LLM Group 3 Law of Intellectual Property and Information Technology Law of Trademarks 2015 Question Paper with Solutions

For full marks, cover: four parts, and the question gives the order. First the DEFINITION in section 2(1)(zb) read with section 2(1)(m), taken apart element by element. Then the FUNCTIONS, which the definition itself names and the courts have enlarged. Then the three terms, each with its own statutory home: SERVICE MARK in section 2(1)(z), TRADE NAME in section 29(5) and section 35, and COLLECTIVE MARK in section 2(1)(g) and Chapter VIII. Close with a table that separates the three from an ordinary trade mark.

What the Act says a trade mark is

SECTION 2(1)(m) defines the raw material. A 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. The list is inclusive, which is why a sound can be a mark though it is not named.

SECTION 2(2)(a) adds that any reference to a trade mark includes a COLLECTIVE MARK and a CERTIFICATION TRADE MARK, and SECTION 2(2)(c) extends use to use in any physical or other relation to goods, and for services to use as part of any statement about their availability or performance.

The functions of a trade mark

The ORIGIN function. The definition itself states it: the mark indicates a CONNECTION IN THE COURSE OF TRADE between the goods and a particular person. The purchaser need not know who that person is. It is enough that the mark tells him that all goods bearing it come from ONE SOURCE. Power Control Appliances v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448, states the principle in its sharpest form: there can be ONLY ONE MARK, ONE SOURCE AND ONE PROPRIETOR, and a mark cannot have two origins. A member of the Sumeet family who set up a rival business and claimed to be a joint owner was refused, because joint proprietors must use a mark together and never in rivalry.

Service mark

The TRADE AND MERCHANDISE MARKS ACT, 1958 protected marks for GOODS only. A bank, a hotel chain or an airline had no registered right in its name and relied on passing off. The 1999 Act changed that, and it is one of the principal reasons the Act was passed.

SECTION 2(1)(z) defines SERVICE as service of any description which is made available to potential users, and includes services in connection with business of any industrial or commercial matters such as BANKING, COMMUNICATION, EDUCATION, FINANCING, INSURANCE, CHIT FUNDS, REAL ESTATE, TRANSPORT, STORAGE, BOARDING, LODGING, ENTERTAINMENT, CONSTRUCTION, REPAIR and ADVERTISING. A SERVICE MARK is simply a trade mark used in relation to services, and the definition in section 2(1)(zb) reaches it by its words GOODS OR SERVICES. Services fall in CLASSES 35 TO 45 of the international classification the Registry applies under section 7.

Against a registered mark taken as a name. SECTION 29(5) provides that a registered trade mark is infringed by a person who uses it AS HIS TRADE NAME OR PART OF HIS TRADE NAME, or name of his business concern, dealing in the goods or services for which the mark is registered.

By passing off. Laxmikant V. Patel v. Chetanbhai Shah, (2002) 3 SCC 65, holds that a person may not carry on business under a name so closely resembling a rival's that ordinary people are likely to be misled; the plaintiff, who had run MUKTAJIVAN COLOUR LAB AND STUDIO in Ahmedabad since 1982, obtained an injunction without proving actual damage. Mahendra and Mahendra Paper Mills Ltd. v. Mahindra and Mahindra Ltd., (2002) 2 SCC 147, restrained a later corporate name on the strength of a name in continuous use since 1945.

And subject to honest use of one's own name. SECTION 35 saves ANY BONA FIDE USE by a person of HIS OWN NAME or that of his place of business. The saving protects the honest trader named Ruston who opens a shop; it does not protect a company that adopts a famous name and calls it its own.

SECTION 61 reads the words "one person" in section 2(1)(zb) as the members of the proprietor association; SECTION 62 refuses a collective mark likely to be taken to be SOMETHING OTHER THAN A COLLECTIVE MARK, and lets the Registrar require an indication that it is one; SECTION 63 requires the application to be accompanied by REGULATIONS specifying the persons authorised to use the mark, the conditions of membership, the conditions of use and the SANCTIONS AGAINST MISUSE; SECTIONS 64 TO 66 make the regulations subject to the Registrar's acceptance, open to inspection and amendable only by filing and publication; SECTION 67 requires a court, in a suit by the proprietor, to take account of the loss suffered by AUTHORISED USERS; and SECTION 68 adds grounds of removal where the mark has become misleading as a collective mark or the proprietor has failed to secure observance of the regulations, and deems use by an authorised user to be use by the proprietor.

Conclusion. A TRADE MARK under SECTION 2(1)(zb) is a MARK within section 2(1)(m) which is CAPABLE OF GRAPHICAL REPRESENTATION, CAPABLE OF DISTINGUISHING the goods or services of one person from those of others, and USED OR PROPOSED TO BE USED to indicate a connection in the course of trade. Its functions are to identify ORIGIN, on the principle of one mark, one source and one proprietor in Power Control Appliances v. Sumeet Machines Pvt. Ltd.; to guarantee CONSISTENCY of quality; to carry ADVERTISING and INVESTMENT, which the dilution provisions protect; and to IDENTIFY A BUSINESS in any medium, a domain name included after Satyam Infoway Ltd. v. Siffynet Solutions Pvt. Ltd.. A SERVICE MARK is a trade mark for SERVICES as defined in SECTION 2(1)(z), first registrable under the 1999 Act. A TRADE NAME, undefined but used in SECTION 29(5), is the name under which a business is carried on, protected against infringement by section 29(5), by passing off as in Laxmikant V. Patel v. Chetanbhai Shah, and subject to honest use of one's own name under SECTION 35. A COLLECTIVE MARK under SECTION 2(1)(g) distinguishes the goods or services of MEMBERS OF AN ASSOCIATION which owns it, and is governed by REGULATIONS under SECTIONS 61 TO 68.