ABSTARCT The object of the trade mark is to make the goods of a manufacturer or trader known to the public as his and thereby enable him to secure in course of time such profits as may accrue from the reputation which he may build up for his goods by superior skill, efforts and enterprise. To the purchaser a genuine trade mark gives assurance of the make and the quality of the article he is buying. The concept of trade marks and the law governing the use thereof owe their origin to business competition, practice and custom. Often considerable amount of money is spent in making a name or symbol popular through various media of advertisement. As a result, the trade mark may acquire great reputation, and may often become a stamp of quality and a symbol of origin. A good trade mark is he best sales man of the goods. Ever manufacturer or trader who has built up a reputation for his mark is naturally jealous of protecting it against piracy by unscrupulous competitors. Protection of trade marks is necessary not only for honest trader bur also for the benefit of the purchasing public against imposition and fraud. At common law the reputation of a business, symbolized through a name or label, can be protected only by an action of passing off, the procedure for which is cumbersome and the outcome uncertain. Registration of a trade mark under Trade Mark Act, 1999 confers on the proprietor certain statutory rights which are fur more extensive than common law rights, and affords a convenient means of protecting those rights against infringement. Action against infringement of trade mark has been made a statutory right under the Trade Marks Act. But the action against passing off of trade marks has only been recognized by the Act. The Act merely lays down the procedure to be followed in such an action. The substantive part constituting the principles and the grounds for such an action still form part of the common law, from which it has been adopted. The project aims at analyzing the law relating to infringement and passing off of the trade marks. It aims at bringing out the difficulties that are faced by the court in deciding in an action of passing off, due to its common law origin and its want of being a statutory remedy. The project ends with a few observation and suggestions put forward by me after analyzing the literature and the case laws on the subject. I suggest, registration of trade marks be made compulsory as to cover up lacunas created due to lack of binding principles in case of establishing a passing off action. Electronic copy available at: http://ssrn.com/abstract=1335874
Chapter I Growth of Intellectual Property Law and the Trade Marks 1. The Concept of Intellectual Property Intellectual property, very broadly, means the legal rights which result from intellectual activity in the industrial, scientific, literary and artistic fields. Countries have laws to protect intellectual property for two main reasons. One is to give statutory expression to the moral and economic rights of creators in their creations and the rights of the public in access to those creations. The second is to promote, as a deliberate act of Government policy, creativity and the dissemination and application of its results and to encourage fair trading which would contribute to economic and social development. The term Intellectual Property, denotes rights over intangible object of the person whose mental effort created it and refers to a loose cluster of legal doctrines that regulate the uses of different sorts of ideas and insignias. The subject matter of intellectual property is very wide and includes literary and artistic works, films, computer programme, inventions, designs and marks used by traders for their goods and services and so on. There are several different forms or areas of law giving rise to rights that together make up intellectual property. They are copyright, right in performance, the law of confidence, patents, registered designs, design rights, trademarks and passing off, trade libel, etc. 2 Electronic copy available at: http://ssrn.com/abstract=1335874
The intellectual property law may be defined as legal relationships that arise out of individual s creative gifts and the communication to society of his or her intellectual creations. The term "intellectual property" is reserved for types of property that result from creations of the human mind, the intellect. Interestingly, the term intellectual property in the Convention Establishing the World Intellectual Property Organization, or "WIPO", does not have a more formal definition 1. The States that drafted the Convention chose to offer an inclusive list of the rights as relating to: Literary artistic and scientific works; performances of performing artists, phonograms, and broadcasts; inventions in all fields of human endeavor; scientific discoveries; industrial designs; trademarks, service marks, and commercial names and designations; protection against unfair competition; and "all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields. (Convention Establishing the World Intellectual Property Organization, Signed at Stockholm on July 14, 1967; Article 2, viii) Generally speaking, intellectual property law aims at safeguarding creators and other producers of intellectual goods and services by granting them certain time-limited rights to control the use made of those productions. Those rights do not apply to the physical object in which the creation may be embodied but instead to the intellectual creation as such. Intellectual property is traditionally divided into two branches, industrial property and copyright. 1 Study material of WIPO. 3
