Trademark Infringement Penalties in India - Part 1

 Trademark Infringement Penalties in India - Part 1

Introduction

A mark used in the course of trade is known as Trademark. Trademark is nothing but a sign or a mark serving some purpose for its owner. The Trademarks Act, 1999 defines mark under Sec.2(1) (m)) which includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. 

The paramount function of a trademark is to differentiate or distinguish goods or services. It is used to distinguish goods or services of one trader from those of others. Trademark means a mark capable of being represented graphically and which is capable of distinguishing the good or services of one person from those of others and may include shape of goods, their packaging and combination of colours and the same is defined under Sec. 2 ((1) (zb)).  Trademarks identify the source of goods, while service marks identify the source of services. The Trademarks Act, 1999 included the services as well to be protected as a service mark under the trademark. 

Functions of the Trademark 

The primary function of the trademark is to identify the product or services with a particular trader or manufacturer or owner. It serves the purpose of being a bridge between the consumer and the trader. Therefore, the mark functions as a carrier of reputation and goodwill of the trader and guarantees the consumer with some assured quality. 

Requirements of a Trademark to register:

If the mark is registrable, the best way to protect is by registration. Thus, a trademark must contain at least one of the following essential features to register:

1. that it must be represented graphically

2. it should be distinctive in nature

3. it must indicate the source or origin 

4. it must be capable of being applied on goods or services. 

In India, the Trademark Act, stipulates only the requirements for registration and grounds for refusal of registration. 

Grounds for refusal

The application for the registration of trademark could be refused by the trademark registry on various grounds. These grounds have been classified into two different categories, namely absolute grounds for refusal of registration (Sec.9) and relative grounds for refusal of registration (Sec 11). 

(i) Absolute grounds for refusal- Sec.9 :

The grounds which are considered to be absolute grounds for refusal of registration are :

a. Marks that are devoid of distinctive character

b. Marks indicating nature/characteristics of goods or service i.e if the mark is descriptive in nature.

c.  Generic marks, customary marks used commonly on the trade. 

d.  Marks of such nature to deceive the public

e. Marks likely to hurt religious sentiments

f. marks containing obscene or scandalous material

g. Marks prohibited under the Names and Emblems Act. 

(ii) Relative grounds for refusal- Sec.11

Apart from absolute grounds for refusal of application for registration of marks there are certain other grounds on the basis of which applications for trademark can be refused. These other grounds are called as relative grounds and section. Absolute grounds provide prima facie reason to reject the application without any further evidence or proof whereas relative grounds do not provide prima facie reason for rejecting the application. The mark shall not be registered if :

1. if the mark is identical/similar to an existing trademark.

2. there is any likelihood of confusion on the part of the public

3. there is any likelihood of wrongful association with the earlier mark (Sec. 11) 

Part 2 to be continued with Infringment of Trademarks and the Penalities.