TRADEMARKS

A PROJECT REPORT

Submitted by

Nancy Girdher A3221615049

Aarushi Aggarwal A32216150465

Simran Shaw A3221614066 ,

Shiv Vinayak Gupta A3221614096

WHAT IS A TRADEMARK

A ‘Mark` may consist of a word or invented word, signature, device, letter, numeral, brand,
heading, label, name written in a particular style, the shape of goods other than those for which
a mark is proposed to be used, or any combination thereof or a combination of colors and so
forth. Subject to certain conditions, a trademark may also be symbolized by the name of a
person, living or dead.

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 Trademark in India: Registering Procedures & Laws and Challenging
Trademarks

LEGISLATION (INDIA TRADEMARK LAW)

The Indian law of trademarks is enshrined the new Trade Marks Act, 1999 came into
force with effect from September 15, 2003. The old Trade and Merchandise Marks
Act, 1958 was repealed at the same time. The new Trademarks Act of 1999 is in line
with the WTO recommendations and is in conformity with the TRIPS Agreement to
which India is a signatory.

MAIN FEATURES OF NEW LEGISLATION IN INDIA

Under the new Trademarks Act of 1999:

 Registration of Service Marks allowed in addition to Trademarks for

goods.
 No separate application necessary for each category/class of goods or
services; a single application would do, however filing fee will be charged
separately for each class of goods/services.
 The term of registration of trademark is ten years, subject to renewal
thereafter.
 The system of maintaining registration of trademark in Part A and Part
B with different legal rights, dispensed away.
 Registration of trademarks which are imitations of well known
trademarks not permitted.
 Registration of Collective Marks owned by associations allowed.
 Offences relating to trademark made cognizable.
 Filing Fees enhanced by more than 8 times.
 Extension of application of convention countries.

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 TRADEMARKS IN INDIA - FAQ'S

WHAT IS A TRADEMARK IN INDIA.

A ‘Mark` may consist of a word or invented word, signature, device, letter, numeral,
brand, heading, label, name written in a particular style, the shape of goods other
than those for which a mark is proposed to be used, or any combination thereof or a
combination of colors and so forth. Subject to certain conditions, a trademark may
also be symbolized by the name of a person, living or dead.

For the purpose of registration, a mark chosen

should be capable of distinguishing goods or
services of one person from those of the
others. Further it should not be deceptively
similar to an existing mark of another person
and not the one expressly prohibited under
the Act.

The marks devoid of any distinctive

character, or which are only indicative of the
kind, quality, quantity, purpose, value or
geographical origin of the goods, or which are marks already in vogue in the trade
due to their customary use may not be registered. But these disqualifications do not
apply to marks, which have already acquired distinction due to their popularity and
consistent use. Internationally acclaimed brand names are freely available for use in
India.

WHAT IS COVERED UNDER TRADEMARKS

A trademark is a mark used in relation to goods or services so as to indicate a

connection in the course of trade between the goods or services and some person
having the right as proprietor to use the mark.

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 WHAT IS THE FUNCTION OF A TRADEMARK

Under modern business condition a trade mark performs four functions:

 It identifies the goods / or services and its origin.

 It guarantees its unchanged quality
 It advertises the goods/services
 It creates an image for the goods/ services.

HOW TO SELECT A TRADEMARK

 If it is a word it should be easy to speak, spell and remember.

 The best trade marks are invented words or coined words.
 Please avoid selection of a geographical name. No one can have monopoly
right on it.
 Avoid adopting laudatory word or words that describe the quality of goods
(such as best, perfect, super etc)
 It is advisable to conduct a market survey and a search at Trademark office to
ascertain if same/similar mark is used in market.

WHAT ARE THE TYPES OF TRADEMARKS THAT CAN BE

REGISTERED

Under the Indian trademark law the following are the types of trademarks that can be
registered:

 Product trademarks: are those that are affixed to identify goods.

