Sociology Index

Trade Marks Law And Trade Marks Disputes

Trademark Dilution, Trademark Infringement

A trademark is a distinctive industrial property, which is again distinct from other forms of intellectual property. The basic purpose of a trademark is to exclusively identify the commercial source or origin of products or services. The terms "mark", "brand" and "logo" are also used to refer to "trademark". When used to refer to services rather than products, a trademark may be called a service mark.

A trade mark may be a word, a letter a device or a numeral or any combination thereof.

When a word is used as a  trade mark, it should be easy to pronounce, spell and remember.

The ideal word for a trade mark is an invented or coined word.

Words which are laudatory or which directly describes the character or quality of the goods should not be adopted.

Geographical names connected with the reputation or quality of the goods for which registration is sought should not be adopted.

The TM symbol or SM may be used when trademark rights are claimed in relation to a mark.

The symbol is used to indicate that the mark has been so registered.

Trade mark protection in cases of unconnected goods:
The Trade Marks Act, 1999 recognises trade mark infringement, if it can be established that the infringed trade mark has a reputation in India, even where a passing off action may not succeed. It was in the 1990s that the United States enacted a law against trademark dilution. Even though the concept of dilution was being discussed in academic circles in early 20th century, it was only later that the states began adopting such laws.

The concept of dilution has a wider reach than passing off. If someone manufactures and sells 'Toyota Wheelchair', there would be no case of passing off, as no one is likely to imagine that the Toyota company would manufacture wheelchair. But the use of Toyota in relation to wheelchair will certainly hurt the reputation of Toyota ‘diluting’ the worth of Toyota trade mark and thus it would be unethical.

A short history of IP and Trade Mark

The Intellectual Property Rights embodied in various Indian Acts are based almost entirely on the English and American Law with very little modifications. The development of trade mark law bagan in the United Kingdom. The Statute of Anne passed in England in 1710 formed the basis for modern copyright laws. The Statute of Anne was used as a model for national laws in Denmark (1741), the United States (1790), and France (1793).

In 1617, Southern v. How, a prior case was summarised where a clothier had gained great reputation. He started putting his mark on clothes made by him. Another clothier used the same mark to deceive, resulting in a remedy from the courts.

The first Trade Mark Act was enacted in 1875. It codified the formulations courts had made in relation to property in trade mark. It recognised the principle of a right developing in a trade mark with usage. The Act provided for a register of trade marks and a trader using a mark could get it registered. Registration could be secured only on proof of user and fulfilment of criterion whether the trade mark distinguished the goods of the trader or not. Once a registration was secured, it became a proof of ownership in all court action for trade mark infringement, reducing the burden on the judicial system and the associated costs of litigation.

The first British trade mark Act of 1875 was repealed and substituted by the Patents, Designs and Trade Marks Act, 1883. This Act was substituted by the Trade Marks Act, 1905. The next re-enactment was the Trade Marks Act, 1938.

While the law on registration of trade marks and protection against infringement developed through statutory enactments, non-registered trade marks and appropriation of goodwill could sought remedy under the common law of passing off.

The first Indian Act on the subject as the Trade mark Act of 1940 was borrowed the British Trade Marks Act of 1938. The law provided for registration of trade marks and their protection from infringement. The Indian courts had already started giving remedy under common law of passing off.

Independent India brought in Trade and Merchandise Marks Act, 1958. The Act was in operation till September, 2003. The operative law now is the Trade mark Act, 1999.

Patents and Copyrights will eventually enter the public domain but trademarks may not.

Paris Convention is the most basic and important multilateral convention relating to intellectual property, including trademarks, of which India is a member. It defined the meaning and scope of industrial property rights protection and established basic principles and rules.

In India priority in adoption prevails over priority in registration. The registration cannot take away a prior consistent user of trademark in India. In many other jurisdictions the first party to register a trademark is considered the party to own the mark, regardless of prior use of the mark.