1.2 Origin and Development of Intellectual Property rights- The origin and development of Intellectual Property Rights (IPR) under international law dates back to 1833 within the adoption of Paris Convention, 1833 for protection of Industrial Property. The Berne convention was the first convention on copyright. WIPO- the World Intellectual Property Organization- WIPO is a specialized agency of the United Nations since, 1974. WIPO carries out many tasks related to protection of intellectual property such as administering international treaties, assisting government agencies and privates sectors, monitoring developments in the field and harmonizing and simplifying rules and practices The Convention Establishing the World Intellectual Property Organization (WIPO), concluded in Stockholm on July 14, 1967 (Article 2(viii)) provides that intellectual property shall include rights relating to: - Literary, artistic and scientific works, - Performances of performing artists, phonograms and broadcasts, - Inventions in all fields of human endeavor, - Scientific discoveries, - Industrial designs, - Trademarks, service marks and commercial names and designations, - Protection against unfair competition, 4
and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields. The areas mentioned as literary, artistic and scientific works belong to the copyright branch of intellectual property. The areas mentioned as performances of performing artists, phonograms and broadcasts are usually called related rights, that is, rights related to copyright. The areas mentioned as inventions, industrial designs, trademarks, service marks and commercial names and designations constitute the industrial property branch of intellectual property. The area mentioned as protection against unfair competition may also be considered as belonging to that branch, the more so as Article 1(2) of the Paris Convention for the Protection of Industrial Property (Stockholm Act of 1967) (the Paris Convention ) includes the repression of unfair competition among the areas of the protection of industrial property ; the said Convention states that any act of competition contrary to honest practices in industrial and commercial matters constitutes an act of unfair competition (Article 10bis(2)). The expression industrial property covers inventions and industrial designs. Simply stated, inventions are new solutions to technical problems and industrial designs are aesthetic creations determining the appearance of industrial products. In addition, industrial property includes trade marks, service marks, commercial names and designations, including indications of source and appellations of origin, and protection against unfair competition. Here, the aspect of intellectual creations although existent is less prominent, but what counts here is that the object of industrial property typically consists of signs transmitting information to consumers, in particular as regards products 5
and services offered on the market, and that the protection is directed against unauthorized use of such signs which is likely to mislead consumers, and misleading practices in general. 1.3Origin and development of Intellectual Property Rights at National level in India- The western development of Intellectual Property Law has to a great extent influenced the development of Indian intellectual property law. Because the English people had brought the law into India. Hence, the Indian history of protection of intellectual property rights through legislative and judicial enactments has contributed a lot on its part in extending protection to the owners or licensees of trade marks who used to sought remedy under enactments like the Specific relief Act, 1877 amended in 1963 and under Sections 479 to 489 of the Indian Penal Code, 1860. Since the aim of this project is to analyze the law relating to Passing off and Infringement of Trade marks I would be directly moving on to explain the concept without explaining other Intellectual Property Rights. 6
2. Concept of Trade marks 2.1History Most accounts of the history of trade marks tend to focus on two intertwined themes. One is a history of the social practices and understandings attached to the activity of applying marks to goods; the other is a positivist history of trade marks law. These two histories are often conflated in a way that suggests that the law inevitably evolves with, or ought to reflect the changes in, the nature and functions of marks 2. While acknowledging that many developments have been made in response to changes in the functions that marks perform, it is preferable to keep histories separate to avoid any implication that a change in the function of marks requires us to alter trade mark law 3. 2.2 History of Marks- In the earliest times traders applied marks to their good to indicate ownership. These are called proprietary or possessory marks. For example farmers commonly branded cattle and earmarked sheep as a way of identifying their livestock. In a similar way, merchants also marked their goods before shipment so that in the event of a shipwreck, any surviving merchandise could be identified and retrieved. From medieval times marks were used for a slightly different purpose within guild structures. In order to be able to identify the source of unsatisfactory goods, the guilds required their members to apply identifying marks or signs to the goods. 2 F. Schechter, The Historical Foundations of Law Relating to Trade Marks (1925) 3 Intellectual Property Law, Lionel Bentley and Brad Sherman, Oxford Publication, Page No- 655 7
