1.

The salient features of the New Act are the following:

Expanded definition for Trademark
The definition of Trademark has been expanded to encompass any mark capable of
distinguishing the goods and services of one, from the goods and services of another and
may include any mark capable of graphical representation including aspects of shape of
goods, their packaging, and combination of colours. As a result, even well known designs
can now avail protection under trademark law.
Service marks
One of the most significant additions in the New Act is the provision for Service mark
registrations. It is a direct effect of the amplification of the definition of trademark to
include services. It is now possible for business houses and individuals offering any kind
of service to register their mark. The definition of services under the New Act is an
inclusive one; therefore entities providing services of any description in connection with
business, industrial or commercial matters can get their Service marks registered.

Collective Marks
Collective mark, a new concept brought into the Act makes it possible for any
Association to get registration for its mark. Collective Mark is a trademark or service
mark used, or intended to be used by the members of an association, indicating their
membership in such Association. The Association is the owner of the mark and the
members are the authorized users. For example, the Advertising Club of India can register
its name and logo as collective marks and prohibit non− members from using or
associating with the mark.

Well known trademarks

The concept of well−known trademark is a milestone of the new Act. This provision is
adopted to accommodate the requirement of Art 16 of the TRIPS agreement. The Registrar
as per the provisions of the New Act is enjoined not to register a mark that is confusing
similar with a well−known trademark. The well−known trademark is a mark used over
particular goods or services that has obtained sufficient recognition among the consumers
using such goods or services. The conditions laid down for the determination of a
well−known trademark are (1) Knowledge of recognitions, (2) Promotion of trademark,
(3) Duration, extent and geographical area, (4) Registration and use. It should be noted
that a trademark may be considered as a well known trademark even if it is not,
registered in India or used in India, or if such an application is pending in India or the
trademark is not well known in India to public at large. The Indian Trademark law has
made a remarkable provision, setting out a detailed criteria for the identification of a
well−known trademark in an area where international consensus in lacking.

Single Register
The system of maintaining registration of trademarks in part A and part B is omitted. Only
a single register will be maintained hereafter, thereby giving no room for discrimination
between applicants, as was done formerly. All applicants are now given equal rights and
opportunities.

Single application for registration under many class of goods

As one of the means to simplify and streamline the procedure of registration, it is now
made possible to file one single application for registration of a mark in different classes
of goods or services, instead of filing separate applications. This is expected to shorten the
process of search of similar marks during registration.
Enhanced term of protection and renewal
One of the significant changes of the Act relates to the term of protection of trademarks. It
is enhanced from the previous 7 years to 10 years. Renewal is possible before completion
of 10 years in perpetuity.

lntellectual Property Appellate Board

An Appellate Board has been established having its national headquarters in Chennai. It is
roving in nature, would have sittings in Kolkata, Mumbai, Delhi, Ahmedabad periodically
depending upon the work demand. It will hear appeals from the decisions of the Registrar
and decide on rectification applications. This facilitates speedy disposal of matters in
addition to reducing the existing burden on the High Court, before which appeals used to
lie under the old Act. It is interesting to note that the Board shall not be bound by the Civil
Procedure Code; nevertheless it shall be guided by the principles of natural justice.

Associated goods and services

The New Act provides the registered proprietor who has a trademark over goods, a
pre−emptive right over associated services and vice versa. Thus it prohibits any other
trader from using the mark even over similar goods or services. It therefore differs from
the old Act, which only provided protection from imitation of the same goods, thereby
effectively enhancing the protection given to a mark.

Prohibition of use of trademark as a corporate name

The protection of trademark is extended to prevent any corporate or
business concern from using some one elses mark as its trade name or name of its business
concern, dealing in goods and services in respect of which the mark is registered.
Providing enhanced punishment for offences
To prevent the sale of spurious goods and falsification of trademarks, enhanced
punishment is incorporated. Punishment will be a minimum of 6 months and can extend
to 3 years and a fine of rupees 50,000 to 3 lakhs. It is a hope that this will act as a
deterrent to the infringers. Further the New Act has made these offences cognizable in
nature, meaning; the law enforcement agencies like the police can arrest the violators with
out a warrant as they come to know of such activities as these are considered serious
offences.

Jurisdiction of courts enlarged

The jurisdiction of courts has been enlarged empowering them to grant ex parte injunction
or other interlocutory orders relating to (i) discovery of documents, (ii) preserving the
infringing goods or other evidence, (iii) restraining the offender from disposing off or
dealing with the assets in a manner which may adversely affect the plaintiffs ability to
recover damages, costs or other pecuniary remedies, thereby securing the trademark
owners right immediately and effectively.

Assignment of unregistered trademarks

The impeding provision imposed on the unregistered trademark owners to assign their
trademark with the goodwill of the business has now been removed. The present Act
permits the unregistered trademarks owners to assign and transmit their marks even with
out the goodwill of the business.

Defensive registration omitted.

The previous Act enabled a trademark owner to register a mark in other classes as a
defensive mechanism; the same is omitted. With the advent of the complimentary concept
of Well−known trademark and the inherent right to secure registration in associated goods
or services being recognized in the New Act, the need for this type of registration is no
 longer felt.

