Categories of Trademark: Certification

Marks, Collective Marks, Well known Marks

and Non-Conventional Marks

Trademark is an intellectual property consisting of signs, designs,

expressions or other distinguishing factors which identifies different
products and services. Indian protects trademarks under the Trademarks
Act 1999. There is a general classification of trademarks into four
categories according to description and nature of the products and
services. These four categories are:

a] Certification Mark,

b] Collective Mark,

c] Well Known Mark, and

d] Non-Conventional Marks.

a] Certification Trademark is a mark which distinguishes goods or

services based on the origin, material, mode of manufacture, performance
of services, quality, accuracy, and other characteristics.

Section 2(1) (e) of Indian Trade Marks Act defines a certification mark as
“a mark capable of distinguishing the goods or services in connection with
which it is used in the course of trade. WOOLMARK certifies that a product
is made of 100% wool, ORGANIC INDIA is a trademark which satisfies a
method or mode of manufacture, ISI mark is given for the products which
have some standards laid by the Bureau of Indian Standards. The
trademarks Act 1999 has a detailed provision for types of information that
must be included in giving application of the trademark.
Applicants must submit a certification Trademark application, a statement
of case that sets out the grounds of the application. The application must
be filed to the Indian Trademark registry and they will check whether the
application satisfies with the necessary requirements as per the Indian law.
If the registry is satisfied by the requirements given by the applicant, then it
will be published in the trademarks journal. The application will remain
open to opposition by any third party within four months. The certificate
Trademark will be registered if there is no opposition. The term of
registration for a certification Trademark is 10 years. There are provisions
to cancel a certification trademark if an aggrieved party approaches the
register, when the proprietor is no longer competent to the trademark, when
the proprietor has failed to observe any provisions of the regulation given
under the law and when the register thinks that there is no advantage to the
public.

b] Collective Trademarks are trademarks to protect and to differentiate

the geographical origin, material model of manufacture or other common
characteristics of goods or services. Collective Trademark is owned by
an association or organisation. It is used by their members to identify
with their level of quality for accuracy. Article 7 of the Paris Convention
talks about collective marks, which mentions that the countries shall
protect collective marks even if those associations do not have an
industrial establishment and each country has the authority to decide which
collective marks are to be protected. They may refuse to protect a
collective mark if they feel it is opposed to any public policy.
The importance of collective marks is that certain products are linked to
the region, and there may be historical, cultural and social conditions which
make some products worthy. Just like the certification mark collective
marks cannot be applied by anyone. For example, any gold jewellery
which conforms to all the standards laid by BIS can have the Hallmark on it
to show its level of purity, but only people who are members of CA can use
the mark of a CA. Collective Trade Mark in the Indian context is defined
in section 61 of the Trade Marks Act, 1999. The members of the
collective mark can use the collective mark. The classic example of
collective mark is the case of “Chirimoya Cumbe”. It is a native fruit of
Peru and Ecuador. It has a value in that area where the climatic conditions
are favourable for growing chirimoya. The fruit produced in that area is of
superior quality and it is characterized by large food size, greater in value
of their skin and low seed ratio. A farmer in 1997 applied for registration of
the trademark Chirimoya Cumbe in Peru. The application for registration
was rejected on the grounds that an individual cannot have exclusive rights
in the generic names. Again, he met with the officials and told the
importance of Chirimoya Cumbe with the community in Lima village. After
long battles it was registered as a collective mark and the people of Cumbe
would be the owners of this collective mark and they can use the mark as
per the rules laid down to them.

Thus, collective trademarks are an effective tool for promoting products of a

particular region that are peculiar to that region. A collective mark
enhances the marketing of such products and cooperation among the local
producers. Correct use of the collective mark can assist the company in
Goodwill building in terms of quality, accuracy, origin at an early stage.
c] Well known Trademark was introduced during the year of 2017. At
present the list has 81 trademarks declared as “well-known” by judicial
and quasi-judicial authorities in India. Anyone can file an application for a
well known trademark for safeguarding and protecting against passing off
an infringement of trademark. Well known Trademarks are recognised in
India on the basis of the reputation, nationality, internationally and
cross-border. Registrar while determining whether a mark is well-known in
a relevant section of the public shall take into account the actual number of
consumers, the number of people involved in the channel of distribution of
goods or services and the business circles dealing with the goods or
services. When a person applies for a well known trademark no one can
use that name for any other services. For example, Google has been
trademarked by Alphabet Incorporation. They can only use Google for
any goods and services, and no one can use even if it is not related to the
internet industry.

