IPR notes

Unit 2

What is a Trademark?
Trademark is a branch of intellectual property rights. Intellectual property rights permit people to maintain ownership rights of
their innovative product and creative activity. The intellectual property came to light because of the efforts of human labour, so it
is limited by a number of charges for the registration and charges for infringement. Types of intellectual property are Trademarks,
Copyright Act, Patent Act, and Designs Act.

A trademark includes a name, word, or sign that differentiates goods from the goods of other enterprises. Marketing of goods or
services by the procedure becomes much easier with a trademark because recognition of product with the trademark is assured and
easier. The owner can prevent the use of his mark or sign by another competitor.

Trademark is a marketing tool which increases financing of the business. A trademark is not always a brand but the brand is
always is a trademark. Sometimes there is a confusion between trademark and brand. The brand name can be simply a symbol or
logo but the trademark is a distinguishing sign or indicator in a business organization as it has a wider implication than brands.
People are more influenced by the distinctive trademark that reflects the quality of the product. A trademark can be a logo, picture
mark or a slogan.

Trademark law in India

Before 1940 there was no law on trademarks in India. A number of problems of infringement of registered and unregistered
trademark arose which were resolved under Section 54 of the Specific Relief Act, 1877 and registration was adjudicated under the
Indian Registration Act,1908. To overcome these difficulties, the Indian Trademark law was enforced in 1940. After the
enforcement of the trademark law, demand for protection of trademarks increased as there was major growth in trade and
commerce.

The Trademark law was replaced with the Trademark and Merchandise Act, 1958. It provides better protection of trademark and
prevents misuse or fraudulent use of marks on merchandise. The Act provides registration of the trademark so that the owner of
the trademark may get a legal right for its exclusive use.

This previous Act got replaced with the Trademark Act, 1999 by the government of India by complying it with TRIPS (Trade-
related aspects of intellectual property rights) obligation recommended by the World Trade Organization. The aim of the
Trademark Act is to grant protection to the users of trademark and direct the conditions on the property and also provide legal
remedies for the implementation of trademark rights.

The Trademark Act, 1999 gives the right to the police to arrest in cases of infringement of the trademark. The Act gives a
complete definition for the term infringement which is frequently used. In Trademark Act, it provides punishments and penalties
for the offenders. It also increases the time duration of registration and also registration of a non-traditional trademark.

Types of Trademark

 Service mark
A service mark is any symbol name, sign, device or word which is intentionally used in trade to recognize and
differentiate the services of one provider from others. Service marks do not cover material goods but only the allocation
of services. Service marks are used in day to day services
1. Sponsorship
2. Hotel services
3. Entertainment services
4. Speed reading instruction
5. Management and investment
6. Housing development services

A service mark is expected to play a critical role in promoting and selling a product or services. A product is indicated by
its service mark, and that product's service mark is also known as a trademark.

 Collective mark
A collective mark is used by employees and a collective group, or by members of a collaborative association, or the other
group or organization to identify the source of goods or services. A collective mark indicates a mark which is used for
goods and services and for the group of organizations with similar characteristics. The organization or group uses this
mark for more than one person who is acting in a group organization or legal entity for dividing the different goods or
services. Two types of collective marks for distinguishing with other goods or services of similar nature:

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 Collective mark indicates that the marketer, trader or person is a part of the specified group or organization.
Example: CA is a collective trademark which is used by the Institute of the chartered accountant.

Collective trademark and collective service mark are used to indicate the origin or source of the product.

A collective trademark is used by the single members of a group of an organization but is registered as a whole group.
Example: CA is the title or mark which given to the member of Institute of a chartered accountant. That collective mark
may be used by the group of association. This was added to the Trademark Act, 1988.

 Certification mark
A certificate mark is verification or confirmation of matter by providing assurance that some act has been done or some
judicial formality has been complied with. A certification mark indicates certain qualities of goods or services with which
the mark are used is certified, a certification mark is defined in the Trademark Act, 1999.

Certification trade mark means a mark competent of identifying the goods or services in connection with which it is used
in the manner of trade, which is certified by the owner of the mark in respect of source, body, mode of manufacturer of
goods or performances of assistance, quality, accuracy or other characteristics.

Those goods or services which not so certified and registrable as such under this Act, in respect of those goods or
services in the name as the proprietor of the certification trade mark, of that person. Registration of certification mark is
done according to the Trademark Act, 1999. Re
 quirements for registration is the product must be competent to certify.

 Trade dress
Trade dress is a term that refers to features of the visual appearance of a product or design of a building or its packaging
that denote the source of the product to customers. It is a form of intellectual property. Trade dress protection is
implemented to protect consumers from packaging or appearance of products that framed to imitate other products.

Essential of trade dress:

1. Anything that makes an overall look or overall dress and feel of brand in the market.
2. The consumer believes that trade dress is the main indicator of differentiation of one brand or goods from
others.
3. The requirement for the registration of trade dress is the same as the registration of the logo, mark. The features
in trade dress are size, colour, texture, graphics, design, shape, packaging, and many more.

 Designation of trademark
Trademark is designated by:

1. ™ (™ is used for an unregistered trademark. It is used to promote or brand goods).

2. ℠ ( used for an unregistered service mark. It is used to promote or brand services).
3. R (letter R is surrounded by a circle and used for registered trademark).

Uses of Trademark
Trademark identifies the owner of the product. Under any authorized agreement of product, a trademark can be used, an example
of trademarks goods names are, iPod and a big mac. Company logos like the Golden Arches at McDonald's and McDonald's "I'm
lovin' it. Brand names like Apple, McDonald's, and Dolce & Gabbana.

The usage of the trademark by unauthorized means or illegal means by producing it in trading is known as trademark piracy. If
there is an infringement of trademark, the owner of the registered trademark can take legal action and for an unregistered
trademark, the only option is passing off. Many countries like the United States, Canada and many more also, accept the
trademark policies, so they also gave the right to the master of product to take the action for the protection of their trademark A
common concept of a trademark is that the owner of a registered trademark has a more legal right for protection than the owner of
unregistered trademark.

The concept of usage of the non-physical trademark the Supreme Court held in the case of Hardie trading Ltd. v. Addison paint
and chemicals Ltd. The Supreme Court gave a wider interpretation on the usage of a trademark that it could be non-physical and
that there were no grounds to restrict the user to use on the commodities or to the sale of the commodities bearing the trademark.

Owner of the Trademark

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Trademark gives protection to the owner by assuring them with the exclusive rights to use a trademark, to identify the goods or
services or permit others to use it in results of payment. It is a weapon for the registered proprietor to stop the others from illegal
use of the trademark. Under Section 28 the rights conferred by registration.

The registration of a trademark is valid if the right is given to the certified owner of the trademark, the owner has the exclusive
right to use of the trademark in respect of goods or services in which the trademark is registered and to claim maintenance in
respect of infringement of the trademark is given to the holder of the trademark.

Wherever more than two persons are certified proprietors of the trademark which are same with or nearly identical with each
other. The exclusive right to use of each of those trademarks shall not except if their own rights are related to any conditions or
limitations entered on the register be expected to be taken by one of those persons as against of other persons only by registration
of the trademark, but each of those persons has the same rights as against other persons.

India's obligations under the TRIPS Agreement for protection of trademarks, inter alia, include protection to distinguishing marks,
recognition of service marks, indefinite periodical renewal of registration, abolition of compulsory licensing of trademarks, etc.

With the globalization of trade, brand names, trade names, marks, etc. have attained an immense value that require uniform
minimum standards of protection and efficient procedures for enforcement as were recognised under the TRIPS. In view of the
same, extensive review and consequential amendment of the old Indian Trade and Merchandise Marks Act, 1958 was carried out
and the new Trade Marks Act, 1999 was enacted. The said Act of 1999, with subsequent amendments, conforms to the TRIPS and
is in accordance with the international systems and practices.

The Trade Marks Act provides, inter alia, for registration of service marks, filing of multiclass applications, increasing the term of
registration of a trademark to ten years as well as recognition of the concept of well-known marks, etc. The Indian judiciary has
been proactive in the protection of trademarks, and it has extended the protection under the trademarks law to Domain Names as
demonstrated in landmark cases of Tata Sons Ltd. v. Manu Kosuri & Ors, [90 (2001) DLT 659] and Yahoo Inc. v. Akash Arora
[1999 PTC 201].