 Service trademarks: are used to identify the services of an entity, such as the
trademark for a broadcasting service, retails outlet, etc. They are used in
advertising for services.
 Certification trademarks: are those that are capable of distinguishing the
goods or services in connection with which it is used in the course of trade
and which are certified by the proprietor with regard to their origin, material,
the method of manufacture, the quality or other specific features
 Collective trademarks: are registered in the name of groups, associations or
other organizations for the use of members of the group in their commercial
activities to indicate their membership of the group.

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 WHAT ARE DIFFERENT TYPES OF TRADEMARKS AVAILABLE
FOR ADOPTION

 Any name (including personal or surname of the applicant or predecessor in

business or the signature of the person), which is not unusual for trade to
adopt as a mark.
 An invented word or any arbitrary dictionary word or words, not being
directly descriptive of the character or quality of the goods/service.
 Letters or numerals or any combination thereof.
 The right to proprietorship of a trade mark may be acquired by either
registration under the Legislation or by use in relation to particular goods or
service.
 Devices, including fancy devices or symbols
 Monograms
 Combination of colors or even a single color in combination with a word or
device
 Shape of goods or their packaging
 Marks constituting a 3- dimensional sign.
 Sound marks when represented in conventional notation or described in
words.

WHO CAN APPLY FOR A TRADEMARK

A person who claims to be the proprietor of the trademark can apply for the
registration of its mark for goods as well services.
A person may apply for registration of a trade mark to the Trademark office under
whose jurisdiction the principal place of the business of the applicant in India falls.
In case, the principal place of business is outside India, then the application can be
filed in the Trademark office under whose jurisdiction the office of the lawyer
appointed by you is located.
In case of a company about to be formed, anyone may apply in his name for
subsequent assignment of the registration in the company's favor.
Before making an application for registration it is prudent to conduct a trademark
search in the Trademark office in context of the already registered trademarks to
ensure that registration may not be denied in view of resemblance of the proposed
mark to an existing one or prohibited one.

WHO CAN USE A TRADEMARK

The right to use a mark can be exercised either by the registered proprietor or a
registered user.

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 WHAT ARE LEGAL REQUIREMENTS FOR REGISTRATION OF
TRADEMARK IN INDIA

The legal requirements to register a trade mark under the Legislation are:

 The selected mark should be capable of being represented graphically (that is

in the paper form).
 It should be capable of distinguishing the goods or services of one
undertaking from those of others.
 It should be used or proposed to be used mark in relation to goods or services
for the purpose of indicating or so as to indicate a connection in the course of
trade between the goods or services and some person have the right to use the
mark with or without identity of that person.

WHAT IS THE DURATION OF A TRADEMARK IN INDIA?

Term of registration of a trademark is ten years, which may be renewed for a further
period of ten years on payment of prescribed renewal fees.

Non-user of a registered trademark for a continuous period of five years is a ground

for cancellation of registration of such trademark at the behest of any aggrieved
party.

CONVENTION APPLICATION AND INTERNATIONAL TREATIES

India has declared certain countries as convention countries, which afford to citizens
of India similar privileges as granted to its own citizens. A person or company from a
convention country, may within six months of making an application in the home
country, apply for registration of the trademark in India. If such a trademark is
accepted for registration, such foreign national will be deemed to have registered his
or her trademark in India, from the same date on which he or she made application in
the home country.

Where the applications have been made for the registration of trademark in two or
more convention countries, the period of six months would be reckoned from the
date on which the earlier or earliest of those applications was made.

Although the recovery of damages for infringement of a trademark is possible only if

the infringement takes place after the date of filing application for registration with
the concerned trademark office in India, yet the deemed seniority in making

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 application in home country may entitle the applicant to initiate an action in India for
injunction, delivery of impugned labels and so on.

WHAT ARE BENEFITS OF TRADEMARK REGISTRATION

The registration of a trade mark confers upon the owner the exclusive right to the use
of the registered trade mark and indicate so by using the symbol (R) in relation to the
goods or services in respect of which the mark is registered and seek the relief of
infringement in appropriate courts in the country. The exclusive right is however
subject to any conditions entered on the register such as limitation of area of use etc.
Also, where two or more persons have registered identical or nearly similar mark due
to special circumstances such exclusive right does not operate against each other.

