The Vocabulary of the Act: Section 2

False trade description, s.2(1)(i) runs to five sub-clauses and matters chiefly in Chapter XII. Its core is a trade description which is untrue or misleading in a material respect, or an alteration of one that makes it so.

Goods, s.2(1)(j). "anything which is the subject of trade or manufacture." That is as wide as language allows.

Limitations, s.2(1)(l). Any limitation of the exclusive right given by registration, including limitations as to mode or area of use within India or outside India. This is the clause that lets a registration be cut down geographically, as it was in Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449.

Name, s.2(1)(o). Includes any abbreviation of a name.

Notify, s.2(1)(p). To notify in the Trade Mark Journal published by the Registrar.

Package, s.2(1)(q). Includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork.

Permitted use, s.2(1)(r) has two limbs and the difference between them is examinable. Limb (i) is use by a registered user in relation to goods with which he is connected in the course of trade, for which the mark remains registered, for which he is registered as registered user, and in compliance with the conditions of that registration. Limb (ii) is use by a person other than the registered proprietor and registered user in relation to goods with which he is connected in the course of trade, for which the mark remains registered, by consent of the registered proprietor in a written agreement, and in compliance with the conditions to which the user and the registration are subject. Chapter 910 works both.

Prescribed, s.2(1)(s), as substituted after the Appellate Board went, means, in relation to proceedings before a High Court, prescribed by rules made by the High Court, and in other cases prescribed by rules made under the Act.

Register, s.2(1)(t), means the Register of Trade Marks referred to in section 6(1). Registered, (u), means registered under this Act. Registered proprietor, (v), is the person for the time being entered in the register as proprietor. Registered trade mark, (w), is a mark actually on the register and remaining in force. Registered user, (x), is a person for the time being registered as such under section 49. Registrar, (y), is the Registrar of Trade Marks referred to in section 3.

Service, s.2(1)(z). Service of any description made available to potential users, including services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information, and advertising. Chapter 920 explains why this definition did not exist in 1958.

Trade description, s.2(1)(za) has eight limbs and covers indications as to number, quantity, measure, gauge or weight; standard of quality by a recognised classification; fitness, strength, performance or behaviour of a drug or food; place or country and time of making; the identity of the maker or provider; mode of manufacture; material; and whether the goods are the subject of an existing patent, privilege or copyright.

Transmission, s.2(1)(zc). Transmission by operation of law, devolution on the personal representative of a deceased person, and any other mode of transfer not being assignment.

Well known trade mark, s.2(1)(zg). A mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade between those goods or services and the person using the mark in relation to the first mentioned goods or services. Chapter 620 works it.

Sub-section (2): the interpretation clause that decides cases

Section 2(2) tells you how to read four kinds of reference in the Act.

• (a) A reference to a trade mark includes a collective mark or certification trade mark.
• (b) A reference to the use of a mark is a reference to the use of a printed or other visual representation of it.
• (c)(i) A reference to the use of a mark in relation to goods is a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to those goods.
• (c)(ii) A reference to the use of a mark in relation to services is a reference to its use as or as part of any statement about the availability, provision or performance of those services.
• (d) A reference to the Registrar includes any officer discharging his functions under section 3(2).
• (e) A reference to the Trade Marks Registry includes any office of it.

Clause (c)(i) is the one that has been litigated. The words "in any other relation whatsoever" are what the Supreme Court relied on in Hardie Trading. Facts. Hardie's marks SPARTAN and a warrior device had been used in India by Addisons under an arrangement Addisons ended in 1971, after which Addisons applied to have the marks removed for non use. Held. Use in section 46, now section 47, is not confined to use on the goods or to sale of goods bearing the mark; section 2(2)(b) makes a reference to the use of a mark in relation to goods a reference to its use upon, or in any physical or any other relation whatsoever to, those goods, so advertising and other non physical use may amount to use. Why it matters here. It shows that a definition clause is not decoration: an entire non use application turned on the width of one phrase in section 2(2). Chapter 870 works the case fully.

Sub-sections (3) and (4)

Section 2(3): association of goods and services. Goods and services are associated with each other if it is likely that those goods might be sold or otherwise traded in and those services might be provided by the same business, and so with descriptions of goods and descriptions of services. This matters wherever the Act asks whether goods and services are similar, above all in section 11 and section 29(2).