India, being a common law country, follows not only the codified law, but also common law principles, and as such provides for
infringement as well as passing off actions against violation of trademarks. Section 135 of the Trade Marks Act recognises both
infringement as well as passing off actions. The Supreme Court of India, in a path-breaking decision titled Justice K S
Puttaswamy v. Union of India, ruled that the right to privacy is a basic core fundamental right protected by the Indian Constitution
as an intrinsic part of Article 21, which protects the right to life and personal liberty. Enshrined in the right to privacy is also the
right to publicity.

The Delhi High Court has recently been engaged with cases involving infringing and counterfeiting activities on the internet and
online marketplaces. In Kent RO Systems Ltd v. Amit Kotak, the court held that under the provisions of the Act and the Rules, an
intermediary is only required to declare to all its users its policy in regard to violation of IP rights of others and advise them not to
host any infringing information. The court held that eBay is entitled to be protected under the safe harbour provisions of the
Information Technology Act and had complied with the Information Technology (Intermediaries Guidelines) Rules 2011. In an
appeal against this decision,4 the appeal court, however, held that the court could not, on a demurrer, accept eBay as an
intermediary and the same would have to be established on trial.

In Christian Louboutin SAS v. Nakul Bajaj, the court set out the guidelines under which an online marketplace could claim the
exemptions available to an 'intermediary' under the Information Technology Act 2000. Similarly, in Amway India Enterprises Pvt
Ltd v. 1MG Technologies Pvt Ltd, the court held that online marketplaces such as 1MG, Amazon, Flipkart and Snapdeal are not
mere passive platforms, but are massive facilitators providing warehousing, logistical support, packaging, delivery services,
payment services, collection gateways and suchlike.

In an appeal against this decision the division bench of the Delhi High Court set aside the order of the single judge and held that
the findings of the single judge ran contrary to the structure and frame of the suits and also held that the single judge had
misinterpreted Section 79 of the Information Technology Act.

In another recent case, of Delhivery Pvt Ltd v. Treasure Vase Ventures Pvt Ltd, recording the submissions of reliance on the US
Supreme Court decision in Booking.com, a single judge of the Delhi High Court formed a prima facie opinion that the mark
'Delhivery' if pronounced in a routine manner shall mean 'delivery' and, being a generic word, cannot be registered as a trademark.

Other than these cases, Indian courts are currently hearing arguments on issues such as use of registered trademarks as keywords
or part of key words, a dispute that involves search engines such as Google.

Legal framework

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1. Legislation
The Trade Marks Act 1999 and the Trade Marks Rules 2017 provide for registration of trade and service marks. The term
'trademark' in India includes service marks. The Companies Act 2013 provides for registration of company names. The
Geographical Indications of Goods (Registration and Protection) Act 1999 provides for registration of geographical
indications (GIs) of goods.

India is also a member of the World Trade Organization and a signatory to the Agreement on Trade-Related Aspects of
Intellectual Property Rights, the Paris Convention for the Protection of Industrial Property and the Madrid Protocol for
the International Registration of Marks. India is also a member of the Nairobi Treaty on the Protection of the Olympic
Symbol. Additionally, India adopted the Nice Agreement on the International Classification of Goods and Services and
the Vienna Classification, established by the Vienna Agreement.

2. Authorities
The Registrar of Trade Marks under the Intellectual Property Office (IPO) manages the filing and registration of
trademarks. The registrar is empowered to refuse or rectify marks based on absolute or relative grounds, or both. Appeals
from its orders can be filed with the Intellectual Property Appellate Board (IPAB).

The GI Registry, also under the IPO, manages the filing and registration of GIs.

Company names can be registered with the Registrar of Companies (ROC). The ROC also has powers to disapprove or
rectify names of companies that are identical to or too closely resemble the name by which a company in existence had
been previously registered.

Cooperative societies can be registered with the Department of Registrar Co-operative Society.

Domain name registration for .in and .co.in domain names can be undertaken through registrars appointed by the .IN
Registry working with the National Internet Exchange of India, both of which, in turn, are under the Ministry of
Electronics and Information Technology. The .IN Registry has adopted the Uniform Dispute Resolution Policy and is
assisted by a Dispute Resolution Committee to resolve disputes in this regard. It also has powers to appoint arbitrators to
address disputes involving registrars and registrants.

Disputes relating to print and television advertising, including comparative advertising, are undertaken by the
Advertising Standards Council of India (ASCI), which is an industries body with representation from the industry. The
ASCI Code is recognised and enforceable under the Cable Television Networks Rules 1994, which stipulate that 'No
advertisement which violates the Code for self-regulation in advertising, as adopted by the Advertising Standards
Council of India (ASCI), Mumbai for public exhibition in India, from time to time shall be carried in the cable service'.

Remedies against the manufacture and sale of misbranded drugs and cosmetics can be undertaken through the drug
inspectors. Such products are licensed under the office of the Drug Controller, all under the provisions of the Drugs and
Cosmetics Act 1940.

3. Substantive law
Registered trade and service marks protected by the Trade Marks Act 1999, registered GIs, unregistered and well-known
trademarks protected by common law, can all be protected through the filing of civil suits. Trademark violations also
attract criminal liabilities (see Section V.i).

The Trade Marks Register itself can be rectified by filing proceedings with either the Registrar of Trade Marks or the
IPAB.

Company names can be enforced either through filing substantive suits in civil courts or through the mechanism provided
in the Companies Act 2013, empowering the ROC to rectify names of objectionable companies.

India has been at the forefront of protection of internationally well known trademarks, even if the trademarks are not used
in India. The Trade Marks Act stipulates the following criteria for determining whether a trademark is well-known in
India:

the knowledge or recognition in the relevant section of the public, including knowledge in India obtained as a result of
promotion;

the duration, extent and geographical area of any use;

the duration, extent and geographical area of any promotion, including advertising or publicity and presentation, at fairs
or exhibitions;

the duration and geographical area of any registration of or any application for registration to the extent that they reflect
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 the use or recognition of the trademark; and

the record of successful enforcement of the rights mark; in particular, the extent to which the trademark has been
recognised as a well-known trademark by any court or registrar under that record.

The term 'relevant section of the public' takes into account: (1) the number of actual or potential consumers; (2) the
number of persons involved in the channels of distribution; and (3) the business circles dealing with the goods or services
to which that trademark applies.

Where a trademark has been determined to be well known in at least one relevant section of the public in India by any
court or registrar, that trademark is considered as a well-known trademark for registration. There is no requirement that
the trademark is well known to the public at large.

The trademark is neither required to be used nor registered to be declared a well-known trademark. The Registrar
maintains a list of declared well-known trademarks in India, which it also publishes.

The Information Technology Act 2000 and the Intermediary Guidelines Rules 2011 enacted under the said Act provide
rules and regulations, terms and conditions or user agreements informing users of computer resources not to host,
display, upload, modify, publish, transmit, update or share any information that infringes any patent, trademark,
copyright or other proprietary rights.

The manufacture and sale of misbranded drugs and cosmetics, which includes adulterated and spurious drugs and
cosmetics, can also be enforced through the provisions of the Drugs and Cosmetics Act 1940.

Registration of marks
Registration of trademarks can be undertaken by filing an application with the IPO. The fee for a physical filing is 10,000 rupees.
For e-filing, the fee is reduced by 10 per cent. There is a new expedited process for registration for which an additional expedited
processing fee of 40,000 rupees is payable. The fee for renewal of a registered trademark is identical to the filing fee (i.e., 10,000
rupees for a physical filing and 9,000 rupees for an e-filing).

Once an application is filed, it is given an exclusive number and a date. Based on the priority of filing it is taken in its turn and
examined. The process of examination includes an assessment of inherent registrability and acquired distinctiveness and prior
rights. If no objections are found, the trademark is published in the Trade Marks Journal to invite oppositions (see Section III.iii)
from members of the public at large. If no objections are filed within four months of the publication, the registration certificate is
issued. The registration dates back to the date of the application and is thereafter renewable every 10 years.