REMEDIES FOR INFRINGEMENT OF TRADEMARK IN INDIA AND

PASSING-OFF

Two types of remedies are available to the owner of a trademark for unauthorized use
of his or her mark or its imitation by a third party. These remedies are:

 an action for infringement' in case of a registered trademark; and

 an action for passing off' in the case of an unregistered trademark

While former is a statutory remedy, the latter is a common law remedy. In an action
involving infringement or passing off, a court may grant relief of injunction and/or
monetary compensation for damages for loss of business and/or
confiscation/destruction of infringing labels and tags etc.
Although registration of trademark is prima facie an evidence of validity of a
trademark, yet the registration can not upstage a prior consistent user of trademark,
for the rule is ‘priority in adoption prevails over priority in registration`.

HOW TO APPLY FOR REGISTRATION OF A TRADEMARK IN RESPECT

OF PARTICULAR GOODS OR SERVICES

Goods and services are classified according to the International Classification of

goods and services. Currently schedule IV of the Legislation provides a summary of
list of such goods and services falling in different classes which is merely indicative.
The Registrar is the final authority in the determination of the class in which

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 particular goods or services fall. The Schedule IV of the Legislation is annexed at the
end of this questionnaire on trade marks.

WHAT PURPOSE THE TRADEMARK SYSTEM SERVES

 It identifies the actual physical origin of goods and services. The brand itself
is the seal of authenticity.
 It guarantees the identity of the origin of goods and services.
 It stimulates further purchase.
 It serves as a badge of loyalty and affiliation.
 It may enable consumer to make a life style or fashion statement.

WHO BENEFITS FROM TRADEMARK REGISTRATION

The Registered Proprietor: The Registered Proprietor of a trade mark can stop other
traders from unlawfully using his trade mark, sue for damages and secure destruction
of infringing goods and or labels.
The Purchaser and ultimately Consumers of trademarks goods and services.
The Government: The Trademarks Registry is expected to earn a substantial annual
revenue, which is perpetually on the rise.

WHAT DOES THE REGISTER OF TRADEMARK CONTAIN

The register of trade mark currently maintained in electronic form contains inter alia
the trade mark the class and goods/ services in respect of which it is registered
including particulars affecting the scope of registration of rights conferred or
disclaimers, if any; the address of the proprietors; particulars of trade or other
description of the proprietor; the convention application date (if applicable); where a
trade mark has been registered with the consent of proprietor of an earlier mark or
earlier rights, that fact.

CAN ANY CORRECTION BE MADE IN THE APPLICATION OR THE

REGISTER OF TRADEMARKS

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 Yes. But the basic principle is that the trade mark applied for should not be
substantially altered affecting its identity. Subject to this changes are permissible
according to rules detailed in the subordinate legislation.

CAN A REGISTERED TRADEMARK BE REMOVED FROM THE

REGISTER

It can be removed on application to the Registrar on prescribed form on the ground

that the mark is wrongly remaining on the register. The Registrar also can suo moto
issue Notice for removal of a registered trade mark. Non use of a registered
trademark for continuous period of 5 years is also a ground of removal.

CAN I APPLY FOR A DESIGN/LOGO REGISTRATION FOR SAME

GOODS AND SERVICES IN BLACK & WHITE AS WELL AS COLOR

Yes. You can do so in one application as India recognizes the system of series
application.

WHAT RECOURSE I HAVE IF A COMPETITOR HAS ALREADY

REGISTERED MY MARK IN INDIA

The Indian trademark law provides for invalidation proceedings and you have the
right to initiate a cancellation action should a competitor have registered your
trademark in India. You also have the right to initiate either a civil or a criminal
action against any party that is violating your mark in India.

WHO CAN USE SYMBOL ® IN INDIA

Only the proprietor of a trademark whose trademark has been registered in India can
use the symbol ® in India. Using the symbol ® unless your mark has been registered
in India is unlawful.