In the case of Daimler Benz V Hybo Hindustan AIR 1994 Del 2369
the defendant was using the logo and the word Benz for which plaintiff got
an injunction. The court recognised that the plaintiff has this logo as a well
known trademark on the ground of transborder reputation and Goodwill,
granted injunction against the use of the logo and other things by the
defendant. In the case of Rolex Sa V Alex Jewellery Private Limited &
ors 2009 (41) PTC 284 (Del.) is a similar case. A company was using the
trade name of “Rolex” for making artificial jewellery which was a well
known brand for watches. Plaintiff gave a case against the defendant for
using the trade name Rolex. The court held that the people would get
confused when they see the name Rolex and also said that the watch
company Rolex has a well known Trademark. This will be affecting the
business and goodwill of the plaintiff. For this reason, the court considered
Rolex to be a well known Trademark and granted injunction against the act
of the defendant.

Rule 124 of Trade Mark Rules 2017 permits the trademark owners
to file a request for grant of “well-known” trademark to the Registrar in form
TM-M. Before the coming up of this rule, a mark was declared well-known
only after proceedings, rectification and opposition held before the Hon’ble
courts. With the commencement of this rule and the procedure laid thereof,
a trademark owner can request for a well-known trademark without getting
into any proceedings or rectifications. Rule 124 ensures a trademark to be
granted the tag of “well-known” merely by an application of request to the
Registry. Section 11 (2) of trade marks Act 1999 protects the well known
trademarks. According to this clause well known trademarks are to be
recognised and protected across all the classes of goods and services.
This also means that any identical or similar product can also be not there.

Section 11 is also giving the conditions required for well known

Trademark registration and filing of a well known trademark application. It
should be given with the relevant documents, evidence and a fee of 1 lakh
rupees. There are remedies available to an owner of a well known mark
when someone misuses it. If someone misuses it, he can be punished
punitively. The owner can seek cancellation of the infringing mark. The
owner can cancel registration of a trademark which is the same or similar to
the well known mark even if a well-known Trademark is not registered in
India.
 In the TATA case the court awarded punitive damages of Rupees
Two lacs to the plaintiff for misusing the well known trademark. There is a
vulnerability of a well known Trademark in the cyber age. As there is an
advancement of technology, fast access to information, international
business, international travel and advertisement there is a need for a well
known trademark. The jurisdiction of the well known trademark should be
applicable to all countries because the world is connected now. The Multi
National Companies are more vulnerable and they will lose their reputation
if someone misuses it.

d] Non Conventional Trademarks: In the modern world trademarks are

not limited to words, logos or symbols which can be graphically
represented in relations with any goods or service. Sometimes the sound,
taste, smell, texture, Hologram, motion, shape and ambiance of the goods
and service can be treated as a trademark. As these trademarks are
beyond the realms of traditional conventional category these trademarks
are called non conventional marks. Under the rule 26 (5) of Trademark
rule 2017 there was a mention of sound trademark. International
organisations like TRIPS still have to make provisions for non conventional
marks.

Yahoo Idol has registered the first Sound Mark in India in 2008. India
also does not have any provisions for non conventional marks. There
should be amendments in both rules of TRIPS as well as in the legislation
of India because non conventional marks have become such an important
mark in the present modern world. Examples of smell marks are
toothbrushes with the smell of strawberry, lubricants for combustion
engines etc. In India no smell mark has been registered till date. There
are some problems with it because it cannot be stored or represented
easily. Writing down the chemical formula for a smell is the only way to
represent it.

In the case of Shield Mark BV v. Joost Kist Case C-283/01 in The

European Court of Justice has decided some conditions under which
sound Trademark must be registered. It is a Landmark case which gave
the guidelines for sound trademark. The court held that sound
trademarks are capable of being trademarks under the article 2 of
European directive 89/104 if they are capable of distinguishing the goods
or services from one another and represent it graphically. In this case the
court also held that sound trademarks can be represented graphically using
images, lines or characters and the representation should be clear, precise,
self-contained and easily accessible.

In the case of Ralf Sieckmann v. Deutsches Patent und

Markenamt case C-273/00 ECJ is a landmark judgement given by the
European Court of Justice on the trademark of smell. The case involved a
methyl cinnamate scent which the applicant has described and brought
samples of the product. The court held that the chemical formula is not
giving the proper smell of the substance and not sufficient, clear or precise.
The physical deposit of the sample did not constitute graphical
representation and was not sufficiently stable or durable. These are the
difficulties in getting the smell trademark.
 In the case of Eli Lilly v. OHIM [2013] EWHC 1826 (Ch) there was a
case where an application was filed before the Office for Harmonisation in
the Internal Market to trademark the flavour of strawberry for
pharmaceuticals. This was rejected on the grounds that it lacked any
distinctive character. The mark was presented with a verbal description and
thus lacked a written description to be filed mandatorily in order to describe
the mark. Thus, it can be concluded from this judgement that applying for a
taste mark for a medicine is a futile exercise as this is generally done to
offset the bitter taste of the medicines.

Adding a flavour to a medicine is usually performing a functional

aspect of the product. New kinds of trademark will come as the technology
and business progress. These are necessary to resolve the conflict
between the producers and to bring healthy competition among the
business. These trademarks are also valuing the hard work of each labours
who work behind the product or service.