TRADEMARK: HOW IT AFFECTS ECONOMIC DEVELOPMENTS IN THE CONTEMPORARY WORLD OF GLOBALIZATION

Transcription

1 TRADEMARK: HOW IT AFFECTS ECONOMIC DEVELOPMENTS IN THE CONTEMPORARY WORLD OF GLOBALIZATION Sudipta Patra 1 ABSTRACT The consumers, from the commercial market purchase their goods or hire services only when they are satisfied about the quality and reputation of the goods or services. Industrial revolution brought a great change in the sphere of economic and financial sectors. As a consequence of industrial revolution a large scale production of goods were started and then those goods were brought in the market for sale. Gradually in course of time the publicity and the advertisement of those goods were started through the printing media for getting benefits in the market of competition. The manufacturers or the suppliers of goods have started providing different identifying marks to their goods for providing better protection to their goods and to attract the customers to their goods. It helps the consumers to identify the products easily. From this point of view it can be said that trademarks greatly and significantly affect the economic developments in the contemporary world of globalization. The aim of this Article is to discuss it properly. After the industrial revolution the importance and significance of trademarks in the financial and mercantile arena is increasing day by day and it is well recognized by all. Trademarks help to identify the source of the goods or services. Trademark provides guarantee to the quality of the goods or services. If we make a comprehensive study about trade mark law in India and also throughout the world it clearly depicts us that the main objective of trade mark law is to protect and secure the reputation and goodwill of the manufacturers, traders, suppliers relating to their goods or services. The rights of the real trade mark owner are protected by the Trademark Laws throughout the world. It also helps the customers so that they must not be confused or misled to identify a product. We must remember and we must give importance on the fact that trademark is a kind of property and is entitled to protection under the law and we must remember and concentrate about the matter that trademark has a great economic value in the contemporary world of globalization. 1 Assistant Professor of Law, Midnapore Law College, Vidyasagar University, 1 P a g e JOURNAL ON CONTEMPORARY ISSUES OF LAW

2 INTRODUCTION In the contemporary time due to globalization we find that too much attention and importance are given to the strengthening of the protection of trademark. It is found that generally all human endeavors are providing monetary or economic benefits. Trademarks help to differentiate the goods or services of one trader from the goods or services of other traders in the field of business world. Trademark or service mark means anything which clearly distinguishes a product or service of a manufacturer from that of other manufacturer in the mercantile sphere. The protection which is given by law to trade marks also extends to various other marks which are related to trade marks, like certification marks, collective marks and well known trademarks. Trademarks attempt to depict the nature of the products and the quality of the products in front of the customers in the business market. The popular form of trademarks which are used in India and in the other countries of the world are- Symbol Mark, Letter mark, Brand, Label and Ticket, Shape of goods, Color combination, Numerals, Packaging, Containers, Device etc. In India a trademark or a service mark may also be a combination of the following things- a word or a letter, a symbol or a sign, a numeral, a graphic image or a design, any kind of 2D or 3D shape, any type of phrase or phrasing, any distinct sound, any distinct smell, any label, any type of unique combination of certain colors, any distinctive packaging etc. It is found that any type of similarity in the idea or expression, or any type of similarity in the phonetic or visual matters or any resemblance in purpose, nature, appearance and characters, between the trademarks of two different manufacturers or companies, can give rise to the cases of trademark opposition or trademark infringement litigation. So it can be said that a trade mark must acquire and must possess the quality of distinctiveness. According to the Trade mark Classification List there are forty-five different classes of marks which are found in our mercantile arena. We can say that to ensure and verify that any particular trademark or service mark is properly registered with any national or international trademarks office, trade mark Symbols and service mark symbols are used according to these criteria. 2 P a g e JOURNAL ON CONTEMPORARY ISSUES OF LAW

