Exploring The Trade Marks In India: Grounds For Acceptance & Refusal Of Trademark Registration

Paper Details 

Paper Code: RP-VBCL-04-2024

Category: Research Paper

Date of Publication: April 20, 2024

Citation:  Ms. Bhagyamma G, Mr. Syed Shabaz S, & Prof. (Dr.) Ramesh, “Exploring The Trade Marks In India: Grounds For Acceptance &Refusal Of Trademark Registration", 1, AIJVBCL, 42, 42-66 (2024), <https://www.vbcllawreview.com/post/exploring-the-trade-marks-in-india-grounds-for-acceptance-refusal-of-trademark-registration>

Author Details: Ms. Bhagyamma G, Principal at MH College of Ramnagara and Ph.D. Scholar (Law) Department of Studies in Law &

Mr. Syed Shabaz S, Former Legal Counsel, DG Institute Financial Services, Sydney, New South Wales, Australia and Advocate at High Court of Karnataka, India &

Prof. (Dr.) Ramesh, Professor of Law, Univeristy of Msyore, Mysore

Download PDF

ABSTRACT

This comprehensive exploration delves into the intricate world of trademark registration, shedding light on the various types of trademarks, the international framework, registration procedures, and grounds for refusal. The study begins by elucidating different types of trademarks, including unconventional ones such as smell, sound, taste, color, and three-dimensional marks, along with collective marks. It then delves into the essential criteria for goods and services classification and the significance of well-known trademarks. Examining the landscape of trademark existence without registration, the study elucidates literary titles and international regimes, with a particular focus on the various international legal regimes. The study emphasizes the importance of trademark use and priority, focusing on well-known trademarks and the challenges of deceptive similarity. It provides a comprehensive framework for deciding the similarity of two marks, including factors to consider and prohibitions on descriptive words and geographical names.

Keywords:  Trademark Registration, Types of Trademarks, International Framework

Registration Procedures and Grounds for Refusal

INTRODUCTION

A trademark, as defined by Section 2 of the Trademark Act 1999, plays a pivotal role in legally safeguarding and distinguishing goods and services in the marketplace. Trademarks encompass a wide range of elements, including words, symbols, shapes, colors, and more, serving as tools for businesses to establish their product or service identity. These trademarks must meet specific criteria: they must be distinct, capable of graphic representation, and able to differentiate one's offerings from others.

Non-traditional marks, a modern category recognized in some jurisdictions, present unique challenges in trademark law. Smell marks, for instance, evoke memories but face difficulties in graphical representation, as shown in Chanel's unsuccessful attempt to register a perfume scent. Sound marks, like Yahoo's yodel, are gaining acceptance and are usually represented using musical notations. Taste marks require precise descriptions, while color marks demand extensive usage and consumer recognition for registration.[1] Multimedia trademarks like moving images, holograms, and gestures require graphical representation, and three-dimensional marks, covering shapes and packaging, must meet distinctiveness tests. Collective marks indicate association membership[2] and well-known trademarks enjoy broad recognition.[3]

In the intricate landscape of trademark law, both traditional and modern marks are recognized and protected, each requiring careful adherence to specific legal requirements for registration and safeguarding intellectual property rights.From an economic perspective, trademarks serve more than just symbolic purposes; they fulfill practical roles that benefit both producers and consumers.[4] These roles encompass quality assurance, where trademarks incentivize businesses to uphold product or service quality to meet consumer expectations. Additionally, trademarks simplify the shopping process,[5] reducing consumer costs and streamlining the market. They play a pivotal role in branding and reputation management, allowing consumers to identify and connect with products or services that align with their expectations.[6]

Quality justification is another fundamental aspect of trademarks, serving as a mark of quality assurance. Trademarks hold sellers accountable and encourage businesses to maintain a positive reputation for consistent product quality. This, in turn, fosters consumer trust and confidence, assuring consumers that the products they purchase will meet their quality and performance standards.[7]

Furthermore, trademarks function as a potent form of advertising. They establish a product's identity and its producer in the minds of consumers, promoting brand recognition. Recognizable trademarks often lead to word-of-mouth promotion as consumers share their knowledge with others, thereby extending the brand's reach. In an era of expanding markets and intricate distribution systems, trademarks are essential for advertising and connecting with a broader audience.[8]

INTERNATIONAL REGIME

The Trade-Related Aspects of Intellectual Property Rights (TRIPS)

TRIPS is a significant international agreement that encompasses various aspects of intellectual property, including copyrights, patents, geographical indications, trademarks, industrial designs, trade secrets, and exclusive rights over new plant varieties. It came into effect on January 1, 1995, and has far-reaching implications on the global intellectual property landscape.[9]

Intellectual property rights (IPRs) grant individuals or entities exclusive rights over their creative and innovative endeavors for a specified duration. These rights are essential for promoting innovation and creativity, providing creators with legal protection and incentives to continue their inventive work.[10]

In India, the importance of intellectual property is well-recognized at all levels, including statutory, administrative, and judicial.[11] The objective of TRIPS is to establish minimum standards for the protection and enforcement of intellectual property rights in member countries. These standards aim to facilitate effective and sufficient protection of intellectual property rights while reducing distortions and impediments to international trade. It also obligates nations to comply with other international agreements such as the Paris Convention, Berne Convention, Rome Convention, and the Treaty on Intellectual Property in Respect of Integrated Circuits. Additionally, it adheres to generally accepted principles of international law.In India, the TRIPS agreement brought about significant changes in the intellectual property regime.