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 WHEN CAN THE SYMBOL ™ BE USED IN INDIA

Using this symbol with your trademark simply implies that you claim to be the
proprietor of the trademark. There is no prohibition on the use of the symbol ™ in
India.

WHAT IS THE PENALTY PRESCRIBED UNDER CRIMINAL LAWS FOR

INFRINGEMENT OF A TRADEMARK IN INDIA

The penalty for selling or providing services using a false trademark is a minimum of
six months and maximum of three years and with fine not less than Rupees fifty
thousand but which may extend to Rupees two lakh.

AS A FOREIGN INVESTOR HOW CAN I REGISTER MY TRADEMARK IN

INDIA

Registration of trademarks is one of the important protections that businesses should

avail in India. Many foreign and domestic Applicants have been able to successfully
register their marks in India. Indian courts have upheld many of those registrations
and granted favorable decisions to rights holders.

In addition to the registering of their trademarks in India, businesses need to adopt

other strategies for protecting their trademarks. Some of them are mentioned below:

 Get trademark searches conducted in the Indian Trade Marks Registry in the
classes that are of interest to you including the ancillary classes.
 Get common law searches (this includes the internet, market surveys, yellow
pages and directories) conducted to ascertain whether third parties are using
your trademarks and if so, the extent of such use.
 Based on this information and after seeking the local counsel’s opinion decide
if the trademark is available for use or not.
 Should the trademark be available for use, immediately apply for the
registration.
 The rights holder should also consider hiring a watching service to monitor
the trademark journals in order to alert them to any published, deceptively
similar trademarks or descriptive trademarks that might be of concern.
 Should the rights holder own a trademark that has been used and has acquired
goodwill and reputation, it is advisable that along with filing of the trademark
application in India, they should also make press releases, publish cautionary
notices and advertise the mark to ensure that the relevant section of the public

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 is aware that they are entering the Indian market and are protecting their
trademark from any kind of third party violation.
 The rights holder should also take immediate steps to register their domain
names including country coded top level domain names in India, as there
have been many instances of third parties registering domains for certain well
known marks with the intention of extracting money by selling these domain
names to the rights holders.
 Should the rights holder discover that their trademark is being infringed, they
should take immediate steps to protect their trademark, either by the means of
filing oppositions, cancellations, conducting investigations, sending cease and
desist notices or initiating appropriate civil and criminal actions.

AS A FOREIGN CORPORATION CAN I FILE A SINGLE APPLICATION

FOR USE OF MY MARK ON MORE THAN ONE GOOD OR IN
ASSOCIATION WITH MORE THAN ONE SERVICE IN INDIA

Yes. India recognizes the system of multi-class applications and follows the
International Classification. There are 42 classes in which the goods and services
have been divided in India and you can file for multi-class applications both for
goods and services.

BEING A FOREIGN CORPORATION, MUST I SELL MY PRODUCTS OR

SERVICES IN INDIA BEFORE SEEKING TRADEMARK REGISTRATION

No, Indian trademark law allows filing of a trademark application in India on an

‘intent-to-use’ basis. However the registered proprietor of the trademark in India has
to commence use of the mark within 5 years and 3 months of the date of registration.
Otherwise the registered trademark is open to invalidation proceedings.

WHAT ARE THE SOURCES OF TRADEMARK LEGISLATION

 (1) The national statute i.e., the Trade Marks Act,1999 and rules made there
under .
 (2) International multilateral convention.
 (3) National bilateral treaty.
 (4) Regional treaty.
 (5) Decision of the courts.
 (6) Office practice and rulings
 (7) Decision of Intellectual Property Appellate Board.
 (8) Text books written by academician and professional experts.

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 WHAT ARE THE FORMALITIES FOR MAJOR TRADEMARK
TRANSACTIONS

For filing new applications there are prescribed forms depending on the nature of
application such as Form TM-1, TM-2, TM-3, TM-8, TM-51 etc.

