unit 7 Flashcards
TRIPS in trademark
2️⃣ TRIPS Agreement & Trademark Provisions
The TRIPS Agreement (Trade-Related Aspects of Intellectual Property Rights), signed in 1995, set global minimum standards for trademark laws.
Key TRIPS Provisions on Trademarks (Articles 15-21)
✅ Definition & Protection of Trademarks (Article 15)
- Trademarks include any sign, symbol, word, or combination used to distinguish goods/services.
- India’s Trademarks Act, 1999 expanded trademark protection to include service marks, well-known marks, and non-traditional marks (colors, sounds, etc.).
✅ Exclusive Rights & Duration (Article 16 & 18)
- Trademark owners have exclusive rights to prevent unauthorized use.
- TRIPS mandates a minimum protection period of 7 years, renewable indefinitely.
- India’s Act provides 10-year registration, renewable indefinitely.
✅ Well-Known Trademarks (Article 16)
- TRIPS mandates special protection for well-known trademarks, even if not registered.
- India adopted this in Section 2(1)(zg) & Section 11(6) of the Trademarks Act, 1999.
✅ Licensing & Assignment (Article 21)
- Trademark owners can license or assign rights, but conditions cannot be unreasonably restrictive.
Conclusion
The Trademarks Act, 1999 modernized India’s trademark laws in line with TRIPS, ensuring global compatibility while strengthening brand protection. It helped India meet WTO obligations and enhance legal certainty for businesses. 🚀
1️⃣ History of Trademark Law in India
*History of Trademark Law in India**
The development of trademark law in India has evolved through British-era legislations, post-independence reforms, and TRIPS compliance. The objective has always been to protect brand identity, prevent unfair competition, and ensure consumer trust.
1️⃣ Pre-Independence Era: British Influence on Trademark Law
🔹 The Merchandise Marks Act, 1889
- First trademark-related law in India, enacted by the British Government.
- Focused on preventing fraudulent use of trademarks but did not provide for trademark registration.
- Mainly aimed at protecting British traders operating in India.
🔹 The Trade Marks Act, 1940
- Based on the UK’s Trade Marks Act, 1938.
- Introduced formal trademark registration in India for the first time.
- Established trademark ownership and exclusive rights for registered marks.
- Provided a legal remedy for trademark infringement.
2️⃣ Post-Independence Reforms: Strengthening Trademark Protection
🔹 The Trade and Merchandise Marks Act, 1958
- India’s first independent trademark law after gaining independence.
- Consolidated and replaced the Trade Marks Act, 1940.
- Key provisions:
✅ Defined trademarks and registration procedures.
✅ Allowed registration of service marks (limited scope).
✅ Introduced penalties for infringement and counterfeiting.
- The 1958 Act was effective but became outdated with the rise of globalization and India’s increasing trade engagements.
3️⃣ TRIPS Compliance & The Trademarks Act, 1999
🔹 India Joins WTO & TRIPS Agreement (1995)
- India became a member of the World Trade Organization (WTO), making it bound by the TRIPS Agreement.
- TRIPS required stronger trademark protection, leading to the introduction of The Trademarks Act, 1999.
🔹 The Trademarks Act, 1999 (Current Law)
- Came into force in 2003, replacing the 1958 Act.
- Key changes to comply with TRIPS:
✅ Extended protection to service marks (earlier, only goods could be registered).
✅ Recognition of well-known trademarks (even if not registered in India).
✅ Allowed registration of three-dimensional (3D) marks, colors, and sounds as trademarks.
✅ Trademark validity increased to 10 years (renewable indefinitely).
✅ Simplified opposition and enforcement procedures.
4️⃣ Recent Amendments & Digital Era Trademark Protection
- Trade Marks (Amendment) Rules, 2017:
- Simplified procedures and reduced forms.
- Enabled online filing and digital hearings.