Widened definition of Infringement

The scope of bringing an infringement suit is widened. Representation of any mark in an
advertisement by an unauthorized user constitutes infringement, provided such advertising
takes unfair advantage or is contrary to honest practice of industrial or commercial
matters; or it is detrimental to its distinctive character; or is against the reputation of the
trademark. Any oral use of a word mark also constitutes infringement.
Miscellaneous provisions
The definition of permitted user in enlarged to include unregistered licensees also, and the
procedure for registration of registered user is simplified. The final authority in matters
relating to registration of Certification marks is shifted to the Registrar from the Central
Government. The Act also extends the applicability of convention countries to include
members of Group or Union of countries and Inter−governmental organizations such as
members of the WTO.

Conclusion
On the whole the Trademarks Act, 1999 has removed the inconvenient provisions of the
old Act and has fostered the rights of the traders and other service providers significantly.
It also sends a warning to infringers. Surely, the New Act caters to the developments in
trading and commercial practices, increasing globalization of trade and industry, the need
to encourage investment flows and transfers of technology, need for simplification and
harmonization of trademark management systems and gives effect to important judicial
decisions. This legislation has been much awaited by the legal as well as the business
community. At last the long lingering desire has been satiated.

2.Explain the grounds for refusal of registration of a trade mark. Absolute Grounds for

Refusal of Registration?
Introduction
The Trademarks Act, 1999 is the law in India containing absolute and relative grounds for
refusal of registration of a trademark.
Grounds for Refusal

Absolute Grounds – (Section 9 of the

Act) The First Rule – [sub-section (1)] -
Originality

A. The mark lacks distinctiveness;

To be distinctive, it must be fanciful, arbitrary or suggestive.

Fanciful Trademarks
These are the most distinctive trademarks.
Consider Xerox. This word has no other meaning in the English
language. Kodak, for example, is a fabricated word.
Fanciful trademarks are difficult to achieve.

Arbitrary Trademarks
Apple, Camel and Blackberry are examples of arbitrary trademarks.
 These are English words with actual meanings, and used to describe consumer products.
Any word in the dictionary can be used, if that word has no relation to your company or
products. For example, you cannot legally register “orange” if your company produces
orange juice.
Conversely, Apple is allowed because the company sells computers.

Suggestive Trademarks
Examples include Coppertone sun lotion, Playboy magazines for men, Mustang sports cars,
and Airbus airplanes.
These are words or phrases actually relate to a particular product, service or company.

B. The mark is descriptive of the goods or services;

Trademarks which impart information like intended purpose, geographical origin, quality,
quantity are liable to be refused.

Case Laws
In ELGI Ultra Industries Limited v The Assistant Registrar of Trade Marks, the Intellectual
Property Appellate Board [IPAB], held that the words “ultra” and “perfect” are highly
descriptive and any person can use such descriptive words for its products. Disallowed.
In Imperial Tobacco Company of India Ltd v. Registrar of Trademarks, the Calcutta High
Court held that the trade mark “Simla” is a well-known hill– station of India and has
geographical significance. Hence disallowed.
It is in customary use.
For example, Otis’s trademark “Escalator” for moving staircases became a generic word and
therefore, the Trademark Office concluded that Otis cannot use its trademark since the mark
has become customary in respect of moving stairs.
Other examples are Aspirin, Heroin, Cellophane, Kerosine etc.
Exception to the above Rule – the Proviso to sub–section (1)
If the mark is in use or is a well-known mark and has acquired a distinctiveness, before the
application, it will be registered.

Second Rule – [sub– section (2)] – Against Public Interest

A. The mark is likely to cause confusion or deceive the public;
For example, if a company starts to make biscuits by the name of Parle-J, it would be an
infringement of the right of Parle-G, since it is highly deceptive.
B. The mark is likely to hurt religious sentiments;
In the case of Lal Babu Priyadarshi v. Amrit Pal Singh, the appellant had applied for
registration of the mark “Ramayan” with the device of a crown in relation to incense sticks
and perfumeries. The court observed that “no person can claim the name of a holy text as
a trademark.”

C. The mark consists of scandalous or obscene matter;

For example, ‘A’ sells DVDs with the trademark ‘SNUFF Movies’. The word ‘SNUFF’ is a
commonly used slang which means murder or arousal. The use of this word in a Trademark
will be considered to be promoting murder and pornography and its registration will be
refused.
 D. The mark is prohibited under the Emblems and Names Act, 1950;
For example, the name, emblem or official seal of the United Nations
Organization/World Health Organization or the National Flag of India are prohibited
from use as trademark and these words cannot be registered under the trademarks act.

The Third Rule – [sub-section (3)] – Nature of Goods

A mark shall not be registered as a trade mark if it consists exclusively of—
(a) Shapes Resulting from the Nature of Goods
For example, a Toaster Shape for a seller of toasters, Vanilla Ice cream shape for ice creams.

(b) Shapes that perform Technical functions

Only where the shape has a material non-functional element (e.g. important decorative or
imaginative elements) could registration as a trade mark be accepted.

