A trade mark is a mark applied to any product or service that sets one producer’s products or services apart from similar products made by another company. Any product or service with a trade mark on it gives the buyer the idea that it has that quality.

Definition:

Trade Mark Sec 2(1)(zb) Mark capable of represented graphically and capable of distinguishing goods/services of one person from those of others. It shows a connection between goods and person.

Procedure for Registration of Trade Mark

Under Section 3 (the “Controller General of Patent, Design and Trade Marks”), the government established the Trade Marks Registry, where applications for trademarks may be filed. Several classes of goods or services are eligible for trademark grants. The registration of a trademark serves as prima facie proof that all legal requirements have been duly met. At the Trade Mark Registry’s head office, a register of trademarks is kept.
Any trade mark may be submitted for registration under Section 18 by the individual claiming ownership. These applications may be turned down for one of two reasons: Absolute Justifications for Rejection According to Section 9, the Registrar may reject a trademark application on the following grounds in its exclusive discretion:

If mark is devoid of any distinctive character, e.g. where any character of any language or any shape has not been especially designed or visible.
 Any mark which shows just kind, quality, quantity or intended purpose of any goods, e.g. trademark of any goods can’t be “500 gram”
 Mark consisting of marks or indications which are customary in current language, e.g. OMG (abbreviation of Oh My God) cannot be trade mark
 However where trademark which bears distinctive character because of its use, or is well-known to public is allowed, e.g. “Sugar-free” mark shows just quality but still allowed because this product is well-known to public
 If a mark is capable to deceive or cause confusion to public, or hurt religious susceptibility, or is obscene, it will not be registered
 Mark consisting of shape of natural goods (e.g. Neem leaf) or such shape which is necessary to obtain a given technical result shall not be registered.

Grounds for Rejection

Sec 11 (as amended by Trade Mark (Amendment) Act, 2010) provides that Registrar will reject the trademark application on relative grounds which are:
 Where mark is identical and affixed to similar goods or service, e.g. Lux washing powder
 Where mark is similar and affixed to identical or similar goods or service, e.g. Nirama washing powder (Original is Nirma)
 Where mark is identical or similar and affixed to goods which are not similar, if such mark is well-known to public e.g. Lux shoes
 Where mark’s use is prevented by law of passing-off or copyright However, Registrar shall not reject any application for trade mark on the grounds specified in point c and d supra, unless an objection is raised by proprietor of earlier trade mark.
Sec 14 provides that if any mark falsely suggests a connection with a living person or a person who died within 20 years prior to application of trade mark, then Registrar can demand consent of such person or his legal representative.

Registered Trade Mark

According to Section 20, the Registrar must publish a trade mark application whenever it is submitted to him in the manner specified. Within three months of the date the application was published, anyone may object. Trademark is granted if application has not faced objection or if opposition has been rejected in the applicant’s favour. Trademarks have a 10-year term with the option to periodically renew them for additional 10-year terms.

The Registrar may delete a trade mark if it is not renewed after 10 years, however it may be reinstated within a year of the removal date. The Registrar may permit a mark to be registered as an associated trade mark when the owner of a trade mark applies for another mark that is the same as or similar to an earlier registered trade mark.
Initial registration is prima facie evidence of its legality; nevertheless, the owner of a registered mark cannot intervene if someone is using a mark that is confusingly similar to one that was registered earlier. Owners of unregistered marks may only bring passing-off claims and not infringement claims. In general, the order of use determines who owns a mark. Priority can be established simply by a prior sale of the item.

Infringement of Registered Trade Mark

Sec 29 provides that if a person who is not registered proprietor of mark uses a mark which is identical or deceptively similar to registered trade mark, it is called infringement. Further, registered trade mark is infringed if:

1. Mark is identical and is used in respect of similar goods/services, or
2. Mark is similar and is used in identical or similar goods/services, or
3. Mark is identical and is used in respect of identical goods, and It is likely to cause confusion on the part of public. Further, following action is also called infringement;
4. Mark is identical or similar to registered trade mark and used in respect of goods which are not similar,
5. Using someone else’s trade mark as his trade name as dealing with similar goods.
6. Affixing someone else’s trade mark to goods or packing or using such mark in business papers or advertisements.
   

What is Not Infringement of Trade Mark:

Where mark is used with honest business practice without taking unfair advantage, it is not deemed to be infringement. Following acts are not infringement:

1. If trade mark is used to indicate kind, quality or quantity etc of any goods/service.
2. If trade mark was registered subject to certain conditions.
3. Where mark is used in such types of goods/services for which owner of that mark had impliedly consented to its use.
4. Registered trade mark can be used in relation to parts and accessories to other goods/services.

Offence and Penalties:

Following penalty provisions are prescribed under this Act:

1. Penalty of imprisonment of 6 months to 3 years and fine upto Rs 2 lakh for applying false trade mark or false trade description.
2. Any removal or sale of cotton yarn or cotton thread which are not marked in accordance with provisions of this Act is liable to forfeited.
3. Any person who falsely represents a trade mark to be registered trade mark is punished under this Act.
4. In case of offence is committed by Company, every person in charge of the Company, as well as the Company shall be deemed to be liable. Where such contravention is committed with consent or with negligence on the part or director,
   manager or secretary, they shall also be deemed to be guilty.