By: Gauri Bansal


The term “trademark” is often used interchangeably with “brand. The Apple “bite” mark and the Nike “swoosh” are trademarks. When used in the context of digital products and services, trademarks can be referred to as marks An identifiable emblem, phrase, word, or symbol that designates a certain product and legally distinguishes it from all other items of its sort is referred to as a trademark. A trademark is a symbol that uniquely identifies a product as belonging to a certain firm and acknowledges that company’s ownership of the brand. Trademarks are a type of intellectual property that can be registered or unregistered. A trademark, according to Section 2(zb) of the Trademark Act of 1999, is a graphical representation capable of differentiating products and services held by one person from those owned by others in the market, and includes the shape of items, colour combinations, and packaging. The basic aim of a trademark is to distinguish itself from other trademarks in the same class of products and services, thus a distinctive mark is the ideal sort of trademark. It is not necessary to register your trademark under the Trademark Act. A trademark, once registered, provides the owner with legal rights and protection for ten years, and this time can be extended if the trademark is renewed. A trademark has several advantages, including ease of marketing, providing a distinct brand, and serving as a source identification.


We are more likely to ask for a band-aid than a “self-adhesive bandage with sterile cotton lining.” Johnson & Johnson (JNJ), a consumer products and pharmaceuticals conglomerate, began producing sterile gauze dressings in 1887. But it wasn’t until 1920 that the BAND-AID® Brand adhesive bandage was introduced. Earle Dickson, a cotton buyer for Johnson & Johnson, invented the band-aid: In the kitchen, Dickson’s wife was prone to cutting her fingers. Dickson desired a simple bandage that his wife could apply. By inserting a strip of gauze along the middle of a long stretch of surgical tape that he covered with fabric to keep the adhesive from adhering, he integrated two of the company’s early products (adhesive tape and gauze). His wife may then use a piece of tape and a gauze pad to bind her wounds. Dickson showed his innovation to his supervisor, who informed firm president James Wood Johnson, and a new product was born.


Symbol for the product It’s a trademark for items or merchandise, but not for services. The product mark is used to identify the supplier, the product’s reputation, and its origin. Product markings are trademark applications filed under class 1-34 of the Fourth Schedule To The Trade Marks Rules, 2002. Trademark for a service It’s comparable to a product mark, except it’s intended to distinguish a service rather than a product. A service mark is a trademark application filed under class 35-45 of the Fourth Schedule To The Trade Marks Rules, 2002. WORD MARK A trademark is often filed as a wordmark or a device mark. A wordmark is a trademark that consists just of a word or text, with no stylization or any creative components. Because it permits the owner to use the wordmark in all styles, forms, and representations, this sort of registration provides the most legal protection for a trademark. LITTLE HEARTS and COCA-COLA are two examples of registered work marks. DEVICE MARK In addition to the element of the wordmark, a device mark frequently includes an aesthetic element such as symbols or an artistic or graphical image. It usually consists of a wordmark and other aesthetic components. These aspects in a device mark might be a mix of trademarkable and non-trademarkable properties. The composite mark that is being registered is protected by this form of mark, but not the individual pieces. Surprisingly, when a device mark is registered in colour, the protection is restricted to the colour combination in which it is registered. A registered device mark that is black and white in colour, on the other hand, provides greater protection because the owner can claim colour protection for such a device registration.


India’s trademark protection requirements under the TRIPS Agreement include, among other things, protection of distinguishing marks, recognition of service marks, indefinite periodical renewal of registration, abolition of forced trademark licencing, and so on. The Indian judiciary has taken a proactive approach to trademark protection, extending trademark protection to domain names in historic judgments such as Tata Sons Ltd. v. Manu Kosuri & Ors [90 (2001) DLT 659] and Yahoo Inc. v. Akash Arora [1999 PTC 201]. The idea of a “Well-Known Trademark” and the “Principle of Trans Border Reputation” are recognised by ndia. In relation to any goods or services, a well-known Trademark is one that has become so well-known to a significant segment of the public who uses or receives such goods or services that the use of such a mark in relation to other goods or services is likely to be interpreted as indicating a connection between the two marks. In the landmark decision of N. R. Dongre v. Whirlpool (1996) 5SCC 714, the Apex Indian Court recognised and addressed the notion of trans-border reputation. In India, the trademark “WHIRLPOOL” was said to have developed a reputation and goodwill. Despite no proof of actual sale, the mark “WHIRLPOOL” was judged to have become linked with Whirlpool Corporation in the minds of the public due to the dissemination of advertising in magazines. As a result, notwithstanding its actual usage or registration in India, the trademark WHIRLPOOL was found to have established a trans-border reputation that is protected in India. Legal Remedies against Infringement and/or Passing off Both civil and criminal remedies are available against infringement and passing off under the Trade Marks Act. Infringement of a trademark is when the registered owner of the trademark is denied the exclusive right to use it. A trademark is deemed infringed when a non-permitted user uses an identical/similar/deceptively similar mark to the registered trademark without the permission of the brand’s registered holder. However, it is important to remember that Indian trademark law, which is founded on common law principles, preserves a prior user’s vested rights against a registered proprietor. The common law tort of passing off is utilised to enforce unregistered trademark rights. Passing off happens when party B misappropriates party A’s trademark reputation, such that party B misrepresents itself as the trademark’s owner or as having some affiliation/nexus with party A, causing party A’s goodwill to be harmed. The registration of a trademark is immaterial in a case of passing off. In India, trademark registration is not a need for pursuing a civil or criminal action for trademark infringement. A combined civil action for trademark infringement and passing off can be filed in India. Infringement of a trademark is a punishable offence, and criminal charges can be brought against the infringer. Such enforcement measures are intended to improve trademark protection in India and minimise trademark infringement and violation. Penalties and Fines In the event of a criminal action for infringement or passing off, the offence is penalised by a period of imprisonment of not less than six months but not more than three years, as well as a fine of not less than INR 50,000 but not more than INR 200,000.

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