The Vienna Agreement

The Vienna Agreement of 1973 established an international classification system for the figurative elements of marks. Under this agreement, the competent authorities of contracting states are required to use appropriate symbols of this classification in official documents and publications related to the registration and renewal of marks. [12]This classification system consists of 29 categories, 144 divisions, and 600 sections, which are used to categorize the figurative elements of marks.

The Nairobi Treaty on the Protection of the Olympic Symbol

The Nairobi Treaty on the Protection of the Olympic Symbol of 1981 obligates state parties to protect the Olympic symbol and related elements against commercial use without authorization from the International Olympic Committee.[13] If the International Olympic Committee grants authorization for the use of the Olympic symbol in a state party, the National Olympic Committee of that state is entitled to a share of any revenue obtained from granting such authorization.[14] This treaty serves to safeguard the integrity of the Olympic symbol and prevent its exploitation for commercial purposes.

The Singapore Treaty on the Law of Trademarks

The Singapore Treaty on the Law of Trademarks of 2006 was established with the aim of creating a modern and dynamic international framework for harmonizing administrative trademark registration procedures.[15] Building on the earlier Trademark Law Treaty (TLT) of 1994, the Singapore Treaty has a wider scope of application and addresses new developments in the field of communication technology.

The Paris Convention for the Protection of Industrial Property

The Paris Convention for the Protection of Industrial Property, established in 1883, is a significant international treaty covering various aspects of industrial property. It applies to a wide range of intellectual property, including patents, trademarks, industrial designs, utility models, trade names, indications of source, appellations of origin, and the repression of unfair competition. The convention creates a Union of countries that agree to provide protection for industrial property rights.One of the fundamental principles of the Paris Convention is "national treatment," which mandates that each contracting state must grant the same level of protection to nationals of other contracting states as it grants to its own nationals. This principle aims to ensure that foreign nationals receive equal treatment with respect to industrial property rights within each member country. However, it does not require countries to provide protection to foreigners if they do not provide such protection to their own citizens.

Another critical provision of the Paris Convention is the "right of priority." This right allows an applicant to claim priority based on the date of their first application in one of the contracting states. Within a specific time frame (12 months for patents and utility models, and 6 months for industrial designs and marks), the applicant can apply for protection in any other contracting state. These later applications are then treated as if they had been filed on the date of the first application, giving them priority over subsequent applications for the same invention, utility model, mark, or industrial design.[16]

The Madrid Agreement

The Madrid Agreement Concerning the International Registration of Marks, established in 1891, and its related Protocol of 1989 aim to simplify and streamline the process of registering trademarks internationally. The system allows trademark owners to obtain international protection for their marks by filing a single application with the International Bureau (WIPO) through their home country's office.[17] This eliminates the need to file separate national applications in various countries, each with different languages, procedures, and fees.

The procedure for international registration of marks involves designating one or more contracting parties where protection is sought. The International Bureau examines the application for compliance with formal requirements, such as classification and comprehensibility of the list of goods and services. Substantive matters, such as whether the mark qualifies for protection or conflicts with earlier marks, are determined by each designated contracting party.

The Nice Agreement

The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, established in 1957 in Stockholm, provides a classification system for goods and services used in trademark registration. The classification system consists of 34 classes for goods and 8 classes for services, and it includes an extensive alphabetical list of approximately 11,000 items that represent various goods and services.[18] The purpose of this classification is to standardize and streamline the process of trademark registration and examination by indicating the appropriate class or classes for the goods and services associated with a trademark.[19] Expert committees, with representation from all contracting states, amend and supplement these lists as needed.

REGISTRATION OF TRADEMARKS

In terms of the registration of trademarks and the trademark registry, the Registrar, appointed by the Controller General of Patents, Designs, and Trademarks under the central government, plays a crucial role. The Registrar has the authority to withdraw or transfer matters pending before an officer and deal with them directly, either de novo or from the stage at which they were transferred, subject to special directions in the transfer order.[20]

The trademark registry, established under the Trade and Merchandise Marks Act of 1958, is headquartered in Mumbai. Branch offices have been established in Kolkata, New Delhi, Chennai, and Ahmedabad by the central government to facilitate trademark registrations. The territorial limits within which each office of the trademark registry can exercise its functions are defined by the central government.[21]

The Register of Trademarks is maintained at the Mumbai head office and is under the control and management of the Registrar. This register contains details of registered trademarks, including the names, addresses, and descriptions of the proprietors, as well as information regarding assignments and transmissions. A copy of the register is also kept at the branch offices.Certain documents are open to the public, including the register, documents related to trademark oppositions, regulations filed under Sections 63 or 74, and applications for verifying such regulations. Indexes, supervised by the Registrar, are maintained, including an index of registered trademarks, an index of pending trademark applications, an index of registered trademark proprietors, and an index of registered users.[22]The principles of trademark registration revolve around recognizing the proprietary rights of traders in their marks for goods or services. These principles include not granting absolute proprietary rights but imposing certain restrictions, not registering descriptive words, surnames, or geographical names, safeguarding the public's interests, allowing for coexistence in certain circumstances, emphasizing actual use of trademarks, permitting the assignment and transfer of trademark property rights, prioritizing rights acquired through use over registration, and providing opportunities for opposition to registered trademarks after publication in the trademark journal. The trademark law serves not only to protect the interests of traders but also to safeguard the interests of the public.

