In the era of competitive businesses, every company wants to distinguish
goods or products of a company from those of other companies by using a
trademark, which is nothing but a distinctive mark, word or wording, figure or
logo or any other indication, which can unambiguously distinguish a product or
service provided by a company in a specified national or international
The most common and popular trademark and service mark are made up of one or
more unique combination of, letter or word, sign, number, sign or symbol, design
or graphic image, phrasing, 2-D and 3-D shape, a unique combination of certain
colors, label, a distinctive packaging or a distinct sound or smell. For giving
rise to case of trademark opposition or trademark infringement litigation, the
partial similarities, phonetic similarities, or resemblance in appearances which
may confuse the mind of the customer towards that good is enough.
To differentiate trademarks, there is a list of classification which consist 45
different classes under Trademark Rules 2002, which represent trademarks in
respect to various fields of the broad economic sectors of business, industries,
profession and services. To protect the rights related the use of trademark and
service mark and to prevent the use of fraudulent marks, the relevant provisions
of the Trade Marks Act, 1999 and the rules provides for the registration and
such registration provided with the right for exclusive use, protection from
unauthorise use and helps business establishment in developing its goodwill.
Function of a Trademark or Service Mark
A trademark represents the identity and reputation and certain qualities which
has been developed during business in relation to product or service and a
trademark also helps in distinguishing the company in a given jurisdictional
marketplace. A trademark also makes products or service prominent, it assures
customers of certain unique, satisfying and unchanged qualities of products or
services and it advertises products or services, making these increasingly
popular. Proper and lawful registration of a trademark gives some legitimate and
privileged rights to the owner of the registered trademark, with the concerned
national or international trademarks offices with respect to jurisdiction.
In India, there are five regional trademark offices which are established in
Mumbai, New Delhi, Kolkata, Ahmedabad and Chennai and these offices register,
regulates and protect trademarks and service marks as per rules and regulation
provided under Trade Marks Act 1999 and Trade Marks Rules 2002. The protection
of trademark is provided across India irrespective of registration in any zonal
For applying one newly invented trademark, application is to be sent to
the trademark office with regards to the location and with the prescribed fees
as specified in the Trade Marks Rules 2002. Such initial registration is valid
for 10 years from the date of registration.
The application for Trademark
Renewal is filed within the expiry of the period in form TM-12 with the
concerned regional trademark office, together with renewal fee of INR 5,000/-
for securing trademark for next 10 years. A registered trademark helps in
avoiding the confusion in the mind of the customer with respect to the goods and
services by various competitors.
Worldwide protection of Trademark
For worldwide extension of business, proper registration of the concerned
trademarks under one or more international treaties are pre-requisite. Mainly
the treaties which help in the protection of trademark at international horizons
The TRIPS Agreement (Agreement on Trade Related Aspects of
Intellectual Property Rights)This international agreement came into force in 1995 which is efficiently and
prudently administered by the World Trade Organization and has at present over
150 member countries.
Berne or Paris ConventionIt is the oldest convention came into force in 1971 and has signed by much as
170 countries across the world.
Madrid ProtocolThis protocol came into force on 1995. This is a highly significant system in
connection with international business by the International Bureau of the World
Intellectual Property Organization , Geneva, Switzerland.
European Community Trademark (CTM)Company can obtain registration and protection of his trademark in anyone or all
member countries of the European Union with a single application at CTM office,
Important and Recent judgments on trademark infringementToyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd. and
In this case the Supreme Court has deal with the problem associated with the
territorial rights of a registered trademark.
Indeed, the trade mark 'Prius' had undoubtedly acquired a great deal of
goodwill in several other jurisdictions in the world and that too much earlier
to the use and registration of the same by the Defendants in India. But if the
territoriality principle is to govern the matter, and we have already held it
should, there must be adequate evidence to show that Plaintiff had acquired a
substantial goodwill for its car under the brand name 'Prius' in the Indian
The car itself was introduced in the Indian market in the year
2009-2010. The advertisements in automobile magazines, international business
magazines; availability of data in information-disseminating portals like Wikipedia and online Britannica dictionary and the information on the internet,
even if accepted, will not be a safe basis to hold the existence of the
necessary goodwill and reputation of the product in the Indian market at the
relevant point of time, particularly having regard to the limited online
exposure at that point of time, i.e., in the year 2001.
The news items relating
to the launching of the product in Japan isolatedly and singularly in the
Economic Times (Issues dated 27.03.1997 and 15.12.1997) also do not firmly
establish the acquisition and existence of goodwill and reputation of the brand
name in the Indian market. Coupled with the above, the evidence of the
Plaintiff's witnesses themselves would be suggestive of a very limited sale of
the product in the Indian market and virtually the absence of any advertisement
of the product in India prior to April 2001. This, in turn, would show either
lack of goodwill in the domestic market or lack of knowledge and information of
the product amongst a significant Section of the Indian population.
Britannia Industries Ltd. vs. ITC Ltd. and Ors
. Decided on 5th April
This recent case in the Delhi High Court, describe upon infringement of
trademark which is deceptively similar and may create confusion in the minds of
the customers by way of passing off.
Passing off has to be viewed from the perspective of the customer who wants to
purchase the product. Is he, having earlier bought the product of the plaintiff,
likely, on later coming across the product of the defendant, likely to confuse
it as having been made by the plaintiff? Are the packs so similar that the
customer, of average intelligence and imperfect recollection, may, on later
coming across the defendants' pack, associate it with the plaintiff?
To conclude, the various laws at territorial or international level helps to
prevent trademark infringement and the development in the field of Intellectual
Property moves towards new IPR regime so that to prepare ourselves for the
global trade competition. All the things are described by the way of few case