With the demise of the guilds, it was no longer obligatory for traders to apply marks or signs to goods. However with the growth of regional trading and rise of factory production that accompanied the Industrial Revolution, many traders continued to apply their marks to the goods they manufactured. Moreover with the growth of mass media and the reading public, the traders started to advertise their goods with reference to these marks. In turn, purchasers of goods started to rely on the signs the goods bore as trustful indications of the source of the goods. Importantly they began to use them to assist their purchasing decisions. Over time, as consumers started to realize that some marks indicated a particular manufacturer, and in turn goods of a certain standard, the nature of the mark changed from being a source of liability to become an indicator of quality. Another important change in the role played by marks took place around the beginning of the twentieth century. During this period trademarks changed from being indicators of origin to become valuable assets of their own right 4. Thus it is said that some marks, by virtue of their distinctiveness or appeal were able to convey some sort of emotional allure to potential consumers. Literally the sign attracted the customers, not as a result of some idea or assumption of origin or quality, but as result of so called advertising quality 5. Indeed, the mark itself gave rise to desire for the product that was distinct from a desire based on a belief that the product would be of particular quality. The trade mark serves more as a marketing tool and less as a means of identifying a product s source or sponsorship. This change in the functions of a trade mark has been described as transformation from signal to symbols 4 Eastman Photographic Material Co. V John Griffith Cycle Corporation,(1898) 15 RPC 105 5 The Legal Protection of Trade Marks, Yale Law Journal (1948) 57 8
More recently, trade marks have taken on new roles 6. In one commentator s word marks have come to a mythical status. In their mythical form trade marks trade marks help to provide consumers with an identity- for example, as a FERRARI or VOLVO driver or BUDWEISER or BUDVAR drinker, when the consumer purchases a product bearing a mark they purchase an experience envelope which helps to construct their identity. This conception of the trade marks as myth is illustrated by books such as American Psycho where the attributes of the character were conveyed through description of their use of particular trade- mark products. The conception of trade mark as myth can be seen in the increased attention given to brands. While the various definitions of brand varies in both marketing and legal analysis, it normally extends beyond a word or device mark to encompass the personality, style, or aura associated with a particular product. 2.3 History of Trade Marks Law in India Prior to 1940 there was no statutory law relating to trade marks in India, and the law applicable to the subject was based in common law which was substantially the same as that applied in England before the passing of the first Registration Act there in 1875 7. The Trade Marks Act, 1940, introduced for the first time machinery for registration and statutory protection of trade marks in India. This Act was replaced by the Trade and Merchandise Act, 1958. This Act has also been repealed by the Trade Marks Act of 1999 which has come in to effect form 2003. 6 R. Dreyfuss, Expressive Genericity: Trade Marks as Language in the Pepsi Generation (1990) 65 Notre Dame Law Review 397, 397-8 7 Common Law Trade marks Registration, mentioned above 9
The Trade Marks Act, 1999 has made substantial changes in the law of trade marks. As regards unregistered trade marks, some aspects of the law are codified, while others are still based on common law for which one has to refer to decisions of courts. The statutory rights conferred by registration of a trade mark are so wide and complex that it has been found necessary to safeguard the bona fide interests of other traders from litigation and harassment by registered owners of trade marks, apart from protecting the purchasing public from imposition and fraud by infringers of genuine trade marks. This has resulted in the Act becoming a complicated piece of legislation containing lengthy sections, many cross references and plenty of provisos and exceptions. The more important provisions have been clarified by judicial interpretation; but there still remain some sections which have not so far been subject to judicial scrutiny and analysis. The present Act of 1999, apart from simplifying the law, has introduced many new provisions which are in the interests of trade mark owners as well as the consumers of goods. For historical reasons both the common law and the statutory law of trade marks in India have closely followed the pattern of English law. The Trade Marks Act, 1940, which was the first statute on the subject introduced in India, was almost a replica of the UK Trade Marks Act, 1938. This Act was subsequently replaced by the Trade and Merchandise Act, 1958. Apart from substantial alterations in the previous law, this Act consolidated, in one piece of legislation, the Merchandise Marks Act, 1889, and some provisions relating too trade marks contained in the India Penal Code, the Criminal Procedure Code and the Sea Customs Act 8. This Act has again been repealed by the Trade Marks Act, 1999. 8 Repealed and Replaced by the Customs Act, 1962 10