3 A trademark may be designated by the following symbols: TM (the "trademark symbol", which is the letters "TM" in superscript, for an unregistered trademark, a mark used to promote or brand goods); SM (which is the letters "SM" in superscript, for an unregistered service mark, a mark used to promote or brand services); (the letter "R" surrounded by a circle, for a registered trademark). The role of trademark in the economic developments in the contemporary world of globalization are- Trademark guarantees the quality of the product; Trademark advertises the product and tries to make the product popular in the eyes of the consumers; Trademark identifies the product and its origin; Trademark differentiates products or services, and also the companies or manufacturers or traders connected with these products or services; Trade mark helps to make the products or services prominent before the printing media; When a trade mark is properly and lawfully registered then the registered trade mark owner obtains some legitimate and privileged rights in relation to the registered trademark. These rights include the authoritative ownership over the registered trademark; Authoritative and exclusive commercial use of the registered trade mark; Proper security and protection of the trademark; Authoritative and exclusive professional use of the registered trademark; Hiring and trading of the registered trademark with any national and foreign person or company or trader; Selling of the registered trademark to any person or company or trader. Trade mark creates an image of the product in the minds of the public, particularly consumers of such goods. 3 P a g e JOURNAL ON CONTEMPORARY ISSUES OF LAW

4 Trade mark should be capable of being represented graphically- A Trade mark is required to be capable of being represented graphically. According to Rule 2(k), of the Trade Marks Rules, 2002, graphical representation means the representation of a trade mark for goods or services in paper form. Distinctiveness of Trade Mark- Distinctiveness has been understood as a quality which helps to distinguish the goods of one producer from that of others. It is not necessary that every part of a mark should be distinctive. 2 In Imperial Tobacco Co. of India Ltd., vs. Registrar of Trade Marks, 3 a Division Bench of the Calcutta High Court has held that if the mark has no distinguishing qualities or features, the distinctions may be acquired by appropriate user or other circumstances thereby overcoming the negative quality in the mark. It is found in the proviso to Sec. 9(1) of the Act of 1999 that a trade mark shall not be refused for registration, if before the date of application for registration; it has acquired a distinctive character. So, a distinctive trade mark means a mark which distinguishes the goods to which it is attached as those made by the person or the manufacturer who uses the mark. If the trade mark is not distinctive or resembles to other trademarks, it will be taken as an absolute ground for refusal for the registration of the trade mark. Invented Word Another expression which is also used in relation to trade mark is invented word which may be a combination of two or more words. It may be used to describe a new product or service. 2 Laxminarayan Karva vs. S. N. Khubchand Karva, AIR 1975 Mad AIR 1977 Cal P a g e JOURNAL ON CONTEMPORARY ISSUES OF LAW

5 In Ram Rakhpal vs. Amrit Dhara Pharmacy, 4 the court held that if the subject matter of registration is a trade mark and contains one invented word, it is eligible for registration even if the trade mark does not contain any other particular. Using surname as a trade mark- Sometimes the business groups use the surname of their founders as the trade mark and may register that trade mark. In the course of time that said trade mark may acquire a great reputation and good will in the business market. It is found that a mark shall not be registered as a trade mark if it is- (i) (ii) (iii) (iv) Deceptively similar or is of such nature to deceive the public; Comprising/containing of any matter, likely to hurt the religious sentiments, of any class or section of the citizens of India; Comprising/containing scandalous or obscene matter; A mark prohibited under the Emblems and Names (Prevention of Improper Use) Act, A mark also shall not be registered as a trade mark if it consists, exclusively of- (i) (ii) The shape of goods, resulting from the nature of goods themselves; or The shape of goods which is necessary to obtain a technical result; or (iii) The shape which gives substantial value to the goods. 6 The following are the formalities for major trademark transactions- For filing new applications there are prescribed forms depending on the nature of application such as Form TM-1, TM-2, TM-3, TM-8, TM-51 etc. To file a Notice of Opposition to oppose an application published in the Trade Marks Journal (FormTM-5). 4 AIR 1957 All Under Section 9(2) of the Act. 6 Under Section 9(3) of the Emblems and Names (Prevention of Improper Use) Act, P a g e JOURNAL ON CONTEMPORARY ISSUES OF LAW