REGISTRATION OF TRADEMARKS AND THE ROLE OF THE REGISTRAR

Trademark registration is a crucial step in protecting the distinctive identity of goods and services in the market. The process involves several legal procedures and is overseen by the Registrar of Trade Marks, who plays a pivotal role in ensuring the integrity and effectiveness of trademark registration. Here's an in-depth look at the registration process and the Registrar's responsibilities:

1. Registration Process

Notice of Opposition

 When an application for trademark registration is advertised or readvertised in the journal, interested parties have the opportunity to file a notice of opposition within a specified period. If no opposition is filed or if the opposition is dismissed, the Registrar proceeds with registration.

2. Extension of Time

 Rule 105 of the Trademark Rules 2002 allows for extensions of time in registration proceedings. However, the Registrar's authority to grant extensions is limited. Extensions cannot be granted in cases where:

The Act explicitly provides for a specific time frame.

The time is prescribed by Rule 79 or Rule 80(4).

The rules already provide for extensions.

3. Statutory Authority

The statutory authority responsible for overseeing trademark matters in India under the Trade and Merchandise Marks Act of 1958 is the Controller-General of Patents, Designs, and Trade Marks. This authority is supported by a team, including a Joint Registrar, Deputy Registrar, Assistant Registrar, and Examiners of Trade Marks.[23]

4. Trade Mark Registry

The Trade Mark Registry established under the Trade and Merchandise Marks Act of 1958 is responsible for the registration and maintenance of trademarks. It handles various functions related to trademark registration and protection.

5. Intellectual Property Appellate Board (IPAB)

The Central Government has also established the Intellectual Property Appellate Board (IPAB) to handle appeals and jurisdiction matters related to intellectual property, including trademarks. IPAB benches are located in places like Ahmedabad, Chennai, Delhi, Mumbai, and Kolkata.

6. Jurisdiction of Trade Mark Offices

The Trade Mark Registry operates through a network of offices, including the head office and branch offices. The jurisdiction of these offices is territorially demarcated on a zonal basis. Applicants file their trademark applications with the office within whose territorial jurisdiction their principal place of business is situated.[24]

7. The Register of Trade Marks

The Register of Trade Marks is an official record that contains information about all registered trademarks. It includes details such as the names and addresses of trademark proprietors, descriptions of the trademarks, notifications of assignments and transmissions, and other relevant information.

8. Registrar of Trade Marks

The Registrar of Trade Marks is a key authority responsible for various aspects of trademark registration and protection. The Registrar's responsibilities include:

Reviewing and processing trademark applications.

Settling opposition proceedings when disputes arise.

Handling rectification of the register when necessary.

Maintaining the Register of Trade Marks.

Exercising discretionary powers as necessary.

Reviewing own decisions in certain cases.

9. Objectives of the Trademarks Act 1999

The primary objectives of the Trademarks Act 1999 are to facilitate the registration of trademarks applied for in India and to provide better protection for trademarks associated with goods and services. The Act aims to prevent fraudulent use of trademarks and maintain the integrity of the registration process.[25]

In conclusion, the registration of trademarks is a crucial legal process that ensures the protection of unique identities in the marketplace. The Registrar of Trade Marks, along with various offices and authorities, plays a pivotal role in overseeing this process, maintaining the Register of Trade Marks, and upholding the rights of trademark owners.

THE REGISTRAR OF TRADEMARKS

The Registrar of Trademarks in India wields significant authority and undertakes vital functions to administer the trademark registration process and uphold its smooth operation. These responsibilities include handling appeals, petitions, and applications in trademark matters, reviewing and processing amendments to trademark applications, and ensuring the proper service of summonses and notices in trademark cases. [26]The Registrar also transmits directions and orders from the Tribunal to Civil Courts for execution and manages requests for short date summonses, substituted service, withdrawal or transfer of cases, and orders related to the admission and inspection of documents during trademark proceedings.[27] Additionally, the Registrar has the power to adjourn matters when necessary and may delegate certain functions to suitable officers within the trademark office.

Beyond these specific powers and functions, the trademark registry's core role is to register trademarks that meet the criteria set by the Trademarks Act and related regulations. It also acts as an office of origin and a designated contracting party in international trademark registration systems like the Madrid Protocol. The registry offers various services to the public, provides guidance on trademark-related matters, maintains an extensive IP library, and generates reports and publications on trademark statistics and information.

Under the leadership of the Controller General of Patents, Designs, and Trademarks, the trademark registry employs an automated system and a secure virtual private network (VPN) to interconnect its branches across India, enabling real-time recording and tracking of trademark-related actions and activities. This infrastructure ensures the efficient execution of various trademark-related tasks.[28]

PROCEDURE OF REGISTRATION AND DURATIONS

The process of registering a trademark in India involves several essential steps and considerations. It begins with the submission of a trademark application to the Registrar of Trademarks, either for a mark currently in use or proposed for future use. The application should include specific particulars such as the class of goods or services, the applicant's details, including name, nationality, and address, and a representation of the mark.[29]

The filing location for the application depends on the applicant's principal place of business in India. Reciprocal arrangements with certain countries may simplify the registration process for applicants from those nations. Priority claims can be made based on an earlier application filed in a convention country, with the Indian application required to be submitted within six months of the convention application.

The trademark application undergoes examination, and it may be accepted outright, accepted with amendments, or accepted in error. If the application faces opposition by a third party, opposition proceedings may follow, including evidence submission and hearings.