Trademark law classifies marks into four categories, based on how distinctive they are. “Generic” marks get no trademark protection, and the same is true of “descriptive” marks unless they have acquired a “secondary meaning.” “Fanciful” or “arbitrary” marks get the most protection, and “suggestive” marks are second in priority. - McCarthy on Trademarks and Unfair Competition 11.1, 11.2 (4th ed. 1996); Playtex Products v. Georgia Pacific, 390 F.3d 158, 163 (2d Cir. 2004).

The basic principle of trademark law is to fulfill the public policy objective of consumer protection, by preventing the public from being misled regarding the facts of origin or quality of a product or service. By identifying the commercial source of products and services, trademarks facilitate identification of products and services which meet the trust and expectations of consumers as to quality and other characteristics.

Trademarks may also serve as an incentive and encouragement to manufacturers, providers or suppliers to consistently provide quality products or services enabling them to maintain their business reputation. If a trademark owner does not maintain quality control and adequate supervision in relation to the manufacture and provision of products or services supplied by a licensee, there will be an adverse impact on the owner’s rights in the trademark.

A registered trademark confers the right to exclusive use of the mark in relation to the products or services for which it is registered. The law in most jurisdictions also allows the owner of a registered trademark to prevent unauthorised use of the mark in relation to products or services which are similar to the "registered" products or services, and  may also in certain cases, prevent use in relation to entirely dissimilar products or services.

A regisrered trademark owner will be in a better position to demonstrate its trademark rights and also be in a better position to enforce these rights through an trademark infringement action.

Unauthorised use of a registered trade mark need not be intentional in order for infringement to occur, although damages in an infringement lawsuit will generally be greater if there was an intention to deceive.

A trademark which is popularly used to describe a product or service (rather than to distinguish the product or services from those of third parties) is known as a genericized trademark. If such a mark becomes synonymous with that product or service to the extent that the trademark owner can no longer enforce its proprietary rights, the mark has become generic.

Proprietary rights in relation to a trademark may be established through actual use in the marketplace, or through registration of the mark with the trade marks office (or "trademarks registry") of a particular jurisdiction.

Some jurisdictions generally do not recognise trademarks rights arising through use (e.g. China). If trademark owners do not hold registrations for their marks in such jurisdictions, the extent to which they will be able to enforce their rights through trademark infringement proceedings will therefore be limited.

Some jurisdictions, particularly Common Law countries, offer protection for the business reputation or goodwill which attaches to unregistered trade marks through the tort of "passing off." Passing off may provide a remedy in instances where a business has been trading under an unregistered trade mark for a long time, and a rival business starts using the same or a similar mark.

Trademarks are generally territorial. Trademark rights that are established in a particular jurisdiction are generally only enforceable in that jurisdiction. Though there are international trademark laws and systems which facilitate the protection of trademarks in more than one jurisdiction.

Books On Trademark Law

Trade Marks: Law and Practice Book by by Alison Firth, Gary Lea, Peter Cornford

Trademark Law by Robert C. Lind

Trade Mark Use Book by by Jeremy Phillips, Ilanah Simon

Trade Mark Law : A Practical Anatomy Book by by Jeremy Phillips

The Historical Foundations of the Law Relating to Trade-Marks Munroe Smith, Frank I. Schechter

Trademark: Legal Care for Your Business & Product Name Book by by Stephen Elias

Trademark Counterfeiting, Product Piracy, and the Billion Dollar Threat to the U.S. Economy Book by by Paul R. Paradise

Trademark & Copyright Disputes: Litigation Forms, Analysis Gregory J Batters, Charles W Grimes

Trademark Dilution: Federal, State, and International Law by David S. Welkowitz

Trademark Law: A Practitioner's Guide Book by by Siegrun D. Kane

Likelihood of Confusion in Trademark Law Book by Richard L. Kirkpatrick

The Entrepreneur's Guide to Patents, Copyrights, Trademarks, Trade Secrets & Licensing Book by Jill Gilbert

Don't be too descriptive with trademarks.(Law of the Line): An article from: Hawaii Business Digital Book by Robert Carson Godbey.

Rajrathnam V P, Attorney/Advocate and IPR Consultant -