June 13, 2021

Categories of Trademark: Certification Marks, Collective Marks, Well known Marks and Non-Conventional Marks

Trademark

Trademark is an intellectual property consists of signs, designs, expressions or other distinguishing factors which identifies different products and services. Indian protects trademarks under the Trademarks Act 1999. There is a general classification of trademarks into four categories according to description and nature of the products and services. These four categories are Classification Mark, Collective Mark, Well Known Mark, and Non-Conventional Marks. Certification Trademark is a mark which distinguishes goods or services based on the origin, material, mode of manufacture, performance of services, quality, accuracy, and other characteristics.

Section 2(1) (e) of Indian Trade Marks Act defines a certification mark as “a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade. WOOLMARK certify that a product is made of 100% is wool, ORGANIC INDIA is a trademark which satisfies a method or mode of manufacture, ISI mark is given for the products which have some standards laid by the Bureau of Indian Standards. The trademarks Act 1999 has a detailed provision for types of information that must be included in giving application of the trademark.

Applicants must submit a certification Trademark application, a statement of case that sets out the grounds of the application. The application must be filed to the Indian Trademark registry and they will check whether the application satisfies with the necessary requirements as per the Indian law. If the registry is satisfied by the requirements given by the applicant, then it will be published in the trademarks journal. The application will remain open to opposition by any third party within four months. The certificate Trademark will be registered if there is no opposition. The term of registration for a certification Trademark is 10 years. There are provisions to cancel a certification trademark if an aggrieved party approaches the register, when the proprietor is no longer competent to the trademark, when the proprietor has failed to observe any provisions of the regulation given under the law and when the register thinks that there is no advantage to the public.

Collective marks are trademarks to protect and to differentiates the geographical origin, material model of manufacture or other common characteristics of goods or services. Collective Trademark is owned by an association or organisation. It is used by their members to identify with their level of quality for accuracy. Article 7 of the Paris Convention talks about collective marks, which mentions that the countries shall protect collective marks even if those associations do not have an industrial establishment and each country has the authority to decide which collective marks are to be protected. They may refuse to protect a collective mark if they feel it is opposed to any public policy.

The importance of collective mark is that certain products are linked to the region, and there may be historical cultural and social condition which make some products worthy. Just like the certification mark collective marks cannot be applied by anyone. For example, any gold jewellery which conforms to all the standards laid by BIS can have the Hallmark on it to show its level of purity, but only people who are members of CA can use the mark of a CA. Collective Trade Mark in the Indian context is defined in section 61 of the Trade Marks Act, 1999. The members of the collective mark can use the collective mark. The classic example of collective mark is case of “Chirimoya Cumbe[1].

It is a native fruit of Peru and Ecuador. It has a value in that area where the climatic conditions are favourable for growing chirimoya. The fruit produced in that area is of superior quality and it is characterized by large food size, greater in value of their skin and low seed ratio. A farmer in 1997 applied for registration of trademark chirimoya Cumbe in Peru. The application for registration was rejected on the grounds that an individual cannot have exclusive rights in the generic names. Again, he met with the officials and told the importance of chirimoya Cumbe with the community in Lima village. After long battles it was registered as a collective mark and the people of Cumbe would be the owners of this collective mark and they can use the mark as per the rules laid down to them.

Thus, collective trademarks are an effective tool for promoting products of a particular region that are peculiar to that region. A collective mark enhances the marketing of such products and cooperation among the local producers. Correct use of the collective mark can assist the company in Goodwill building in terms of quality, accuracy, origin at an early stage.

Well known Trademark was introduced during the year of 2017. At present the list has 81 trademarks declared as “well-known” by judicial and quasi-judicial authorities in India. Anyone can file an application for a well known trademark for safeguarding and protecting against passing off an infringement of trademark. Well known Trademark are recognised in India on the basis of the reputation nationality, internationally and cross-border. Registrar while determining whether a mark is well-known in a relevant section of public shall take into account the actual number of consumers, the number of people involved in the channel of distribution of goods or services and the business circles dealing with the goods or services. When a person applies for well known trademark no one can use that name for any other services. For example, Google has been trademark by Alphabet Incorporation. They can only use Google for any goods and service, and no one can use even if it is not related to internet industry.