3.International Agreements leading to growth of IPR and Trade Marks Law, worldwide. 3.1 Madrid Protocol and Agreement- The Madrid system for international registration of marks consists of two agreements. The Madrid Agreement of 1891 Concerning the International Registration of Marks (hereinafter referred to as "Agreement") and the Madrid Protocol of 1989 (hereinafter referred to as "Protocol") which entered into force on April 1, 1996. The Agreement and The Protocol are collateral, but independent of each other. (The unusual name of "Protocol" implies that both agreements have the same structure, so the sections - bearing the same number - set out the same issues.) Common Regulations shall be applied to all international application filed under both the Madrid Agreement and the Protocol. It enables the International Bureau of World Intellectual Organization to proceed with the cases whose applications were filed on the bases of both agreements. The trademark owner, after having obtained the national protection of a trademark, has the possibility to obtain protection of the mark covering the Contracting States by simply filing one application with a single Office of any of the Contracting States, in one language, with one set of fees. It concerns the renewing procedure as well. The international registration offers a number of advantages for both the trademark owner and the national (regional) trademark offices. For the time being (April, 2007), the Agreement has 57; the Protocol has 72 Member States, among others Hungary. 11
3.2. The Trademark Law Treaty (TLT) (1994) The aim of the Trademark Law Treaty (TLT) is to approximate and streamline national and regional trademark registration procedures. This is achieved through the simplification and harmonization of certain features of those procedures, thus making trademark applications and the administration of trademark registrations in multiple jurisdictions less complex and more predictable. The great majority of the provisions of the TLT concern the procedure before the trademark office which can be divided into three main phases: application for registration, changes after registration and renewal. The rules concerning each phase are so constructed as to make it clear what the requirements for an application or a specific request are. As to the first phase application for registration the Contracting Parties to the TLT may require, as a maximum, the following indications: a request, the name and address and other indications concerning the applicant and the representative; various indications concerning the mark including a certain number of representations of the mark; the goods and services for which registration is sought classified in the relevant class of the International Classification (established under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks(1957), and, where applicable a declaration of intention to use the mark. Each Contracting Party must also allow that an application relate to goods and/or services belonging to several classes of the International Classification. As the list of permissible requirements is exhaustive, a Contracting Party cannot require, for example, that the 12
applicant produce an extract from a register of commerce or the indication of a certain commercial activity, or evidence to the effect that the mark has been registered in the trademark register of another country. The second phase of the trademark procedure covered by the TLT concerns changes in names or addresses and changes in the ownership of the registration. Here too, the applicable formal requirements are exhaustively listed. A single request is sufficient even where the change relates to more than one possibly hundreds of trademark applications or registrations, provided that the change to be recorded pertains to all registrations or applications. As to the third phase, renewal, the TLT standardizes the duration of the initial period of the registration and the duration of each renewal to 10 years each. Furthermore, the TLT provides that a power of attorney may relate to several applications or registrations of the same person. It also provides that, if requests are made on forms corresponding to the forms attached to the TLT are used, they must be accepted, subject to the use of a language accepted by the Office, and no further formalities may be required. Most notably, the TLT does not allow a requirement as to the attestation, notarization, authentication, legalization or certification of any signature, except in the case of the surrender of a registration. 13
The TLT was concluded in 1994 and is open to States members of WIPO and to certain intergovernmental organizations. Instruments of ratification or accession must be deposited with the Director General of WIPO. 3.3. Trade Related Intellectual Property Rights Agreement (TRIPS) The areas of intellectual property that it covers are: copyright and related rights (i.e. the rights of performers, producers of sound recordings and broadcasting organizations); trademarks including service marks; geographical indications including appellations of origin; industrial designs; patents including the protection of new varieties of plants; the layout-designs of integrated circuits; and undisclosed information including trade secrets and test data. The three main features of the Agreement are: a. Standards. In respect of each of the main areas of intellectual property covered by the TRIPS Agreement, the Agreement sets out the minimum standards of protection to be provided by each Member. Each of the main elements of protection is defined, namely the subject-matter to be protected, the rights to be conferred and permissible exceptions to those rights, and the minimum duration of protection. The Agreement sets these standards by requiring, first, that the substantive obligations of the main conventions of the WIPO, the Paris Convention for the Protection of Industrial Property (Paris Convention) and the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) in their most recent versions must be complied with. With the exception of the provisions of the Berne Convention on moral rights, all the main substantive provisions of these conventions are incorporated by reference and thus 14