There is no requirement for the mark to have been used in India to make it eligible for registration in India. Trademarks can also
be registered on a proposed user basis. If, however, use of the trademark is not commenced for a period of five years, it can be a
ground for removal of the trademark from the Register of Trade Marks.

1. Inherent registrability
The following trademarks are not registrable in India on grounds of inherent registrability:

1. those devoid of any distinctive character; that is to say, not capable of distinguishing the goods or services of
one person from those of another person;
2. those that consist exclusively of marks or indications that may serve in trade to designate the kind, quality,
quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of
the service or other characteristics of the goods or service;
3. those consisting exclusively of marks or indications that have become customary in the current language or in
the bona fide and established practices of the trade;
4. those of such nature as to deceive the public or cause confusion;
5. those containing or comprising any matter likely to hurt the religious susceptibilities of any class or section of
citizens of India;
6. those comprising or containing scandalous or obscene matter;
7. those whose use is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950; or
8. those consisting exclusively of a shape:
9. of goods that results from the nature of the goods themselves;
10. of goods that is necessary to obtain a technical result; or
11. that gives substantial value to the goods

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 In Bata India Ltd v. Chawla Boot House, the court held that while generic marks are least distinctive, descriptive
marks require secondary meaning to be established before they can be registered. However, suggestive marks and
arbitrary and invented marks are all inherently distinctive, not requiring any evidence of secondary meaning.

In the case of descriptive marks, registration can be obtained by producing evidence that, before the date of application
for registration, the mark acquired a distinctive character as a result of the use made of it or it was a well-known
trademark.

A trademark may be limited wholly or in part to any combination of colours. If a trademark is registered without
limitation of colour, it is deemed to be registered for all colours.

2. Prior rights
A trademark can be denied registration if there exists a likelihood of public confusion with an earlier trademark, which
includes the likelihood of association with the earlier trademark, and if either of the following relative grounds (based on
prior rights) applies:

1. the mark is identical to an earlier trademark within a similar goods or services sector; or
2. the mark is similar to an earlier trademark within an identical or similar goods or services sector.

A trademark may be denied registration even in a case where it is sought to be registered for goods or services that are
not similar to those for which the earlier trademark is registered in the name of a different proprietor or if the earlier
trademark is a well-known trademark in India, if the use of the later mark without due cause would take unfair advantage
of or be detrimental to the distinctive character or repute of the earlier trademark. An earlier trademark is one that is
either registered or used prior to the later trademark.

Similarly, a trademark can be denied registration if its use in India is liable to be prevented by the laws of passing off or
copyright.

3. Inter partes proceedings

All trademark applications are published in the Trade Marks Journal to enable members of the public to oppose such
registrations within a period of four months. It is also possible to initiate proceedings with the Registrar to initiate
rectification or cancellation proceedings against granted registrations. These can also be initiated with the IPAB. While
opposition proceedings can be initiated by any member of the public, rectification

4. Appeals
Appeals against the orders of the Registrar can be filed with the IPAB. Orders of the IPAB can be challenged in the
Supreme Court of India by way of a special leave petition. It may also be possible to challenge such orders of the IPAB
by way or writ petition to a high court.

Civil litigation

1. Forums
The district court is considered the court of first instance for trademark disputes. An appeal therefrom lies to the high
courts, and, finally, an appeal by way of special leave petition lies with the Supreme Court. There are 29 states in India,
divided into 731 districts, with each district having a district judge (DJ) who is the administrative head of the district, and
there are additional district judges who have the same judicial powers as the DJ. Additionally, there are 24 high courts in
India, all of which have appellate jurisdiction over the district courts and some quasi-judicial bodies or tribunals. Six high
courts (of Delhi, Bombay, Madras, Calcutta, Jammu and Kashmir, and Himachal Pradesh) have original jurisdiction and
can entertain trademark suits. These suits are filed before a single judge, and a bench of two judges has appellate
jurisdiction over the single judge.

The territorial jurisdiction of a court is decided by the residence or place of business of the defendant (the infringer) or
the place where the infringement (cause of action) takes place. It is also possible to claim jurisdiction on the basis of a
threat in the jurisdiction. Under the Trade Marks Act, it is also possible to confer jurisdiction on courts where the
trademark owner resides or carries on business or has its principal place of business. The Supreme Court of India has
recently ruled on these issues in the case of IPRS v. Sanjay Dalia. Other relevant rulings of the Supreme Court include
Dhodha House v. S K Maingi and Patel Roadways Ltd v. Prasad Trading Company.

There have also been rulings of the Delhi High Court (Division Bench) conferring jurisdiction on courts on the basis of
interactive websites, which include Banyan Trade Holding v. A Murali Krishan Reddy and WWE v. Reshma Collection.

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 As far as pecuniary jurisdiction is concerned, claims must be for at least 20 million rupees for a case to be eligible for
filing in the Delhi High Court. For the Bombay High Court, it is half this amount. The court fee payable is 1 per cent of
the amount claimed.

2. Pre-action conduct
It is advisable to conduct appropriate investigations before commencing actions. This should include, among other
things, online and on ground investigations, and searches on the Trade Marks Register and Registrar of Companies.
Based on the results, litigation strategies should be devised, which could include obtaining and executing ex parte search
and seizure orders, serving the opposite party with cease-and-desist notices, and initiating pre-litigation mediation
proceedings15 under the Commercial Courts Act.16.

3. Causes of action
Cause of action for a trademark case may be triggered by (1) actual infringing use of the mark, including use on business
paper or packaging material; (2) likelihood of passing off; (3) threat of use or passing off; (4) advertising, including
online advertising through an interactive website; (5) import or export of infringing goods; (6) infringing use by use in a
company or firm name; or (7) adoption of infringing domain name, key words, meta tags, etc.

4. Conduct of proceedings
The recently enacted Commercial Courts Act mandates each state government to constitute commercial courts at district
levels. High courts have original civil jurisdiction and are mandated with having commercial divisions within them. Over
250 commercial courts have already been constituted. The Delhi High Court itself has six commercial divisions.
Trademark suits relating to registered or unregistered trademarks are considered commercial disputes.

The Commercial Courts Act provides for strict timelines to conclude trademark suits. Some significant
enactments are as follows:

1. A written statement is required to be filed within 30 days (up to a maximum of 120 days) of the date of service
of summons. This period is not extendable.17 The written statement is required to be accompanied by an
affidavit of admission and denial of the plaintiff's documents.
2. All documents in support of the plaint and the written statement are required to be submitted along with the
respective documents.
3. Inspection of documents of both parties are liable to be concluded within 30 days of filing of the written
statement.
4. Within 15 days of inspection, the first case management hearing is liable to be held.
5. The Commercial Courts Act mandates for trial and arguments to be concluded within six months of conducting
the first case management hearing. The judge is required to pronounce a decision within 90 days thereafter.
6. One important strategy for a speedy trial is to seek appointment of trial including examination and cross-
examination of witnesses to be conducted before a court-appointed commissioner. Using this strategy, there are
already examples of trials, including complicated patent trials, being concluded in less than six months.
7. Under the Commercial Courts Act, costs are liable to be imposed on the defaulting party that does not adhere to
the timelines. Actual costs are also liable to be granted for fees and expenses of witnesses incurred, legal fees
and expenses incurred and any other expenses incurred in connection with the proceedings. There are several
precedents of courts awarding actual costs with the unsuccessful party ordered to pay the costs of the successful
party. In Merck Sharp and Dohme v. Abhayakumar Deepak, the court ordered costs of 8 million rupees. In
Koninklijke Philips Electronics NV v. Rajesh Bansal, a case of patent infringement, the court ordered an order
of injunction and actual costs to the tune of 31.571 million rupees. In Glenmark Pharmaceuticals Ltd v.
Curetech Skincare, the Bombay High Court granted costs to the tune of 15 million rupees, payable to a relief
fund in charity.

5. Remedies
In civil proceedings, courts have powers to pass the following orders:

1. injunctions against future violations (also ex parte);

2. civil search and seizure orders (also ex parte);
3. damages or accounts for profits;
4. discovery of documents;
5. preservation of infringement goods or documents or other evidence; and
6. preservation of assets of the defendant (also ex parte).