Example: Lego was the owner of a trademark for three-dimensional shape of a red Lego
brick. Mega Brands applied to have Lego’s trademark declared invalid on the basis that the
shape of the brick was necessary to obtain a technical result. Mega Brands contended that it
was necessary to include two rows of studs on the upper surface of the brick in order to fit
with other Lego bricks. The European Courts agreed with Mega Brands and declared Lego’s
trademark invalid.
(c) the shape which gives substantial value to the goods
The basis behind not providing trademark protection to shapes that give substantial value to
the goods is to exclude “aesthetic shapes” from trademark registration. Thus, any shape that
appeals to the eye compared to the common shape of a product cannot be trademarked.

Relative Grounds (Section 11 of the

Act) The First Rule – [sub– section
(1)] Similar Trademarks and Similar
Goods:
The mark is identical or similar to an earlier trademark and
the goods are identical or similar to the goods of the earlier trademark.
The two words are compared and judged to see whether there will be a confusion among the
trademarks which would lead to one party being injured while the other gaining illicit benefit.
For example if ‘A’, an established seller, sells beds with the trademark ‘BED KINGS’ and
B, a new player in the market sells his beds with the trademark ‘KING BEDS’, there will be
a confusion in the minds of the public. This is a relative ground for refusal and B’s
application will be rejected because A’s mark with a similar name already exists.
The Second Rule – [sub– section (2)]
Similar Trademarks and Non-Similar Goods:

The mark is identical or similar to an earlier trademark though goods may not be similar.
The use of such a mark would allow the applicant to gain unfair advantage or damage the
reputation of the earlier trademark.
For example, ‘APPLE’ is famous for the Iphone, Ipod and other electronic goods.
If a trader B decides to sell speakers with the trademark ‘APPLE SPEAKERS’ or even jeans
as ‘APPLE JEANS’, his trademark application will be rejected.
 Apple is a well-known trademark and its use in relation to jeans, speakers or any other goods
will cause the general public to believe that the company Apple has produced it.

The Third Rule – [sub– section (3)]

Contrary to law
If a law of passing off, or a law of copyright is protecting an unregistered trade mark, such
marks cannot be used by other persons as trademarks.
3)Define Trademark? Explain essentials of Trade mark?

Introduction:

The term trademark refers to a recognizable insignia, phrase, word, or symbol that
denotes a specific product and legally differentiates it from all other products of its kind.
A trademark exclusively identifies a product as belonging to a specific company and
recognizes the company's ownership of the brand.
Trademarks are generally considered a form of intellectual property and may or may not
be registered.

 A trademark is an easily recognizable symbol, phrase, or word that denotes

a specific product.
 It legally differentiates a product or service from all others of its kind and
recognizes the source company's ownership of the brand.
 Trademarks may or may not be registered and are denoted by the ® and
™ symbols respectively.
 Although trademarks do not expire, the owner must make regular use of it in
order to receive the protections associated with them.1

A Trade mark [TM] is defined under Section 2(zb) of the Indian Trademarks Act, 1999
as mark capable of being represented graphically and which is capable of distinguishing
the goods or services of one person from those of others and may include a shape of
goods, their packaging, and combination of colors.

Essentials of Trade Mark

1. It must be a mark that is a device, brand, heading, label, ticket, name or

an abbreviation of a name, signature, word, letter or numeral shape of
goods, packing or combination of colors or any combination thereof.
2. It must be capable of being represented graphically.
3. It must be capable of distinguishing the goods or services of one person
from those of others.
4. It must be used or proposed to be used in relation to goods or services.
5. The use must be of a printed or other visual representation of the mark.
6. In relation to services, it must be the use of the mark or availability or
performance of services.
7. The use must be for the purpose of indicating the connection in the
course of trade between the goods or services, and some person having
the right to use the mark either as proprietor or by way of permitted user
as the case may be. It is not necessary that the person using the mark
should reveal his identity.4

 A trademark must be a mark which includes a device, heading, brand, label,

ticket, signature, word, letter, name, numeral, packaging or combination of
colors or any combination of the above attributes.
  It should be easy to speak and spell. A good trademark is such that the public can
easily spell and speak.
 It should be easy to remember. A good trademark that is easy to speak and spell
can be easily remembered as well. So that it becomes easy for public to
 It should not be too lengthy and complicated to be forgotten easily. If it is
lengthy or complicated, people will not bother to take the effort to memorize it and
ultimately it will be forgotten.
 It must be distinctive. It can be natural distinctiveness or acquired distinctiveness.
 The best trademarks are invented words or coined words or unique geometrical
designs
 It can only be suggestive of the quality of the products, but not descriptive
 A good trademark should not be barred under the Trade Marks Act
under the Prohibited classes of trademarks.

4) Examine the rights conferred upon the registered trade mark holder?