become obligations under the TRIPS Agreement between TRIPS Member countries. The relevant provisions are to be found in Articles 2.1 and 9.1 of the TRIPS Agreement, which relate, respectively, to the Paris Convention and to the Berne Convention. Secondly, the TRIPS Agreement adds a substantial number of additional obligations on matters where the pre-existing conventions are silent or were seen as being inadequate. The TRIPS Agreement is thus sometimes referred to as a Berne and Paris-plus agreement. b. Enforcement. The second main set of provisions deals with domestic procedures and remedies for the enforcement of intellectual property rights. The Agreement lays down certain general principles applicable to all IPR enforcement procedures. In addition, it contains provisions on civil and administrative procedures and remedies, provisional measures, special requirements related to border measures and criminal procedures, which specify, in a certain amount of detail, the procedures and remedies that must be available so that right holders can effectively enforce their rights. c. Dispute settlement. The Agreement makes disputes between WTO Members about the respect of the TRIPS obligations subject to the WTO's dispute settlement procedures. The basic rule contained in Article 15 is that any sign, or any combination of signs, capable of distinguishing the goods and services of one undertaking from those of other undertakings, must be eligible for registration as a trademark, provided that it is visually perceptible. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, must be eligible for registration as trademarks. 15
Where signs are not inherently capable of distinguishing the relevant goods or services, Member countries are allowed to require, as an additional condition for eligibility for registration as a trademark, that distinctiveness has been acquired through use. Members are free to determine whether to allow the registration of signs those are not visually perceptible (e.g. sound or smell marks). Members may make registrability depend on use. However, actual use of a trademark shall not be permitted as a condition for filing an application for registration, and at least three years must have passed after that filing date before failure to realize an intent to use is allowed as the ground for refusing the application (Article 14.3). The Agreement requires service marks to be protected in the same way as marks distinguishing goods (see e.g. Articles 15.1, 16.2 and 62.3). The owner of a registered trademark must be granted the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion must be presumed (Article 16.1). The TRIPS Agreement contains certain provisions on well-known marks, which supplement the protection required by Article 6bis of the Paris Convention, as incorporated by reference into the TRIPS Agreement, which obliges Members to refuse or to cancel the registration, and to prohibit the use of a mark conflicting with a mark which is well known. First, the provisions of that Article must be applied also to services. Second, it is required that knowledge in the relevant sector of the public acquired not 16
only as a result of the use of the mark but also by other means, including as a result of its promotion, be taken into account. Furthermore, the protection of registered well-known marks must extend to goods or services which are not similar to those in respect of which the trademark has been registered, provided that its use would indicate a connection between those goods or services and the owner of the registered trademark, and the interests of the owner are likely to be damaged by such use (Articles 16.2 and 3). Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties (Article 17). Initial registration, and each renewal of registration, of a trademark shall be for a term of no less than seven years. The registration of a trademark shall be renewable indefinitely (Article 18). Cancellation of a mark on the grounds of non-use cannot take place before three years of uninterrupted non-use has elapsed unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner. Circumstances arising independently of the will of the owner of the trademark, such as import restrictions or other government restrictions, shall be recognized as valid reasons of non-use. Use of a trademark by another person, when subject to the control of its owner, must be recognized as use of the trademark for the purpose of maintaining the registration (Article 19). It is further required that use of the trademark in the course of trade shall not be unjustifiably encumbered by special requirements, such as use with another trademark, 17
use in a special form, or use in a manner detrimental to its capability to distinguish the goods or services (Article 20). 3.4 Paris Convention for the Protection of Industrial Property (1883) The Convention applies to industrial property in the widest sense, including patents, marks, industrial designs, utility models (a kind of small patent provided for by the laws of some countries), trade names (designations under which an industrial or commercial activity is carried on), geographical indications (indications of source and appellations of origin) and the repression of unfair competition. The substantive provisions of the Convention fall into three main categories: national treatment, right of priority, common rules. (1) National Treatment- Under the provisions on national treatment, the Convention provides that, as regards the protection of industrial property, each contracting State must grant the same protection to nationals of the other contracting States as it grants to its own nationals. Nationals of non-contracting States are also entitled to national treatment under the Convention if they are domiciled or have a real and effective industrial or commercial establishment in a contracting State. (2) Right of Priority- the Convention provides for the right of priority in the case of patents (and utility models, where they exist), marks and industrial designs. This right means that, on the basis of a regular first application filed in one of the contracting States, the applicant may, within a certain period of time (12 months for patents and utility models; 6 months for industrial designs and marks), apply for protection in any of the other contracting States; these later applications will then be regarded as if they had been 18
