This seminar paper discuss in general about what is Trade mark how it is registered in India, what are its types, what are the rights of the owner of Trade Mark.This seminar paper will also discuss the remedies available against infringement of Trade Mark

Aims and Objectives:
To discuss in general about what is Trade Mark

Introduction
The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is the most comprehensive multilateral agreement on intellectual property (IP). It plays a central role in facilitating trade in knowledge and creativity, in resolving trade disputes over IP, and in assuring WTO members the latitude to achieve their domestic policy objectives. It frames the IP system in terms of innovation, technology transfer and public welfare.

The Agreement is a legal recognition of the significance of links between IP and trade and the need for a balanced IP system. India's obligations under the TRIPS Agreement for protection of trademarks, inter alia, include protection to distinguishing marks, recognition of service marks, indefinite periodical renewal of registration, abolition of compulsory licensing of trademarks, etc. India, being a common law country, follows not only the codified law, but also common law principles, and as such provides for infringement as well as passing off actions against violation of trademarks. Section 135 of the Trade Marks Act recognises both infringement as well as passing off actions.

Types of Trade Mark

1. Product Mark:

   A product mark same as a trademark. The only difference between both, refers to trademarks related to products or goods and not services. Its used to identify the source of a product and to distinguish a manufacturer's products from others. Trade mark treated as important as it protects the goodwill and reputation of a Business. The application for the trademark can filed within few days and TM symbol used til registration. The Trademark registry normally requires 18 to 24 months to complete the formalities or process. The ® (Registered symbol) can used next to the trademark once the trademark registered and also registration certificate issued. Once registered, the validity of a trademark for 10 years from the date of filing, which renewed from time to time.
    

2. Service Mark:

   A service mark similar to a trademark. But here instead of product or goods, it identifies the source of service. For example, a company such as Yahoo may brand certain products with a trademark, but use a service mark on the internet searching service that it provides. It denoted as 'SM'.
   
   A service mark means a mark that distinguishes the services of one proprietor/owner from that of another. Service marks represents the services offered by the company. They are used in a service business where actual goods under the mark are not traded. Companies providing services like computer hardware and software assembly, restaurant and hotel services, courier and transport, beauty and health care, advertising, publishing, etc. now in a position to protect their names and also marks from misused by others. The rules governing for the service marks are fundamentally the same as any other trademarks.
    

3. Collective Mark:

   These trademarks used by a group of companies and also protected by the group collectively. Collective marks normally used to inform the public about a particular characteristic of the product for which the collective mark used. The owner of such marks normally an association or public institution or it may cooperative. Collective marks also used to promote particular products which have certain characteristics specific to the producer in a given field. Thus, a collective trademark can used by a more than one trader, provided that the trader belongs to that particular association.
   
   The trader associated with a particular collective mark have a responsibility of ensuring the compliance with certain standards which fixed by its members. Thus, the purpose of the collective mark is to inform the public about certain features of the product for which the collective mark is used. One example of the collective mark – the mark CPA, which used to indicate members of the Society of Certified Public Accountants.
    

4. Certification Mark:

   Certification mark represents a sign indicating that the goods/services certified by the owner of the sign in terms of origin, material, quality, accuracy or other characteristics. This differs from a standard trademark who distinguishes the goods/services that originate from a single company.
   
   In short, certification marks used to define the standard. They guarantee the consumers that the product meets safety and other prescribed standards. The certification mark embodied on the product. The presence of a certification mark on a product indicates that the product has gone through the standard tests specified. They guarantee the consumers that the manufacturers have gone through an audit process to ensure the desired quality. Example, Food products, Cosmetics, Electrical goods, etc. have such marking that specifies the safety and the quality of the product.
    

5. Shape marks:

   According to the Indian Trademarks Act, 1999, a trademark may also include the shape of goods, their packaging to trademark. So long as its possible to graphically represent the shape clearly. This helps in distinguishing the goods sold under such trademark from those of another manufacturer. The new Trade Marks Ordinance continues to allow registration of such marks.
   
   When the shape of goods, packaging have some distinctive feature it can registered. For example, Ornamental Lamps. In certain cases, the (three-dimensional) shape of a product or packaging can be a trademark (for example a specially designed bottle of perfume).
   
