Protection of Trade mark: As an Aspect of Consumer Right

Introduction

A trademark is also known as a visual mark and is mostly referred as a brand name. It can be in a form of a signature, name, device, label, numerals, combination of colours, symbol, writing, a mark or a word that gives a distinct identity to the goods or services and allows the consumer to differentiate between similar goods/service from another. It helps to identify a particular good or service which is offered by a person or an enterprise. Trademarks help the consumer to identify and purchase a product or service that he trusts. Therefore, trademarks are the identification marks that allow the consumer to understand the product according to the quality meeting the standards.

In India, the Trademark Act was materialized in 1940 and had the provisions from the UK Trademark Act 1938. In 1958, this was later amended and modified with the provisions of Indian Penal Code and the Criminal Procedure Code. The Trademark Merchandise Marks Act 1958 was also replaced by The Trademarks Act, 1999 (the ‘Act’).

Meaning of Trade mark

Section 2(zb) defines the term “trade mark”[1] as a graphical representation[2] which distinguishes the good and services of one person from others. It can include shape of goods, packaging, combination of colours etc.

Section 2(m) of the Act defines “mark” which explains that mark includes “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.”[3]

Trade mark means the “trade dress”[4] which distinguishes the goods and services of one producer from another.[5] The right that trademark provide is the exclusive right to use the mark or by any other authorized person but the proprietor of the trademark does not get monopoly over the class of good and particularly for those for which the trademark is not used.[6] Therefore, broadly speaking there are two essentials for a mark to qualify as a trademark:

• Graphical representation: Section 2(1) (k) defines graphical representation which means that the mark should be capable of being represented in paper form and can be digitized.[7]
• Capable of distinguishing goods: This requisite of a trademark primarily enumerates that a trademark must be distinctive i.e. it should not be devoid of a distinctive character. Lord Halsbury defined “Distinctive” as distinguishing a particular persons good from others and it is a manufacture of his, as distinguished from somebody else.[8] The distinctive character can be acquired from the long use of mark[9] but no hard and fast rule is applied with respect to length of the period the mark is used to acquire distinct character.[10]

Kinds of Trademark

• SERVICE MARKS: the definition includes those brands that are providing services like banks, education, communication, real states, transport etc. The service mark is similar to trademark which resembles to services instead of goods and products. The procedural and substantive rules for the service marks are same that of trade marks.
• WORD MARKS: words may comprise of letters or numerals or both. It is usually a distinct text-only typographic treatment of the name of a company, institution, or product name used for purposes of identification and branding
• CERTIFICATION MARKS: These marks define the standard assuring the consumer to rely that the product has gone through certain standard test and meets the prescribed standards. It depicts the safety and quality of the product. The products claiming geographical origin, performance, service, quality, accuracy or any other characteristic is depicted by the certification mark.[11]
• COLLECTIVE MARK: Section 2(1) (g)[12] defines the collective mark to mean the representation of companies, members of an association but not Partnership. It helps in protecting certain tradition Indian family trademarks and also promotes the product which have characteristic of specific producer of a region.
• WELL KNOWN TRADEMARKS: These trademarks are included and recognized as they have their concept originating from Paris Convention and TRIPS Agreement. These marks are easily recognized by the large and substantial population and are well-known and thus it achieves the standard of trademark. To get the standard of a well-known trade mark, the mark should have actual and potential customers that recognize mark dealing in the particular goods and services. A mark, which has been designated as a well known mark, is accorded stronger protection. The Act casts an obligation on the Registrar to protect a well known mark against an identical or similar trade mark. The Supreme Court has laid down that a mark that is associated with the mind of the people on account of advertisement despite no actual sale is a well known trade mark.[13]
• UNCONVENTIONAL TRADEMARKS: the trademarks that get the recognition due to their distinctive feature. It includes sound marks, colour marks, shape marks, smell marks.

Non Registrable Trade Marks

The first trade mark was granted Bass & Co., an alcoholic beverages goods company in United Kingdom. The mark was used since 1600’s and was registered in 1876. Non registrable trademarks are as follows:

1. That from their very nature deceive the public or cause confusion;
2. Any mark contrary to law;
3. The marks likely to hurt the religious sentiments;
4. The marks consisting scandalous or obscene matter;
5. The marks consists of the name, portrait or signature of an living individual;
6. The marks depicting any shape which is used for technical purpose or which gives value to any goods;
7. The marks possessing chemical names;
8. The marks including personal names, or surnames, common abbreviations;
9. The marks incapable of being distinguished;
10. Deceptive marks;
11. Generic names.