filed on the same day as the first application. In other words, these later applications will have priority (hence the expression right of priority ) over applications which may have been filed during the said period of time by other persons for the same invention, utility model, mark or industrial design. Moreover, these later applications, being based on the first application, will not be affected by any event that may have taken place in the interval, such as any publication of the invention or sale of articles bearing the mark or incorporating the industrial design. One of the great practical advantages of this provision is that, when an applicant desires protection in several countries, he is not required to present all his applications at the same time but has six or 12 months at his disposal to decide in which countries he wishes protection and to organize with due care the steps he must take to secure protection. (3) Common rules-the Convention lays down a few common rules which all the contracting States must follow. The more important are the following: (a) As to Patents: Patents granted in different contracting States for the same invention are independent of each other: the granting of a patent in one contracting State does not oblige the other contracting States to grant a patent; a patent cannot be refused, annulled or terminated in any contracting State on the ground that it has been refused or annulled or has terminated in any other contracting State. The inventor has the right to be named as such in the patent. The grant of a patent may not be refused, and a patent may not be invalidated, on the ground that the sale of the patented product, or of a product obtained by means of the patented process, is subject to restrictions or limitations resulting from the domestic law. 19
Each contracting State that takes legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the exclusive rights conferred by a patent may do so only with certain limitations. Thus, a compulsory license (license not granted by the owner of the patent but by a public authority of the State concerned) based on failure to work the patented invention may only be granted pursuant to a request filed after three or four years of failure to work or insufficient working of the patented invention and it must be refused if the patentee gives legitimate reasons to justify his inaction. Furthermore, forfeiture of a patent may not be provided for, except in cases where the grant of a compulsory license would not have been sufficient to prevent the abuse. In the latter case, proceedings for forfeiture of a patent may be instituted, but only after the expiration of two years from the grant of the first compulsory license. (b) As to Marks: The Paris Convention does not regulate the conditions for the filing and registration of marks which are therefore determined in each contracting State by the domestic law. Consequently, no application for the registration of a mark filed by a national of a contracting State may be refused, nor may a registration be invalidated, on the ground that filing, registration or renewal has not been effected in the country of origin. Once the registration of a mark is obtained in a contracting State, it is independent of its possible registration in any other country, including the country of origin; consequently, the lapse or annulment of the registration of a mark in one contracting State will not affect the validity of registration in other contracting States. Where a mark has been duly registered in the country of origin, it must, on request, be accepted for filing and protected in its original form in the other contracting States. Nevertheless, registration may be refused in well-defined cases, such as when the mark 20
would infringe acquired rights of third parties, when it is devoid of distinctive character, when it is contrary to morality or public order, or when it is of such a nature as to be liable to deceive the public. If, in any contracting State, the use of a registered mark is compulsory, the registration cannot be canceled until after a reasonable period, and only if the owner cannot justify his inaction. Each contracting State must refuse registration and prohibit the use of marks which constitute a reproduction, imitation or translation, liable to create confusion, of a mark considered by the competent authority of that State to be well known in that State as being already the mark of a person entitled to the benefits of the Convention and used for identical or similar goods. Each contracting State must likewise refuse registration and prohibit the use of marks which consist of or contain without authorization, armorial bearings, State emblems and official signs and hallmarks of contracting states, provided they have been communicated through the International Bureau of WIPO. The same provisions apply to armorial bearings, flags, other emblems, abbreviations and names of certain intergovernmental organizations. Collective marks must be granted protection. (c) As to Industrial Designs: Industrial designs must be protected in each contracting State, and protection may not be forfeited on the ground that the articles incorporating the design are not manufactured in that State. (d) As to Trade Names: Protection must be granted to trade names in each contracting State without the obligation of filing or registration. 21
