Trademark should be protected to keep the distinctiveness and be used exactly the way it was designed. “The Trademark Act, 1999” is the legislation which deals with trademark law in India. Under this act registration of trademark is permitted under specified classes of goods. Computer, Software products are registered under class 9 in India.
Action against infringement can be brought if the Trademarks are registered. In case of unregistered marks and marks which are not registrable, the only form of protection is the common law remedy of passing off. The fundamental difference between the protections available for registered trademarks is infringement action and unregistered trademarks are remedy of passing off. To establish infringement with regard to a registered trademark, it is essential to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required.
To file a suit for passing off action, proving that the marks are identical or deceptively similar alone is not sufficient. The use of the mark should be likely to deceive or cause confusion. In addition, in a passing off action it is compulsory to prove that the use of the trademark by the defendant is likely to cause injury or damage to the plaintiff’s goodwill, while in an infringement suit, the use of the mark by the defendant need not cause any injury to the plaintiff.
In India for over 4 decades the trademark law governed by the Trade and Merchandise Marks Act, 1958. The changes in the commercial and trading practices led to the enactment of the ‘Trademarks Act, 1999’.
Distinction between Trademark and Property Mark
(i) A trademark is a brand name that includes any word, name, symbol or device or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others.
A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. A service mark is any word, name, symbol, device or any combination, used or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services.
(ii) TM (trademark) and SM (service mark) symbols may be governed by local, state or foreign laws and the laws applicable jurisdiction to identify the marks that a party claims rights to. Some foreign countries use the letter R enclosed within a circle to indicate a mark is registered in that country.
Absolute Grounds for the Refusal of Registration
Section 9 of the 1999 Act lists the grounds that shall result in the refusal of a trademark. It is as follows:
‘Absolute grounds for refusal of registration.-
(1) The trademarks-
(a) 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;
(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
(c) 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-
(a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) 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.’