Case Studies

• S.M. Dyechem ltd v. Cadbury India limited[14] the pronunciation of the term was similar and merely there was the change in alphabets. Picnic v. Picnik were the disputed marks.
• Glaxo SmithKline Pharmaceuticals Ltd. v. Unitech Pharmaceuticals Pvt. Ltd. [15] the disputed marks were Fexim and Phexim.
• Anneliese Hackman’s Appln[16] it was held that the term “PATENTEX” for the contraceptive pills was deceptive.
• VITSAFE TM[17]– The term VITASAFE for considered as deceptive for the preparation of vitamins.

The trademarks possessing names were not considered as the trademarks:

• Diana, Princess of Wales (Diana, Princess of Wales, Trademark 2001)
• Jane Austin for Toiletries (Jane Austin, Trademark 2000)

Religious sentiments

• Attukkal Bhagvathy temple issue: the mark used has picture of the deity and title Sabrimala for women. The mark was not allowed to be registered as it could hurt the religious sentiments of the people.
• MESSIAS term for wine and brandy.[18]
• “The pope smokes the dope” over t-shirts and “Jesus jeans over clothing” are other examples of marks that could hurt religious sentiments.

Conflicting Political Issues

• Queen Mary on underwear[19]

Race, gender and sexual orientation

• Hajro v. Pro football Inc[20], 50 U.S.P.Q.2d. 96 (D.D.C. 2003): the term “Washington redskins” was in conflict.
• “Bullshit, really good shit”, in respect to any good and service was scandalous in nature.

Vulgarity

• The mark W.B. WIFE BEATER for clothing was refused to be registered for clothing as it was very scandalous and depicts spousal abuse.

Chemical Names and International Non-Proprietary Names

• Pharma Research v. Jam[21] the mark “OLEIN” was refused as it is similar to the chemical name “OLIN.”
• ICI v. Cipla[22] the mark “AIENOLAR” was refused for medical purpose as it is similar to international proprietor “Atenolon.”

Surname, Personal Name, Abbreviation or Common Names

“Fantastic Sam’s” mark was refused because SAM was the common name as trading style and it could not be used for hair dressing services.[23] In case there is a distinctive nature it can be used.[24]The other examples for abbreviations that cannot be registered as a trademark are sharp for televisions, digital for computers, windows for window software.

Position of Unregistered Trade Mark

TheTrade Marks Act provides that an unregistered trademark may be assigned or transmitted with or without goodwill.[25] An assignee is required to apply to the Registrar within six months, extendable by three months for directions with respect to advertisement. The assignee must issue the advertisement as directed for assignment to take effect. Both unregistered and registered trade mark are subject to same conditions as stated in Section 42.

Passing Off

Passing off occurs when there is misappropriation of the trademark. The common law remedy can be instituted under section 27 of the Act which recognizes that an action can be taken against any person for passing off goods or services as of another person. There are three elements known as classical trinity test [26]for a passing off action:

• Goodwill owned
• Misrepresentation
• Damage to goodwill

Therefore, passing off depends on the principle that no person can represent his goods as somebody else’s good.[27] Delay in filing of suit does not defeat the case of plaintiff and principle of similarity could not to be very rigidly applied.[28] The burden of proof is upon the plaintiffs so show how the goods of the defendant can pass off as the goods of the plaintiff.[29]

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Domain Names

Significance of trade mark is that the people in that line of trade and practice are aware and acknowledge that such common word denotes the goods belonging to a particular trade. [30]The domain names are the internet addresses. A domain name is a unique name for the identification of any website. The internet space is very vast and contains huge amount of content in it. Therefore, to make it easier for the user to find and access any website it is necessary to know the domain name of the website. Each domain name has a unique address which is used to access the website.

The domain name is mentioned in the address bar of the search engine. Generally they prefix “www” “https” etc. which do not form part of a domain name. The address also has a suffix like .com, .in, .uk etc. The suffixes describe the purpose and sometimes location of the domain name. When the website is launched the domain name is converted by a DNS i.e. Domain Name System into an IP address that determines the location of the website. In other words, it can be said that the names registered in the DNS are domain names.

These domain names are used for trade and business purposes and are made for the purpose to give a unique identity to the service and trade.[31] They have their electronic mail addresses and use them for the trading and services. The domain name is also registered as a trade mark subject to the Act. The domain name should possess the characteristic of being descriptive and distinctive.