Section 2(4): existing registered trade mark. A trade mark registered under the Trade and Merchandise Marks Act, 1958 immediately before the commencement of this Act. Section 159 then carries those registrations forward, and chapter 80 works the transition.

Distinctions the definitions themselves draw

Worked example

A single set of facts, and watch how many definitions have to be opened before anything can be said.

A trader applies a woven label bearing another's registered word mark to shirts he did not make, and sells them.

Is the word a "mark"? Section 2(1)(m): a mark includes a word, a label and a device, so yes.

Is it a "trade mark"? Section 2(1)(zb): capable of graphic representation and of distinguishing goods, used to indicate a connection in the course of trade. Yes, and note that for Chapter XII other than section 107 the definition changes: section 2(1)(zb)(i) covers a registered mark or a mark used to indicate a connection with a person having the right as proprietor.

Are the shirts "goods"? Section 2(1)(j): anything which is the subject of trade or manufacture. Yes.

Is what he did "use in relation to goods"? Section 2(2)(c)(i): use upon, or in any physical or other relation whatsoever to, the goods.

Is the mark "deceptively similar" if it is not identical? Section 2(1)(h): so nearly resembling the other mark as to be likely to deceive or cause confusion.

Did he "falsely apply" it? Section 102(2)(a), which turns on the absence of the proprietor's assent, and section 101(1)(a) and (2), which say that applying includes weaving in.

Six definitions, and the offence has not yet been named. That is why this chapter exists.

What it does NOT mean

"Deceptively similar" does not require an intention to deceive. The definition is worded objectively: the question is whether the mark so nearly resembles the other as to be likely to deceive or cause confusion. The Supreme Court said so directly in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd., AIR 1970 SC 2062, worked in chapter 680.

A partnership cannot own a collective mark. Section 2(1)(g) excludes a partnership within the meaning of the Indian Partnership Act, 1932 from being the association that holds one. Students miss this every year.

"Permitted use" is not the same as any licence. A licence that does not meet either limb of section 2(1)(r) is still a contract, but the licensee's use is not the proprietor's use for the purposes of the Act, which is what matters in a non use application.

Quick revision

s.2(1)(h) deceptively similar: so nearly resembles that other mark as to be likely to deceive or cause confusion. s.2(1)(j) goods: anything which is the subject of trade or manufacture. s.2(1)(z) service: service of any description made available to potential users.

s.2(1)(b) assignment: in writing, by act of the parties. s.2(1)(zc) transmission: by operation of law, devolution, or any other transfer that is not an assignment.

s.2(1)(r) permitted use: limb (i) a registered user; limb (ii) another person with the proprietor's consent in a written agreement.

s.2(2)(c)(i): use in relation to goods means use upon, or in any physical or in any other relation whatsoever, to those goods. This is what Hardie Trading Ltd. v. Addisons Paint and Chemicals Ltd., (2003) 11 SCC 92 used to hold that advertising can be use.

s.2(3): goods and services are associated if the same business might trade in the one and provide the other. s.2(4): an existing registered trade mark is one registered under the 1958 Act.

Test yourself

1. State the statutory test of deceptive similarity. Section 2(1)(h): a mark is deemed deceptively similar to another if it so nearly resembles that other mark as to be likely to deceive or cause confusion.

2. Distinguish assignment from transmission. Assignment, under section 2(1)(b), is in writing by act of the parties concerned. Transmission, under section 2(1)(zc), is transmission by operation of law, devolution on the personal representative of a deceased person, and any other mode of transfer that is not an assignment. Inheritance and a court sale are transmissions; a deed of sale of the mark is an assignment.

3. What are the two limbs of permitted use? Use by a registered user registered under section 49 in compliance with the conditions of that registration; and use by another person, not the registered proprietor or a registered user, with the consent of the registered proprietor given in a written agreement, in each case in relation to goods with which the user is connected in the course of trade and for which the mark remains registered.

4. Which sub-section made advertising capable of amounting to use of a mark, and in which case? Section 2(2)(c)(i), which extends use in relation to goods to use in any physical or any other relation whatsoever to them. Hardie Trading Ltd. v. Addisons Paint and Chemicals Ltd., (2003) 11 SCC 92.

5. Can a partnership firm be the proprietor of a collective mark? No. Section 2(1)(g) expressly excludes a partnership within the meaning of the Indian Partnership Act, 1932 from being the association of persons that holds a collective mark.