To file a Notice of Opposition to oppose an application published in the Trade Marks

Journal (FormTM-5).
For Renewal of a Regd. trademark (Form TM-12 ).
Surcharge for belated renewal (Form -10)
Restoration of removed mark (Form TM-13)
Application for rectification of a registered trade mark (Form TM-26)
Legal Certificate (Form TM-46)
(Providing details of entries in the Register)
Official search request (Form TM-54).
Preliminary advise of the Registrar as to the registrability of a mark (Form TM-55).
Copyright search request and issuance of certificate (Form TM-60)

THE INDIAN TRADEMARK ACT 1999

The enactment of the Indian Trademark Act 1999 was a big step forward from the
trade and merchandise Mark Act 1958 and the Trademark Act 1940.The newly
enacted Act has some features not present in the 1958 Act and these are:

1. Registration of service marks, collective marks and certification trademarks

2. Increasing the period of registration and renewal from 7 years to 10 years.

3. Allowing filling of single application for registration in more than one class

4. Enhanced punishment for offences related to trademarks.

5. Exhaustive definitions for terms frequently used.

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6. Simplified procedure for registration users and enlarged scope of permitted
use.

7. Constitution of an appellate board for speedy disposal of appeals and

rectification applications which at present lie before the Highcourt

• FOREIGN TRADEMARKS

• FOLLOWING TREATIES ARE RELEVANT

1. Agreement on Trade-Related Aspects of Intellectual Property Rights, 1994 :

2. The Madrid system for the international registration of marks :

3. Trademark Law Treaty 1994:

.

4. The Communal Trademark System :

• A Community Trade Mark (CTM) is any trademark which is pending registration

or has been registered in the European Union as a whole (rather than on a
national level within the EU).

• The CTM system creates a unified trademark registration system in Europe,

whereby one registration provides protection in all member states of the EU. The
CTM system is unitary in character. Although an objection against a CTM
application in any member state can defeat the entire application, a CTM
registration is enforceable in all member states.

• The CTM system is administered by the Office for Harmonization in the Internal
Market (Trade Marks and Designs) (OHIM), which is located in Alicante, Spain
(see also trade mark law of the European Union).

Intresting Questions

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 Reclaiming an expired trademark

Suppose a situation where you want to start using an old trademark that your former company
use to own. When you left the company my partner moved all of the intellectual property into
his own name. We're on great terms.

The question is now that the trademark expired (he didn't need it any more) would it be quicker
for him to reclaim it and then license it to me or for me to simply start the process of securing it
for my new venture.

Coexist with existing Trademark

I am in the process of searching for a name for a small local video channel and came across a
perfect one. However, there is currently a trademark held by a large technology company for
this exact same mark. The mark specifies "computer hardware, graphics cards, and related
software." We will not be producing hardware or software but I am slightly concern that using
the name could lead to potential problems. I am wondering if you think our use of the mark
might be an issue. If it is okay to use this mark, do you think it would be possible to file for a
mark that covers our specific service?

Trademark vs. corporate name

I am a hobby maker of a product and am about to start making it commercially. There is

another hobbyist who told me he has no plans to make his product commercially. He has
registered the name as a corporate name.

If I register the name as a trademark, do I then own it and have full rights to use it?

Can this person object to my registration?

Can I allow the other person to continue making the product as long as it does not compete
with our commercial product?

Is it art, or is it trademark violation?

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When an artist paints a picture that incorporates another company's trademark (eg. Andy
Warhol's Campbel's Soup) does it become an original piece owned by the artist or can the
trademark owner intervene if the artist tries to sell the work for commercial gain, or if they
don't approve of the way their logo/product is being depicted in the art?

Thinking about it, Andy Warhol may not be the best example, as I am quite sure that
Campbel's would have been all too happy to see their name imortalised forever by a famous
artist, but as a point of law what is the legal standpoint?

For instance, sports artists who make paintings of world famous superstars like Tiger Woods
often include the Nike cap that he wears, so could Nike object the use of their TM without
authorisation?

Or as another example, take paintings of world famous racing drivers who are depicted in their
cars, which carry a multitude of registered marks. Is the artist not exploiting those marks to sell
his work, as without those logos on the car or overalls the authenticity would be lost?