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Other enforcement proceedings

1. Criminal enforcement
Trademark violations under the Trade Marks Act 1999 also invite penal consequences that may include imprisonment of
up to three years and fines of up to 200,000 rupees.

Under the Act, a police officer of or above the rank of deputy superintendent of police or its equivalent can conduct
search and seizure operations against a prospective infringer after obtaining an opinion on the same from the Registrar of
Trade Marks. It is also possible to obtain open-ended search and seizure orders from magistrates' courts against known or
unknown parties.

The National Intellectual Property Rights (IPR) Policy recognises the need to build the capacity of the enforcement
agencies at various levels, including strengthening of IPR cells in state police forces. Since the adoption of the National
IPR Policy in 2016, IPR cells have been established in various states' police departments. Some states, such as Telangana
and Maharashtra, have also established intellectual property (IP) crime units. IPR enforcement training and capacity-
building of police officials is regularly conducted, which includes working from the IPR Enforcement Toolkit for Police,
which is a handbook that serves as a ready reckoner for police officials in dealing with IPC.in particular, trademark
counterfeiting.

2. Customs
Notification 47/2007-Customs (NT), dated 8 May 2007, and Circular No. 41/2007-Customs, dated 29 October 2007,
empower customs authorities to interject goods suspected to be counterfeit or pirated at the border. The said rules are
applicable on import of goods that infringe IP registered in India. Apart from registration with the appropriate authority
for obtaining IP rights, registration with the Customs Department is also necessary for obtaining protection at the border.

Once IP is registered with the customs authorities, seizure of suspected counterfeit goods is carried out suo moto (on its
own initiative) by Customs. The IP right holder is also required to furnish the details of the country or person suspected
of exporting counterfeit goods to India in order to keep a check on the activities of those persons or consignments from
those countries. Even where the IP is not registered with Customs, the clearance of imported goods can be suspended if
Customs has prima facie evidence or reasonable grounds to believe that they infringe IP rights. The right holder may then
be asked to comply with the filing of notice, among others, within five days of the date of suspension of clearance of
goods.

Outlook
Although India is notorious for what is perceived as inefficient legal and administrative systems with inherent delays,
things in the past few years have been very different.

The IPO, itself, has undertaken several measures to cut delays. Comprehensive amendments by way of the Trademark
(Amendment) Rules 2017, which were made effective from 6 March 2017, streamline and simplify the trademark
procedures. The number of forms has been reduced from 74 to eight. There is now one application form for all types of
trademark applications. Emails have been introduced as a mode of service, and hearings can be held through video
conferencing. SMS alert facilities have also been introduced. Registration certificates are automatically processed and
despatched to designated email IDs, and are also uploaded to the electronic register. Similar processes have been initiated
for renewals processes. Allotment of applications for examination has been automated to be examined by seniority of
filing.

A 10 per cent concession has been provided for filing applications online, and online filing of trademark applications has
increased by more than 80 per cent. To promote filing, there is a 50 per cent concession in the prescribed fee for start-
ups, individuals and small enterprises. Procedures that provided for filing extensions of time for submissions of affidavits
and evidence have been removed. Adjournment of hearings has been restricted to a maximum of two, with the provision
that each adjournment shall not be for more than 30 days.

The website of the IPO is one of the more efficient ones from a global perspective. The entire e-file of applications and
prosecution history is available through an easy-to-navigate search mechanism. Documents are uploaded in PDF format
and are available publicly. With its online register, along with provisions of the Right to Information Act, it can safely be
said that the Indian IPO is perhaps one of the most transparent intellectual property offices in the world. As a result of
these changes, registration of trademarks has increased by over 20 per cent, and final disposal of cases by over 90 per
cent. Indeed, it is not unusual for registrations to be granted within six to eight months.

On the enforcement front, with the introduction of the Commercial Courts Act, efficiency of handling cases has
improved tremendously, reducing timelines significantly. The number of judges at the district level has increased with
new, and better, infrastructure.

E-court services have been introduced across courts in India with an enhanced and improved website containing details
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 of all cases filed and their current status.21 There have been several improvements in the working of the site itself, and a
mobile app has also been introduced.

In conclusion, it would be safe to say that India recognises the importance of soft assets such as intellectual property and
the role that they can play in the development of the economy. Several measures have been and are being taken to
smooth the processes, making it more transparent and enhancing the aspect of timeliness and efficiency. There are still
constraints on resources, and much still needs to be done; however, the country is moving in the right direction and that,
too, at a fairly rapid pace.

Well-known Trademark and Trans Border Reputation

India recognises the concept of the "Well-known Trademark" and the "Principle of Trans Border Reputation". A well-known
Trademark in relation to any goods or services means a mark that has become so to the substantial segment of the public, which
uses such goods or receives such services such that the use of such a mark in relation to other goods and services is likely to be
taken as indicating a connection between the two marks.

Trans Border Reputation concept was recognised and discussed by the Apex Indian Court in the landmark case of N. R. Dongre v.
Whirlpool (1996) 5SCC 714. The Trademark "WHIRLPOOL" was held to have acquired reputation and goodwill in India. The
Mark "WHIRLPOOL" was also held to have become associated in the minds of the public with Whirlpool Corporation on account
of circulation of the advertisements in the magazines despite no evidence of actual sale. Hence, the trademark WHIRLPOOL was
held to have acquired trans-border reputation which enjoys protection in India, irrespective of its actual user or registration in
India.

Legal Remedies against Infringement and/or Passing off

Under the Trade Marks Act, both civil and criminal remedies are simultaneously available against infringement and passing off.

Infringement of trademark is violation of the exclusive rights granted to the registered proprietor of the trademark to use the same.
A trademark is said to be infringed by a person, who, not being a permitted user, uses an identical/ similar/ deceptively similar
mark to the registered trademark without the authorization of the registered proprietor of the trademark. However, it is pertinent to
note that the Indian trademark law protects the vested rights of a prior user against a registered proprietor which is based on
common law principles.

Passing off is a common law tort used to enforce unregistered trademark rights. Passing off essentially occurs where the reputation
in the trademark of party A is misappropriated by party B, such that party B misrepresents as being the owner of the trademark or
having some affiliation/nexus with party A, thereby damaging the goodwill of party A. For an action of passing off, registration of
a trademark is irrelevant.

Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action against violation of trademarks in
India. In India, a combined civil action for infringement of trademark and passing off can be initiated.

Significantly, infringement of a trademark is a cognizable offence and criminal proceedings can be initiated against the infringers.
Such enforcement mechanisms are expected to boost the protection of marks in India and reduce infringement and contravention
of trademarks.

Relief granted by Courts in Suits for Infringement and Passing off

The relief which a court may usually grant in a suit for infringement or passing off includes permanent and interim injunction,
damages or account of profits, delivery of the infringing goods for destruction and cost of the legal proceedings.

The order of interim injunction may be passed ex parte or after notice. The Interim reliefs in the suit may also include order
for:

 Appointment of a local commissioner, which is akin to an "Anton Pillar Order", for search, seizure and preservation of
infringing goods, account books and preparation of inventory, etc.
 Restraining the infringer from disposing of or dealing with the assets in a manner which may adversely affect plaintiff's
ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.

Offences and Penalties

In case of a criminal action for infringement or passing off, the offence is punishable with imprisonment for a term which shall not
be less than six months but which may extend to three years and fine which shall not be less than INR 50,000 but may extend to
INR 200,000.

Procedure of Registration of Trademark in India

9
The procedure for registration of a trademark in India is given below:

In order to fulfill the obligations of any treaty, convention or arrangement with a country or countries that are members of inter-
governmental organizations, which accord to Indian citizens similar privileges as granted to their own citizens, the Central
Government notifies such countries to be Convention Countries. In case of an application for registration of a trademark made in
any of the Convention countries, a priority date can be claimed with regard to the application in India, provided that the
application is made within six months of the application having been filed in the Convention country. The Government has
notified and extended this privilege of priority to the members who have ratified the Paris Convention on Protection of Industrial
Property.