(e) As to Indications of Source: Measures must be taken by each contracting State against direct or indirect use of a false indication of the source of the goods or the identity of the producer, manufacturer or trader. (f) As to Unfair Competition: Each contracting State must provide for effective protection against unfair competition. The Paris Union, established by the Convention, has an Assembly and an Executive Committee. Every State member of the Union which has adhered to at least the administrative and final provisions of the Stockholm Act (1967) is a member of the Assembly. The members of the Executive Committee are elected from among the members of the Union, except for Switzerland, which is a member ex officio. The establishment of the biennial program and budget of the WIPO Secretariat as far as the Paris Union is concerned is the task of its Assembly. The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Washington in 1911, at The Hague in 1925, at London in 1934, at Lisbon in 1958 and at Stockholm in 1967, and it was amended in 1979. The Convention is open to all States. Instruments of ratification or accession must be deposited with the Director General of WIPO 22
Chapter 2 Trade marks Law in India Rights conferred and Infringement 1 Definitions and Principles 1.1 Statutory Definition- According to Trade Marks Act, 1999. As Per Section 2(1)(zb)- "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and (i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark. 23
A trademark or trade mark (represented by the symbol ) 9 or mark is a distinctive sign or indicator of some kind which is used by an individual, business organization or other legal entity to identify uniquely the source of its products and/or services to consumers, and to distinguish its products or services from those of other entities. A trademark is a type of intellectual property, and typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements 10. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories 11. A trademark is a sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors 12 According to Webster s new International Dictionary, Second Edition, unabridged, gives the meaning of the word trade as purchase and sale. The worldwide accepted significance of trade is buying and selling. Deduction- Therefore Trade mark means mark used on goods for buying and selling, for distinguishing goods of different proprietors. The words with or without any indication of the identity of that person in Section 2(1)(zb)(ii) of the Trade Marks Act, 1999 indicate that the identity of the person dealing in the goods need not necessarily be 9 The styling of trademark as a single word is predominantly used in the United States and Australia, while the two word styling trade mark is used in many other countries around the world, including the European Union and Commonwealth and ex-commonwealth jurisdictions (although Canada officially uses trademark pursuant to the Trade-mark Act, trade mark and trademark are also commonly used) 10 Restatement (Third) of Unfair Competition 9 (1995) 11 http://en.wikipedia.org/wiki/trademark 12 WIPO- Study materials. 24
revealed, unless specifically required to do so under some other laws, or under special circumstance 13 of the case. Analysis- A trade mark is not only a symbol or a monogram or a logo as is generally understood; but can also be a word, a device, a letter or letters, a numeral or numerals, a picture or combination of all these elements. When a mark consists of two or more of these elements, it is known as composite mark A mark to be a trade mark must be used on the goods vended 14 or should at least be used in such a manner so as to impose the visual representation to the goods. A service mark to distinguish services of tailors, caterers, advertisers, insurers, construction agents and repairer, communicators, transporters and other personal services, cannot be termed as trade mark since no buying and selling of goods are involved. However the Nice Agreement 15 concerning the international classification of goods and services is followed by some countries for service mark registration. The name or trading style 16 of a company, firm, association, corporation or any abbreviation thereof my also be a trade mark, if represented in a special and particular manner. Any trade mark may either be new i.e. proposed to be used or has already been used by the proprietor. 13 Hoechst v. Takeda Chemical Industries Ltd,wq Opposition No. CAL 871 to Trade Mark Application No. 2764 14 Herald Radford & Co. Ltd. s application, 69 RPC 221 15 Nice Agreement of the 15 th June, 1957, as revised at Stockholm on 14 th July, 1967 and at Geneva on 13 th of May, 1977 (WIPO 1981) 16 The Economic Times, 27 th April, 1984 25
1.2 Principles of Trade Mark Law It is interesting to note that the law of trade marks; practically all over the world is based on three broad concepts: 1. Distinctiveness or distinct character, or capable of distinguishing. 2. Deceptive similarity or similarity or near resemblance of marks and, 3. Same description or similarity of goods. The following are the fundamental principles of the trade mark law as embodied in the preamble and the various provisions on the Trade Mark Act, 1999- a. Since registration confers on the proprietor a kind of monopoly right over the use of the mark, which may consist of a word or symbol legitimately required by other traders for bona fide trading or business purposes, certain restrictions are necessary on the class of words or symbols over which such monopoly right may be granted 17. This principle is laid down in Section 9- Absolute grounds for refusal of registration b. Registration of a trade mark should not interfere with the bona fide use by other persons of names or words in ordinary usage. This principle is embodied in Section 13 and Section 35. c. Property rights in a trade mark acquired by use are superior to similar rights obtained by registration under the Act. This is clear from the preamble which refers to better protection of trade marks thereby necessarily implying the existence and availability of some protection under the common law. It, therefore, follows that prior users of trade mark 17 Perfection case, (1909) 26 RPC at 860, 861 26