Introduction
Once the registration is obtained, the proprietor of a registered trademark is vested with certain
valuable rights.
The registered trademark can be protected from the date of registration
only. These rights exist for ten years which can be renewed further.
Rights Conferred by Registration of Trademarks
The proprietor of a registered trademark enjoys the following rights by virtue of the
registration:
i. Exclusive Rights – Section 28(1)
An exclusive right to the use of the trademark in relation to the goods or services in
respect of which it has been registered;
Others are restrained from using any mark or packaging which would depict an association
with the registered mark or in any manner which would dilute the value or tarnish the image
of the trademark.
This is a new right independent of similarity.
It is not an absolute right and is subject to other provisions of the Act Namely Sections
27(3), 33 (saving for vested rights) etc.
ii. Right of Registered Trademark holders of Identical Trademark: Section 28(3)
Each of those persons has the same rights against other persons excluding registered users.
iii. Rights of the prior user
If a person A gets registration for a trademark which had been earlier assigned to a person B,
the right of B to use it is not affected after A’s registration, even if B had not opposed it.
On opposition, A can be restrained from using the trademark despite registration.
iv. Right to Seek Correction of Register:
A registered proprietor of a trademark has a right to make an application to the registrar
seeking correction of register regarding the errors pertaining to the particulars of the
registered proprietor and other aspects relating to the registered trademark.
v Right to Alter Registered Trademark:
The registered proprietor of a trademark must make an application to the registrar seeking
leave to add to or alter the trademark in any manner not substantially affecting the identity
thereof.
The Registrar may refuse the leave or grant it on such terms and may be subject to such
limitations as he may think fit.
vii. Assignment-Section 37
Registration confers the right to assign or transmit the trademark to another person by
the registered proprietor for any consideration.
vii. Import
Import of goods and services bearing a mark similar to a registered trademark can be
restricted by the registered proprietor.
viii. Advertising
A registered trademark cannot be used by any one unauthorized in business papers and
in advertising.
ix. Relief – Section 28(1)
Right to Seek Statutory Remedy Against an Infringement.
Relief in case of infringement when a similar or identical mark is used on
(a) similar, goods or services,

(b) dissimilar goods or services.

He may obtain an injunction and at his option,

either damages or
an account of profits by instituting a suit against the alleged infringer.
The proprietor of an unregistered trademark cannot initiate the infringement proceeding in
the event of a deliberate counterfeiting. Section 27(1)

x. Other Laws
A registered trademark continues to enjoy all the rights available to an unregistered mark,
emerging from common law like passing off action.
Rights conferred by registration application
Certain rights vest by mere fact of applying for trademark registration.
Evidence of adoption
(i) It serves as evidence of adoption and selection of trademark for stated goods or services.

Priority
(ii)It enjoys priority against identical or similar marks pending registration for same or
similar goods or services.
Preservation of filing date for six months
(iii) The filing date is preserved for six months in all countries of the Paris Convention and
WTO.
If an applicant makes an application in the other countries, the date preserved is taken as the
date of filing.
 5) Discuss the powers and functions of the registrar of trade marks.

Introduction:
The Registrar of Trade marks is the officer in charge of the trademarks registry.
Appointment of the registrar: Section 3
The Central Government appoints the Controller-General of Patents, Designs and Trade Marks
by notification in the Official Gazette.
He is also the Registrar of Trade Marks.

Trade marks registry and its branches: Section 5

The head office and branches of the Trade Marks Registry are situated at locations, the Central
Government specifies.
Powers and functions of registrar of trademarks:
1. Responsibility: Section 3
He is responsible for the superintendence and direction of the trademarks registry.
2. Withdrawal and transfer of cases: Section 4
The Registrar may withdraw any matter pending before an
officer. This is done in writing citing the reasons.
He may then deal with such matter himself or transfer the same to another
officer. It may be de novo or from the stage it was so withdrawn.

3. Classification of goods and services: Section 7

The Registrar shall classify goods and services.
4. Publication of alphabetical index: Section 8
He shall then publish an alphabetical index of the above classification.
5. Application for registration: Section 18 The Registrar may refuse an application or may
accept it absolutely or subject to amendments, modifications, conditions or limitations, as he
thinks fit.

6. Withdrawal of acceptance: Section 19

The Registrar may withdraw an acceptance of an application before it is registered if required.

7. Opposition to registration: Section 21

The registrar will take note of any opposition to the granting of a trademark after an
advertisement and take action accordingly.
8. Registration: Section 23
Once all formalities have been met, The Registrar has the power to register trademarks and
issue certificates.
9. Renewal of Registration: Section 25
The Registrar shall inform the proprietor about a trademark about to expire and renew it
after receipt of fees as required.

10. Variation or cancellation of registration: Section 50

The Registrar has the powers to vary or revoke a registration depending on circumstances.
 11. Power to call for information relating to agreement: Section 51
(1) The Registrar may, by notice in writing, require the registered proprietor to confirm to
him within one month that the agreement continues to be in force.
(2) If the registered proprietor fails to furnish the confirmation within one month the
registered user shall cease to be the registered user and the Registrar shall notify the same.

12. Correction of register: Section 58

The Registrar may, correct any error, or enter any change, in the name, address or description
of the registered user.

13. Alteration of registered trademarks: Section 59

The Registrar may add to or alter the trade mark in any manner not substantially affecting
the identity thereof.