Upon acceptance and without opposition, the Registrar registers the trademark within 18 months from the application's filing date. Trademark registration in India is initially valid for ten years, with the possibility of renewal for successive ten-year periods by paying the prescribed fees and submitting a renewal application. [30]This comprehensive process ensures the protection and validity of trademarks in India.

REMOVAL AND RESTORATION OF TRADEMARK

Trademark registration in India is a vital process designed to safeguard the rights of trademark holders and maintain clarity and distinctiveness in the market. Trademarks can be removed from the register for non-payment of fees but are eligible for restoration within one year from the last registration's expiration by submitting an application and requisite fees. Priority in trademark registration is typically granted to the party that either creates the mark or uses it first, giving an advantage to those with prior use or registration in case of disputes. Well-known trademarks, even if not registered or used in India, are recognized if they have substantial public recognition, considering factors like duration, geographical reach, and successful enforcement. Marks that closely resemble others, leading to potential deception or confusion, are deemed deceptively similar. The trademark registration process in India is comprehensive, subject to specific rules and regulations, and may involve challenges such as opposition by third parties depending on individual circumstances.[31]

PRINCIPLES FOR DECIDING THE QUESTION OF SIMILARITY OF TWO MARKS

When evaluating trademarks, it's important to recognize that they are typically remembered based on the general impressions they leave, emphasizing significant details rather than requiring an exact photographic recollection of the entire mark. The key criterion in assessing similarity between two marks is the overall impression they create. This evaluation should be made from the perspective of an average person with imperfect recollection and a reasonable level of intelligence.[32]

In the assessment of similarity, trademark examiners take into account various factors, including the overall structure of the marks, their phonetic similarity, and the resemblance of the ideas they convey. Both visual and phonetic tests are applied to gauge potential confusion. It's crucial to compare the marks as a whole rather than engage in microcopy examination, emphasizing that trademarks must be evaluated in their entirety to determine whether they are deceptively similar or not.

FACTORS TO BE CONSIDERED FOR DECIDING DECEPTIVE SIMILARITY

When determining whether two marks are deceptively similar, several crucial factors must be considered.[33] First, it's important to examine the nature of the marks themselves, whether they are words, label marks, composite marks (comprising both words and labels), or other forms. Next, the degree of resemblance between the marks should be evaluated, encompassing phonetic, visual, and structural similarities, as well as any shared conceptual elements.

Additionally, the nature, character, and performance of the goods or services associated with these marks must be carefully analyzed. It's essential to understand how consumers perceive and interact with these products or services and assess the potential for confusion or deception among those who purchase items bearing these marks.[34]

Consideration should also be given to the specific class of purchasers who are likely to buy goods or services featuring these marks, as different consumer demographics may react differently to similarities between marks. The mode of purchase, including how consumers order or acquire these goods or services, can also impact the likelihood of confusion.

Lastly, surrounding circumstances should be taken into account. These could include any additional relevant factors, such as market conditions, industry practices, or any special considerations specific to the situation at hand. In sum, a comprehensive assessment of these factors is crucial in determining whether two marks are deceptively similar and whether trademark infringement or violation may exist.

DESCRIPTIVE WORDS AND TRADEMARK REGISTRATION

Descriptive words, within the context of trademark registration, are terms or phrases that directly convey information about the characteristics or qualities of the associated goods or services.[35] They provide straightforward descriptions, making them easily understandable by consumers. However, registering descriptive words as trademarks can be challenging because trademarks are intended to be distinctive and capable of differentiating one source from another.

The Trade and Merchandise Marks Act of 1958, later replaced by the Trademarks Act of 1999, includes provisions regarding the registration of descriptive words as trademarks. Some key points include the prohibition of trademarks that directly describe goods or services,[36] the requirement of distinctiveness for trademark registration, and allowances for non-descriptive words that are not geographical names, surnames, or chemical elements. Additionally, the law recognizes well-known trademarks, which receive higher protection.[37]

In essence, while there are exceptions and unique circumstances where descriptive terms may be registered, the primary aim of trademark law is to balance the protection of trademark owners' rights with the preservation of common terms for industry use, ultimately benefiting consumers.

DECEPTIVE SIMILARITY

Deceptive similarity is a pivotal concept in trademark law aimed at safeguarding consumer interests. Section 2(1)(h) of the Trade Marks Act 1999 defines it as marks closely resembling others to the extent of potentially deceiving or causing confusion. An illustrative case is Perfetti Van Melle S.P.A. v. Om Prakash Kheshward, where the defendant's "SUPER FRESH" mark was deemed deceptively similar to the plaintiff's "CENTER FRESH." Despite some textual differences, the court found the imitation of label layout and artistic elements likely to mislead consumers and dilute the plaintiff's reputation.[38]

Deceptive similarity is also applicable to trade dress, encompassing the visual elements of product presentation. The stringent assessment for medicinal products recognizes the gravity of potential confusion in such cases. Domain names are also subject to this scrutiny; for instance, a domain like www-myindiatime.com was deemed illegal due to its deceptive similarity with the unique and coined www.indiatimes.com.

In trademark infringement cases, similarity between goods or services plays a critical role, even when they are not identical. Factors such as usage, users, and the physical nature of goods/services are considered, as seen in Balkrishna Hatcheries v. Nandos International Ltd. Overall, protecting against deceptive similarity is essential for fair competition and consumer protection, with courts relying on various factors and tests to make well-informed decisions in trademark disputes.