Where is the line drawn?

When can you copy a registered mark in a piece of art and use it to make money?

Case study

Concept of House mark- The 'Parle' Case Study

www.indlawnews.com

A house mark can be used for all products manufactured by a company or group of companies,
if each product has a distinct product identification mark. This has been explained in detail by
the Bombay High Court in its recent judgment of Parle Products Private Limited vs. Parle Agro
Private Limited, (hereinafter referred as the Parle case).

To comprehend the case better, firstly it is important to understand the concept of house mark
and its distinction from product identification marks. House mark refers to a trademark which
is used to identify the operations of an organisation [1]. This may also be the company name.
This trademark is used to identify one or more products of the same company and at times is
used in combination with other trademarks to establish distinctiveness of the product. Thus
house mark is a trademark that appears on and identifies all of a company’s products. A house
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mark which is a famous trademark is extremely advantageous as it offers a brand value to other
products of the company that either prefix or suffix the house mark along with their trademark.
An example can be given of Cadbury which is a famous mark, based on its Cadbury Dairy
Milk and is using the house mark Cadbury for other products manufactured by it such as
Cadbury Eclairs, Cadbury Bournvita, etc.

A product identification mark is a mark that distinguishes the product of one company from the
other, even if both the companies have a common house mark. Product identification mark
creates brand for a product and is also referred as the brand name. A brand g enerates
identification for a product and shuns confusion, if any, in the minds of the public regarding
origin of the product, i.e. products having common house mark. House marks and product
marks often appear together on a product label.

The distinction [2] between house mark and product mark may be noted as following-

(1) A house mark identifies the company or division that is the maker or seller of the product,
or offerer of a service. It can also be used to identify a particular grouping of products as a
product line whereas a product mark identifies the particular product or service that is being
sold.

(2) A company can have more than one house mark to identify different product lines but a
particular product can have only one mark which is the product identification mark.

An example of a house mark and product mark is Dabur. Dabur, is the house mark of Dabur
India Limited and various products offered by Dabur such as Dabur Babool, Dabur Real,
Dabur Vatika etc. are product marks prefixed by the house mark Dabur.

The recent ruling of the Bombay High Court in the Parle case elucidates the distinction
between a house mark and a brand mark. It has considered the distinction between a house
mark and product identification mark.

Brief Facts[3]- Parle Products Manufacturing Company, a partnership business was set up in
1929 by Mr. Chauhan with his 5 sons, for selling confectionary. In 1939 they expanded their
activity to manufacture and sale of biscuits, and also set up another partnership firm, Parle
Bottling Company. In 1950, Parle Products Private Limited was incorporated and all partners
became the first directors. Similarly, in 1952, Parle Bottling Company was converted into a
Limited Company owned by all the brothers. There was division of labour between the brothers
wherein Kantilal and Pitamber looked after the business of biscuits and confectioneries, i.e.
Parle Products Private Limited (Plaintiff) and Jayantilal looked after the business of beverages,
i.e. Parle Bottling Company Limited. Thereafter, the brothers exited from each others company
as per their division of labour. After few years the descendants of Jayantilal incorporated Parle
Agro Private Limited (Defendant).

Both Plaintiff and Defendant continued to use the word Parle as a part of their corporate name
as well as a trade mark without any objection from the other. The Plaintiff manufacture
confectionaries, biscuits and similar products and the Defendants manufacture beverage
products. Each has however been naturally using separate names /marks / brands for each of
their products. There is no prior memorandum or agreement signed between the parties for
using the mark Parle.
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The dispute arose in 2007 when the Defendant expanded and diversified into the confectionery
business. It started manufacturing toffees under the product identification mark and brand name
Mintrox and Buttercup and marketed them with the words Parle or Parle Confi.

The Plaintiff contended that the Defendant cannot use the trademark Parle singly or in
conjunction with its product marks such as Buttercup or Mintrox as it would lead to selling the
product in the name of the Plaintiff. The Plaintiff also raised objection on the ground that Parle
was a registered trademark to market biscuits and confectioneries manufactured by them. The
Defendant contended that Parle was registered by the family before division of the companies
and as such it can be used by members of the family to denote the family lineage for any
business confectionery and biscuits or beverages.

