Need & Emergence of TM Law

 Module 5

a. Need & Emergence of TM Law
b. Conditions for Registration
c. Procedure and duration of Registration
d. Effect of Registration: Passing Off and Infringement of TM
f. Assignment & Transmission
g. Use of Tm and Registered Users
h. Rectification, Correction,
i.  Certification mark
j.  Appellate Board
k. Offences & Penalties

A trademark may be  designated by the following symbols:

A trademark is typically a name, word, phrase, logo, symbol, design, image, sound  or a combination of these elements. There is also a range of non-conventional  trademark comprising marks which do not fall into these standard categories,  may therefore be visible signs (e.g. colors, shapes, moving images, holograms,  positions), or non-visible signs (e.g. sounds, scents, tastes, textures).

 

Functions & Objectives of TM

·         Identification

·         Source

·         Quality

·         Advertising

Cadbury India Ltd & others v. Neeraj Food Products 2007 (35) PTC 95 (Del.)

Spirit, Intendment and purpose of TM legislation is to protect the trader and consumer against dishonest adoption of one’s trademark by another with the intention of capitalizing on the attached reputation and goodwill.

 

HISTORY(Indian Context)

Indian Trade mark law

 

Trademark

Essentials

(i) it should be a mark

(ii) it should be capable of being represented graphically

(iii) it should be capable of distinguishing the goods or services of one person from those of others

Sec 2(l)(m) Mark: “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;

 

Different Kinds of Marks

·         Device

·         Brand

·         Heading

·         Label

·         Ticket

·         Name

·         Signature

·         Word, Letter & Numeral

·         Shape of Goods

·         Packaging

·         Combination of Colours

·         Any Combination of Different marks

 

Requirements

·         Capable of being represented graphically

·         Distinctiveness

·         Non-Traditional marks

1.      Smell Marks

2.      Sound marks https://www.youtube.com/watch?v=HXc6LyqS92o

3.      Taste Marks

4.      Moving images, Holograms, and gestures     https://www.youtube.com/watch?v=lsgSGHyXRiE

5.      Three dimensional Trade marks

6.      Trade Dress

 

Certification Marks

A Certification Mark (also sometimes called as the Conformity Mark, or a Mark of Validity or Assurance) is a specific mark on a commercial product, indicating that the manufacturer of the product has tested and verified strict compliance with certain prescribed quality standards while manufacturing the product. Again, any specific certification mark may also indicate the location of the origin of the product, the materials of production or construction, method or mode of manufacturing, purity or accuracy, or any specific characteristics of the product.

2  (1)(e) “certification trade mark” means a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified and registrable as such under Chapter IX in respect of those goods or services in the name, as proprietor of the certification trade mark, of that person;

 

Certification Marks Issued for Different Products in India

 

BIS Hallmark: --- Issued by the Bureau of Indian Standards (BIS), this BIS Hallmark certification is a hallmarking system for the certifying the purity and standard of precious metals like gold and silver and jewelries of these in entire India.

This BIS hallmark has been in use since 2000 for gold and its jewelries, and since 2005 for silver and its jewelries. Here, it may be noted that BIS is the national standards organization of India.

 

AGMARK: certification mark

is exclusively used for various agricultural products in India, and fortifies that those products duly and strictly conform to a certain set of related standards.

This certification mark is issued by the Directorate of Marketing and Inspection, Govt. of India, and has been in legal force as per the Agricultural Produce (Grading and Marketing) Act of 1937 (including amendment in this in 1986).

At present, the AGMARK standards cover quality guidelines for 213 different agricultural goods and commodities which encompass diverse pulses, vegetables and fruits, cereals, vegetable oils, essential oils, and some semi-processed products like Vermicelli.

In addition to the 'Central AGMARK Lab' located in Nagpur, there are State-owned Agmark laboratories in 11 nodal cities across India.

Some other Examples

·         ISI Mark

·         FPO Mark

·         Non-Polluting Vehicle Mark

·         India Organic

·         Eco Mark or Ecomark

 

Collective Mark

Collective mark is a mark used only by the members of an association, cooperative or other collective organization.

A collective organization may include an association, union, cooperative, fraternal society or other organized groups.

2(1)(g) “collective mark” means a trade mark distinguishing the goods or services of members of an association of persons [not being a partnership within the meaning of the Indian Partnership Act, 1932 (9 of 1932)] which is the proprietor of the mark from those of others;

 

Well Known Trademark

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.”

