Trademark Law

Trade Marks Law And Trade Marks Disputes

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, was passed in England in 1710. It 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. 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

Trade Marks: Law and Practice (Paperback) 2nd edition (December 31, 2005)
by Alison Firth, Gary Lea, Peter Cornford

Trademark Law (Paperback) 3rd edition (March 28, 2006) by Robert C. Lind

Trade Mark Use (Hardcover) (June 16, 2005)
by Jeremy Phillips, Ilanah Simon
"Use" is a concept which is fundamental to modern trade mark law, within the European Union, the US and elsewhere. The use concept is ubiquitous, since it must be understood even before basic issues of registrability, infringement and validity can be resolved. Does use bear the same meaning
in each of these, and other, areas? Written by a team of leading practitioners and academics, this book seeks to address this issue from both a practical and a theoretical perspective.

Trade Mark Law : A Practical Anatomy (Paperback) (February 26, 2004)
by Jeremy Phillips
This practical, thorough, and detailed account of the key issues facing trade mark use is written by one of the leading authorities on the subject. Drawing on British, European, and US law, plus other sources, the author considers both the problems that trade mark law causes in business and
commerce and how to solve them. Written in a fluent and approachable style, the work contains useful flow charts, examples, and vignettes to capture the essence of trade mark law as it operates in practice.

The Historical Foundations of the Law Relating to Trade-Marks (Columbia Legal Studies, 1) (Hardcover)
by Munroe Smith (Foreword), Frank I. Schechter
Schechter, Frank I. The Historical Foundations of the Law Relating to Trade-Marks. New York: Columbia University Press, 1925. xxviii, 211 pp. Reprinted 2000 by The Lawbook Exchange, Ltd. LCCN 99-41673. ISBN-13: 978-1-58477-035-0. ISBN-10: 1-58477-035-X. Cloth. New. $65. * What is the exact nature of the nature of the right to a trademark? What is the basis of relief in trademark cases of unfair competition? Schechter unravels these problems as he traces the development of the law of trademarks from medieval times to the early twentieth century. Includes table of cases and statutes, bibliography. Considered to be "...invaluable for starting scholarly research." Marke, A Catalogue of the Law Collection of New York University (1953) 869.

Trademark: Legal Care for Your Business & Product Name (Paperback)
by Stephen Elias
Names, logos, and other unique corporate identifying marks are the true calling cards of any business, and the third edition of Trademark: Legal Care for Your Business & Product Name, by attorneys Kate McGrath and Stephen Elias, explains in an easy-to-understand fashion how to choose these vital assets properly and then protect them diligently. Revised to reflect changes that have come about because of the advent of cyberspace, it offers clear instructions on initial selections, searches to ensure availability, state and federal registration procedures, correct use, and adjudication of any disputes that result.
Library Journal: Excellent step-by-step instructions for registering a mark, written in plain English with clear examples.

Trademark Counterfeiting, Product Piracy, and the Billion Dollar Threat to the U.S. Economy
by Paul R. Paradise
From Library Journal
In today's high-tech world, pirates no longer roam the seas in search of bounty. Instead, they work all over the world, misusing official trademarks, peddling inexpensive "knock-offs" of well-known brands, and selling inferior counterfeit products (all of which resulted, in 1995, in an estimated $200 billion loss to the U.S. economy). Paradise, a freelance electronics, law, and entertainment journalist, here collects articles (many previously published) on global piracy. In one, he delivers a fascinating first-hand account of the U.S.-China trade dispute and the negotiations that prevented a U.S. trade embargo against China; in another, he focuses on a private investigator working to counter the counterfeiters. A chapter on the impact of cyberspace nicely updates this otherwise disjointed assortment of stand-alone pieces. As geopolitical barriers to trade are increasingly dismantled, this book will continue to be a useful reference for law or business collections.ADale F. Farris, Groves, TX
Copyright 1999 Reed Business Information, Inc.
“As geopolitical barriers to trade are increasingly dismantled, this book will continue to be a useful reference for law or business collections.”–Library Journal
“Paradise's knack for organization and precision in research served him well for his new book a comprehensive collection of counterfeiting history, impact and methods as well as a wealth of anecdotal information.”–Current
“In short, while this book provides a starting point for those seeking extensive analysis of intellectual property issues, it also would be a valuable resource for practitioner who want to insure that they will not miss relevant issues that may be outside the scope of their primary expertise.”–The Trademark Reporter
“This work is an important resource.”–Entertainment and Sports Lawyer
“A must read by any student of, or investigator concerned with the theft of intellectual property rights.”–Focus International