   Shape Mark has facilitated promotion of products and came as trade mark. Any graphical representation which able to make a difference amongst the products can registered as shape mark.
    

6. Pattern Mark:

   The Pattern mark consist of a pattern which capable of identifying the goods or services as originating from particular undertaking. Thus distinguishes it from those of other undertakings. Such goods/services registered as Pattern Marks.
   
   The procedure of evaluating uniqueness of pattern marks similar to that of other trademarks. Pattern marks that resemble descriptive or indistinctive faces objection. Because they fail to serve as an identifier of trade source. Such goods/services would not accepted for registration without evidence of uniqueness. In cases where the pattern mark has become identified in the minds of the public with a particular undertaking's goods or services, it receives acquired distinctiveness and can register for Pattern Mark. Thus, Pattern Trademark is a trademark wherein the pattern is able to distinguish the product from other brands.
    

7. Sound Mark:

   Nowadays sounds become important part of advertisement. So as they play in the advertisement, we immediately comes to know about the product. In such cases, the sound may regarded as a trademark and also eligible for registration.
   
   A sound mark means where a particular sound does the function of uniquely identifying the origin of a product or a service. In such case , a certain sound associated with a company or its product or services – for example, the MGM's roar of a lion.
   
   The sound logo, technically referred to as audio mnemonic, is one of the tools of sound branding, along with the brand music. A sound logo is a short distinctive melody mostly positioned at the beginning or ending of a commercial. It can be seen as the acoustic equivalent of a visual logo. Often a combination of both types of logo is used to enforce the recognition of a brand.

Examples of Trade Mark

1. Brand- Perry brand rice, Tortoise machar coil
2. Letters- LG, GM, IBM
3. Label & Tickets- Printed words on good or paper.
4. Numerals- 303 capsules, 555 cigarettes
5. Symbols or Logos- A visual depiction eg- TATA, IDBI, ICICI
6. Containers- 3 Dimentional or 2 Dimentional container
7. Shape of Goods- Unique shape of Goods
8. Packaging
9. Device- Mark falling out of above catagories is covered under device.
10. Titlte- Title of books or Magazine or periodical is also qualified to be a valid Trade Mark. (ex-India Today, outbook, Femina)

Registration of Trade Marks in India
The person should apply to registrar of Trade Mark in prescribed manner for the registration of Trade Mark. A single application may be made for the registration of Trade Mark for different classes of goods and services under Trade Mark Act, 1999, fees may be diffrent for diffrent goods or services.
Application should be given in office of Trade Mark Registry within whose territorial limit, principle place of business in India, of applicant is situated same for joint applicants.

The following information and documentation must be submitted in a trademark registration application:

• the applicant's name and address;
• the state or country of incorporation;
• a description of the trademark;
• a representation of the trademark
• a list of the relevant goods or services;
• the power of attorney;
• the dates of first use – if use is claimed, an affidavit of use and documentary evidence must be filed electronically;
• a statement of intention to use;
• the official filing fee;
• a priority claim and documents, where priority of an earlier application is claimed; and if the applicant is not domiciled in this jurisdiction, a local service address must be provided.

Every application for the registration of a trademark, shall contain a clear and legible representation of the trademark of size not exceeding 8 cm x 8 cm. Where an application contains a statement to the effect that the applicant wishes to claim combination of colours as a distinctive feature of the trademark, the application shall be accompanied with reproduction of the trademark in that combination of colours.

Stages

1. Application
2. Withdrawal of Acceptance
3. Advertisement of application
4. Opposition of registration
5. Correction & Amendment
6. Registration
7. Duration (10 years/ if not used thsn cancellation after 5 years of no use of Trade Mark)

Sec 18. Application for registration:

1. Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.
    
2. A single application may be made for registration of a trade mark for different classes of goods and services and fee payable therefor shall be in respect of each such class of goods or services.
    
3. Every application under sub-section (1) shall be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants the principal place of business in India of the applicant whose name is first mentioned in the application as having a place of business in India, is situate: Provided that where the applicant or any of the joint applicants does not carry on business in India, the application shall be filed in the office of the Trade Marks Registry within whose territorial limits the place mentioned in the address for service in India as disclosed in the application, is situate.
    
4. Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.
    
5. In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.

19. Withdrawal of acceptance:
Where, after the acceptance of an application for registration of a trade mark but before its registration, the Registrar is satisfied:

1. that the application has been accepted in error; or
2. that in the circumstances of the case the trade mark should not be registered or should be registered subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has been accepted, the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had not been accepted.

20. Advertisement of application:

1. When an application for registration of a trade mark has been accepted, whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted together with the conditions or limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner: Provided that the Registrar may cause the application to be advertised before acceptance if it relates to a trade mark to which sub-section (1) of section 9 and sub-sections (1) and (2) of section 11 apply, or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do.
    
2. Where:
   
   1. an application has been advertised before acceptance under sub-section (1); or
   2. after advertisement of an application:
      
      1. an error in the application has been corrected; or
      2. the application has been permitted to be amended under section 22, 16 the Registrar may in his discretion cause the application to be advertised again or in any case falling under clause (b) may, instead of causing the application to be advertised again, notify in the prescribed manner the correction or amendment made in the application.

21. Opposition to registration:

1. Any person may, within four months from the date of the advertisement or re-advertisement of an application for registration, give notice in writing in the prescribed manner and on payment of such fee as may be prescribed, to the Registrar, of opposition to the registration.
2. The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application.
3. If the applicant sends such counter-statement, the Registrar shall serve a copy thereof on the person giving notice of opposition.
4. Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard, if they so desire.
5. The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions or limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not.
6. Where a person giving notice of opposition or an applicant sending a counter-statement after receipt of a copy of such notice neither resides nor carries on business in India, the Registrar may require him to give security for the costs of proceedings before him, and in default of such security being duly given, may treat the opposition or application, as the case may be, as abandoned.
7. The Registrar may, on request, permit correction of any error in, or any amendment of, a notice of opposition or a counter-statement on such terms as he thinks just.

22. Correction and amendment:
The Registrar may, on such terms as he thinks just, at any time, whether before or after acceptance of an application for registration under section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application: Provided that if an amendment is made to a single application referred to in sub-section (2) of section 18 involving division of such application into two or more applications, the date of making of the initial application shall be deemed to be the date of making of the divided applications so divided.

23. Registration:

1. Subject to the provisions of section 19, when an application for registration of a trade mark has been accepted and either:
   
   1. the application has not been opposed and the time for notice of opposition has expired; or
   2. the application has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall, unless the Central Government otherwise directs, register the said trade mark 2 [within eighteen months of the filing of the application] and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall, subject to the provisions of section 154, be deemed to be the date of registration.
2. On the registration of a trade mark, the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry.
3. Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the 1. Subs. by Act 40 of 2010, s. 3, for sub-section (1) (w.e.f. 8-7-2013). 2. Ins. by s. 4, ibid. (w.e.f. 8-7-2013). 17 applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice. (4) The Registrar may amend the register or a certificate of registration for the purpose of correcting a clerical error or an obvious mistake.

24. Jointly owned trade marks:

1. Save as provided in sub-section (2), nothing in this Act shall authorise the registration of two or more persons who use a trade mark independently, or propose so to use it, as joint proprietors thereof.
2. Where the relations between two or more persons interested in a trade mark are such that no one of them is entitled as between himself and the other or others of them to use it except:
   
   1. on behalf of both or all of them; or
   2. in relation to an article or service with which both or all of them are connected in the course of trade, those persons may be registered as joint proprietors of the trade mark, and this Act shall have effect in relation to any rights to the use of the trade mark vested in those persons as if those rights had been vested in a single person.

25. Duration, renewal, removal and restoration of registration:

1. The registration of a trade mark, after the commencement of this Act, shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of this section.
    
2. The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of ten years from the date of expiration of the original registration or of the last renewal of registration, as the case may be (which date is in this section referred to as the expiration of the last registration).
    
3. At the prescribed time before the expiration of the last registration of a trade mark the Registrar shall send notice in the prescribed manner to the registered proprietor of the date of expiration and the conditions as to payment of fees and otherwise upon which a renewal of registration may be obtained, and, if at the expiration of the time prescribed in that behalf those conditions have not been duly complied with the Registrar may remove the trade mark from the register: Provided that the Registrar shall not remove the trade mark from the register if an application is made in the prescribed form and the prescribed fee and surcharge is paid within six months from the expiration of the last registration of the trade mark and shall renew the registration of the trade mark for a period of ten years under sub-section (2).
    
