are any objections, the registry will send an examination report stating the reasons for objection. The response to the objections can be filed within one month from the date of receipt of the examination report. The response can be sent by way of an affidavit and a hearing can be requested if necessary. If the trademark is accepted for registration, the details of the application will be advertised in the Official Journal of Trademarks within six months from the date of acceptance of application.

On advertisement, any objection to the registration may be made within three months from the advertisement date stating the grounds of opposition. All the requirements of the Trademark Registration are valid grounds for opposition. In case no opposition is filed, or if the opposition is unsuccessful, the trademark shall be registered. Trademarks Registry of India will then send a Certificate of Registration and record the details of the trademark in the Register of trademarks. The trademark will be registered from the date of filing of application and not from the date it was examined or accepted.

Duration, renewal, removal and restoration and registration.-
(1) The registration of trade mark, after the commencement of this Act, shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section.
(2) The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of ten years from the date of expiration of the original registration or of the last renewal of registration, as the case may be (which date is in this section referred to as the expiration of the last registration).
(3) At the prescribed time before the explanation of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been dully complied with the Registrar may remove the trade mark from the register.
Provided that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration f the last registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under sub-section (2).
(4) Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, it satisfied that it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of ten years from the expiration of the last registration.

Certification Marks: The general rules of examination as to formality as are applicable to ordinary trade marks will be applicable also to certification trade marks. In view of the express provisions in section 69 of the Act, the rules governing in examination as to substantive requirements are slightly different in the case of certification trade mark. The exclusion of the requirement in section 9(1) (a) would mean that the criteria of distinctiveness of a trade mark is not applicable to certification trade mark. For example, the words “Woolmark” in respect of articles of wool with the device of wool yarns would be considered descriptive for registration as ordinary mark, and would not be registerable as an ordinary trade mark. Since the function of certification mark is different from an ordinary mark, the applicable law for registerability is also different. Accordingly “Woolmark” which is not registerable as an ordinary mark may be registered as a certification trade mark. Also, “Agmark” in respect of agricultural products is a registered certification trade mark. In the context of an application for registration of certification trade mark under section 71 the provisions of section 18 as to making of an application will apply. Rule 134 provides that Part I, Part IV and Part VII of the Rules will apply subject to the provisions of Part III of the Rules. The substantive examination of an application for certification trade mark will include – - examination of the draft regulation, - statement of case and more particularly about the competency of the applicant to certify the goods in respect of which the mark is to be registered and whether in the circumstances of the case , the registration applied for would be to public advantage. - The proprietor should be an independent competent certifying agency without itself being engaged in dealing with those goods or provision of services. - The draft of the regulation should meet the requirements of Act and Rules and the contents should include matters set out in rule 135(5), namely- a) A description of the applicant
b) Nature of applicant’s business
c) Particulars of infrastructure like R & D, technical manpower support
d) Applicants’ competence to administer certification scheme
e) The applicant’s financial arrangement
f) An undertaking from the applicant that there will be no discrimination between parties if they meet the requirement set down in the regulation.
g) The characteristic the mark will indicate in the certified goods or services
h) The manner of monitoring the use of the mark

Registration of Collective marks Special provisions have been made for registration of collective marks in section 61 to 68 of the Act. “Collective mark” is defined to mean a trade mark distinguishing the goods or services of members of an association of persons (not being a partnership within the meaning of Indian Partnership Act, 1932 ) which is the proprietor of the mark from those of others”- section 2(1)(g). To be register able, the collective mark must be capable of being represented graphically and meet other requirements as are applicable to registration of trade marks in general. The points to be noted by the Examiner in such cases are – (1) The collective mark is owned by an association of persons not being a partnership.
(2) The collective marks belong to a group and its use thereof is reserved for members of the group .
(3) The association may not use itself the collective mark but it ensures compliance of certain quality standards by its members who may use the collective mark.
(4) The primary function of a collective mark is to indicate a trade connection with the association or organization who is the proprietor of the mark.

Infringement:
Section 29 of the Trademark Act-1999 talks about various aspects related to infringement as given in S.29(1) that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, 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 and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

Other subsections describes that in course of the use of the trademark it is said to be infringing the rights of other company due to use of similar or identical trademark using for marketing of similar kind of goods and services or use of identical or deceptively similar trademark for any other kind of goods and services. It is further given in the Sub Section (9) of this section that the infringement can also be done by the spoken use of those words as well as by their visual representation.

Passing Off:
The specific description of passing off is not given in the trademark act but the courts have drawn its meaning from common law that if the infringement of trademark done in such a manner where the mark is not only deceptively similar to the trademark of other company but also creating confusion for the customers, which ultimately results in damage for business of the company.

Differences between Passing Off and Infringement:
They are slightly different to each other:
· Statutory remedy is available for infringement whereas the action for passing off is a common law remedy.

· For infringement it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark but in the case of a passing off action, the need is to prove that the marks are identical or deceptively similar which is likely to deceive or cause confusion and damage to the business of the company.

· When a trademark is registered, registration is given only with regard to a particular category of goods and hence protection can be given only to these goods and action of infringement would be taken but in a passing off action, the defendant’s goods need not be the same, they may be related or even different.

Judicial Response:
Courts have given several judgements in these kinds of disputes where the infringement and passing off of trademark were in question. Few of them I am discussing in this paper where courts have dealt with these questions and formulated several concepts related to them.

