Komal Raval, Excelon IP
With the globalization of trade, brand names, trade names, marks, etc. have attained an immense value that requires uniform minimum standards of protection and efficient procedures for enforcement as were recognised under the TRIPS. In view of the same, extensive review and consequential amendment of the old Indian Trade and Merchandise Marks Act, 1958 was carried out and the new Trade Marks Act, 1999 was enacted. The said Act of 1999, with subsequent amendments, conforms to the TRIPS and is in accordance with the international systems and practices.
The first statutory law related to the trademark in India was the Trade Marks Act, 1940 which had similar provisions like the UK Trade Marks Act, 1938.
In India, before 1940 trademark law was based on basic law principles of passing off and equity as followed in England before the appearance of the first Registration Act 1875.
In 1958, the Trade and Merchandise Marks Act, 1958 was enacted. It was repealed by the Trade Marks Act, 1999, and is the current governing law related to registered trademarks.
What is a Trademark:
Under section 2 of the act,
Mark used by a manufacturer or dealer to identify the origin or ownership of goods and to distinguish them from others.
A trademark is a “mark” that one business uses to distinguish its products or services from another.
A mark can include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any such combinations.
TM: for an Unregistered Trademark that is a mark used to promote or brand goods.
SM: for an unregistered Service mark that is a mark used to promote or brand services.
®: for a registered trademark
New trademark rules appearing into existence with the recent being in 2017. The Motive is to simplify the whole registration process and make it trouble-free and quick.
It includes 3D marks that are made registrable; e-filing is promoted; provisions pertaining to the well-known mark; separate fees structure for an individual/startup/small enterprise.
And for others; quicken processing of application; hearing via video conferencing, and the number of forms has been cut down to 8 from the existing around 75 forms.
Functions of the trademark:
A.) It identifies the goods / or services and their origin.
B.) It guarantees its unchanged quality.
C.) It advertises the goods/services
D.) It creates an image for the goods/services.
There are 45 trademark classes. which are broadly classified into two categories.
1 – 34: For Goods
35 – 45: For Services
For detailed classification access Nice Classification – WIPO[WIPO:- World Intellectual Property Organization]
The Nice Classification (NCL), established by the Nice Agreement (1957), is an international classification of goods and services applied for the registration of marks. A new edition is published every five years and since 2013, a new version of each edition is published annually.
Selection of the trademark:
- A word, letter, or any combination thereof and simple in design.
- If it is a word it should be easy to speak, spell, and remember.
- The ideal word for a trademark is invented or coined.
- Laudatory words or which directly describe the character or quality of the goods should not be adopted.
- Must be distinctive/distinguishable.
- Must be graphically represented.
- Must not be descriptive.
- Avoid –
- Geographical Indications
- National Leaders / Heroes / Symbols
Case Study: Trademark violation – Zydus Cadila vs Sun Pharma
Article published on – 14 Jun 2016
(Extended Release capsule)
- Active ingredient – Desvenlafaxine
- Cadila Healthcare was also ordered by Madras High Court to pay to Sun Pharma a sum of 3 lakh as liquefied damages for committing acts of infringement against the latter registered trademark
- Sun Pharma alleged that the marks involved are almost identical and deceptively similar and the goods involved are identical and are meant for the same disease
- The Court observed that while Sun Pharma has received Trade Mark registration from the Government of India for VENIZ-XR, D-VENIZ, while Cadila has not submitted any documents like the registration of the mark “VENZ OD” granted in its favour
- Later Cadila has also changed the name VENZ-OD to ZYVEN OD.
https://en.wikipedia.org/wiki/Indian_trademark_law#Symbols (accessed on 25/08/2020)
Trademark classification (https://www.wipo.int/classifications/nice/en/)
ConclusionIntellectual Property reflects the meaning that it’s a subject body is the product of the mind or the intellect. As it’s the product of a productive and creative mind, It can be traded, purchased, given and reserved. All this can be done but there are issues related that to be dealt. Trademarks are very important aspects of Intellectual Property so, the protection of the trademark has become essential in the present day because, every generator of a good or service will want his mark to be different, eye-catching and it should be easily distinguishable from others.