14. Powers of Registrar: Section 127

(a) the Registrar shall have all the powers of a civil court for the purposes of receiving evidence,
administering oaths,enforcing the attendance of witnesses, compelling the discovery and
production of documents and issuing commissions for the examination of witnesses;

(b) the Registrar may, make such orders as to costs as he considers reasonable, and any such
order shall be executable as a decree of a civil court;

(c) the Registrar may, on an application, review his own decision.

15. Extension of time: Section 131

The Registrar, on application made to him in the prescribed manner and accompanied by the
prescribed fee, may, subject to such conditions as he may think fit to impose, extend the time
and inform the parties accordingly.

16. Documents open to public inspection: Section 148

Receive applications and on payment of fees prescribed, give out copies of prescribed
documents.

6) What is meant by Infringement of Trade Marks? Discuss the remedies

available.

Introduction
An infringement is an invasion of statutory rights.
An Infringement of a trade mark is when a person other than the registered proprietor uses
the mark with an intent to defraud others.
The infringing mark may be identical with or deceptively similar to the registered mark.
If the use of the mark does not indicate the trade origin, it may not be declared an
infringement, which was held in the Ox-cart case.
Sections 27 and 28 of the Trademark Act, 1999, provides for relief in case of infringement.
M/S Lakme Ltd. v. M/S Subhash Trading and Others, 1996, DLT
The plaintiff was selling cosmetic products under the trademark name ‘Lakme’ and the
defendant was also selling similar products under the name “Like Me”. The Delhi HC held that
the names were not deceptively similar and were two separate marks with different spelling and
appearance.
SM Dyechem Ltd. v. Cadbury (India) Ltd, (2000) 5 SCC 573
plaintiff had a chips and wafers business under the TM “PIKNIK”. Later, the defendant started
a business of chocolates under the name “PICNIC”. The Court held the marks not deceptive
similar as they are different in appearance and composition of words.
Infringements
Section 29 of the Act enumerates ways in which an infringement can take
place. It generally contains issues of
1) Identical marks

2) Likelihood of confusion

3) Deceptive marks

4) Dilution of marks

1. Identical marks
Whenever two marks are identical, there is a prima facie case of infringement.
2. Likelihood of Causing Confusion
There are situations where the marks are not identical but are nearly similar.
Burden of Proof
The plaintiff has to establish that the mark is identical enough to cause confusion.
Read with Principles of Section 11 of the Trademarks Act, 1999
Registration of marks, which are identical, or imitations of well-known trademarks should not
be allowed.
This is irrespective of whether the goods are similar in nature or not. This is to prevent taking unfair
advantage of the earlier trademark.
This is also to maintain the distinctive character or repute of the earlier trademark.
3. Deceptive Marks
A deceptive mark is one that is intended to cause confusion in the minds of an average buyer.
Tests
The most important test is to look for an overall
similarity. It is not necessary to prove intention.
It is sufficient if the Court comes to the conclusion it is likely to deceive.
That conclusion would be based partly on evidence and partly upon the appeal to the eye of
the judge.
Deception can arise with regard to:
a) goods
b) trade origin
c) trade connection

2. Dilution of Trademark
Dilution of trademark is basically weakening the trademark by decreasing its
value. This happens if the marks are similar.
 In Caterpillar Inc v. Mehtab Ahmed and Others it was held by Delhi High Court that, in a case
of dilution, a customer starts associating the mark with a different source.
This affects the owners of the original trade mark.
This is not a fair practice that is expected in trade and commerce.
Passing Off
Passing off occurs in the case of unregistered Brand
Names. An action of Infringement cannot be initiated.
A Passing Off action can be initiated.
Essential characteristics
Misrepresentation
The person attempts to show that his goods or services are connected to the goods or
services of the original owner.
By use of Trademark
This is done by using a trademark that may be identical or similar.
To Prospective Customers
This misrepresentation is aimed at prospective customers or ultimate consumers of his goods
or services.

Calculated Deception
This is done in a calculated fashion to injure the business or goodwill of the original owner or
to earn benefit at the cost of the original owner.
Proof
It is also important that actual deception and actual damage has to be proved for any relief of
passing off.
Remedies
Criminal
Remedies
In case of infringement / passing off trademark, a criminal complaint can be filed under the
Trademarks act or IPC respectively.
Civil remedies in Trademark:
A. Injunctions
Interim or Permanent injunction,
An order of interim injunction may be passed ex parte or after
notice. It may include orders for:
B. Anton Pillar Order
(a) The Appointment of a local commissioner, for search, seizure and preservation of
infringing goods, account books etc.
Restraining Orders
(b) Restraining the infringer from disposing of the assets.

