Legal

Aspects of
Business
Presentation on

Trademark
 Topics To be
Covered…....
• Introduction of Trademark
• Development of Trademark Law
• Trade & Merchandise Marks Act,
1958
• Trade Marks Act, 1999
• Case Studies
• Trademark Process
• Summary
 INTRODUCTION
• What is Trade Mark?
Mark
 A Trade Mark is a distinctive sign or
indicator used by an individual, business
organization or other legal entity to
identify the Products or Services to
consumers.
Also
Helped in identification of the product for
taxation, levies, Shipment etc.
 A Trade Mark is typically a name,
word, phrase, logo, symbol, design, image
or a combination of these elements.

 About Trademark
• Liberalization & globalization in Indian
Economy is main reason for
introduction of private parties in
production which caused introduction
of Trade Mark Act.
• Parliament enacted Trade Mark Act in
1999 which put into effect from Sept
2003, replacing Trade & merchandise
Act,1958.
• Thus Trade Mark law is about Property,
Common Law, Trade Practices,
Competition & Globalization.
 Inclusion of Service Mark
• Services have been Prominent in last 2
decades
• Mark Associated with Service can be
Registered under Act.
• New Act is taken note of this
development & created 7 Classes of
Services.
• Services Includes : Banking,
Communication, Education, Finance,
Insurance, Real Estate, Storage,
Entertainment, Construction,
 Procedure & duration of
Registration
• The Duration for validity of Trade Mark
has been Increased from 7 to 10 years
• Single Application can be made for
Registration of Trademark in Different
Classes.

E x p a n d e d D e fin itio n o f
Tra d e M a rk
E xp a n sio n in D e fin itio n o f Tra d e m a rk :
In clu d e s sh a p e , Pa cka g in g , C o m b in a tio n
o f C o lo r as long as Mark is capable of
D istin g u ish in g G o o d s & S e rvice s o f o n e ,
fro m th e g o o d s & S e rvice s o f a n o th e r.
 Collective Mark
• Provided for the benefit of Members of
an association of persons (but not
partnership) & Traditional Indian
Business families Trademarks.
• e.g., Tata Family Has different
Businesses under Tata Sons but Has
only one Certification
Trade mark Mark
A sso cia tio n w h ich is C o m p e te n t to C e rtify
ca n a lso h a ve Tra d e M a rk
e . g ., In d ia n S ta n d a rd In stitu te h a s its
Tra d e M a rk
 Expansion of Meaning of
Trade Mark Infringement

a) Similar Goods in Different Classes

• If a person uses an Identical or Similar mark in
relation to Identical or Similar Goods cause
Confusion, would be case of Trade Mark
Infringement.
• E.g., Amul => Dairy Product (Class 29)

b) Amul or Amol
Dissimilar or Amool => Mineral
Goods
Water
In case (Class 32)
of Unconnected Goods (Dilution of The Trade
 mark)
 E.g., Maruti => Automobile

Maruti => Tissue Paper

 Infringement Continues..
C) Appropriating as Business Name
• Use of Trade mark Without Authority dealing in
Same or in Related Goods.
• E.g., Maruti => Automobile
 Maruti Garage => Name given to Pvt.
Garage
d) Trade Mark in Advertisement
Trade Mark Infringed not only Attaching to Goods
but also by printing it on Packaging & using
it an Advertisement
 Stringent Requirements for
Registration

• The Trade mark Will not be registered if it is

Identical or Similar to an earlier mark for
Similar goods may or may not be in Different
Classes
• These are additional Restriction due to
Foreign Trade Marks
Expansion.
It had become Difficult for Foreign
Companies to get protection for their
Trademark.
Although product is not present in Indian
market Trade Mark is Protected.
 Well Known Trade Mark
• Trade marks which have Sufficient
Recognition.
Recognition It may not be registered
in India.
• E.g., Wal-Mart => Does not exist in India
 One Can not use Trade mark in
India as it is well known brand in
World
•
 Case Studies
• Dabur vs Aveda
•
• Glaxo SmithKline Pharmaceuticals
Ltd. Vs.
 Unitech Pharmaceuticals Pvt.
Ltd.


• Amul wins trademark case in

Gujarat HC.
 Person
P ro ce ss fo r Tra d e m a rk
Claims to
be
Proprietor
R e g istra tio n can Apply ,
Business
Places
Fall in
India
 How to Select a
 

Trademark ??
• If it is a Word it should be Easy to
Speak, Spell and Remember.
• Avoid selection of a Geographical
Name.
• Avoid Laudatory Words or words that
Describe the Quality of Goods (such
as best, perfect, super etc)
• Conduct a Market Survey and a
search at Trademark office to Avoid
Same/Similar Mark.
•
•
WHO CAN USE SYMBOL ® IN INDIA

Only the Proprietor whose trademark has
been Registered in India can use the symbol
® in India. Without that using Trademark is
Unlawful.
 
• WHEN CAN THE SYMBOL ™ BE USED IN
INDIA

Using this symbol with your trademark simply
implies that you Claim to be the Proprietor of
the Trademark. There is No Prohibition on the
 Summary
• Definition more Expanded in case of
Infringement
• Service marks can be registered under
the Act.
• Collection & certification marks can be
registered.
• Passing off action is more clear in new
act
• The Act has given special protection to
“well known trade marks",
even if these are not registered in
Thank You