THE ABSOLUTE GROUNDS FOR REFUSAL OF TRADEMARK REGISTRATION

The absolute grounds for refusal of trademark registration, as outlined in Section 9 of the Trademark Act, are fundamental criteria that must be met for a trademark to be eligible for registration. These grounds serve to maintain the integrity of the trademark system and ensure that trademarks can effectively distinguish the goods or services they represent.[39]

a) Trademarks that lack distinctive characteristics and cannot differentiate the goods or services of one entity from another are not eligible for registration. In other words, if a trademark is too generic or descriptive, it may be refused registration.

b) Trademarks consisting exclusively of elements that describe the kind, quality, quantity, intended purpose, values, geographical origin, or the time of production of goods or the rendering of services are also ineligible for registration. Such marks are considered non-distinctive and cannot be monopolized by a single entity.

c) Additionally, trademarks composed solely of elements that have become common in everyday language or established trade practices may be refused registration. These marks lack the uniqueness required for trademark protection.

However, there are exceptions. A trademark may not be refused registration if, before the date of the application, it has acquired distinctiveness through extensive use and has become well-known in the marketplace.

Furthermore, certain characteristics can lead to the refusal of trademark registration:

a) If a trademark is likely to deceive the public or cause confusion, it will be denied registration.

b) Trademarks that contain or comprise matter likely to hurt the religious sentiments of any class or section of citizens in India are not eligible for registration.

c) Trademarks containing scandalous or obscene matter will also be refused registration.

d) If the use of a trademark is prohibited under the Emblems and Names (Prevention of Improper Use) Act of 1950, it cannot be registered as a trademark.

In addition to these criteria, a trademark consisting exclusively of:

a) The shape of goods resulting from the nature of the goods themselves,

b) A shape that is necessary to obtain a technical result, or

c) A shape that gives substantial value to the goods,will be ineligible for registration.

However, the nature of the goods or services to which the trademark is applied should not be grounds for refusal under Section 9.Moving on to relative grounds for refusal of registration, Section 11 of the 1999 Trademark Act addresses the likelihood of confusion and associations with earlier trademarks.[40] A trademark shall not be registered if it is likely to cause confusion with an earlier trademark due to identity or similarity in goods and services.Moreover, if the use of a trademark in India is prohibited by any law protecting an unregistered trademark or copyright, it will not be registered. However, such objections can only be raised in opposition proceedings by the proprietor of the earlier trademark.Section 11(6) provides relevant factors for determining whether a trademark is well-known. Section 11(9) outlines conditions that the registrar should not consider when determining the well-known status of a trademark.[41]

Therefore, the absolute and relative grounds for refusal of trademark registration are vital aspects of trademark law, ensuring that trademarks are distinctive, not misleading, and do not infringe on the rights of others.Section 9(1)(c) of the Trademark Act outlines another important ground for refusal of trademark registration. According to this section, trademarks that consist exclusively of marks or indications that have become customary in the current language or in the bona fide and established practices of the trade are not eligible for registration.

Henceforth, Section 9(1)(c) of the Trademark Act aims to prevent the registration of trademarks that have become generic or commonly used in a trade or industry. These marks lack the distinctiveness necessary to serve as effective trademarks, and their use should remain open for all to use. Trademark law seeks to strike a balance between protecting the rights of trademark owners and preserving the public's ability to use common language and terms in commerce.

TRADEMARK DILUTION

Trademark dilution is a legal concept that extends beyond the traditional concerns of trademark infringement. It encompasses actions taken by a defendant that, even if they don't create confusion, still harm the distinctive character or tarnish the reputation of the plaintiff's trademark. There are two main forms in which trademark dilution can occur: blurring and tarnishment.[42]

Blurring refers to the gradual weakening of the distinctiveness of a famous trademark when similar marks are used on unrelated goods or services. This can lead consumers to associate the trademark with various, unrelated products, ultimately diluting its unique identity. For instance, if multiple companies market their products as "Coca-cola," it can blur the exclusive association of that name with the original beverage.

Tarnishment involves damaging the positive image or reputation associated with a well-known trademark. This occurs when a third party uses the famous trademark in connection with inferior, offensive, or unrelated products or services, tarnishing the mark's image. For example, selling a low-quality whisky labeled "Coca-cola Whiskey" or running an advertisement that falsely suggests Coca-cola is harmful to health can tarnish the reputation of the Coca-cola brand.[43]

Trademark dilution laws aim to safeguard strong and famous trademarks from losing their distinctiveness or suffering reputational harm. The goal is to prevent actions that weaken the strength and value of a trademark. Dilution by tarnishment specifically focuses on harming a famous trademark's quality, reputation, or image through misleading advertising or statements. This practice is often associated with well-established trademarks and can erode the uniqueness and value of the brand, potentially causing damage to consumer trust.

ADVERTISEMENT DISPARAGEMENT OF GOODS

Advertisement disparagement refers to statements or claims made about a competitor's goods or services that are intended to cast doubt on their existence, quality, or properties. Such statements are often false or misleading and are made to influence the public not to purchase the competitor's products. Disparagement can occur in various forms, including false advertising, negative comparisons, or misrepresentations.[44]

In legal terms, disparagement typically involves making false or deceptive statements that harm the reputation or sales of a competitor's goods or services. These actions can lead to legal action, including claims of false advertising or defamation, depending on the jurisdiction and the specific circumstances of the case.