This is to prevent any adverse effect on the plaintiff’s ability to recover damages,
costs or other pecuniary remedies which may be finally awarded to the plaintiff.
Stay
(c) stay against the use of the trademark

C. Reliefs
The relief which a court may usually grant in a suit for infringement includes
Damages
Damages or account of profits,
Destruction
delivery of the infringing goods for destruction and
Costs
cost of the legal proceedings.
D. Criminal Remedies
In case of infringement a criminal complaint can be filed under the Trademarks act or IPC.
E. Administrative Remedies
Direction to Custom
Authorities
The Courts can direct the custom authorities to withhold the infringing material / its
shipment or prevent its disposal in any other manner, to protect the interest of the owners of
intellectual property rights.
Penalties for Trademark Infringement
• The infringer of TM may face criminal charges along with civil charges.
• The proceeding could be initiated under the TM Act for registered TM as well as for passing
off in case of an unregistered TM.
In the case of trademark infringement or passing off, the court may award (Sec. 135) -
• Temporary injunction
• Permanent injunction
• Damages
• Account of profits (damages in the amount of the profits gained from the infringement)
• Destruction of goods using the infringing mark
• Sections 101 and 102 of the Act prescribe the nature of the offenses.
• In the case of a criminal proceeding, the court dictates the following punishment:
• Imprisonment for a period not less than six months that may extend to three years
• A fine that is not less than Rs 50,000 that may extend to Rs 2 lakh.

ss

7) Trademark Registration Procedure

STEP 1: Trademark Search:

A Trademark search is the first step in the Trademark registration procedure. A search is to be
conducted in order to determine the uniqueness of the mark, and its similarity to other, pre-
existing
marks. It is very much advisable to conduct a Trademark search before registering or using a
Trademark. Without a search, there are chances for being sued for Trademark infringement, the
rejection of the Trademark application, and a third-party challenging the Trademark application.
STEP 2: Filing of Trademark Registration Application:
The second step in the Trademark registration procedure is filing of Trademark registration
application after getting the positive search report. After receiving of the acknowledgement the
applicant can use the symbol TM along with the applied mark. If the application for the
registration
of Trademark filed through efiling system of Trademark registration than the acknowledgement
of the application along with the government receipt generate immediately after the filing. If the
application for the registration filed manually than the acknowledgement provided only after
15-20 days.
STEP 3: Examination of Trademark Registration Application:
Third step in the Trademark registration procedure is issuance of examination report by the
Trademark office. Upon receipt of Trademark registration application, the Registrar issues an
examination report after examining the application. Applications are examined to ensure that
they comply with the requirements of the law and that they do not conflict with marks which are
already registered, or which are the subjects of earlier pending applications.
STEP 4: Publication of Mark in Trademark Journal:
Fourth step in the Trademark registration procedure is the publication of the mark in the
Trademark journal. If the Registrar considers the mark as a distinctive mark or after the removal
of the objections, if any, raised by the Registrar he may cause the application to be advertised in
Trademark journal. If no opposition to the mark is filed within 90 days from the date of
publication, or 120 days if request for extension of time is given to the opponent and opposition
is refused, mark proceeds for the acceptance of Registration.
STEP 5: Trademark Registration:
Fifth step in the Trademark registration procedure is the issuance of Trademark registration
certificate. After the application for Registration of Trademark is accepted by the Registrar, the
Registrar shall issue to the applicant a Certificate of Registration under the seal of the
Trademark

Registry.
Time Duration:
If there is no objection and /or opposition raised, the process of Registration of Trademark
usually takes 15 to 18 months.
Trademark Registry
The Trade Marks Registry was established in India in 1940 and presently it administers the
Trade Marks Act, 1999 and the rules thereunder. It acts as a resource and information centre and
is afacilitator in matters relating to trade marks in the country. The objective of the Trade Marks
Act,1999 is to register trade marks applied for in the country and to provide for better protection
of trade mark for goods and services and also to prevent fraudulent use of the mark. The main
function of the Registry is to register trade marks which qualify for registration under the Act
and Rules.
Rectification of Trademark/Register
Rectification means correction or alteration. According to the Trademark Act, 1999 the
proprietor orany other person having an interest in the trademark can file an application to
rectify certain entries related to the trademark in the register of trademark.
Who can file the application?
Any person who is interested in altering or removing the trademark can file the application. This
includes people who are not the registered proprietors of the mark.
What is the procedure to be followed?
The application should be accompanied with a statement of reason and facts for which the
change is requested. Within 2 months (+30 days) from the receipt of the statement of facts and a
copy of the application, the proprietor shall send a counterstatement to the Registrar.
What can be altered or corrected?
 Alteration of address in the register
 Correction of entry in register
 Alteration of Registered trademark
 Re-classification of goods
a. Alteration of address in the register;
Alteration in cases where the address has been wrongly entered in the register, can be rectified
by filing Form TM 34. The Registrar shall make suitable changes if he is satisfied. Alteration in
case the address: The Registered proprietor can file Form TM 50 to make the appropriate
changes in theregister.
b. Correction of entry in register;
Where an application has been made for correction, change, cancellation or striking out of
goods or
services, the Registrar may require additional evidence such as affidavits
c. Alteration of Registered trademark
Applicant can alter the trademark by filing Form TM-38 and furnishing 5 copies of the altered
mark.
After which the Registrar shall advertise the new mark and invite the public to raise objections.
Incase there are no objections raised within 3 months (+30 days) the Registrar shall make the
necessary alterations in the register.
d. Re-classification of goods
A registered proprietor can change the class in which his mark has been registered in by filing
Form-
40. The Registrar shall then check to see if there are any existing marks which are similar to the
applicant’s mark. In case there are no similar marks, then the Registrar shall advertise the mark
in the journal. Where there are no objections raised by the public, the Registrar shall make the
necessary changes in the register.