Cases of Infringement;
No one can use the trademark which is deceptively similar to the trademark of other company. As in the case of Glaxo Smith Kline Pharmaceuticals Ltd. v. Unitech Pharmaceuticals Pvt. Ltd. the plaintiff claimed that defendants are selling products under the trademark FEXIM that is deceptively similar to the plaintiff’s mark PHEXIN, which is used for pharmaceutical preparations. The defendants are selling anti-biotic tablets with the trademark `FEXIM' with the packing material deceptively similarly to that of the plaintiff, whereby intending to not only to infringe the trademark but also to pass off the goods as that of the plaintiff as the two marks are also phonetically similar. The Court restrained the defendant from using the trademark `FEXIM' or any trademark deceptively similar to the trademark of the plaintiff `PHEXIN', any label/packaging material deceptively similar and containing the same pattern as that of the plaintiff.

If a party using the deceptively similar name only for a single shop and not spreading its business by use of that particular name then also that party could be stopped from using the tradename of other company. This is given in M/s Bikanervala v. M/s Aggarwal Bikanerwala where the respondent was running a sweet shop in with the name of AGGARWAL BIKANERVALA and the plaintiff was using the name BIKANERVALA from 1981 and also got registered it in the year 1992. hence they applied for permanent injunction over the use of the name AGGARWAL BIKANERWALA for the sweet shop by the defendant. Court held in favour of the plaintiff and stopped defendant from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in food articles for human consumption under the impugned trade mark/trade name/infringing artistic label 'AGGARWAL BIKANER WALA' or from using any trade mark/trade name/infringing artistic work containing the name/mark 'BIKANER WALA/BIKANERVALA' or any other name/mark/artistic work which is identical or deceptively similar to the plaintiff's trademark 'BIKANERVALA'.

If the trademark is not registered by any party but one party started using it before the other then first one would have the legal authority on that particular mark. As in the case of Dhariwal Industries Ltd. and Anr. v. M.S.S. Food Products where appellants were using the brand name MALIKCHAND for their product and the respondents were using the name MANIKCHAND which is similar to the previous one and both parties have not registered their trademarks. Court held in this matter that even though plaintiff have not registered their trademark they are using it from long time back and hence court granted perpetual injunction against the respondents.

Even if a company is not doing business in country, but it is a well known company or well known goods, then also it would be entitled to get authority over its trademark. As given in case of N.R. Dongare v. Whirlpool Corp. Ltd. where the defendants have failed to renew their trademark ‘WHIRLPOOL’ and in the mean time the plaintiffs have got registration of the same. In this case court said that though there was no sale in India, the reputation of the plaintiff company was travelling trans border to India as well through commercial publicity made in magazines which are available in or brought in India.

The “WHIRLPOOL” has acquired reputation and goodwill in this country and the same has become associated in the minds of the public. Even advertisement of trade mark without existence of goods in the mark is also to be considered as use of the trade mark. The magazines which contain the advertisement do have a circulation in the higher and upper middle income strata of Indian society. Therefore, the plaintiff acquired transborder reputation in respect of the trade mark “WHIRLPOOL” and has a right to protect the invasion thereof.

Even if the goods are not same or similar to each other, then also no one can use the registered trademark of a company for any kind of goods which may result in the harm to the business and reputation of the company which is the owner of the trademark. In Honda Motors Co. Ltd. v. Mr. Charanjit Singh and Or defendant Company was using the trade name HONDA for ‘Pressure Cookers’ which they are manufacturing in India and even when their application for registration of this trademark had been rejected by the registrar they continued using it and again applied for registration and hence plaintiff has brought this plaint. Plaintiff is the well known company having presence all over the world in the field of Motor Cars, Motorcycles, Generators and other electronic appliances. They are doing business in India in association with the Siddharth Shriram Group with the name Honda Siel Cars India Ltd. Plaintiff has established that his business or goods has acquired the reputation and his trade name has become distinctive of his goods and the purchasing public at large associates the plaintiff's name with them. The use of trademark HONDA by respondents is creating deception or confusion in the minds of the public at large and such confusion is causing damage or injury to the business, reputation, goodwill and fair name of the plaintiff. Hence court has restricted the defendants from using the trademark HONDA in respect of pressure cookers or any goods or any other trade mark/marks, which are identical with and deceptively similar to the trade mark HONDA of the plaintiff and to do anything which amounts to passing off to the goods of the plaintiff.

In the case of Smithkline Beecham v. V.R. Bumtaria the plaintiff applied for permanent injunction to restrain the defendant from infringing the trademark, passing off, damages, delivery etc. of its registered trademark ARIFLO, used in respect of the pharmaceutical preparations. Defendants were using the similar name ACIFLO for their product of the same drug in India. Plaintiffs were not doing business in India for the particular product and argued that since their advertisements are been published in medical journals hence they have a transborder reputation and defendants should be stopped to use the similar trademark which creating deception in customers.

Court said that mere publication of an advertisement in a journal cannot establish a trans-border reputation. Such reputation if any is confined to a particular class of people, i.e., the person subscribing to the said specialized journals and the same can’t be said to be extended to the general consumers. Thus any adverse effect on the firm in such a case can’t be amounted to the offence of “passing off”.

Though the dispute resulted in compromise where the defendant agreed and accepted the plaintiffs’ exclusive right on the use of mark i.e. ARIFLO in India and abroad and further agreed to not to manufacture pharmaceutical preparations under the mark ACIFLO or any other mark identical or similar to ARIFLO.

Conclusion:
By this discussion we can draw following inferences:
· Registered trademark is the property of the holding company and it is directly associated with the name, reputation, goodwill and quality of products of a company.

· A company can not use the trademark of another company.

· No one can use even the similar trademark which is creating deception or confusion for the customers.

· No one can use the trademark of a company, which is well known and having a transborder reputation, even if it is not registered in India.

· Mere advertisement in a particular journal does not create transborder reputation.

· Trade dress is also a part of trade mark and no one can use the specific writing style, definite colour combination and identifiable background for packaging and labeling a product.

· Mere a single colour can also be treated as a trade dress for a specific product.