INFRINGEMENT OF TRADEMARK

Trademark infringement occurs when an entity, other than the registered owner of a trademark, uses a mark that closely resembles the registered mark in the course of trade, especially for the same goods or services covered by the registered mark. To understand this concept fully, it's crucial to dissect its fundamental elements, the various forms it can take, and the burden of proof associated with it.[45]

THE ESSENTIALS OF INFRINGEMENT

Firstly, infringement arises when someone appropriates a critical element of the registered mark or replicates the entire mark with minor additions or alterations, potentially leading to consumer confusion.[46]

Secondly, infringement must occur within the context of regular trade activities, where the legitimate mark owner is actively involved.[47]Lastly, the infringing mark should be used in printed materials or common representations like advertisements, invoices, or bills; oral use of the trademark doesn't constitute infringement.

FORMS OF INFRINGEMENT

Infringement can take various forms, primarily including:

A registered trademark is violated when used in the course of trade by anyone other than the registered owner or an authorized user.[48] This occurs when unauthorized use is likely to confuse the public or create an association with the registered trademark.

Infringement also arises when an authorized user or another entity uses a mark that is identical or substantially similar to the registered trademark in the course of trade.

When the infringing mark is identical to the registered mark, and the goods or services involved are identical as well, the court presumes such usage will confuse the public.[49]

Interestingly, infringement can also occur when a party employs a mark in connection with goods or services not closely related to those covered by the registered trademark, provided certain conditions are met.[50]

If a registered trademark has gained a reputation in India, using a mark identical or similar to it without authorization can be considered infringement, particularly if it exploits or damages the distinctive character or reputation of the registered trademark.[51]

Infringement can arise when an individual applies the registered trademark to materials intended for labeling, packaging, or advertising of goods without proper authorization.[52]

Any form of advertising involving a registered trademark that takes unfair advantage or contravenes fair practices in industrial or commercial matters can also constitute infringement.[53]

In trademark infringement cases, the responsibility of proof usually falls on the plaintiff. They must demonstrate that the essential features of their registered marks have been copied and establish a likelihood of consumer deception due to the infringing usage. Even if the infringing party doesn't use the entire mark, the mere utilization of one or more of its essential features can still be deemed as infringement under certain circumstances.[54]

CERTAIN ACTS NOT CONSTITUTING INFRINGEMENT

There are situations where the use of a trademark will not be considered infringement. These include cases where the use is in accordance with honest commercial practices, does not take unfair advantage or harm the distinctive character or reputation of the trademark, or when the use relates to specific characteristics of goods or services, geographical origin, or other attributes, as long as it does not violate the conditions or limitations of the trademark registration. Additionally, the use by a person of a trademark in connection with goods or services linked to the registered user's consent, accessories to other goods or services, or in compliance with the rights granted by registration may not constitute infringement.[55]

Hence , trademark infringement is a complex legal concept involving the unauthorized use of a registered trademark in ways that can confuse the public or harm the reputation of the trademark owner. The specific circumstances and the burden of proof can vary depending on the details of each case.

REMEDIES FOR THE INFRINGEMENT OF TRADEMARK

To safeguard registered trademarks and combat infringement or passing off, a variety of remedies are at hand, spanning civil, criminal, and administrative domains. Civil remedies comprise securing interlocutory injunctions to swiftly halt infringing activities during court proceedings, obtaining Anton Piller Orders for evidence preservation, and seeking damages alongside an account of the infringer's profits.[56] Criminal remedies empower trademark owners to file complaints resulting in punitive actions against infringers.

Administratively, opposing deceptively similar trademark registrations guards existing trademarks, while the trademark registry can be engaged to remove already registered deceptive trademarks. When pursuing infringement suits, plaintiffs must approach district courts with jurisdiction, including registered trademark owners, users with prior notice to the proprietor and no prior action, and applicants if the trademark is registered beforehand. Parties subject to trademark infringement suits include direct infringers, employers liable for employee actions, agents acting on behalf of infringers, and directors or promoters of limited companies personally involved in infringing acts.[57]

Moreover, passing off, a 19th-century legal recourse, aims to thwart unfair competition by preserving business goodwill and reputation from deceitful competitors. It hinges on five characteristics: misrepresentation, occurring in the course of trade to prospective or ultimate customers, calculated to harm another's goodwill, and causing actual or potential damage. In both trademark infringement and passing-off cases, remedies include injunctions, compensation for losses or an account of profits, and the removal or erasure of infringing materials.For matters related to infringement or passing off, district courts with jurisdiction are the designated venues, with the Civil Procedure Code governing passing-off actions, ensuring a structured legal approach to these crucial issues.

CONCLUSION

In a nutshell, this extensive exploration of trademarks has not only provided an in-depth understanding of the multifaceted world of intellectual property rights but has also illuminated the critical role trademarks play in modern commerce. By delving into the diverse array of trademark types, from the intangible Smell Marks and Sound Marks to the visually distinctive Color Marks and Three-Dimensional Trademarks, this document has showcased the adaptability of trademark law in protecting innovation across various sensory domains.