8. Write a note on well-known trademark.

Introduction:
As per Section 2(zg) of the Act, a well−known trademark is defined as in relation to any
goods or services, means an mark which has become so to the substantial segment of the
public which uses such goods or receives such services that the use of such mark in
relation to other goods or services would be likely to be taken as indicating a
connection in the course of trade or rendering of services between those goods or
services and a person using the mark in relation to the first− mentioned goods or
services.

A well−known trademark is one that's considered reputable and that the general public
(consumers, manufacturers, and all those involved in the sale and production of
trademarked goods) commonly knows about.
Well−known trademarks are easy to recognize and are very protectable, regardless of
whether they're registered, because of this notoriety. This notoriety protects
well−known trademarks against infringing similar products that:

 Are a reproduction of the trademarked goods

 Imitate or copy the protected mark
 Cause confusion as to whether the goods and services are imitators or
legitimate products of the well−known trademark

Though these regulations typically apply to infringing products in the same industry as the
well−known mark, some countries account for infringing products that aren't similar to the
protected goods and services. The extensive protections granted to well−known or famous
trademarks is important because these marks are widely acknowledged and held in high
 regard. These laws also help the owner of the mark protect their intellectual property, even
if the infringer operates in a country where the mark isn't registered. This protects the
mark owner as well as consumers, who can rest easy knowing that the products they're
purchasing are legitimate.
Even though trademark law doesn't officially make exceptions for famous, well−known
marks, it's easier for the owners of these marks to protect their rights. Legislators are
also usually proactive about resolving any infringement that may affect the reputation of
a famous company. The only issue that may arise is if a trademark is well−known in one
country but not in the country where it's copied.
These laws are also important given the nature of our global economy. It's easy for
infringers in virtually any nation to advertise products and services by infringing a
well−known mark online. The extra but unofficial protections extended to famous marks
helps resolve these issues quickly, without appeal, and no matter what the infringer's
country of origin is.

9) Assignment and Transmission

• Assignment and Transmission of a Trademark is a process in which ownership of the
trademark is passed from one person to another with full or partial rights depending on the
terms and conditions of the agreement.
• Registered and Unregistered TM are assigned and transmitted from one person to another with
or without the goodwill of the business concerned.
• Sec 2(1)(b)Assignment of a TM- there is a change in the ownership of the TM by act of
parties with written documents.
• Sec 2(1)(zc) Transmission of a TM- transmission by law, devolution on the persona
representative of a deceased person and any other mode of transmission not being
assignment.”
Types of Assignment and Transmission of Trademark
• Complete Assignment and Transmission:It means the transfer of all rights including
rights to further transfer, rights to royalties, etc from one individual to another.
• Partial Assignment: It means the transfer of ownership specified or restricted to certain
services or products.
• Assignment with goodwill: It means to transfer and assignment of the trademark with all
the rights and values associated with the trademark from one person to another.
Assignment and Transmission of Trademark (Sec. 37- Sec 45)
Sec 37- Right of registered proprietor to assign & give receipts –the registered proprietor
have right to assign TM & give receipts for consideration.
Section-38 Assignability & Transmission of a Registered TM - “Notwithstanding anything in
any other law to the contrary, a registered trademark shall, subject to the provisions of this
Chapter, be assignable and transmissible, whether with or without the goodwill of the business
concerned and in respect either of all the goods or services in respect of which the trademark is
registered or of some only of those goods or services”.
Sec. 39 Assignability and Transmission of Unregistered Trademark - “An unregistered
trademark may be assigned or transmitted with or without the goodwill of the business
concerned.”
Sec. 40- Restrictions on assignment or transmission when multiple exclusive rights would
be
created- A TM shall not be assignable or transmissible if it results in exclusive rights in more
than
one persons concerned to the use, to -
(a) Same goods or services;
(b) The same description of goods or services;
(c) goods or services or description of goods or services which are associated with each other,
•An assignment or transmission shall not be deemed to be invalid under this sub-section if the
exclusive rights subsisting in the persons concerned respectively are, having limitations
imposed
thereon, such as not to be exercisable by two or more of those persons concerning goods to be
sold, or
otherwise traded in, within India otherwise than for export therefrom, or about goods to be
exported to
the same market outside India or concerning services for use at any place in India or any place
outside India to services available for acceptance in India.(Restrictions on Assignment of
Trademark).
Sec. 41- Restriction on assignment or transmission where exclusive rights would be created in
different parts of India- To prevent the split of rights of TM & creating rights for different
persons in different parts (Restrictions on Assignment of Trademark)
Section 42- Conditions for assignment otherwise than in connection with the goodwill of a
business- The section outlines the conditions for assigning a trademark that is not associated
with a business's goodwill.
•The assignee must apply to the Registrar for directions on how to advertise the assignment
within 6 months of the assignment date.
•The assignee must advertise the assignment as directed by the Registrar.
•The Registrar may allow an extension of up to 3 months for the advertising period.
❑ The assignment of a TM is not considered to be without goodwill if it is accompanied by the
transfer of the goodwill of the business for specific goods and services.
❑ It is also permissible to assign a trademark along with the goodwill of the business for goods
exported or services used outside India.
Sec.43. Assignability and transmissibility of certification trade mark- A certification
trade mark shall not be assignable or transmissible otherwise than with the consent of the
Registrar, for which application shall be made in writing in the prescribed manner.
Sec. 44. Assignability and transmissibility of associated trade marks- Associated trade
marks shall be assignable and transmissible only as a whole and not separately, but, subject
to the provisions of this Act, they shall, for all other purpose, be deemed to have been
registered as separate trade mark.
Sec. 45 Registration of assignments and transmissions-The Sec. gives Process for
assignment and transmission of Trademark -
1. Application to the Registrar of Trademark in the prescribed manner with certified original
documents.
2. Review- The Registrar will review the application and provide a decision within 3 months.
He informs the applicant about the assignment or Calls to furnish proof if he has some
doubts.
3. Registration- If the assignment is approved, the Registrar will register the assignee as the
proprietor of the trademark and enter details of the assignment in the register.
4. Dispute- If the validity of the assignment is disputed, the Registrar will not register it until
a competent court determines the rights of the parties.
• The Registrar may request additional evidence if there are doubts about the application.