Therefore, domain is the identity of the goods, service, producers etc. for the purpose of trading and providing services. These domain names are to be protected to prevent various malpractices and grant protection to goods and services and the goodwill of the producers.[32]

Domain name is the physical or territorial address. It is the location on the web where a domain name registrant stores and displays his information and offers his services.[33] The Supreme Court has held that the original role of the domain name is to not only provide address for computers on the internet but is also used as an identifier of business. It distinguishes the specific business or services of different companies. Therefore, the domain names should be peculiar and unique as its critical to any business and should maintain an exclusive identity.[34]In India, the domain names are protected under the Act.[35]

WIPO Internet Domain Name Process

After the domain name and internet came, the business fraternity became conscious of the online trademark. The domain name became the unique business identifiers for trade and service providers and therefore should be protected under the intellectual property laws. The use of the internet is all over the world and not limited to the particular area. The domain names are searched and accessed by the people from every location of the world and thus a strong policy is required to protect the uniqueness of the domain name that represents its business.

In 1990, WIPO report recommended the implementation of a successful administrative system for resolving domain name disputes involving trademarks and a system of best practices for domain name registration authorities was designed to avoid conflicts. The WIPO recommendations were implemented by the Internet Corporation for Assigned Names and Numbers (ICANN).

There were several unsolved issues that were put after the first recommendation report. The issues related to domain names that were registered in bad faith and were misleading. After the request from member states the second WIPO Internet domain Name process was initiated.

The second report concluded with the observation that there were several domain names registered by the users who were under no capacity to use these names. These malafide registrations were of great sensitivity because the domain names used by these identifiers were of eminent politicians amongst others.

The uniform domain name dispute resolution policy along with ICANN came up with certain rules relating to trade mark protection.

The recommendations with respect to the various identifiers made in report are as follows:

1. International non proprietary names (INNs) for pharmaceutical substances should be protected against identical domain names registrations. The mechanism to be followed is that any interested party may approach WIPO and notify that a domain name is identical to the existing INN. WIPO with the aid of WHO would verify the domain name and then notify it to ICANN. The registrar where the registration was made would be notified, who would then cancel the registration of such domain name.
2. The other issue raised was of international Inter-governmental organization (IGO). Chapter four of the report recommended that the administrative dispute resolution procedure should be established where the IGO can bring the complaint against the impugned domain name.
3. The problem in domain name registration also was brought up for the protection of personal names.
4. The issue where the geographical identifiers were registered in bad faith by expressing in the name that would give a perception that the source of goods and services are from a particular city country or location having particular characteristics. The issue remained unsolved due to lack of an international agreement over the list of source of origin of goods and services. Similar is the case of the trade names where the problem is to differ between the domain names of different nationality.

Madrid Agreement Concerning the International Registration of Marks (1891) and the Protocol Relating to That Agreement (1989)

The Madrid Agreement concluded in 1891 and was revised at several occasions. The last amendment made in the treaty was in 1979. The protocol related to the treaty was concluded in 1989. The aim of the protocol was to correct the deficiencies in the Agreement. The approach of the Protocol is to create a system of simple and inexpensive trademark registration.

The states which are party to the Paris Convention are free to join the Madrid Agreement and the Protocol. The Madrid Agreement is officially known as the Madrid system for the international Registration of marks. This international system facilitates the registration of trademarks in various jurisdictions. Therefore by way of single application the international registration can be covered in more than one country. The system is governed and administered by WIPO. The US and EU joined the Madrid Protocol in 2003 and 2004 respectively.

Procedure of Application

The application made must designate the contracting parties where the protection is sought. The designation of the party can be made either under protocol or under the agreement which ever is common among the contracting parties. In case, both the contracting parties are part of both instruments, they are governed by the safeguard clause i.e. Article 9sexies of the agreement. The designations are effected under the agreement. The communicating language should be French and where any of the designated party is affected by the Protocol, the use of English or French may be done unless there is any objection raised by the Office of Origin.

Application Fee

The application is subject to the basic fee that has to be paid by the parties. Where any country is enlisted by the UN as a least developed country, the fee for such countries is reduced by 10%. A supplementary fee for each goods or services beyond first the three classes is to be paid.

A complementary fee has to be paid for each designated contracting parties. The Contracting party may plead for alteration of complementary fee to an individual fee, which could be determined by the concerned contracting party but shall not be more than the amount payable for the registration with its office.

Registration

After the application is made, then the examination is conducted by the International Bureau. During the examination the requirements of the agreement, protocol, and their common regulations should be complied with. In case no irregularities are found, the mark is recorded in the international register. The mark is published in the WIPO Gazette of International marks and the same is notified to the designated parties.