The High Court referred a number of cases for arriving at the judgment. Considering the facts
of the case, the Court distinguished between house mark and product identification mark. The
Court held that Parle is a mark that belongs to both Plaintiff and Defendant as after the division
of the companies belonging to the brothers, the companies continued to use the mark Parle
without any objection from the other. The mark Parle is the company identification mark that is
used by both parties. Thus Parle is a house mark that is used by both the companies. It was
further held that each product manufactured by the Plaintiff and the Defendant had a distinct
product name, by which the customer identifies the products. These product names are product
identification marks that distinguish one product from the other inspite of having the same
house name. The mark Parle which is used on all the products of the Plaintiff and the
Defendant is their house mark. For each product a separate mark, e.g. Glucose, Mango-Bite
including Mintrox and Buttercup etc. that is given, is the product mark.

On the contention of Plaintiff to restrain Defendant from using the mark Parle Confi on their
products, the Court held that as Parle Confi is not a registered trademark of the Plaintiff, hence
its use by the Defendant cannot per se be forbidden. The product mark as well as house mark
may appear side by side on a product. The Court held that the mark Parle Confi does not
amount to any misrepresentation of the product as a product of the Plaintiff as it does not create
any confusion in the mind of the public who would, at best, think that it is a product of the
Parle Group of Companies. A customer while buying a product of Parle shall not only ask for
the house name of Parle but shall specify the product one wants to purchase like Glucose,
Monaco, Mango Bite, and also Buttercup or Mintrox, etc. On the objection of the Plaintiff that
the trademark Parle was registered to market biscuits and confectionaries manufactured by
them, the Court held that there is no prior memorandum between the parties that bars the use of
the word Parle on each others products. In the absence of such memorandum, either party can
use the word Parle singly or in combination with any other word.

In the present case, as the Defendants have separate product identification marks for each of its
products, i.e. Mintrox and Buttercup, hence it was held that, it shall not create any confusion in
the mind of the public. The Court held that the Defendants shall not be restrained from using
the word Parle/Parle Confi on their products as they have a distinct product identification mark
for each product. However the Court has ordered the Defendant that for selling its products,
Mintrox and Buttercup under the Parle and Parle Confi names, it has to specify in clear font on
the package of Mintrox and Buttercup that the product belongs to the Jayantilal Group and is
not related to Parle Products Private Limited.

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The judgment in this case is one of the first trademark cases in India that has given, in clear
words, the distinction between house mark and product identification mark. The judgment
certainly, shall bring more clarity in the concept of house mark in India.

Articles

DOMAIN NAMES AND TRADEMARKS

IVAN HOFFMAN, B.A., J.D.

If you are a writer, publisher, web site designer, site owner and if you own, claim to
own, use or want to use intellectual property on the Internet, then you must have at least
a short but functional knowledge of how the United States trademark, copyright and
other laws, as well as various state laws, may apply to you. There is an intimate
relationship among your rights and the rights of others. At any moment, you may be
both a user of other’s protected materials and a creator of your own. Both they and you
deserve to have your intellectual property rights protected.

In addition to the more traditional logos and designs that are the subject of
trademark law, domain names are now also subject to being trademarked if they
otherwise qualify as marks. Indeed, the rules for what may and may not qualify for
trademark status are not all that different except that the Internet presents additional
issues.

Some Of The Issues

But before discussing the issue of how one can obtain a trademark in a domain
name, it might be helpful to first explain how the Internet impacts upon regular, real
world marks. If a mark in the hard copy world is also being used in relation to goods or
services provided via the Internet, the United States Patent and Trademark Office
(USPTO) policy is that any registration for such Internet use is to be filed under
the same classifications as apply to the use of the mark in the hard copy world. In other
words, the registration is classified under the same categories as the subject matter of the
goods or services. How the applications are filled in vary with the subject matter of the
goods or services, but in essence the use on the Internet is another version of the
underlying, real world uses. So when applying for a mark that is used in both the real
world and on the Internet, the classifications would be the same but the manner of use
would have to be expanded to include use via the Internet.