Madrid Protocol
India Parliament has passed the Trade Marks (Amendment) Bill, 2009 for enacting special provisions relating to protection of
trademarks through international registration under the Madrid Protocol. As per the Amendment Bill, from the date of the
international registration of a trademark where India has been designated or the date of the recording in the register of the
International Bureau about the extension of the protection resulting from an international registration of a trademark to India, the
protection of the trademark in India shall be the same as if the trademark had been registered in India. The Amendment Bill is yet
to be notified.

Classification of goods and services

For the purpose of classification of goods and services for registration of trademarks, India follows the International Classification
of Goods and Services (Nice Classification) published by World Intellectual Property Organization (WIPO). For the purpose of
classification of the figurative elements of marks, India follows the Vienna Agreement.

Opposition proceedings
After advertisement of a trademark in the Trade Marks Journal, (which is available online at the website of Office of Registrar of
Trademarks) an opposition challenging the application for registration can be filed by any person within a period of 3 months
(which may be extended by a period not exceeding 1 month).

Renewal of registration
The trademark is initially registered for a period of 10 years, which is calculated from the date of filing of the application and in
case of convention application, from the date of priority. The registration is required to be renewed within 6 months before the
date of expiry of the registration, i.e., 10 years from the date of the application or subsequent renewals.

The failure in renewing the trademark within the stipulated period of time and a grace period of maximum 1 year granted for
restoration of the trademark, automatically leads to removal of the trademark from the Register of Trademarks.

Rectification of Trademark
An aggrieved person may file an application before the Registrar of Trademarks or to the Intellectual Property Appellate Board
(IPAB) for cancellation or varying the registration of the trademark on the ground of any contravention or failure to observe a
condition entered on the Register in relation thereto.

The application for rectification can also be filed for removal of an entry made in Register, without sufficient cause or wrongly
remaining on the Register and for correction of any error or defect in any entry in the Register.

Assignment, Transmission and Licensing of Trademarks in India

"Assignment" means an assignment in writing by an act of the parties concerned. While in case of licensing, the right in the
trademark continues to vest with the proprietor, the assignment of the trademark leads to a change in the ownership of the mark. A
registered trademark is assignable with or without the goodwill in respect of all or only some of the goods/services for which the
mark is registered.

India is a member to TRIPS and Article 21 of the TRIPS dealing with Licensing and Assignment mandates that "... the owner of a
registered trademark shall have the right to assign the trademark with or without the transfer of the business to which the
trademark belongs." Section 39 of the (Indian) Trade Marks Act, 1999 allows for the assignment of an unregistered trademark
with or without the goodwill of the business concerned.

Indian law contains embargo on the assignments of trademark, whether registered or unregistered, whereby multiple exclusive
rights would be created in more than one person which would result in deception/confusion. However, the assignment with
limitations imposed, such as goods to be sold in different markets, i.e., within India or for exports are valid. The Registrar is
authorized to issue a certificate of validity of the proposed assignment on a statement of case by the proprietor of a registered
trademark who proposes to assign the mark. The said certificate as to validity is conclusive unless vitiated by fraud.

Registration of Trademark
Any person claiming to be the owner of the trademark or supposed to used the trademark by him in future for this he may apply in
writing to the appropriate registrar in a prescribed manner. The application must contain the name of the goods, mark and
services, class of goods and the services in which it falls, name and address of the applicant and duration of use of the mark. Here
10
the person means an association of firms, partnership firm, a company, trust, state government or the central government.

Conditions of registration
The central government by mentioning in the official gazette appoint a person to be known as the controller, general of patents,
designs and trademark who shall be the registrar of the trademark. The central government may appoint other officers also if they
think that they are appropriate, for the purpose of discharging, under the superintendence and direction of the registrar, the
registrar may authorize them to discharge.

The registrar has the power to transfer or withdraw the cases by in writing with reasons mentioned. Under Section 6 of the Act,
discussed the maintenance of a registered trademark. At head office wherein particulars of registered trademarks and other
prescribed, particulars, except notice of the trust, shall be recorded. The copy of the register is to be kept at each branch office. It
gives for the preservation of records in computer or diskettes or in any other electronic form.

Absolute grounds for refusal of registration

Absolute grounds for the refusal of registration is defined in Section 9 of the Act. The trademarks which can be lacking any
distinctive characteristics or which consists exclusively of marks or signals, which can be used in trade to indicate the kind, fine,
quantity, supposed grounds, values, geographical origin.

And also a time of production of goods or rendering of the offerings or different characteristics of the goods or offerings which
consists solely of marks or indications which have come to be average in the present language. That marks are not entitled to
registration. Except it is confirmed that the mark has in fact acquired a new character as a result of use before the date of
application.

It gives that a mark shall not be registered as trademarks if:

 It frauds the public or causes confusion.

 There is any matter to hurt religious susceptibility.
 There is an obscene or scandalous matter.

Its use is prohibited. It provides that if a mark contains exclusively of (a) the shape of goods which form the nature of goods or,
(b) the shape of good which is needed to obtain a technical result or, (c) the shape of goods which gives substantial value of goods
then it shall not be registered as trademark.

Test of similarity
For the conclusion, if one mark is deceptively similar to another the essential features of the two are to be considered. They should
not be placed side by side to find out if there are any differences in the design and if they are of such a character to prevent one
design from being mistaken for the other. It would be enough if the disputed mark has such an overall similarity to the registered
mark as it likely to deceive a person usually dealing with one to accept the other if offered to him. Apart from the structural,
visual, and phonetic similarity or dissimilarity, the query needs to be viewed from the factor of view of man typical intelligence
and imperfect collection secondly. It's regarded as an entire thirdly it is the query of his impressions.

In Mohd. Iqbal v. Mohd. Wasim it was held that "it is common knowledge that 'bidis' are being used by persons belonging to the
poorer and illiterate or semi-literate class. Their level of knowledge is not high. It cannot be expected of them that they would
comprehend and understand the fine differences between the two labels, which may be detected on comparing the two labels are
common. In view of the above, there appears to be a deceptive similarity between the two labels".

Relative grounds for refusal of registration

Under Section 11 of the Act, it gives relative grounds for the refusal of registration of a trademark. A trademark cannot be
registered if because of:

1. its identity with an earlier trademark and similarity of goods or services,

2. its similarity to an earlier trade mark and the similarity of the goods and there is a probability of confusion.

It also gives that a trademark cannot be registered which is identical or similar to an earlier trademark. And also which is to be
registered for goods and services which are not similar to those for which earlier trademark is registered in the name of a different
proprietor if, or to the extent, the earlier trademark is well known in India. It further gives that a trademark is cannot be registered
if, or to the extent that, its use in India is liable to be prevented by virtue of any law.

Procedure and Duration of registration

The registrar on the application made by the proprietor of the trademark in the prescribed manner within the given period of time
with adequate payment of fees. Registration of a trademark shall be of ten years and renewal of the registered trademark is also for
a period of ten years from the date of expiration of the original registration or of the last renewal of registration.

11
The registrar shall send the notice before the expiration of last registration in the prescribed manner to the registered proprietor.
The notice mentions the date of expiration and payment of fees and upon which a renewal of registration may be obtained if at the
expiration of the time given in that behalf those conditions have not duly complied with the registrar may remove the trademark
from the register.

But the registrar shall not remove the trademark from the register if implication made within the prescribed form and the
prescribed rate is paid within six months from the expiration of the final registration of the trademark and shall renew the
registration of the trademark for an interval of ten years. If the trademark is 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 trademark
renew the registration,

And also on receipt of implication in the prescribed form and on payment of the prescribed fee the registrar restores the trademark
to the register and renew the registration of the trademark, for a period of ten years from the expiration of the last registration.

International registration of a trademark

The law of trademark passed by the Indian government is applicable only within the territory of India. The trademark which is
registered in has effect only in India, for the protection of trademark in other countries needs to be registered in another country as
well. Each country has its own trademark law with rules and law for the registration of a trademark in that country.

In other words, if an individual desire to obtain trademark registration in any particular nation then a separate application must be
moved in all such international locations. Within the year 2013, the Indian government agreed to the Madrid conference which
prescribes a methodology of submitting a worldwide application to the contracting events from India by means of the workplace
of the Registrar of Trademark.

