What a Trade Mark Is

And section 2(1)(m) supplies the raw material:

"mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;

Broken down

A sign has to clear four separate fences before it is a trade mark. Take them in order, because an examiner who sets a problem is testing one of them.

1. It must be a mark. That is, it must be one of the things section 2(1)(m) lists, or a combination of them. The list is inclusive, so the word "includes" leaves room, but it is a list of visual things: devices, words, letters, numerals, shapes, packaging, colour combinations.
2. It must be capable of being represented graphically. Somebody must be able to put it on paper, or in a file, in a way that shows the public exactly what monopoly has been granted. This is the fence that non conventional marks such as sounds and smells have to climb, and chapter 50 deals with them.
3. It must be capable of distinguishing the goods or services of one person from those of others. This is the heart of it. A sign that everybody in the trade uses, or that merely describes the goods, cannot do this, and chapter 60 works through what distinctiveness means.
4. It must be used, or proposed to be used, to indicate a connection in the course of trade between the goods or services and a person who has the right to use the mark. This is the phrase in limb (ii), and it carries the whole idea of a mark as a badge of origin.

Notice what limb (ii) adds and what limb (i) takes away. For most of the Act, a mark counts as a trade mark whether it is registered or not, and whether the user is the proprietor or a permitted user. But for Chapter XII, which creates the criminal offences, the definition is narrower: there, a trade mark is a registered mark or a mark used by a person having the right as proprietor. A criminal court is not asked to work out permitted user questions.

And notice the last words of limb (ii). A trade mark "includes a certification trade mark or collective mark". Those two are separate species, defined in section 2(1)(e) and 2(1)(g) and governed by Chapters IX and VIII, but they are trade marks for the purposes of the Act.

The words that need defining before you go further

"In the course of trade" means in the course of a business carried on for gain. A sign painted on the door of your own house is not used in the course of trade; the same sign over a shop is.

"Connection in the course of trade" does not mean the proprietor made the goods with his own hands. It means the goods reach the buyer through a chain in which the proprietor has a commercial interest. A company that designs a shirt, has it made under contract and sells it under its own mark has that connection.

"Graphical representation" is not defined in the Act. Rule 2(1)(k) of the Trade Marks Rules, 2017 defines "graphical representation" as the representation of a trade mark for goods or services in paper form or such other form as may be prescribed.

"Goods" means, under section 2(1)(j), anything which is the subject of trade or manufacture. "Services", under section 2(1)(z), means service of any description made available to potential users, and the definition then lists banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information, and advertising.

Worked example

Meera Nair opens a bakery in Kochi in 2019 and calls it SUGARCANDY. She paints the word on her shopfront in a distinctive script, prints it on her boxes, and puts a small drawing of a cane stick beside it.

Step one, is there a mark? Yes, three of them in fact. The word SUGARCANDY is a word under section 2(1)(m). The script it is set in is a device. The cane drawing is a device. The three together are a combination, which section 2(1)(m) also allows.

Step two, can it be represented graphically? Yes. She can file a copy of the label, and rule 26 of the Trade Marks Rules, 2017 tells her the size and form the representation must take.

Step three, is it capable of distinguishing? SUGARCANDY for a bakery is a harder question than it looks, because sugar candy is a thing a bakery might sell. If Meera sold sugar candy the mark would be descriptive and would run into section 9(1)(b). Because she sells bread and cakes, the word is arbitrary in relation to what she actually sells, and it distinguishes.

Step four, is it used in the course of trade to indicate a connection? Yes. It is over a shop that sells for money, and buyers who like the bread come back to the shop with that name on it.

So SUGARCANDY is a trade mark from the day Meera starts using it, whether or not she ever files an application. Registration is a separate question, dealt with from chapter 250 onwards, and what registration adds is dealt with in chapter 450.

The two definitions compared

What it does NOT mean

A trade mark is not the goods. Students write that the mark is "the product". It is the sign on or about the product. Section 2(2)(c)(i) makes this explicit: use of a mark in relation to goods means use of the mark upon, or in any physical or in any other relation whatsoever to, those goods.

Registration does not create the trade mark. Section 2(1)(zb)(ii) covers a mark "used or proposed to be used", registered or not. An unregistered mark is still a trade mark; what it lacks is the statutory action for infringement, which section 27(1) reserves to registered marks. Chapter 200 works this out.

Being distinctive in fact is not the test at this stage. The definition asks whether the mark is capable of distinguishing. Whether it does distinguish in the eyes of the public is the question section 9 asks, and the two are often confused.

And a trade mark is not a monopoly in a word. It is a monopoly in the use of that word as a badge of origin for particular goods or services. The word APPLE belongs to nobody; APPLE for computers is a different matter, and APPLE for apples is nobody's at all.

Limits and amendments

The 1958 Act had no such single definition. Section 2(1)(v) of the Trade and Merchandise Marks Act, 1958 defined a trade mark in terms of a connection in the course of trade, but said nothing about graphical representation, nothing about capability of distinguishing on the face of the definition, and nothing about shape, packaging or colour combinations. The 1999 Act added all four, and chapter 80 explains why.

The words "shape of goods, their packaging and combination of colours" were the largest single change. They opened registration to the appearance of the product itself, which is the subject of chapter 50 and of the shape exclusions in section 9(3) worked in chapter 590.

The requirement of graphical representation is now the pinch point. It was drafted for a world of paper filings and it is the provision that has to absorb sound marks, motion marks and holograms. Chapter 1330 returns to it.

Quick revision

Trade mark, s.2(1)(zb): a mark, capable of being represented graphically, capable of distinguishing the goods or services of one person from those of others, may include shape of goods, their packaging and combination of colours.

Two limbs. For Chapter XII other than s.107: a registered mark, or a mark used by a person having the right as proprietor. For the rest of the Act: a mark used or proposed to be used to indicate a connection in the course of trade, by a proprietor or a permitted user, and it includes a certification trade mark and a collective mark.

Mark, s.2(1)(m): device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, combination of colours, or any combination.

Goods, s.2(1)(j): anything which is the subject of trade or manufacture. Services, s.2(1)(z): service of any description made available to potential users.

Four fences: a mark, graphically representable, capable of distinguishing, used or proposed to be used in the course of trade to indicate a connection.

Test yourself

1. Give the statutory definition of a trade mark with its section number. Section 2(1)(zb) of the Trade Marks Act, 1999: a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others, and which may include shape of goods, their packaging and combination of colours.

2. Why does section 2(1)(zb) define a trade mark twice? Because Chapter XII creates criminal offences, and for that chapter, other than section 107, the Act narrows the meaning to a registered trade mark or a mark used by a person having the right as proprietor. Elsewhere in the Act a mark used or proposed to be used by a proprietor or a permitted user is enough.

3. Is an unregistered sign a trade mark? Yes, if it satisfies the definition. What an unregistered proprietor lacks is the action for infringement, which section 27(1) confines to registered marks, though section 27(2) preserves his action for passing off.

4. Name four things that section 2(1)(m) says a mark includes. Any four of: device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, combination of colours.

5. A trader wants to register the smell of freshly cut grass for tennis balls. Which limb of the definition does he have to argue about first? Graphical representation. A smell is capable of distinguishing, and it is used in trade, but showing it on paper in a way that defines the monopoly is the difficulty, and chapter 50 works it through.