6 For Renewal of a Regd. trademark (Form TM-12 ) Surcharge for belated renewal (Form -10) Restoration of removed mark (Form TM-13) Application for rectification of a registered trade mark (Form TM-26) Legal Certificate (Form TM-46) (Providing details of entries in the Register) Official search request (Form TM-54) Preliminary advise of the Registrar as to the registrability of a mark (Form TM-55) Copyright search request and issuance of certificate (Form TM-60) Steps for Registration of a Trademark in India- An application for the registration of a trademark is to be filed before the Registrar of Trademark. It should be filed at the Head Office or the Branch Office of the Trademark Registry Office corresponding to the place where the applicant carries on his/her business. Then, the application is digitalized and formally checked. The Trademark Registries in India are in Chennai, Delhi, Kolkata, Mumbai, and Ahmadabad. The mark to be registered is then examined as to whether it is capable of being distinguished, whether or not it has been prohibited for registration by any law in force for the time being, whether the registration of such mark will cause confusion in minds of consumers due to the existence of a similar mark or not. The examination of all the applications for trademark registration is done at the head office of the Trademark Registry in Mumbai. The proprietor of a business can file an application for use by himself or by his business. It can be filed either in the name of the proprietor or in the name of the business. The class under which the proprietor wants his goods/services to be defined should be mentioned by him. This is done in accordance with the Fourth Schedule of the Trademarks Rules, P a g e JOURNAL ON CONTEMPORARY ISSUES OF LAW

7 The Registrar decides whether the application should be accepted for registration or not, and any evidence of use or distinctiveness. If accepted, he publishes it in the Trade Marks Journal, an official gazette of the Trade Marks Registry that is hosted weekly on the official website. The registrar s decision is appealable to the Intellectual Property Appellate Board. The final step includes the payment of fees for the relevant trademark registration by the applicant. Factors which must be considered by Registrar while deciding an application- (i) Absolute grounds for refusal of registration [Section 9 of the Act of 1999]; (ii) Limitations as to colour [Section 10]; (iii) Relative grounds for refusal of registration [Section 11 of the Act of 1999]; (iv) Honest and concurrent use [Section 12]; (v) (vi) Prohibition of registration of names of chemical elements etc. [Section 13] ; and Names and representations of living persons or persons who recently died [Section 14] etc. JUDICIAL RESPONSES FOR THE PROTECTION OF TRADEMARKS FOR THE DEVELOPMENTS OF ECONOMIC SECTOR OF OUR COUNTRY 1) In Societe Des Produits Nestle, S.A. and another vs. M/s. Prayag Nutri Products Pvt. Ltd. 7 the Delhi High Court held that adoption and use of trademark magic by defendant who sells chaco-coated wafer in the packaging similar to that of the plaintiff s wafer biscuit Munch in terms of get-up, arrangement of features, colour combination layout would cause confusion and deception about the mark in the minds of the customers. So, the court granted injunction against the defendant (6) RAJ 59 (Delhi). 7 P a g e JOURNAL ON CONTEMPORARY ISSUES OF LAW