Furthermore, the document has underscored the global reach and significance of trademarks, as exemplified by international agreements like TRIPS, the Vienna Agreement, and the Nairobi Treaty. These agreements emphasize the collective commitment to safeguarding intellectual property on a global scale, highlighting the interconnectedness of modern economies.Crucially, the exploration of trademark registration has unraveled the intricate processes involved in securing and maintaining trademark rights. It has demystified the roles of key entities such as the Registrar and the Intellectual Property Appellate Board, providing valuable insights into the administrative machinery that underpins trademark protection.The document's discussion on the principles governing the similarity of two marks and the grounds for refusing trademark registration has illuminated the legal complexities and considerations at play when adjudicating trademark disputes. This knowledge is essential for individuals, businesses, and legal professionals navigating the intricate trademark landscape, ensuring they make informed decisions to safeguard their intellectual property.Above all, the document's spotlight on trademark infringement and the available remedies serves as a stark reminder of the importance of defending one's brand and innovations. In a rapidly evolving global marketplace, trademark infringement poses a persistent threat, making it imperative for stakeholders to be well-versed in their rights and the courses of action available to them. Thus, this comprehensive document is a valuable resource that equips individuals, businesses, and legal professionals with the knowledge and tools necessary to navigate the ever-changing terrain of trademark law. It underscores the paramount importance of preserving and protecting intellectual property rights in a dynamic and interconnected world, ensuring that innovation continues to thrive and flourish.

[1]Sayed Qudrat Hashimy, ‘An Analysis of Naked Licensing in the Case of Trademark Law in the U.S., U.K. And India’ (2022) 3 Netherlands Yearbook of International Law 1.

[2]Sonya Abrego, ‘From Cattle Brand to Corporate Brand: Blue Jean Trademarks in Mid-Century America’ (2021) 34 Journal of Design History 116.

[3]Sayed Qudrat Hashimy, ‘Protection of Video Games under Indian and the United States of America Copyright Law’ [2022] Available at SSRN 4138875 <https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4138875> accessed 15 November 2023.

[4]Laura R Bradford, ‘Emotion, Dilution, and the Trademark Consumer’ (2008) 23 Berkeley Technology Law Journal 1227.

[5]Sayed QudratHashimy, ‘An Analysis of Naked Licensing in the Case of Trademark Law in the U.S., U.K. And India’.

[6]Adrian Kuenzler, ‘Dilution Law, Vertical Agreements, and the Construction of Consumption’ (2017) 37 Oxford Journal of Legal Studies 75.

[7]Hashimy, ‘An Analysis of Naked Licensing in the Case of Trademark Law in the U.S., U.K. And India’ (n 7).

[8]Shawkat Alam, Sustainable Development and Free Trade: Institutional Approaches (Routledge 2007).

[9]Kur Annette and Martin Senftleben, ‘International Protection’ in Kur Annette and Martin Senftleben (eds), European Trade Mark Law (Oxford University Press 2017) <https://doi.org/10.1093/oso/9780199680443.003.0003> accessed 2 September 2023.

[10]Samtani Anil, ‘Non-Traditional Trade Marks: A Singapore Perspective’ (2008) 3 Journal of Intellectual Property Law & Practice 180.

[11]Sayed Qudrat Hashimy, ‘An Analysis of Naked Licensing in the Case of Trademark Law in the US, UK And India’ (2022) 3 Dynamic Research Journals Journal of Business and Management 01.

[12]Annette and Senftleben, ‘International Protection’ (n 11).

[13]FM Abbott, ‘Distributed Governance at the WTO-WIPO: An Evolving Model for Open-Architecture Integrated Governance’ (2000) 3 Journal of International Economic Law 63.

[14]Sayed Qudrat Hashimy, ‘An Analysis of Naked Licensing in the Case of Trademark Law in the U.S., U.K. And India’ (3 January 2022) <https://papers.ssrn.com/abstract=3999020> accessed 15 November 2023.

[15]Abbott (n 15).

[16]Anil (n 12).

[17]Abrego (n 4).

[18]Anil (n 12).

[19]Kur Annette and Martin Senftleben, ‘Rationales of Trade Mark Protection’ in Kur Annette and Martin Senftleben (eds), European Trade Mark Law (Oxford University Press 2017) <https://doi.org/10.1093/oso/9780199680443.003.0002> accessed 2 September 2023.

[20]Bhairav Acharya, ‘The Four Parts of Privacy in India’ (2015) 50 Economic and Political Weekly 32.

[21]Ashwani Kumar Bansal, ‘Public Interest in Intellectual Property Laws’ (2013) 55 Journal of the Indian Law Institute 476.

[22]Kur Annette and Martin Senftleben, ‘Trade Marks as Objects of Property’ in Kur Annette and Martin Senftleben (eds), European Trade Mark Law (Oxford University Press 2017) <https://doi.org/10.1093/oso/9780199680443.003.0009> accessed 2 September 2023; Sayed Hashimy, ‘An Analysis of Naked Licensing in the Case of Trademark Law in the U.S., U.K. And India’ (2022) 3 Netherlands Yearbook of International Law 1.

[23]Katya Assaf, ‘Protection of Trade Marks against Dilution: A Semiotic Perspective1’ (2009) 4 Journal of Intellectual Property Law & Practice 643.

[24]ibid.

[25]Ronald JT Corbett, ‘Protecting and Enforcing Intellectual Property Rights in Developing Countries’ (2001) 35 The International Lawyer 1083.

[26]Acharya (n 22).

[27]Sayed Qudrat Hashimy, Comparative Perspectives on Public and Private Laws - A Student Handbook (Institute of Legal Education 2023).

