Trade Marks Law And Trademark Registration

A trade mark is a distinctive industrial property, distinct from other forms of intellectual property. The purpose of a trademark is to exclusively identify the commercial source or origin of products or services.

Rajrathnam V P, Attorney/Advocate and IPR Consultant - rajrathnamvp@yahoo.co.in

IPR Intellectual Property Rights, Books On Trade mark Law, Trademark Dilution, Trade mark Infringement, Copyright law, Patent law, Case Law, History of IP and Indian Trade Mark Act

A trade mark can be a word, an alphabetical letter, a device or a numeral or any combination thereof.
Where a word is used as a trade mark, it should be a trademark that is easy to pronounce, spell and remember.
Where a word is used as a trade mark, the trademark should preferably be an invented word.
Laudatory words which directly describes the character or quality of the goods should not be adopted as a trade mark.
Geographical names referred in connected with the reputation or quality of the goods for which registration is sought should be avoided as a trade mark.
The ^TM symbol or ^SM may be used when trade mark rights or service mark rights are claimed in relation to a trade mark.or service mark.
The ® symbol is used to indicate that the trade mark.or service mark has been so registered.
The terms "mark", "brand" and "logo" are used to refer to "trademark". They are also called service marks when referred to services.

Books On Trademark Law:

The Trade Marks Act, 1999 recognises trade mark infringement, if it can be established that the infringed trade mark has a reputation in India, even where a passing off action may not succeed. It was in the 1990s that the United States enacted a law against trademark dilution. Even though the concept of dilution was being discussed in academic circles in early 20th century, it was only later that the states began adopting such laws. The concept of dilution has a wider reach than passing off.

If someone manufactures and sells 'Toyota Wheelchair', there would be no case of passing off, as no one is likely to imagine that the Toyota company would manufacture wheelchair. But the use of Toyota in relation to wheelchair will certainly hurt the reputation of Toyota ‘diluting’ the worth of Toyota trade mark and thus it would be unethical.

Paris Convention is the most basic and important multilateral convention relating to intellectual property, including trademarks, of which India is a member. It defined the meaning and scope of industrial property rights protection and established basic principles and rules.

In India priority in adoption prevails over priority in registration. The registration cannot take away a prior consistent user of trademark in India. In many other jurisdictions the first party to register a trademark is considered the party to own the mark, regardless of prior use of the mark.

Trademark law classifies marks into four categories, based on how distinctive they are. “Generic” marks get no trademark protection, and the same is true of “descriptive” marks unless they have acquired a “secondary meaning.” “Fanciful” or “arbitrary” marks get the most protection, and “suggestive” marks are second in priority. - McCarthy on Trademarks and Unfair Competition §§ 11.1, 11.2 (4th ed. 1996); Playtex Products v. Georgia Pacific, 390 F.3d 158, 163 (2d Cir. 2004).

The basic principle of trademark law is to fulfill the public policy objective of consumer protection, by preventing the public from being misled regarding the facts of origin or quality of a product or service. By identifying the commercial source of products and services, trademarks facilitate identification of products and services which meet the trust and expectations of consumers as to quality and other characteristics.

Trademarks may also serve as an incentive and encouragement to manufacturers, providers or suppliers to consistently provide quality products or services enabling them to maintain their business reputation. If a trademark owner does not maintain quality control and adequate supervision in relation to the manufacture and provision of products or services supplied by a licensee, there will be an adverse impact on the owner’s rights in the trademark.

A registered trademark confers the right to exclusive use of the mark in relation to the products or services for which it is registered. The law in most jurisdictions also allows the owner of a registered trademark to prevent unauthorised use of the mark in relation to products or services which are similar to the "registered" products or services, and may also in certain cases, prevent use in relation to entirely dissimilar products or services.

A regisrered trademark owner will be in a better position to demonstrate its trademark rights and also be in a better position to enforce these rights through an trademark infringement action.

Unauthorised use of a registered trade mark need not be intentional in order for infringement to occur, although damages in an infringement lawsuit will generally be greater if there was an intention to deceive.

A trademark which is popularly used to describe a product or service (rather than to distinguish the product or services from those of third parties) is known as a genericized trademark. If such a mark becomes synonymous with that product or service to the extent that the trademark owner can no longer enforce its proprietary rights, the mark has become generic.

Proprietary rights in relation to a trademark may be established through actual use in the marketplace, or through registration of the mark with the trade marks office (or "trademarks registry") of a particular jurisdiction.

Some jurisdictions generally do not recognise trademarks rights arising through use (e.g. China). If trademark owners do not hold registrations for their marks in such jurisdictions, the extent to which they will be able to enforce their rights through trademark infringement proceedings will therefore be limited.

Some jurisdictions, particularly Common Law countries, offer protection for the business reputation or goodwill which attaches to unregistered trade marks through the tort of "passing off." Passing off may provide a remedy in instances where a business has been trading under an unregistered trade mark for a long time, and a rival business starts using the same or a similar mark.

Trademarks are generally territorial. Trademark rights that are established in a particular jurisdiction are generally only enforceable in that jurisdiction. Though there are international trademark laws and systems which facilitate the protection of trademarks in more than one jurisdiction.