4. Where a trade mark has been removed from the register for non-payment of the prescribed fee, the Registrar shall, after six months and within one year from the expiration of the last registration of the trade mark, on receipt of an application in the prescribed form and on payment of the prescribed fee, if satisfied that it is just so to do, restore the trade mark to the register and renew the registration of the trade mark either generally or subject to such conditions or limitations as he thinks fit to impose, for a period of ten years from the expiration of the last registration.

26. Effect of removal from register for failure to pay fee for renewal:
Where a trade mark has been removed from the register for failure to pay the fee for renewal, it shall nevertheless, for the purpose of any application for the registration of another trade mark during one year, next after the date of the removal, be deemed to be a trade mark already on the register, unless the tribunal is satisfied either:

1. That there has been no bona fide trade use of the trade mark which has been removed during the two years immediately preceding its removal; or
2. That no deception or confusion would be likely to arise from the use of the trade mark which is the subject of the application for registration by reason of any previous use of the trade mark which has been removed.

Grounds for refusal of registration:
Sec 9(1) The trade marks:

1. which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person; (b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service; (c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark. (2) A mark shall not be registered as a trade mark if— (a) it is of such nature as to deceive the public or cause confusion;
    
2. it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
    
3. it comprises or contains scandalous or obscene matter; (d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).

(3) A mark shall not be registered as a trade mark if it consists exclusively of:

1. The shape of goods which results from the nature of the goods themselves; or
2. The shape of goods which is necessary to obtain a technical result; or
3. The shape which gives substantial value to the goods.

Explanation:
For the purposes of this section, the nature of goods or services in relation to which the trade mark is used or proposed to be used shall not be a ground for refusal of registration.

Rights of Trade Mark Holder:

1. Right to Exclusive Use
   Section 28(1) of the Act provides that subject to the other provisions of this Act, registration of a trademark, if valid, give to the registered proprietor of the trademark the exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. In Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel the Supreme Court observed Section 28…. confers an exclusive right of using trademark to a person who has the trademark registered in his name. Such right is, thus, absolute.
   
   However, from the opening of Section 28(1) of the Act namely, subject to the provisions the right conferred on the registered proprietor is not an indefeasible right. This is further, made clear by Section 27(2) of the Act, which says nothing in this Act shall be deemed to affect the right of action any person for passing off the goods as goods of another person, or the remedies in respect thereof.
   
   Thus, the right created by Section 28(1) of the Act in favour of a registered proprietor of a trademark is not an absolute right and is subservient to other provisions of the Act Namely Sections 27(3), 33 (saving for vested rights) etc. It is also pertinent to note that the registered proprietor of a trademark gets exclusive rights to use the trademark in relation to goods or services in respect of which it is registered and that person may not have the right to use the trademark in respect of the other goods or services in respect of which the trademark is registered
    
2. Right to Seek Statutory Remedy Against an Infringement
   Section 28(1) also provides that the registered proprietor of a trademark can seek legal remedy in case of an infringement of his trademark in the manner provided by this Act. 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.
   
   The Delhi High Court has observed that registration of a trademark confers on the person some very valuable rights. To mention only one such right, one may turn to Sub-section (1) of Section 27 which provides that no person shall be entitled to institute any proceedings to prevent or to recover damages for, the infringement of an unregistered trademark.
    
3. Right of Registered Trademark holder of Identical Trademark
   Section 28(3) provides that where two or more persons are registered proprietor of trademarks, which are identical with or nearly resembling with each other, the exclusive right to use of any of those trademarks shall not (except so far as their respective rights are subject to conditions or limitations entered on the register) be deemed to have been acquired by any of those persons as against any other of those persons merely by registration of trademarks.
   
   However, each of those persons has otherwise the same rights against other persons excluding registered users using by way of permitted use, as he would have if he were the sole registered proprietor.
    