Refusal of Contracting Parties

The members of the Agreement and the Protocol may refuse the protection of any of the substantive provision of the domestic law, if it is contrary. Such refusal has to be informed to the International Bureau within 12 months by the Contracting parties and may extend to 18 months or more. Such refusal is communicated to the holder, recorded in International Register and published in the Gazette. The dispute is resolved by the involvement of the court of the Contracting Party and the holder and decision so obtained is communicated to the International Bureau which publishes the same.

Effects of International Registration

The international registration results into the depositing of mark to the Office of the each designated Contracting Party. The deposition comes into the effect from the date of International registration. Further if no refusal is made in the prescribed time period by the Contracting parties then the mark is considered to be registered by the Office of the Contracting Party from the date of international registration.

Advantages of Madrid System

The system makes it possible to protect a mark in a large number of countries by obtaining an international registration which has effect in each of the Contracting Parties that has been designated. It is also easy and less expensive. Instead of filing various national applications in various languages, following different norms and paying several fees international registration can be done via one application, in one language and with a combined fee.

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References:

[1]The Trade Marks Act, 1999, Act 47, Acts of Parliament, 1999, §2(Z)(b).

[2]Id. §2(1)(k).

[3]Id. 2(m).

[4] Rich Products Corporation v. Indo Nippon Food Ltd. CS (OS) 246/2004.

[5]Pioneer Nuts & Bolts Pvt. Ltd. v. M/s Goodwill Enterprises, FAO (OS) 334/2008.

[6]M/S Nandhini Deluxe v. M/S Karnataka Co-Operative Milk Producers Federation Ltd., (2018) 9 SCC 183.

[7] KC Kailasam & RamuVedaraman, Law of Trademarks & Geographical Indications, 2nd Ed.LexisNexis India, 2009.

[8]T. R. SrinivasaIyengar, Commentary on Trade Marks Act; 5thEd. Universal Law Publishing 2016.

[9]Sarda Plywood Industries Ltd. v. Deputy Registrar of Trademarks, 2007 (34) PTC 352 (IPAB).

[10]East End Hosiery Mills Pvt. Ltd. v. Agarwal Textile Mills,AIR 1971 Cal 3.

[11]The Trade Marks Act, 1999, Act 47, Acts of Parliament, 1999, §2(1)(e).

[12]Id. §2(1)(g).

[13]N. R. Dongre v. Whirlpool (1996) 5SCC 714.

[14] S.M. Dyechem Ltd v. Cadbury India Ltd., MANU/SC/0407/2000.

[15] Glaxo Smith Kline Pharmaceuticals Ltd. v. Unitech Pharmaceuticals Pvt. Ltd., MANU/DE/ 2840/2005.

[16] Anneliese Hackman’s Appln, (1963) 63 Bom LR 650.

[17] (1963) RPC 256

[18] ReSociedade Agricoal E.Commercial Dos Vinhos Messias, S.A.R.L., 159U.S.P.Q.N. (BNA).

[19] (Martha Maid Mfg. Co., 37 U.S.P.Q.(BNA) 156 (Comm’r Pat. 1938).

[20] Hajro v. pro football Inc , 50 U.S.P.Q.2d. 96 (D.D.C. 2003).

[21] Pharma Research v. Jam, (1986 IPLR 16 (TMR).

[22] Ici v. Cipla, 1980 IPLR 90.

[23] Fantistic SAM’S Service amrk, (1990) RPC 531.

[24] Saravan Stores, Application no. 1027142.

[25]The Trade Marks Act, 1999, Act 47, Acts of Parliament, 1999, §39.

[26]Reckitt & Colman Products Ltd. v. Borden Inc., (1940) 42 BOMLR 734.

[27]Cadila Healthcare Ltd. v. Cadila Pharmaceutical Ltd, 2007 (35) PTC 95 Del.

[28]Corn Products Refining Co. v. Shangrila Food Products Ltd, (1929) 4 RPC 11 (2).

[29]Atlas Cycle Industries Ltd. v. Hind Cycles Limited, ILR 1973 Del 393.

[30]Vijay Kumar Ahuja v. LalitaAhuja, 95 (2002) DLT 3.

[31]Rajat Agarwal v. Spartan online, MANU/WB/0340/2017.

[32]Big tree Entertainment v. Brain Seed Sportainment, MANU/DE/5189/2017.

[33] People Interactive India Pvt. Ltd v. Vivbek Pahwa, MANU/MH/1661/2016.

[34]Satyam Infoway Ltd. v. Siffynet solutions, AIR 2004 SC 3540.

[35]Tata Sons Ltd. v. Manu Kosuri,1999 (19) PTC 201 (Del).