Books On Trademark Law:

Patents and Copyrights can enter the public domain but trademarks may not.

Trade Marks: Law and Practice Book by Alison Firth, Gary Lea, Peter Cornford

Trademark Law Book by Robert C. Lind

Trade Mark Use Book by Jeremy Phillips, Ilanah Simon
"Use" is a concept which is fundamental to modern trade mark law, within the European Union, the US and elsewhere. The use concept is ubiquitous, since it must be understood even before basic issues of registrability, infringement and validity can be resolved.

Trade Mark Law : A Practical Anatomy Book by Jeremy Phillips
Drawing on British, European, and US law, plus other sources, the author considers both the problems that trade mark law causes in business and commerce and how to solve them. Written in a fluent and approachable style, the work contains useful flow charts, examples, and vignettes to capture the essence of trade mark law as it operates in practice.

The Historical Foundations of the Law Relating to Trade-Marks (Columbia Legal Studies, 1)
Book by Munroe Smith (Foreword), Frank I. Schechter
What is the exact nature of the nature of the right to a trademark? What is the basis of relief in trademark cases of unfair competition? Schechter unravels these problems as he traces the development of the law of trademarks from medieval times to the early twentieth century. Includes table of cases and statutes, bibliography.

Trademark: Legal Care for Your Business & Product Name Book by Stephen Elias
Names, logos, and other unique corporate identifying marks are the true calling cards of any business, and the third edition of Trademark: Legal Care for Your Business & Product Name, by attorneys Kate McGrath and Stephen Elias, explains in an easy-to-understand fashion how to choose these vital assets properly and then protect them diligently.

Trademark Counterfeiting, Product Piracy, and the Billion Dollar Threat to the U.S. Economy
Book by Paul R. Paradise
From Library Journal
In today's high-tech world, pirates no longer roam the seas in search of bounty. Instead, they work all over the world, misusing official trademarks, peddling inexpensive "knock-offs" of well-known brands, and selling inferior counterfeit products (all of which resulted, in 1995, in an estimated $200 billion loss to the U.S. economy). Paradise, a freelance electronics, law, and entertainment journalist, here collects articles (many previously published) on global piracy. In one, he delivers a fascinating first-hand account of the U.S.-China trade dispute and the negotiations that prevented a U.S. trade embargo against China; in another, he focuses on a private investigator working to counter the counterfeiters. - Copyright 1999 Reed Business Information, Inc.

Trademark & Copyright Disputes: Litigation Forms and Analysis : Book by Gregory J. Batters, Charles W. Grimes

Trademark Dilution: Federal, State, and International Law Book by David S. Welkowitz
Stay up-to-date and expertly informed in this unpredictable area of the law.
Trademark Dilution: Federal, State, and International Law describes and analyzes the full range of dilution law—which received its first treatment by the U.S. Supreme Court in 2004—including the Federal Trademark Dilution Act (FTDA), state antidilution laws, and international law. The author’s discussion of the case law under FTDA, analyzing the federal courts’ narrow interpretation of the statute, helps you effectively counsel clients and litigate cases. This landmark treatise also examines the various relevant state laws in detail; describes the many differences between them; and discusses the case law analyzing state statutes, much of which developed before the FTDA was enacted.

Trademark Law: A Practitioner's Guide (Practising Law Institute intellectual property law library)
Book by Siegrun D. Kane
Jeffrey M. Samuels, Esq., Former Assistant Commissioner for Trademarks, PTO
"A reference tool that all trademark attorneys, both those who prosecute and those who litigate, should have close at hand."
David Gould, Corporate Trademark Counsel, E.I. DuPont de Nemours and Company

Likelihood of Confusion in Trademark Law Book by Richard L. Kirkpatrick
Martha Sarra, Trademark Counsel, The Kroger Co.
"[Kirkpatrick] gets to the heart of likelihood of confusion and explains what every trademark lawyer needs to know."
Get a solid, hands-on grasp of all the essential factors used by the courts to determine if likelihood of confusion exists in trademark disputes, including full step-by-step coverage of the dominant multiple-factor test.

The Entrepreneur's Guide to Patents, Copyrights, Trademarks, Trade Secrets & Licensing
Book by Jill Gilbert
Clear, comprehensive advice from an intellectual property lawyer--for every artist, inventor, and small business owner.
Today, virtually all companies, artists, and innovators run the risk of losing their competititve edge-and big money-by not adequately safeguarding their intellectual property. Written by an expert in intellectual property law, this is the first book to address the full range of legal protections available-patents, copyrights, trademarks, trade secrets, and licensing-with innovative information you won't find elsewhere.

Don't be too descriptive with trademarks.(Law of the Line): An article from: Hawaii Business [HTML] (Digital) Book by Robert Carson Godbey
This digital document is an article from Hawaii Business, published by Hawaii Business Publishing Co. on March 1, 2005. The length of the article is 429 words. The page length shown above is based on a typical 300-word page. The article is delivered in HTML format and is available in your Amazon.com Digital Locker immediately after purchase.

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