For example- India's mobile phone manufacturing Micromax received 1.25 millionth international trademark registration for its
trademark 'MICROMAX' protection in over 110 countries. The international trademark registration for Micromax filed under the
Madrid Protocol, under mark can be protected in many jurisdictions by only filing an application for international registration.
There are two methods by which an international application can be filed:

International application in each foreign country: For the protection of trademark in any foreign country, an international
application must be filed to the trademark office by following the rules and regulations of that country. For this purpose the
applicant must hire a firm dealing in trademark registration in foreign, the applications to countries which is not a party to the
Madrid system can be filed as per above. It provides services that engaging an Attorney in the foreign countries works closely for
registration of a trademark in the foreign country.

The international application under the Madrid system: The trademark registration may also be initiated by means of filing an
international application under Madrid protocol before the Registrar of Trademark for different nations. The Indian Trademark
office collects international Trademark application and after finding it in conformity with the Madrid protocol transmits such a
global application to the WIPO (World Intellectual Property Organization), which further transmits it to the situation overseas.
Each and every global software is processed by way of the overseas nation as per their legislation and all communications are
routed by means of Indian executive.

Effect of Registration
The registration of a trademark shall if valid give the exclusive right to the registered proprietor to the use of trademarks in respect
of goods and services of which the trademark is registered, and also to obtain relief in respect of the infringement of the
trademark.

Infringement of trademark
A registered trademark is infringed by a person who not being a registered proprietor or a person using by way of permitted use in
the course of trade, a mark which is identical with or deceptively similar to the trademark in relation to goods or services in
respect of which the trademark is registered. After infringement, the owner of the trademark can go for civil legal proceedings
against a party who infringes the registered trademark. Basically, Trademark infringement means the unapproved use of a
trademark on regarding products and benefits in a way that is going to cause confusion, difficult, about the trader or potentially
benefits.

Infringement of trademark on the internet

The expansion of the web is also leading to an expansion of inappropriate trademark infringement allegations. Probably, a
company will assert trademark infringement each time it views one among its trademarks on an online page of a Third party. For
example, an individual who develops a website online that discusses her expertise with Microsoft software could use Microsoft's
trademarks to consult exact merchandise without the worry of infringement.

However, she mainly would no longer be competent to use the marks in this kind of means as to intent viewers of her internet web
page to feel that she is affiliated with Microsoft or that Microsoft is someway sponsoring her net web page. The honour could
simplest be analyzed upon seeing how the marks are sincerely used on the web page. In this way, there is an infringement of
trademark on the internet.
12
Case laws on Infringement
Hearst company Vs Dalal avenue verbal exchange Ltd.
The courtroom held that a trademark is infringed when a character in the course of trade makes use of a mark which is same with
or deceptively similar to the trademark in terms of the goods in respect of which the trademark is registered. Use of the mark by
using such man or woman needs to be in a manner which is more likely to be taken as getting used as a trademark.

Amritdhara Pharmacy Vs Satya Deo Gupta,

In this case for determining the connection in two words related to an infringement action was stated by the Supreme Court that
there must be taken two words which are deceptively similar. And judge them by their appearance and by their sound. There must
be considered that the goods to which they are to be utilised. There must be a consideration of the nature and kind of customer
who would be likely to buy those goods. In fact, it must be considered the surrounding circumstances and also must consider what
is likely to occur if each of those trademarks is used in common ways as a trademark for the goods of the particular owners of the
marks.

After considering all those circumstances, they came to the conclusion that there will be confusion. This is to say that, not
significantly that one man will be injured and the other will gain the illegal benefit, but it for that there will be a mess in the mind
of the public which will lead to confusion in the goods then there may be the refusal of the registration.

No action for an unregistered trademark

This is defined under Section 27 of Act that no infringement will lie with respect to an unregistered trademark, but recognises the
common law rights of the trademark owner to take action against any person for passing off goods as the goods of another person
as services provided by another person or the remedies thereof.

Passing off
Passing off is common legislation of tort, which can be used to put in force for unregistered trademark rights. The regulation of
passing off prevents one man or woman from misrepresenting other items or services. The inspiration for passing off has faced
some changes in the duration of time. In the beginning, it was restrained to the representation of one person goods to another.

Later it was elevated to business and non- trading activities. Therefore it used to be additionally accelerated to professions and
non-trading movements. Today it is applied to many types of unfair trading and unfair competitors where the activity of one
person cause damage to another person. The fundamental question on this tort turns upon whether the defendant's conduct is such
as deceive or mislead the general public to the confusion between the industry activities of the two.

In British Diabetic organization V Diabetic, both the parties have been charitable societies. Their names have been deceptively
identical. The phrases 'association' and 'society' both should be considering that they have been similar in derivation and meaning
and were not completely varied in kind. The everlasting injunction was granted.

Difference between passing off and infringement

The measures for passing off is different from the measures of an infringement. The claim for infringement is a lawful remedy
whereas the claim for passing off is a common law remedy. Therefore, in order to establish infringement with respect to a
registered trademark, it is only required to prove that the infringing mark is same or deceptively similar to the certified mark and
no more proof is required. In the case of a passing off claim, proving that the marks are same or deceptively similar only is not
sufficient.

The use of the mark should be likely to mislead or cause confusion. Moreover, in a passing off claim it is necessary to verify that
the use of the trademark by the defendant is expected to cause injury or damage to the plaintiff's goodwill, whereas, in an
infringement suit, the use of the mark by the defendant must not cause any injury to the plaintiff. But, when a trademark is
registered, registration is given only with respect to a particular category of goods. Protection is, therefore, provided only to these
goods. In a passing off action, the defendant's goods must not be the same; it may be different.

In, Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical laboratories, the Apex court held that there are some
differences between the trial for passing off and trial for infringement of a trademark. In American Home Products Corpn. Vs.
Lupin Laboratories Ltd., the Court held that it is well-settled law that when regarding the infringement of a registered
trademark. It is important to carry in mind the difference between the search for infringement and the search in passing off the
trial.

In a passing off action, the courts seem to see whether there is deception whereas, in infringement matter, it is important to note
that the Trademark Act gives to the owner an exclusive right to the use of the mark which will be infringed in the case of
indistinguishable mark and in the case of related marks, even though there is deception, infringement can still take place.

In Satyam Infoway Ltd. Vs Sifynet Solutions (P) Ltd. it was held by the Court that to proceed action for passing off three
elements are required to be established, which are as follows:

In a trial for Passing off, as the expression passing off itself suggests, is to restrict the defendant from passing off its goods or
13
services to the public which of the plaintiff's. It is a claim not only to preserve the status of the plaintiff but also to protect the
public. The defendant must have traded its goods or given its services in a manner which was deceived or would be likely to
deceive the public into thinking that the defendant's goods or services are the plaintiffs.

That second element that must be established by the plaintiff is a misconception by the defendant to the public and what has to be
placed in the possibility of confusion in the minds of the public that the goods or services offered by the defendant are the goods
or the services of the plaintiff. In assessing the possibility of such confusion the court must allow for the 'imperfect recollection of
a person or ordinary memory'.

The third element of a passing off action is loss or the possibility of it.

Notwithstanding, trademark registration under the Act only has effect in India. To get trademark rights and protection in other
countries it is required to register the trademark in those countries. Trademark protection is regional in nature. A single
registration will have to be made in every country where protection is wanted. To get protection outside India, it is required to file
applications in the respect of the countries individually.

In enhancement, there should be registration in a country before you begin the use of the trademark in that country. In some
countries such as China, Japan, Continental Europe, and Indonesia, the first person who applies for registration will get the rights
of a trademark, rather than the person who first uses the trademark. Hence, the different party could legitimately take trademark
by applying for registration even if there is the first person using the trademark.

Expanding boundaries of the scope of trademark

Domain name
Every company on the internet has a domain name with a different address in cyberspace at which the website is located.
Nowadays companies have internet pages as the producer and consumer are far away located as well as every company is going
global. The other purpose is that the Internet has become an essential tool in marketing. The rule came to be revealed as IP
numbers are hard to remember therefore they came up with the Domain Name System.