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

Trademark Dilution: Federal, State, and International Law (June 2002) by David S. Welkowitz
Stay up-to-date and expertly informed in this unpredictable area of the law.
Trademark Dilution: Federal, State, and International Law describes and analyzes the full range of dilution law—which received its first treatment by the U.S. Supreme Court in 2004—including the Federal Trademark Dilution Act (FTDA), state antidilution laws, and international law. The author’s discussion of the case law under FTDA, analyzing the federal courts’ narrow interpretation of the statute, helps you effectively counsel clients and litigate cases. This landmark treatise also examines the various relevant state laws in detail; describes the many differences between them; and discusses the case law analyzing state statutes, much of which developed before the FTDA was enacted.
Trademark Dilution: Federal, State, and International Law covers such important areas as:
--dilution on the Internet and interaction with the Anticybersquatting Consumer Protection Act (ACPA) --relationship between trade dress and dilution --comparison of state antidilution laws, including those patterned after the Federal Trademark Dilution Act (FTDA) and those that differ significantly from the federal statute --actual versus likelihood of dilution --extensive discussion of what constitutes a "famous" mark --international agreements that include trademark dilution protection --and much more.

Trademark Law: A Practitioner's Guide (Practising Law Institute intellectual property law library)
by Siegrun D. Kane
Jeffrey M. Samuels, Esq., Former Assistant Commissioner for Trademarks, PTO
"A reference tool that all trademark attorneys, both those who prosecute and those who litigate, should have close at hand."
David Gould, Corporate Trademark Counsel, E.I. DuPont de Nemours and Company
"An outstanding reference that is clear, concise, and easy to use."
This all-new Fourth Edition of the benchmark one-volume guide to trademark law is marked by extensive new coverage, including vital analysis of:
- New trade dress case law interpreting the doctrine of utilitarian functionality in the wake of the Supreme Courts TrafFix decision.
- New issues before the Supreme Court regarding dilution protection under the Federal Trademark Dilution Act New Internet cases on jurisdiction and the effect of UDRP arbitration decisions on federal litigation.
- New case law under the recently revised Federal Rules of Evidence.
- Plus updated material on gray market goods and attorney/client and work product privileges, new tips on reaching settlement agreements, and the latest changes to the T.M.E.P.
Filled with dozens of forms, documents, checklists, and color exhibits, Trademark Law provides you with all the field-tested, step-by-step guidance you need to select, search, use, reinforce, renew, defend, and expand trademarks. Comprehensive enough to serve new and experienced practitioners on both sides of trademark disputes, Trademark Law gives you systematic counsel on how to:
- Pick highly protectable marks at the outset to minimize problems.
- Conduct thorough mark searches that prevent later conflicts.
- Establish the priority of marks through continued use. Maintain marks by filing the right affidavits at the right time.
- Expand marks while avoiding territorial conflicts. Successfully appeal rejected trademark applications. Gain the competitive edge at trial if clashes must be litigated.
Enhanced by a companion CD-ROM that allows you to navigate and implement the books how-to information faster than ever, Trademark Law gives you the protective tools to prove secondary meaning, likelihood of confusion, counterfeiting, dilution, deceptive trade practices, unfair competition, and misappropriation. Trademark Law also offers you equally sound advice on how to defend second comers, by alerting you to ways of discrediting plaintiffs survey evidence and to affirmative defenses to plaintiffs trademark actions.
Siegrun D. Kane, a partner in the New York City law firm of Morgan & Finnegan, L.L.P., received her B.A. (cum laude) from Mount Holyoke College and her J.D. from Harvard University. She has specialized in trademark, copyright, and unfair competition law for over thirty years and is a frequent lecturer for the Practising Law Institute, the American Bar Associate, and other continuing legal education organizations. Mrs. Kane is a designated member of the INTA Panel of Neutrals and serves on various advisory boards, including the Trademark Advisory Committee to the U.S. Patent and Trademark and Copyright Journal, and the McCarthy Center for Intellectual Property and Technology Law at the University of San Francisco.

