Trade Marks and Their Neighbours

Trade mark and property mark

A property mark denotes ownership, not origin. The Bharatiya Nyaya Sanhita, 2023, section 2(l), defines a property mark as a mark used for denoting that movable property belongs to a particular person. A cattle brand and a mark stencilled on a hired scaffolding pole are property marks.

Why the difference matters. A trade mark answers "who made this". A property mark answers "whose is this". The remedies differ too: a property mark is protected by the criminal law of the Sanhita and not by the Trade Marks Act.

Trade mark and geographical indication

A geographical indication identifies goods as originating in a place, where a given quality, reputation or other characteristic is essentially attributable to that place. DARJEELING for tea, and BANARASI for a saree, are of this kind. The Geographical Indications of Goods (Registration and Protection) Act, 1999 governs them, and Group 3 Paper V is the paper that teaches them.

The differences that matter for this paper. A trade mark is owned by one proprietor; a geographical indication belongs to all producers in the region who meet the specification. A trade mark can be assigned; a geographical indication cannot be assigned or licensed away from the region. And a trade mark may be any sign; a geographical indication must be a place, or a name that has come to denote a place.

Where the two meet in this Act. Section 9(1)(b) refuses a mark that designates the geographical origin of the goods, which is what keeps a trader from registering a place name for goods from that place. That is the trade mark side of the same policy.

Trade mark, design, patent and copyright

A registered design under the Designs Act, 2000 protects features of shape, configuration, pattern, ornament or composition of lines or colours applied to an article, judged solely by the eye. It protects appearance, it requires novelty, and it lasts ten years extendable to fifteen. A trade mark protects a badge of origin, requires distinctiveness, and may be renewed for ever.

A patent protects an invention, that is a new product or process involving an inventive step and capable of industrial application, for twenty years from filing, and requires disclosure. Nothing in trade mark law requires an inventive step, and nothing about a trade mark expires by lapse of time.

Copyright protects the expression of an original work: the artwork of a label, the text of a slogan of sufficient length, the drawings from which a shape is made. It subsists automatically on creation. A label is very commonly both an artistic work in which copyright subsists and a trade mark, and infringement suits routinely plead both, as they did in Power Control Appliances v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448.

The neighbours compared

Worked example

A potter in Khurja makes a water jug. She wants to know what protects what.

The name she sells under, KHURJA CLAY. A trade mark if it distinguishes her goods, but the geographical element will meet section 9(1)(b), and a place name shared by a whole craft is more naturally a geographical indication under the separate 1999 Act, which is not this paper.

The shape of the jug. A design under the Designs Act if it is new and original, for a limited term. A trade mark only if it distinguishes her goods and survives section 9(3), whose three bars are the shape resulting from the nature of the goods, the shape necessary to obtain a technical result, and the shape giving substantial value to the goods.

The painted pattern on it. An artistic work in which copyright subsists, hers as the author, and reproducing it is an infringement of copyright quite apart from any mark.

The glaze recipe. A patent if it is a new, inventive and industrially applicable invention; otherwise a trade secret, protected by contract and confidence and by nothing in this Act.

Her firm's name, Khurja Pottery Works. A trade name, registered nowhere under this Act, protected by passing off and, if somebody uses her registered mark as part of a corporate name dealing in the registered goods, by section 29(5).

And the stamp she puts on the base to show the jug is hers as owner rather than as maker. A property mark, which the general criminal law deals with, not this Act.

What it does NOT mean

Registration of a company name is not a trade mark right. The Registrar of Companies and the Registrar of Trade Marks keep different registers for different purposes, and Mahendra & Mahendra makes the point.

A design registration does not stop a rival using your word mark, and a trade mark registration does not stop a rival copying an unregistered shape. Each right has its own subject matter.

And the overlap is not free. Section 2(d) of the Designs Act excludes from the definition of a design any trade mark as defined in the Trade Marks Act, so a proprietor cannot register the same thing as both. The two systems are made to be exclusive at the point of registration even though they can both sit on one product.

Limits and criticism

The overlap between shape marks and designs is the live problem. A design lasts fifteen years at the outside. A shape trade mark can be renewed for ever. A proprietor who obtains a shape mark for what is really a design has extended a limited monopoly indefinitely, and section 9(3) is the Act's attempt to stop that. Whether it stops it is a fair essay question, and chapter 590 works the exclusions.

The overlap between labels and copyright is used deliberately. Copyright needs no registration and arises on creation, so a plaintiff whose mark is not yet registered will often plead copyright in the label to get an injunction, as the plaintiff did in Power Control Appliances.

Quick revision

Trade mark: a sign, trade origin, Trade Marks Act 1999, ten years renewable for ever, needs distinctiveness.

Trade name: the business. Reached by s.29(5) and by passing off. Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd., (2002) 2 SCC 147.

Property mark: ownership of movable property, BNS 2023 s.2(l), criminal protection.

Geographical indication: place plus quality attributable to the place; belongs to all qualifying producers; GI Act 1999.

Design: appearance, novelty, Designs Act 2000, 10 plus 5 years. Patent: invention, 20 years. Copyright: expression, automatic.

s.2(d) of the Designs Act excludes a trade mark from the definition of a design, so the same thing cannot be registered as both.

Test yourself

1. Distinguish a trade mark from a trade name. A trade mark identifies goods or services and indicates their trade origin. A trade name identifies the business itself. Section 29(5) of the Act makes use of a registered mark as a trade name an infringement where the business deals in the goods or services of the registration, and passing off protects an unregistered trade name.

2. Give two differences between a trade mark and a geographical indication. A trade mark has one proprietor while a geographical indication belongs to all producers in the region who meet the specification; and a trade mark may be assigned while a geographical indication cannot be assigned away from the region.

3. What is a property mark? A mark used for denoting that movable property belongs to a particular person, defined by section 2(l) of the Bharatiya Nyaya Sanhita, 2023. It denotes ownership rather than trade origin, and is protected by the criminal law rather than by the Trade Marks Act.

4. Why does the Act refuse a shape that gives substantial value to the goods? Because such a shape is the subject matter of the design law, which grants protection for fifteen years at most. Section 9(3)(c) prevents a proprietor from obtaining, through a renewable trade mark, a perpetual monopoly in what the Designs Act protects for a limited time.

5. Can the same object be both a registered design and a registered trade mark? No. Section 2(d) of the Designs Act, 2000 excludes from the definition of a design any trade mark as defined in the Trade Marks Act, so the two registrations are made mutually exclusive at the point of registration, although different rights may still sit on different features of one product.