A user of the internet will find the domain name very useful in finding the goods or services that he expected to find. But
sometimes a distinct name of a highly commended business may be allowed and passed off as the original one, For example, Tata,
Google and Maruti. People visit a website or domain name through a website or a URL. Cybercrime generally means the
registration of another party's mark as a domain name for the purpose of misuse. A domain name has to be related to the product
given and it has to be different. While choosing a domain name for a website it is desirable that it should be different. A high level
of distinctiveness is allowed that two domain names could not be alike. Two types of disputes that occur which concerns with the
domain name.

1. That both the parties have the legal right to forming the words for the domain name in use. In this way, the court decides
that who is the original owner and who the infringer is.
2. The second type is cyber piracy where a party with no legal right questions the real owner. In this type of problem, there
is a number of ways by which a trademark owner can fight with cyberpiracy.

Smell
It is a non-traditional type of trademark. There is a large problem in registering this type of trademarks as there is no physical
representation. Due to its high level of distinctiveness, for example, the smell of a perfume strawberry etc., it is difficult to register
this kind of trademark. Smell marks are accepted if they are represented with a graphical representation. But this provision is only
in some countries. Smell the trademark is protected under copyright. In some instances a particular scent is also a commodity by
itself in other circumstances it is a scent used or attached to the commodity not the natural smell of the product itself.

Sound
A sound may be trademark and can also be registered. A sound mark is a sound or a theme with a different identification effect. A
well-known sound mark is music owned by Hemglass. When applying for a sound mark the mark can be expressed by a sound file
or by an accurate description of the sound in notation.

Shape
Distinguishing the one product from another assures that the customer doesn't get confused by similar products. The shape of
goods registered as a trademark as long as the shape is not working. A shape is working if it affects the use or performance of the
product. The shape of goods can be a trademark if,

The shape doesn't superior working.

The shape has become connected with public and manufacturer.

14
A shape of goods may be registered as a trademark when the shape is not working. Thus if a certain shape is delicate more than
useful in daily life and serves no purpose then it may be registered.

International Treaty:

INTERNATIONAL TREATIES AND CONVETIONS RELATED TO TRADEMARK

The rules and regulations governing trademarks and related issues were established by
multilateral treaties and agreements like the Paris Convention, the Madrid Agreement and
Madrid Protocol, TRIPS, the Trademark Law Treaty, and the Singapore Treaty on the Law of
Trademarks. These accords lay forth the worldwide, local, and national legal framework for
the protection of trademarks. The protection of rights, harmonisation of legislation, and
multilateral filing are the fundamental goals of these treaties affecting trademarks. The
significant trademark-related treaties and conventions are listed below: –

1. PARIS CONVENTION[2]– An international agreement known as the Paris

Convention for the Protection of Industrial Property was originally signed in Paris,
France, in 1883. A framework for the protection of industrial property rights, such as
patents, trademarks, and industrial designs, among member nations was established
by the agreement. The Paris Convention has undergone numerous revisions, the most
recent of which was in 1979, to take into account technological advancements and
new concerns around intellectual property. One of the most commonly ratified
international treaties relating to intellectual property rights, the Paris Convention now
includes 177 member nations. The key principles of this convention are as follows: –
2. National treatment: Every member nation is expected to accord foreign trademarks
the same level of protection as it does its own trademarks. The same rights and legal
safeguards are thereby provided to domestic and foreign trademark owners.
3. Priority: Within a certain timeframe, an applicant who has submitted a trademark
application in one member nation may assert priority for the same trademark in other
member countries.
4. Registration – Establishing a system for trademark registration and publishing
information about registered trademarks in an official gazette or comparable
publication are requirements for member countries.
5. Non-use and invalidation: The Paris Convention allows for the cancellation or
invalidation of trademarks that have either fallen into generic status or have not been
used for a predetermined amount of time.
6. Prohibition of confusing or immoral trademarks: Members of the European
Union are forbidden from registering trademarks that are likely to be confused with
already-existing trademarks or that are immoral or harmful to public order.

Overall, the Paris Convention offers a framework for trademark protection that encourages
global collaboration and the harmonisation of trademark laws across signatory nations.

 MADRID AGREEMENT[3] – An international agreement known as the Madrid

Agreement Concerning the International Registration of Marks was first signed in
Madrid, Spain, in 1891. With the agreement, trademark owners will have access to a
streamlined procedure for the international registration of their marks, enabling them
to obtain protection for their brands across a number of nations with just one
application. The Madrid Protocol, which was enacted in 1989 and permits the
international registration of trademarks through a comparable procedure, currently
complements the Madrid Agreement, which has undergone multiple revisions, most
recently in 2010. The Madrid Agreement is one of the most generally ratified
international agreements pertaining to trademark registration and protection as of
2021, with 105 member nations. The Madrid system benefits trademark owners in a
number of ways. The key principles of this agreement include the following: –

15
  International filing: A trademark owner may submit an application for protection in
one or more WIPO member nations by submitting an international application with the
organisation.
 Examining and registering: WIPO reviews the international application and
registers the trademark if it is accepted. The trademark is subsequently automatically
protected in all member nations that have been chosen.
 Renewal: To keep their rights in force, trademark owners must continue to pay
annual renewal fees for their international trademark registrations.
 Assignment: International trademark registrations may be fully or partially assigned
to other parties, and any such assignment must be filed with the WIPO.
 Cancellation: In some cases, such as when the trademark holder neglects to maintain
protection in one or more designated member nations, international trademark
registrations may be terminated.
 Transformation: In some circumstances, such as when the trademark is denied
protection in one or more designated member nations, international registrations may
be converted into national registrations.

In general, the Madrid Agreement streamlines the process for trademark owners to request
protection in several nations with a single application and centralised WIPO administration.
This facilitates international harmonisation and collaboration in the area of trademark law
while lowering administrative costs and burdens for trademark owners.

 MADRID PROTOCOL[4] – An international agreement known as the Madrid Protocol

was formed in 1989 to make the procedure of registering trademarks across numerous
nations simpler. The Protocol, which is overseen by the World Intellectual Property
Organisation (WIPO), is currently one of the main procedures for registering
trademarks globally. A trademark owner may submit a single international application
to WIPO under the Madrid Protocol, specifying the member nations in which they
want to seek protection. The trademark is then immediately protected in all specified
member countries after the application has been reviewed and registered by WIPO.
The Madrid Protocol has a number of important components, including:
 Simplified filing: The Madrid Protocol enables trademark owners to submit a single
application to the World Intellectual Property Organisation (WIPO) rather than making
separate submissions in each nation where they want protection.
 Centralised administration: Under the Protocol, WIPO acts as the central
administering authority for the registration of international trademarks, streamlining
the procedure and lowering administrative burdens.
 Flexibility: Under the Protocol, trademark owners are free to enlarge the number of
nations included in their worldwide registration at any time and to renew it for a
further 10-year period.
 Cost savings: Trademark owners can avoid the expenses of submitting individual
applications in various nations by submitting a single international application.
 Coordination with national laws: The Protocol is made to operate in accordance
with each member country’s trademark laws, ensuring that trademark owners enjoy
uniform protection everywhere.

The Madrid Protocol, one of the most generally ratified international agreements relating to
trademark registration and protection, has 108 member nations as of 2021.

 NICE AGREEMENT[5] – A convention initially signed in 1957 in Nice, France, is the

Nice Agreement Concerning the International Classification of Goods and Services for
the Purposes of the Registration of Marks. In order to facilitate the international
protection of trademarks and streamline the trademark registration process, the
agreement aims to offer a standardised framework for categorising goods and services
for trademark registration. Since it was first approved, the Nice Agreement has
undergone multiple revisions, the most recent of which was in 2019. The World
Intellectual Property Organisation (WIPO) presently oversees its administration. More
than 150 nations utilise the nice categorization for trademark registration and
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 categorization as of 2021. According to the Nice Agreement, the following guidelines
must be followed when classifying goods and services for trademark registration:
 45 classes: There are 45 classes for products and services, with classes 1-34 covering
goods and 35-45 covering services.
 System of classification: Each class is described by a particular collection of phrases
that specify the kind of commodities or services that fall under its umbrella. Class 35,
for instance, deals with advertising and business management services, whereas Class
25 deals with apparel, footwear, and headgear.
 Mandatory classification: In trademark applications, trademark applicants must list
the goods and/or services they seek to register, using the relevant class or classes
from the Nice Classification.
 Consistency: The Nice Classification aids in ensuring that trademarks are registered
and protected uniformly throughout various legal systems and language types.
 Revision- The Nice Classification is periodically updated to take into account
modifications to technology, business procedures, and consumer behaviour. 2019
marked the most recent revision.