- Growing role of e-commerce & social media:
- Protection of domain names, hashtags, and brand reputation online.
essentials of trade mark
- it should be a mark
- it should be capable of being represented graphically
- it should be capable of distinguishing goods and services of one person from anothers
per section 2(m) a mark includes a “ device, brand, label, heading, name, signature, word, shape of goods, numeral, packaging or combination of colors or any combination thereof
TRADE MARK SHOULD BE CAPABLE OF BEING REPRESENTED GRAPHICALLY
TRADE MARK SHOULD BE CAPABLE OF BEING REPRESENTED GRAPHICALLY
A trade mark is required to be capable of being represented graphically. Graphical
representation means the representation of a trade mark for goods or services represented
or capable of being represented in paper form and include representation in digitized
form.’ In the Registrar’s view, a mark is graphically represented when:
(a) the representation of a trade mark is in paper form;
(b) it is possible to determine from the graphical representation precisely what the
mark IS that the applicant uses or proposes to use without the need for supporting samples ete;
(c) the graphical representation can stand in place of the mark used or proposed to be used by the applicant because it represents the mark and no other, and
(d) it is reasonably practicable for persons inspecting_the register, or reading the Trade Marks Journal, to understand from the graphical representation what the
trade mark IS.
Distinctiveness
trade mark is required t o be capable of distinguishing the goods or services of one
person from those of others. To be distinctive or capable of distinguishing the goods,
there may be some inherent qualities or distinguishing characteristics in the mark itself
Smell marks
to obtain registration applicants must be able to visually depict the products scent and show it is distinct from the product itself, and the written description of the smell must be so precise it cannot be mistaken for another.
chanel was unable to trademark its chanel no.5 scent, but a Dutch company selling tennis balls was able to trademark its scent as it passed the distinctiveness test - which wss the scent of newly mown grass.
Sound marks
depictions by oscillogram, spectrum, spectrogram and sonogram are now accepted. the first sound mark in india was registered by Yahoo for its 3 note yahoo yodel
Tase Marks
the graphic representation requirement can be satisfied by using a writted description of the taste - but the test of distinctiveness is harder to satisfy
Eli lilly attempted to register the taste of artificial strawberries but was rejected.
Color Marks
color mark is a type of non-traditional trademark where a specific color or combination of colors is used to identify and distinguish a brand. Instead of a logo or word, a single color or a combination of colors can serve as a trademark if it has acquired distinctiveness
it must be graphically represented using international color identification systems such as Pantone and
Indian Law (Trademarks Act, 1999):
Section 2(1)(m): Includes color combinations under the definition of trademarks.
Section 9(1)(a): Requires a color mark to have acquired distinctiveness through extensive use.
Tiffany & Co. (U.S. & EU)
Tiffany Blue was successfully trademarked as a distinctive brand color.
🔹 Christian Louboutin v. Yves Saint Laurent (2012, U.S. & EU Courts)
Louboutin’s red sole on high-heeled shoes was recognized as a valid color trademark, except when the shoe itself is red.
3 dimensional trade marks
in order to register for 3d trade mark, distinctiveness is a mandatory qualification.
overall aesthetic look must be deemed appealing and consumers can easily distinguish it from other similar goods,- in india the shape of goods and their packaging is included in the definition of trademark
Coca-cola obtained 3d registration for the bottle in japan
Scope of protection
The Trademarks Act, 1999 provides broad protection to trademarks in India, covering:
1️⃣ Types of Marks Protected
✅ Word Marks (e.g., “Nike”)
✅ Logos & Device Marks (e.g., Apple’s bitten apple logo)
✅ Slogans (e.g., McDonald’s “I’m Lovin’ It”)
✅ Color Marks (e.g., Louboutin’s red soles – if distinctiveness is proven)
✅ Sound Marks (e.g., Nokia’s startup tune)
✅ Three-Dimensional (3D) Marks (e.g., Toblerone’s triangular shape)
✅ Certification & Collective Marks (e.g., ISI Mark, FSSAI logo)
2️⃣ Rights Given to Trademark Owners
✅ Exclusive Right to Use – Prevents unauthorized use.
✅ Right to Sue for Infringement – If a similar mark is used for similar goods/services.
✅ Protection Against Passing Off – Protects unregistered well-known marks.
✅ Border Enforcement Measures – Customs can seize counterfeit goods under IPR (Imported Goods) Enforcement Rules, 2007.
✅ Protection of Well-Known Trademarks – Famous marks (e.g., Google, Coca-Cola) are protected even if not registered in India
NICE Classification (International System for Trademark Registration)
sed by: Over 150 countries, including India, for trademark registration.
anaged by WIPO (World Intellectual Property Organization).
🔹 Purpose: Standardized classification of goods and services for trademark registration worldwide.
1️⃣ Structure of NICE Classification
45 Classes in Total:
✅ Classes 1-34 → Goods (e.g., clothing, food, chemicals).
✅ Classes 35-45 → Services (e.g., business consulting, legal services).