10) Passing Off

Passing off is an actionable wrong in which a person passes off his goods as the goods of
another.
Like the protection of trademarks, Passing off also prevents a person from misrepresenting its
goods and services from that of the other.
Passing off is recognised as a common law that is used to protect and enforce unregistered TM.
There are 3 elements of passing off popularly known as the classical trinity-
1. Damage to goodwill & Reputation- To injure the business or goodwill of the other person
2. Misrepresentation- has resulted in causing confusion in the minds of people
3. The suffering of the plaintiff- causing loss to the plaintiff
❑ Registration is no defence to passing off action
❑ Intention is immaterial in infringement or passing off.
Cadila Health Care Ltd v. Cadila Pharmaceutical Ltd, 2001,SCC held the criteria for the
determination of the deceptive similarity of marks and set out specific rules for deciding the
nature
of similar or misleading marks. In an action of paasing off for unregistered TM to decide
deceptive
similarity it must be considered that-
1. The nature of the marks, whether it is words, labels, or composite marks.
2. The degree of resemblance between the marks, phonetic or visual, or similarity in the idea.
3. The nature of goods or services in respect of which they are used as trademarks.
4. The similarity in the nature, character, & performance of goods/services of the rival
traders/service providers.
5. The class of customers, on their education, and the degree of care they are likely to exercise
in
purchasing and/or using the goods.
6. The mode of purchasing, it traverse in course of business or placing an order.
Ingelheim Pharma GMBH & Co. KG V. Prechand Godha , 2014, Del
Held that MUCOSOLVAN of the plaintiff and MUCOSOLVIN of the defendant were
composite marks and used for cough syrup having the same composition. There is a
close degree of resemblance as only one letter is different for each mark. The nature of
the marks, degree of resemblance, character, & performance of goods/services, and
class of customers are almost similar. There is the likelihood of deception and
confusion.
Timken Company v. Timken Services Private Ltd.2013, Del – the court held that for
passing off not necessary to prove actual damage it is sufficient to be the presence of
Misrepresentationhas resulted in confusing the minds of people.

11)Domain Name Protection and Registration

•A domain name is identity of an online business, it performs the same functions as that of a
TM.
• Any unique internet name that is capable of identifying and distinguishing goods or services of
a
company from that of other companies, and can also act as a reliable source identifier for the
concerned goods and services on the internet.
•A domain name can be registered as a trademark, provided that the domain names do satisfy all
conditions under the Trade Marks Act, 1999, and the Trade Marks Rules, 2002.
•Domain names may considered as service under sec. 2(z) of TM Act 1999.
•The registered domain name owner will have all rights and authorities that the registered TM
owners including the right to sue for infringement or passing off.
• When there is a misrepresentation of the unregistered mark and it is likely to deceive the
relevant public, the unregistered trademark owner can sue for passing off.
• Thus, registered domain names can obtain the protection of TM infringement, and
unregistered domain names can get the protection of passing off.
Satyam Infoway Ltd v. Sifynet Solutions Pvt. Ltd.2004, SCC- The court held that internet
domain names are recognisable as TM. The domain name not only serves as an address for
internet communication but also identifies the specific internet site, and distinguishes specific
businesses or services of different companies. A domain name as an address must, of necessity,
be peculiar and unique. As more and more commercial enterprises trade or advertise their
presence on the web, domain names have become more and more valuable. Its involvement in
trade and commerce provides it the status of TM.
Info Edge (India) Pvt. Ltd. vs. Shailesh Gupta and another,
the website using the domain name, ‘Naukari.com’ was held to be confusingly similar to that of
the
plaintiff, ‘naukri.com’, with a different spelling variant establishing prima facie inference of bad
faith.
Rediff Communications Ltd. v. Cybertooth & another, - the Bombay High Court while granting
an
injunction restraining the defendants from using the domain name ‘RADIFF’ or any other
similar
name, held “When both domain names are considered there is every possibility of internet users
being confused and deceived into believing that both domain names belong to one common
source
and connection although the two belong to two different persons.”
.