[28]PM Dhar, ‘Intellectual Property in Computer Programs: Weakness of the Indian Copyright Act 1957’ (1986) 28 Journal of the Indian Law Institute 487.

[29]Katya Assaf, ‘Magical Thinking in Trademark Law’ (2012) 37 Law & Social Inquiry 595.

[30]Suma Athreye and Claudio Fassio, ‘Why Do Innovators Not Apply for Trademarks? The Role of Information Asymmetries and Collaborative Innovation’ (2020) 27 Industry and Innovation 134.

[31]Anil (n 12).

[32]Kobi Barkan, ‘(Don’t Fear) the Reaper—the Uneasy Case for Trade Mark Stakeholders’ (2022) 17 Journal of Intellectual Property Law & Practice 586.

[33]Violet Atkinson and others, ‘A Comparative Study of Fashion and IP: Trade Marks in Europe and Australia’ (2018) 13 Journal of Intellectual Property Law & Practice 194.

[34]Bradly J Condon, ‘China—Intellectual Property Rights and the Criminalization of Trade Mark Counterfeiting and Copyright Piracy under the TRIPS Agreement’ (2009) 4 Journal of Intellectual Property Law & Practice 618.

[35]Mark P McKenna, ‘A Consumer Decision-Making Theory of Trademark Law’ (2012) 98 Virginia Law Review 67.

[36]Nicole Coutrelis and Pierre Yves Corre, ‘The Protection of a Name Registered as a Protected Geographical Indication (PGI) under the Simplified Procedure against a Trade Mark’ (2011) 6 European Food and Feed Law Review 116.

[37]HE Bale Jr, ‘The Conflicts between Parallel Trade and Product Access and Innovation: The Case of Pharmaceuticals’ (1998) 1 Journal of International Economic Law 637; Hashimy, ‘An Analysis of Naked Licensing in the Case of Trademark Law in the U.S., U.K. And India’ (n 24).

[38]Getachew Mengistie Alemu, ‘Strategic Use of Branding for Competitiveness: The Rationale for Branding and Marketing Agricultural Products of African Countries’ (2019) 1 Journal of Fair Trade 6.

[39]AK Ganguli, ‘Right to Property: Its Evolution and Constitutional Development in India’ (2006) 48 Journal of the Indian Law Institute 489.

[40]Annette and Senftleben, ‘Trade Marks as Objects of Property’ (n 24).

[41]Ganguli (n 41).

[42]Annette and Senftleben, ‘Trade Marks as Objects of Property’ (n 24).

[43]Matthew J Elsmore, ‘Reconfiguring Trade Mark Law’ (2013) 8 Journal of Intellectual Property Law & Practice 546; Sayed Qudrat Hashimy, ‘Impact of WTO Agreement Accession on Trade and a Few Intellectual Property Rights in Afghanistan’ (University of Mysore 2021).

[44]Hashimy, ‘An Analysis of Naked Licensing in the Case of Trademark Law in the U.S., U.K. And India’ (n 7).

[45]Ilanah Fhima and Dev S Gangjee, ‘Assessing Likelihood of Confusion’ in Ilanah Fhima and Dev S Gangjee (eds), The Confusion Test in European Trade Mark Law (Oxford University Press 2019) <https://doi.org/10.1093/oso/9780199674336.003.0006> accessed 2 September 2023.

[46]Ilanah Fhima and Dev S Gangjee, ‘Similarity of Marks’ in Ilanah Fhima and Dev S Gangjee (eds), The Confusion Test in European Trade Mark Law (Oxford University Press 2019) <https://doi.org/10.1093/oso/9780199674336.003.0002> accessed 2 September 2023.

[47]Ilanah Fhima and Dev S Gangjee, ‘Similarity of Goods and Services’ in Ilanah Fhima and Dev S Gangjee (eds), The Confusion Test in European Trade Mark Law (Oxford University Press 2019) <https://doi.org/10.1093/oso/9780199674336.003.0004> accessed 2 September 2023.

[48]Sayed Qudrat Hashimy, ‘The Legal Landscape of Fair Use/Fair Deal Rights in the United States and India: A Perspective on Copyright Disclaimers’ (2023) 3 Trinity Law Review 1.

[49]Sayed Qudrat Hashimy, ‘Protection of Video Games under Indian and the United States of America Copyright Law’ (2022) 4 Indian Journal of Law and Legal Research 1.

[50]SQ Hashimy, ‘The Legal Landscape of Fair Use’ (2023) 3 Fair Deal Rights in the United States and India: A Perspective on Copyright Disclaimers.

[51]Arsha Hasan, ‘Color Blocking: How the Harmonization of Color Protection May Catalyze Color Depletion in Global Markets’ (2016) 23 Indiana Journal of Global Legal Studies 293.

[52]Elsmore (n 45).

[53]Dev Gangjee, ‘Non Conventional Trade Marks in India’ (2010) 22 National Law School of India Review 67.

[54]Ganguli (n 41).

[55]Ilanah Fhima and Dev S Gangjee, ‘Distinctiveness of the Marks’ in Ilanah Fhima and Dev S Gangjee (eds), The Confusion Test in European Trade Mark Law (Oxford University Press 2019) <https://doi.org/10.1093/oso/9780199674336.003.0005> accessed 2 September 2023.

[56]Atkinson and others (n 35).

[57]Hasan A Deveci, ‘Domain Names: Has Trade Mark Law Strayed From Its Path?’ (2003) 11 International Journal of Law and Information Technology 203.