should be protected against monopoly rights granted under the Statute. This principle is enacted in Section 34. d. There are two main interests to be protected in a trade mark. The first the interest of the public. A trade mark ought not to be registered if its use will be apt to mislead the public as to the origin of the goods they are purchasing. There is also the interest of the other traders who are entitled to object if the use of the trade mark proposed for registration will be calculated to enable the applicant s goods to be passed off on the public as such other traders goods. These interests are protected by Section 9 and Section 11 18. e. Granting the benefits of registration under the Statute is not only a matter of interest to the applicant seeking registration, but it is a matter in which the public is also interested. It is, therefore, necessary that any member who wants to object to the registration should be permitted to do so. The Act accordingly provides for advertisement of the application and opposition thereto by any interested party. 19 1.3 Functions of a trade mark The functions of a trade mark is to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods, to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market. It tells the person who is about to buy that what is presented 18 Refer to Bass v. Nicholson (1932)49 RPC 88 at 111 (HL) 19 Lord Atkin in Shredded Wheat (1940)57 RPC 137 at 149. 27
to him is either what he has known before under the similar name as coming from a source with which he is acquainted, or that it is what he has heard of before as coming from that similar source 20. Under modern business conditions a trade mark performs three functions 21 : a. It identifies the product and its origin b. It guarantees its unchanged quality, and c. It advertises the product. It is also a symbol representing business According to McCarthy 22 the following are the functions of a trademark in modern businessa. To identify one sellers goods and distinguish them from goods sold by others. b. To signify that all goods bearing the trade mark come from or controlled by a single albeit anonymous source. c. To signify that all goods bearing the trade mark are of an equal level or quality. d. As a prime instrument in advertising and selling the goods. e. A symbol representing the goodwill of the business in which it is used. It identifies the goodwill. f. It creates an image to the business in which it is used. 2 Rights Conferred By Registration of a Trade Mark Section 28 of the Trade Marks Act, 1999 provides for the rights that are acquired by a registered proprietor of a trade mark. Section 28 of the Act provides as under- 20 Sumat Prasad v. Sheojahan Prasad AIR 1972 SC 2488 at 2490 21 Industrial Property (WIPO) 1978, p.219 22 McCarthy on Trademarks and Unfair Competition, 4 th Edition, Volume 1, Chapter 2. 28
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act. (2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor. The law considers a trademark to be a form of property. Proprietary rights in relation to a trademark may be established through actual use in the marketplace, or through registration of the mark with the trademarks office (or "trade marks registry"). Registration of a trademark by itself does not create an absolute right in the owner. The rights as are acquired by a person under the common law on account of priority in adoption and use are much superior to that of a person who may acquire registration of an identical mark prior in point of time. 29
The registration of a trade mark under the provisions of the Act confers statutory right on the registered proprietor not only to the exclusive use of the said mark in relation to the goods or services for which the same is registered but also to restrain others from using an identical or deceptively similar mark in respect of the goods for which the earlier mark is registered in respect of the goods of the same description or similar in nature. The goods that are cognate or allied in their nature and character on account of having common trade channel, class of purchasers or overlapping in business activities are considered as the goods of same description. Prior to the coming into force of The Trade Marks Act, 1999, the rights of the registered proprietors were confined in an infringement action, to restrain others from using an identical or similar mark only in respect of those goods for which the earlier registration had been made. The proprietor of a trademark was entitled to restrain the use of an identical or deceptively similar mark in respect of similar goods or goods of the same description in an action of passing off. Such a common law right of a proprietor has acquired statutory recognition under the Trade Marks Act, 1999. The question, which arises for consideration, is that if the right to a trademark is vested on account of priority in adoption and use and such right is superior to that of the registration obtained by a third party, then why it is necessary to obtain registration under the Act? It is no doubt true that under the common law, a person not only acquires proprietary right to the exclusive use of a trade mark on account of his being first to adopt and use the same in the course of trade but also has an exclusive right to restrain others in the same manner and obtain the same relief as in the case of a registered trade mark. 30