Recently, non-visual signs have made a strong claim for recognition as trade marks. Smell and sound signs fall under such category though they are not yet recognised in India. Several broadcasting organisations and film producers have specific signature tunes to identify their programmes. The concept of identifying the source of manufacture by a mark is an ancient one. Signatures of craftsmen have been found engraved on goods sent to Iran from India some 3000 years ago! But trade mark gained importance after the industrial revolution when large-scale production and istribution of goods all over the world became possible and publicity through print and audio-visual media became necessary. The use of modern trade mark as a distinctive sign to indicate the origin or source of the product, carrying with it an association of high quality, goes back to the eighteenth century England, as in the case of cutlery trade. The real boost to trade mark came with Unilever. It marketed its soap under the brand Sunlight, emphasising not the product as such but the brightness that its use will bring to the clothes cleaned with it.
The similarity of the products in the same market has necessitated the marking of goods by a symbol, which could distinguish one’s products from similar goods made by others. Trade Marks play a highly complex role in market driven economies, operating in the context of rapid integration of world economy. Through advertisement and other strategies, large market shares are captured by a few brands leading to concentration of market power in a few hands. If care is not exercised, a developing country may find itself flooded with foreign brands, unaccompanied by any flow of technology and 97 Awareness Course on Intellectual Property Rights uilding up of national capabilities. Of course, indigenous brands are exposed to severe and unequal competition in which they have to prove themselves. In 1940 the then British Government of India passed the Trade Marks Act for uniform and systematic registration of trade marks in India, which came into force on June 1, 1942. The Trade and Merchandise Marks Act, 1958, which came into effect from November 25, 1959, replaced it. It became necessary to effect changes in the trade mark law as India joined WTO as an original member in 1995 and it was obligatory to bring the Indian law in consonance with TRIPS.
Hence new Trade Mark Act, 1999, repealed the old Act. The Act of 1999 makes important departures from the Act of 1958 in two important respects: • • Shape of goods is recognised as a trade mark; and Trade Marks are now granted for services also, besides goods. Goods is defined as anything which is the subject of trade or manufacture. Service means service of any description offered to users. Banking, finance, insurance, transport, energy supply, construction, hotels, entertainment, information and broadcasting etc. are all examples of areas where services are offered in connection with business, industry or commerce.
Definition of service is meant to be all subsuming. The Registration of Trade Marks is done in Mumbai where the Trade Marks Registry is situated. There are branch offices of the Registry at Calcutta, Delhi and Chennai with separate jurisdictions. Objectives After studying this unit, you should be able to: • • • • • explain the meaning of trade mark; understand the philosophy of trade mark; distinguish between what kind of trade marks can be registered and what cannot be; explain the procedure for registration of trade mark; and highlight the characteristic features of Indian Trade Mark Law. . 2 WHAT IS A TRADE MARK? A trade mark, as currently recognised in India, is a visual symbol (in the form of a word, a name, a device, a symbol, or a label) which identifies any merchant’s or manufacturer’s goods or services and distinguishes them from similar goods or services of competitors in the trade. It may include shape of goods, their packaging and combination of colours. The Act makes a distinction between a trade mark and a well-known trade mark.
If a substantial segment of public associates a trade mark with a particular class of goods and services, and if this trade mark is used for other goods or services, and the public is inclined to associate the new goods/services with the earlier goods/services, then the mark is a well known trade mark. If the proprietor of a trade mark is an association of persons, who do not make a partnership within the meaning of the Indian Partnership Act, 1932, the trade mark is called a collective mark.
A special class of trade marks is termed as certification trade marks. These trade marks do not indicate the origin of the goods, but are certified by the proprietor of the mark as conforming to certain characteristics, like quality, ingredients, geographical origin etc. Agmark used for food items in India is a certification mark. 98 A trade mark is a sign used on, or in connection with the marketing of goods. Saying that the sign is used on the goods means that it may appear not only on the goods themselves but also on the container or wrapper of the goods.
Saying that the sign is used in connection with the marketing of the goods refers mainly to the appearance of the sign in advertisements (in newspaper, on television, etc. ) or in the windows of the shops in which the goods are sold. Where a trade mark is used in connection with services, it may be called service mark, e. g. service marks used by hotels, restaurants, airlines, tourist agencies. The worth of a trade mark may amount to huge sums. According to Business Week/Interbrand’s Annual Ranking of the 100 Best Global Brands, 2003, the value of the brand name “Coca-Cola” is estimated to be $70 billion and that of “Nescafe” $12 billion!
A person who sells his product under a particular trade mark acquires an exclusive right to the use of the mark in relation to those goods. Such a right can be registered under the new Trade Mark Act 1999, which repealed the Trade Mark and Merchandise Marks Act 1958. A registered trade mark can be protected against unauthorised use by others by an action for infringement. An unregistered trade mark can also be protected against unauthorised use by others by an action of passing off.