8 2) In S. Mehar Singh vs M.L. Gupta & Co. 8 an interesting question of law arose incidentally, that how far the length of the concurrent, continuous and uninterrupted user would be sufficient to allow the Registrar of trade marks to register the trade mark of the applicant. The Delhi High Court observed that in this regard, following points are required to be seen : the extent of use in time, quantity and the area of trade ; the degree of confusion likely to ensure from the resemblance of the marks which is to a large extent indicative of the measure of public inconvenience ; the honesty of the concurrent use ; whether any instances of confusion have been proved, the relative inconvenience which would be caused if the marks were registered. 3) In Rupa & Co. Ltd. vs. Dawn Mills Co. Ltd., 9 the Gujarat High Court found that the plaintiff s well-known trade name/mark to describe the underwears produced by them was Dawn. While dealing with the similar goods, the defendants have registered their trade mark as Don. In this case the defendants action was found to be an act of passingoff. 4) In Daimler Benz vs. Hybo Hindusthan, 10 the Delhi High Court held that the trade name Benz is connected with the cars and it cannot be used with respect to product like underwear. 5) In Lakme Ltd. vs. Subhas Trading, 11 the Delhi High Court found that the defendant was using the trademark Like-me which was similar to Lakme, the registered trademark of the plaintiffs. It was found that both the trade marks were, apart from dealing with the same range of cosmetic products, and both the trademarks were phonetically also similar. In this case the court held that there was every possibility of deception and confusion being caused in the minds of the buyers of the plaintiff s products; therefore the court confirmed the injunction against the defendants. 8 AIR 1998 Delhi 64 (69) PTC (19) AIR 1994 Delhi PTC (16) 567 (Delhi). 8 P a g e JOURNAL ON CONTEMPORARY ISSUES OF LAW

9 6) In Hi-Tech Pipes Ltd. vs. Asian Mills Pvt. Ltd., 12 the Delhi High Court held that the geographical name Gujrat can be used as trade mark in relation to steel pipes, as the same has acquired a secondary meaning and distinctiveness over a period of time, due to its continuous use and application. So, the defendants who wanted to use a similar geographical name i.e. Gujarat in respect of MS ERW Pipes, were restrained from using the same. 7) Yahoo! Inc. vs Sanjay V. Shah And Ors.,13 the Delhi High Court held that usage of trademark YAHOO by the defendants for products like Guthka, Supari and Chewing Tobacco or a deceptively similar trademark, would amount to passing-off, such goods, as if they belonged to the plaintiff company, the owner of YAHOO trademark having extensive goodwill and worldwide web. 8) In Heinz Italia vs. Dabur India Ltd., 14 the court held that the application for ad-interim injunction is accordingly allowed in terms of prayer clause (ii) of the application. 9) In Charak Pharmaceuticals vs. Deepharma Ltd., 15 the phonetically similar trademarks Alsarex and Ulcerex were meant for treatment of ulcer but belonging to different system of medicine, in view of likelihood of confusion, injunction was granted against the defendant. 10) In Mars Incorporated vs. Chanda Sofy Ice Cream, 16 the Madras High Court confirmed the grant of injunction against the defendants, who were selling their ice creams in the market under the name milkyway Galaxy of Ice Creams, which was similar to the plaintiff, a foreign company having transborder reputation and who was manufacturing and selling chocolates and biscuits with registered trademarks milkyway and Galaxy (1) RAJ 177 (Del) (32) PTC 263 Del (6) SCC PTC (18) 455 (Delhi). 16 AIR 2001 Mad P a g e JOURNAL ON CONTEMPORARY ISSUES OF LAW

10 CONCLUSION It can be said that the main function which is served by the trademark is to indicate to the public the source or origin of the goods or services to which a particular trade mark relates, as distinguished from identical or similar goods or service of another person s in the business market. After comparing the provisions of the trade mark law between our country and with the other countries of the world from my point of view it can be said that the Trade Marks Act, 1999 of our country is an Act to amend and consolidate the law relating to trade marks, to provide for the registration and for the better protection of trademarks for goods and services and for the prevention of the use of the fraudulent marks for the developments of the economic condition of our country in the contemporary world of globalization. According to my view, though law relating to trade marks is enacted by our Legislatures to protect the trademarks of our country, but sometimes it is observed that it is not always enough to protect the trademarks and to protect the rights of the trademark holders properly. So, more rules regarding the protection of trademarks are necessary for the proper substantial development of economic and mercantile activities. The Supreme Court of India and the High Courts of India occupy an important and significant position in protecting trademarks. Indian Judiciary has tried to make a great development in the economic sphere of our country in the era of globalization by protecting the rights of the real trademarks holders in a proper way. _. _ 10 P a g e JOURNAL ON CONTEMPORARY ISSUES OF LAW