Carrefour v. V. Subbaraman & Others 2007 (35) PTC 225 (Mad.)

 

Good and Services

2(1)(j) “goods” means anything which is the subject of trade or manufacture;

2(1)(z) “service” means service of any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising;

 

Trademark Classification in India

 

Trademark in India is classified in about 45 different  classes, which includes chemical substances used in  industry, paints, lubricants machine and machine tools,  medical and surgical instruments, stationary, lather,  household, furniture, textiles, games, beverages  preparatory material, building material, sanitary material,  and hand tools, other scientific and educational  products.

These classes again are further sub-divided. The main  objective of trademark classification is to group together  the similar nature of goods and services. Here are the  classes for product and for   services.

 

Classes for Trademark Registration

 

The International (Nice) Classification of Goods and Services has categorized various services and items into 45 trademark classes, with 1 to 34 covering goods and 35 to 45 covering services. This classification is used by the Indian Trademark Registry as well to categorise trademarks.

 

As each class represents a specific product and service category, you have to choose the correct class for your mark. Only if you have chosen the correct category of the goods and services for your mark, will you be able to proceed with the process.

Trademark Classification of Goods

 

If it is a finished product, then its purpose or function is dependent on the category. If you don’t mention its function then the customer can compare it with other comparable finished items. And when it is not feasible, the applicant may categorize the goods on the basis of the material from which they are made or their mode of use.

 

When it comes to finished multi-purpose goods, classification is based on their functions. If the function is not there, you can then classify the goods according to the material item from which the product is made or its mode of operation.

 

When it comes to untouched or semi-worked raw materials, they are categorized according to the type of material they consist of.

 

If a product is made using different materials, then you can grade it according to its content. In concept, any good which is included as a part of another product is categorized in the very same class as that product. This is applicable when we can’t use the said goods for any other purposes.

 

In all other cases, the first point mentioned above prevails.

 

Trademark Classes of Goods:

 

1.      Chemicals

2.      Paints, coatings & pigments

3.      Cleaning products, bleaching & abrasives, cosmetics

4.      Fuels, industrial oils and greases, illuminates

5.      Pharmaceutical, veterinary products, dietetic

6.      Metals, metal castings, locks, safes, hardware

7.      Machines and machine tools, parts

8.      Hand tools and implements, cutlery

9.      Computers, software, electronic instruments, & Scientific appliances

10.  Medical, dental instruments, and apparatus

11.  Appliances, lighting, heating, sanitary installations

12.  Vehicles

13.  Firearms, explosives, and projectiles

14.  Precious metalware, jewellery

15.  Musical instruments and supplies

16.  Stationery items, paper, items made of paper,

17.  Rubber, asbestos, plastic items

18.  Leather and substitute goods

19.  Construction materials (building – non-metallic)

20.  Furniture, mirrors

21.  Crockery, containers, utensils, brushes, cleaning implements

22.  Cordage, ropes, nets, awnings, sacks, padding

23.  Yarns, threads

24.  Fabrics, blankets, covers, textile

25.  Clothing, footwear, and headgear

26.  Fancy goods, sewing notions, lace, and embroidery

27.  Carpets, wall, linoleum, and floor coverings (non-textile)

28.  Games, toys, sports equipment

29.  Foods – fish, meat, dairy, processed & preserved foods

30.  Foods – bakery goods, ice, spices, confectionery

31.  Fresh fruit & vegetables, live animals

32.  Beer, ales, soft drinks, carbonated waters

33.  Wines, spirits, liqueurs

34.  Tobacco, smokers requisites & matches

 

Classification of Trademark Services

 

The key basis for categorizing services is based on the divisions of activity listed in the headings of the service class and the explanatory notes thereof. And if that is not the case, then other resources listed in the Alphabetical List can be used to do so.

Also, in the case of any rental services, you can classify them in the same class as the ‘services rendered by rented objects.’

You can categorize any service offering advice, information, or consultation into the same class as in matters relating to advice, information, or consultation.

 

Trademark Classes of Services

35. Advertising, business consulting

36. Insurance, financial

37. Construction, repair, cleaning

38: Communications

39. Transport, utilities, storage, & warehousing

40. Materials treatment, working

41. Education, amusement, entertainment, reproduction

42. Scientific and technological services along with the research and related design

43. Services for supplying food and drink; also includes the offering of temporary accommodations

44. Veterinary services; medical services; hygienic and beauty care for human beings as well as animals

45. Personal and social services that are provided by others to serve a specific individual needs