4. Right to Assign
   Section 37 of the Act provides that the registered proprietor of a trademark shall have the power to assign the trademark and to give effectual receipts for any consideration for such assignment. However, this right shall be subject to the provisions of the Act and to any rights appearing from the register to be vested in any other person.
    
5. Right to Seek Correction of Register
   The 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.
    
6. Right to Alter Registered Trade Mark:
   The registered proprietor of a trademark must make an application to the registrar seeking leave to add to or after 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.

Legal Remedies against Infringement and/or Passing off of Trade Mark
Under the Trade Marks Act, both civil and criminal remedies are simultaneously available against infringement and passing off.

Infringement of trademark is violation of the exclusive rights granted to the registered proprietor of the trademark to use the same. A trademark is said to be infringed by a person, who, not being a permitted user, uses an identical/ similar/ deceptively similar mark to the registered trademark without the authorization of the registered proprietor of the trademark.

However, it is pertinent to note that the Indian trademark law protects the vested rights of a prior user against a registered proprietor which is based on common law principles.
Passing off is a common law tort used to enforce unregistered trademark rights.

Passing off essentially occurs where the reputation in the trademark of party A is misappropriated by party B, such that party B misrepresents as being the owner of the trademark or having some affiliation/nexus with party A, thereby damaging the goodwill of party A. For an action of passing off, registration of a trademark is irrelevant.

Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action against violation of trademarks in India. In India, a combined civil action for infringement of trademark and passing off can be initiated.

Significantly, infringement of a trademark is a cognizable offence and criminal proceedings can be initiated against the infringers. Such enforcement mechanisms are expected to boost the protection of marks in India and reduce infringement and contravention of trademarks.

Relief granted by Courts in Suits for Infringement and Passing off
Where the suit can be filed?- Sec 134- District Court is having the jurisdiction to try the suit of infringement of Trade Mark.

What is the limitation to file suit?
3 years from date of infringement of Trade Mark as per Limitation Act, 1963

The relief which a court may usually grant in a suit for infringement or passing off includes permanent and interim injunction, damages or account of profits, delivery of the infringing goods for destruction and cost of the legal proceedings.

The order of interim injunction may be passed ex parte or after notice.

The Interim reliefs in the suit may also include order for:

• Appointment of a local commissioner, which is akin to an "Anton Pillar Order", for search, seizure and preservation of infringing goods, account books and preparation of inventory, etc.
• Restraining the infringer from disposing of or dealing with the assets in a manner which may adversely affect plaintiff's ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.

Offences and Penalties
In case of a criminal action for infringement or passing off, the offence is punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and fine which shall not be less than INR 50,000 but may extend to INR 200,000.

Judicial Response

• Playboy Enterprises, Inc v. Bharat Malik 2001 PTC 328 (Del)- Delhi high court restrained defendant from using trade name Playway on grounds that defendant have adopted 'Play' which is the sole name of plaintiffs magazine Playboy with the sole object to exploit the trade on its goodwill and widespread reputation.
   
• The Coca-Cola Company v. Bisleri International Pvt. Ltd.&Ors - Who is going to take the MAAZA?, Well it is mandatory to mention the famous case of coca cola and bisleri over the trademark Maaza where Bisleri assigned its trademark Maaza to Coca Cola to sell and export products in and from India and immediately after, filed a trademark Application in Turkey. It was held that the rights over the trademark were completely assigned to Coca Cola and Bisleri cannot use the trademark in or outside India.
   
• Starbucks Coffee V Sardarbuksh Coffee, 2018 (Del ) - The man used Sardar instead of Star yet in such a deceptive way and on such a large scale that people were made to believe they belong to the same owner. However the Court allowed the Defendant the right to use the modified version of the Trademark Sardar Baksh to Sardarji Baksh and also gave Defendant the chance to Defendant to sue the person who uses Baksh in future.

Conclusion:
Trademark Infringement is the issue of the moment and has attracted with it the laws related not only to Intellectual Property but also Tech Laws, Media Laws, Sports Laws, Marketing Laws etc. The Trademark Legal framework has to be a combination of National and International Laws and shall work in consonance with Trans-border Laws where the Judgments from various countries being used as citations shall act as a guide towards framing a new legal structure in India.

References
Bibliography

• Trade Marks Act, 1999- Intellectual Property Professional's Bare Act, 2020