The Nice Agreement, in its whole form, offers a standardised framework for categorising
goods and services for trademark registration, which aids in streamlining the procedure for
international trademark protection and promoting uniformity and clarity in trademark law.

 VIENNA AGREEMENT – The “Vienna Agreement Establishing an International

Classification of the Figurative Elements of Marks,” which was approved in Vienna,
Austria in 1973, is a legal document. The classification of figurative aspects of marks,
such as logos, symbols, and designs, is standardised by this treaty. Trademark offices
all throughout the world search, register, and categorise figurative components of
marks using the Vienna Classification. The World Intellectual Property Organisation
(WIPO), which oversees its administration, has a database of all the figurative
components of marks that fall under the system’s classification. The worldwide
protection of trademarks is made easier by the Vienna Agreement and Vienna
Classification, especially for marks that contain figurative features. By giving these
parts a standardised classification system, the Agreement and classification assist to
make trademark law more uniform and understandable while also easing the
administrative burden associated with trademark registration and protection. The
following guidelines are provided by the Vienna Agreement Establishing an
International Classification of the Figurative Elements of Marks:
 29 groups: According to the Vienna Classification, figurative aspects of marks are
divided into 29 groups.
 Classification system: A classification system is used, with each category being
specified by a particular set of phrases that specify the type and substance of the
figurative element, such as animals, people, letters or numbers, and geometrical
shapes.
 Optional classification: The Vienna Classification is an optional classification for
trademark applicants. However, the applicant may decide to classify a figurative
element in a trademark under the Vienna Classification if it is present.
 International protection: By offering a standardised system for the classification of
these features, the Vienna Agreement and Classification support the international
protection of trademarks that incorporate figurative elements.
 Administrative effectiveness: The Vienna Agreement and Classification help to
lessen the administrative burden of trademark registration and protection by offering
a standardised system for the classification of figurative components.

The Vienna Agreement and Classification, used together, offer a standardised approach for
classifying figurative components of marks, which makes it easier to defend trademarks
internationally and lessens the administrative load on trademark applicants and offices.

 SINGAPORE TREATY[6] – On March 27, 2006, Singapore signed the Singapore

Treaty on the Law of Trademarks, an international agreement. The convention creates
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 global norms and practices for the registration and administration of trademarks. The
Singapore Treaty’s main guidelines are as follows:
 Formalities: The treaty outlines uniform formalities, such as application
requirements and examination processes, for the filing and registration of trademarks.
 Classification: The Nice Classification system is to be used in accordance with the
treaty to classify goods and services.
 Electronic filing: For trademark applications and other associated procedures, the
convention supports the use of electronic filing and communication.
 Non-traditional marks: According to the treaty, non-traditional marks like colour
marks and sound marks may be registered.
 Renewals: The treaty lays out standard operating processes, including renewal fees
and scheduling, for trademark registration renewals.
 Recording of licences and assignments: The convention enables the registration of
trademark licences and assignments in global trademark registries.
 Administrative and judicial procedures: Administrative and judicial procedures,
such as opposition and cancellation proceedings, are covered by the treaty, which also
defines standard rules and guidelines for these processes.

In order to reduce costs and improve efficiency for trademark owners and administrators,
the Singapore Treaty seeks to harmonise and streamline worldwide trademark registration
and management operations. The World Intellectual Property Organisation (WIPO) is in
charge of managing it, and there are currently more than 50 member nations.

 TRADEMARK LAW TREATY[7] – An international agreement known as the

Trademark Law Treaty (TLT) was approved in 1994 in Geneva, Switzerland. The
agreement intends to standardise and simplify the formalities involved in trademark
registration processes in all signatory nations. The TLT’s main clauses are as follows:
 Standards for filing: The TLT specifies uniform standards for filing trademark
applications, including the minimal data needed for the application, the categories of
products and services that may be covered by the mark, and the kind of mark that may
be registered.
 Examining trademark applications: The TLT defines uniform examination methods,
including the timing of the inspection and the reasons for rejecting a trademark
application.
 Publication and opposition procedure: The TLT lays out guidelines for the
publication of trademark applications, the right of third parties to oppose a trademark
application, and the steps to take when filing an objection.
 Renewal procedures: The TLT outlines the conditions for and duration of trademark
registration renewals. It also outlines the prerequisites for renewal.
 Record of trademark assignments and licenses: The TLT specifies processes for
the record of trademark assignments and licences, including the kinds of information
that must be included in the record and how the record affects the assignment’s or
license’s ability to continue in use.

The TLT aspires to speed up and streamline trademark registration processes, cut expenses,
and give trademark owners and applicants more legal security. In 2021, there will be 49
including the United States, Japan, and numerous European nations— TLT members.

 NAIROBI TREATY[8] – An international agreement known as the Nairobi Treaty on

the Protection of the Olympic Symbol was passed in Nairobi, Kenya, in 1981. The
Olympic symbol, which consists of the five interlocking rings and the word “Olympic,”
is protected by the treaty from unauthorised use and exploitation. The Nairobi
Treaty’s main clauses are as follows:
 Protection of the Olympic emblem: Under the terms of the treaty, the Olympic
symbol is protected as a trademark, making it illegal to use it without authorization in
connection with products or services.
 Registration – The Olympic emblem may be registered as a trademark with the
national trademark offices of participating nations under the terms of the treaty.
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  Enforcement of rights: The treaty outlines civil and criminal penalties for violation
as well as the enforcement of trademark rights pertaining to the Olympic emblem.
 Limitation: The agreement has limitations and exceptions to the protection of the
Olympic emblem, such as fair use in news reporting and commentary.

The Nairobi Treaty aims to safeguard the Olympic Games’ honour and prestige as well as to
stop the unlicensed commercial exploitation of the Olympic symbol. The Nairobi Treaty has
112 signatories as of 2021, including the United States, China, and numerous European
nations.

 TRIPS AGREEMENT[9] – Trademark enforcement and protection are covered by the

TRIPS Agreement’s requirements. In particular, the agreement mandates that
member nations guarantee the protection of trademarks, including collective marks
and certification marks, and make sure that both domestic and foreign citizens have
access to this protection. The TRIPS Agreement lays out guidelines for the
enforcement and protection of trademarks, such as:
 The meaning of trademarks: Trademarks are any signs that can differentiate the
goods or services of one person from those of another, according to the TRIPS
Agreement.
 Trademark protection: According to the TRIPS Agreement, member nations must
provide the protection of trademarks, including collective marks and certification
marks, and make sure that both domestic and foreign citizens have access to this
protection.
 Scope: The TRIPS Agreement mandates that member countries protect both
registered trademarks and well-known marks that are not registered, as long as those
trademarks are recognised in the member state in question.
 Trademark enforcement: According to the TRIPS Agreement, member nations must
offer both civil and criminal penalties for trademark infringement, as well as
injunctions, monetary fines, and the confiscation of infringing goods.
 Border controls: According to the TRIPS Agreement, member nations must establish
procedures for the detention of items suspected of violating intellectual property
rights at the border and for the destruction of such goods if they are determined to be
infringing.
 Trademark usage restrictions: The TRIPS Agreement forbids the use of any
trademarks that are misleading or deceptive, including those that falsely imply a
connection to a specific area.
 Administrative processes: The TRIPS Agreement mandates that member nations
create procedures for the cancellation or revocation of trademarks as well as for the
publishing and evaluation of trademark applications.

Overall, the TRIPS Agreement’s regulations support greater uniformity and harmonisation in
how trademarks are handled across various nations and regions and offer a framework for
the defence and enforcement of trademark rights.

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