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 On the other hand, if a mark is used solely in relationship to the Internet and there is
no corresponding use in the hard copy world, such as a domain name, then it appears
that a separate registration classification may be available to offer further protection to
the mark as it is being used on the Internet. However, the use of a domain name
must not simply be as an address or location but must be used to identify the goods or
services of the person or firm claiming the mark which goods or services are provided via the
Internet. Thus, the mark must be used not only as a domain name but in advertising,
marketing materials on the Internet and perhaps in the hard copy world as well. Thus,
the domain name must become an integral part of the goods or services so provided in
order for it to be the subject of a registration. This of course is in keeping with the
purpose of marks, which is to identify the goods and services of a particular source.

So, for example, since many publishers want to have domain names that track the
name of their company, those publishers should plan on marketing their company name
in the form of the domain name via the Internet as well as including the domain name in
all hard copy advertising and marketing materials as well, including their books.

Moreover, since publishers may run into conflicts with the names of other
publishers, it is very wise for those publishers, before choosing a name for their company,
to do a trademark search in addition to perhaps checking books in print or other more
traditional sources. A thorough search performed by a search firm will also search
Internet domain names to see if there are others who are using the name, if for another
company purpose.

Additionally, one of the key factors in determining whether any mark is registerable
is the distinctiveness of the mark. Thus, in contemplating a domain name, whether as a
publisher, site owner, web designer on behalf of a site owner or otherwise, the more
distinctive the domain name the more chance there is that it will qualify as a mark. Even
though someone has a domain name, if it is merely descriptive, non-unique and otherwise
merely provides information as opposed to identification, the less chance there will be to
claim it as a mark.

Furthermore, it is very advisable to seek federal registration for the domain name as
a mark since that may then provide protection not only on the Internet but in the hard
copy world as well. In other words, like all other trademark owners, should someone off
line seek to market and promote a product or service that may lead to confusion in the
minds of the public with your domain name, you may be able to prevent that conflicting
use. Such registration provides many other benefits. (see Trademark Law: An
Overview )

Domain Names As Infringing Marks

Conversely, to the extent that you have obtained a unique domain name but have not
obtained a federal registration for it with the USPTO, you may find yourself at the wrong
end of an infringement claim. The holder of a mark in the real world may notify you that
your domain infringes upon their use of their mark in that your mark has the potential of
confusing the public as to the origin of your web site and creates an implication that the
mark’s holder is somehow involved in or with your site.

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 The legal issues in this area are not all that different from those that would be
involved in a real world trademark dispute. The claimant must show that your use of the
domain and the site to which it points are likely to create the above confusion and/or, in
certain instances of “famous” marks, dilute the value of their mark.

Additionally, you may be subject to a claim by a trademark holder that a domain

that you have obtained, even if you are not using it, should belong to that holder. The
general rule is that first to register owns a domain. However, under certain
circumstances, the holder of a mark that was a registered mark before you obtained your
domain may be able to prevent your use of that domain, at least on a temporary basis,
until it is decided by a court whether or not you should be allowed to do business under
that domain. That decision would of course be made on the basis of the above trademark
law issues such as confusion in the minds of the public, dilution and so on. Pending that
court determination or a settlement of the matter, if the situation fits the criteria
established by Network Solutions, Inc., NSI may suspend your use of the domain and that
action may be the de facto end of the matter even without a judicial determination.

Conclusion

There are many other issues that trademarks of all sorts present and this article is
certainly not intended to be exhaustive of those issues. However, domain names are an
area of Internet law that is rife with potential for litigation. By knowing your rights and
obligations as both a trademark holder and domain name user, you may be able to avoid
the expense of such litigation. Doing the research before making commitments to a name,
mark and the like, may help you avoid unnecessary cost and trouble.

© 1999 Ivan Hoffman

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