Likelihood of Confusion in Trademark Law (Hardcover) Practising Law Institute (January 1, 2005) by Richard L. Kirkpatrick
Martha Sarra, Trademark Counsel, The Kroger Co.
"[Kirkpatrick] gets to the heart of likelihood of confusion and explains what every trademark lawyer needs to know."
Get a solid, hands-on grasp of all the essential factors used by the courts to determine if likelihood of confusion exists in trademark disputes, including full step-by-step coverage of the dominant multiple-factor test.
Likelihood of Confusion in Trademark Law enables you to conduct effective trademark searches and avoid disputes -- establish the strength of a mark -- prove actual confusion -- add features to make marks truly distinctive -- prove rightful intent for junior users -- and more - all with the aid of checklists and hundreds of defining examples.

The Entrepreneur's Guide to Patents, Copyrights, Trademarks, Trade Secrets & Licensing (August 3, 2004)
by Jill Gilbert
Clear, comprehensive advice from an intellectual property lawyer--for every artist, inventor, and small business owner.
Today, virtually all companies, artists, and innovators run the risk of losing their competititve edge-and big money-by not adequately safeguarding their intellectual property. Written by an expert in intellectual property law, this is the first book to address the full range of legal protections available-patents, copyrights, trademarks, trade secrets, and licensing-with innovative information you won't find elsewhere, including:
€ Legal landmines every successful entrepreneur must avoid
€ Business practices that can be protected-but are often overlooked
€ Protecting your intellectual property on the Internet
€ What are your ideas and the rights to them really worth?
€ Why trade secrets are a powerful and under-utilized protection
€ Lessons learned from Amazon.com, Microsoft, and other elite entrepreneurs
€ How even smart, savvy AOL lost exclusive trademarks, including "YOU'VE GOT MAIL!"
The Entrepreneur's Guide to Patents, Copyrights, Trademarks, Trade Secrets and Licensing is the definitive guide for the entrepreneur and innovator who is ready to protect what he or she has created-a
Jill Gilbert is an intellectual property attorney currently pursuing a Masters Degree in Computer Science and admitted to practice before theUnited States Patent and Trademark Office. She also holds a Masters Degree in Accountancy and a Master of Law (Llm) degree in taxation. She has authored seven books including such titles as PcAnywhere for Dummies, The Quickbooks Bible, and Teach Yourself TurboTax in 24 Hours, and is the coauthor of Online Investing Bible.

Don't be too descriptive with trademarks.(Law of the Line): An article from: Hawaii Business [HTML] (Digital)
by Robert Carson Godbey
This digital document is an article from Hawaii Business, published by Hawaii Business Publishing Co. on March 1, 2005. The length of the article is 429 words. The page length shown above is based on a typical 300-word page. The article is delivered in HTML format and is available in your Amazon.com Digital Locker immediately after purchase. You can view it with any web browser.
Citation Details
Title: Don't be too descriptive with trademarks.(Law of the Line)
Author: Robert Carson Godbey
Publication: Hawaii Business (Magazine/Journal)
Date: March 1, 2005
Publisher: Hawaii Business Publishing Co.
Volume: 50 Issue: 9 Page: 65(1)
Excerpt. © Reprinted by permission. All rights reserved.
Lasting Impressions and KP Permanent Make-Up both sell special makeup that can be injected under the skin to hide injuries and--in the words of the court--to "modify nature's dispensations." Lasting Impressions registered a trademark in the terms "Micro Colors." KP produced advertising materials using the term "microcolors" to describe its products. Lasting sued for trademark infringement and KP defended, claiming a fair use of the term, which the trademark statute recognizes as a defense to allegations of infringement. The case made it all the way to the U.S. Supreme Court.