2️⃣ Key Features of NICE Classification
✅ Helps group similar goods/services under the same category.
✅ Prevents conflicts by distinguishing trademarks in different industries.
✅ Required for international trademark filings under the Madrid Protocol.
3️⃣ Example of NICE Classes
Class 3: Cosmetics & cleaning products
Class 5: Pharmaceuticals
Class 9: Software, electronics
Class 25: Clothing, footwear
Class 35: Business management services
Well-Known Trademarks Under Indian Law
Section 2(1)(zg) of the Trademarks Act, 1999)
A well-known trademark is a mark that has gained recognition among a substantial segment of the public due to its use, promotion, or reputation, making it distinct from others.
✅ Public Recognition – The mark is widely known among consumers.
✅ Duration, Extent & Geographical Use – How long and where the mark has been used.
✅ Trademark Registrations & Enforcement – Prior registrations, trademark disputes, and legal actions taken to protect the mark.
✅ Extent of Advertisement & Publicity – The degree to which the mark has been promoted (ads, sales, social media presence).
✅ Evidence of Successful Enforcement – Court decisions recognizing the mark’s reputation.
Protection Given to Well-Known Trademarks
✅ Cross-Class Protection (Section 11(2))- Unlike regular trademarks, well-known trademarks are protected even in unrelated categories of goods/services.
Example: “Google” is protected even if someone tries to register “Google Perfumes.”
✅ No Need for Prior Registration (Section 11(6))
Even unregistered well-known marks can prevent others from registering identical/similar marks.
✅ Global Reputation Considered (Section 11(9))
A mark can be recognized as well-known in India even if it:
* Is not registered in India
* Is not used in India
* Is not registered in multiple countries
**✅ Prevention of Dilution & Free Riding (Section 11(10))
Protects well-known marks from misuse by preventing:
Dilution – When an unrelated product/service harms the mark’s uniqueness.
Free Riding – When a new business tries to gain unfair advantage using a well-known name.
BMW vs. DMW
✅ BMW’s Claims:
DMW was confusingly similar to BMW and could mislead consumers.
BMW is a well-known trademark in India, protected under the Trademarks Act, 1999 (Section 11(2)).
Even though BMW makes luxury cars and not e-rickshaws, its trademark should be protected across categories to prevent dilution.
✅ DMW’s Defense:
Their brand name stood for “Daya Machinery Works”, not inspired by BMW.
BMW does not manufacture rickshaws in India, so there was no direct competition
Court’s Ruling – In Favor of BMW
✅ BMW is a globally well-known trademark, even in India.
✅ DMW’s name was deceptively similar to BMW, creating a likelihood of confusion.
✅ Trademark dilution applies even if products are different, as BMW’s reputation could be unfairly exploited.
✅ The court permanently restrained DMW from using the mark “DMW”
Summary of Section 9 – Absolute Grounds for Refusal of Registration (Trademarks Act, 1999)
Section 9 of the Trademarks Act, 1999 lists the absolute grounds on which a trademark can be refused registration. These grounds focus on ensuring that a trademark is distinctive, non-deceptive, and not against public interest.
1️⃣ Section 9(1) – Lack of Distinctiveness
A trademark cannot be registered if it lacks distinctiveness, meaning:
✅ It is generic or descriptive – If it directly describes the goods/services (e.g., “Cold & Sweet” for ice cream).
✅ It has become customary – Common trade terms cannot be monopolized (e.g., “Best Quality” for textiles).
✅ However, if a mark has acquired distinctiveness through use, it may be allowed.
2️⃣ Section 9(2) – Deceptive or Harmful Marks
A trademark is refused if it:
✅ Causes confusion or deception – Misleads consumers about nature, quality, or origin (e.g., “Organic Cure” for artificial supplements).
✅ Hurts religious sentiments – Contains anything offensive to a particular group (e.g., religious symbols for alcohol).
✅ Includes scandalous or obscene matter – Cannot be immoral or against public order.
3️⃣ Section 9(3) – Protection of National Symbols & International Obligations
A trademark is refused if it consists of:
✅ Government symbols, national emblems, or flags (e.g., “Ashoka Chakra” or “Tiranga” for commercial use).
✅ Marks prohibited under international agreements (e.g., “Red Cross” is protected globally).
Conclusion
Section 9 ensures that only distinctive, lawful, and non-deceptive trademarks get protection. It prevents misuse of religious, national, and public-interest elements while promoting fair trade practices. 🚀