In the case of Daimler Benz V Hybo Hindustan[2] the defendant was using the logo and the word Benz for which plaintiff got an injection. The court recognised that plaintiff has this logo as a well known trademark on the ground of transborder reputation and Goodwill granted injunction against the use of logo and other things by the defendant.  In the case of Rolex Sa V Alex Jewellery Private Limited & ors[3]is a similar case. A company was using the trade name of “Rolex” for making artificial jewellery which was a well known brand for watches. Plaintiff gave a case against the defendant for using the trade name Rolex. The court held that the people would get confused when they see the name Rolex and also said that the watch company Rolex has a well known Trademark. This will be affecting the business and goodwill of the plaintiff. For this reason, the court considered Rolex to be a well known Trademark and granted injunction against the act of the defendant.

Rule 124 of Trade Mark Rules 2017 permits the trademark owners to file a request for grant of “well-known” trademark to the Registrar in form TM-M. Before the coming up of this rule, a mark was declared well-known only after proceedings, rectification and opposition held before the Hon’ble courts. With the commencement of this rule and the procedure laid thereof, a trademark owner can request for a well-known trademark without getting into any proceedings or rectifications. Rule 124 ensures a trademark to be granted the tag of “well-known” merely by an application of request to the Registry. Section 11 (2) of trade marks Act 1999 protects the well known trademarks. According to this clause well known trademarks are to be recognised and protected across all the classes of goods and services. This also means that any identical or similar product can also be not there.

Section 11 is also giving the conditions required for well known Trademark registration and filing of a well known trademark application. It should be given with the relevant documents, evidence and a fee of 1 lakh rupees. There are remedies available to an owner of well known mark when someone misuses it. If someone misuses it, he can be punished punitively. The owner can seek cancellation of infringing mark. The owner can cancel registration of a trademark which is same or similar to the well known mark even is a well-known Trademark is not registered in India.

In the TATA case the court awarded punitive damages of rupees Two lacs to the plaintiff for misusing the well known trademark. There is a vulnerability of well known Trademark in the cyber age. As there is an advancement of technology, fast access to information, international business, international travel and advertisement there is a need of well known trademark. The jurisdiction of the well known trademark should be applicable to all countries because the world is connected now. The Multi National Companies are more vulnerable and they will lose their reputation if someone misuses it.

In the modern world trademarks are not limited to words, logos or symbols which can be graphically represented in relations with any goods or service. Sometimes the sound, taste, smell, texture, Hologram, motion, shape and ambiance of the goods and service can be treated as a trademark. As this trademarks are beyond the realms of traditional conventional category these trademarks are called as non conventional mark. Under the rule 26 (5) of Trademark rule 2017 there was a mention of sound trademark. International organisation like TRIPS still have to make provisions for non conventional marks.

Yahoo Idol has registered the first Sound Mark in India in 2008. India also does not have any provisions for non conventional marks. There should be amendments in both rules of TRIPS as well as in the legislation of India because non conventional marks have become such an important mark in the present modern world. Examples of smell marks are toothbrush with the smell of strawberry, lubricants for combustion engines etc. In India no smell mark has been registered till date. There are some problems with it because it cannot be stored or represented easily. Writing down of the chemical formula for a smell is the only way to represent it.

In the case of Shield Mark BV v. Joost Kist[4] The European Court of Justice has decided some conditions under which sound Trademark must be registered. It is a Landmark case which gave the guidelines for sound trademark. The court held that sound trademarks are capable of being trademarks under the article 2 of European directive 89/104 if they are capable of distinguishing the goods or services from one another and represent it graphically. In this case the court also held that sound trademarks can be represented graphically using images, lines or characters and the representation should be clear, precise, self-contained and easily accessible.

In the case of Ralf Sieckmann v. Deutsches Patent und Markenam[5] is a landmark judgement given by European Court of Justice on the trademark of smell. The case involved a methyl cinnamate cent which the applicant has described and brought sample of the product. The court held that the chemical formula is not giving the proper smell of the substance and not sufficient, clear or precise. The physical deposit of the sample did not constitute graphical representation and was not sufficiently stable or durable. These are the difficulties in getting the smell trademark.

In the case of Eli Lilly v. OHIM there was a case where an application was filed before the Office for Harmonisation in the Internal Market to trademark the flavour of strawberry for pharmaceuticals. This was rejected on the grounds that it lacked any distinctive character. The mark was presented with a verbal description and thus lacked a written description to be filed mandatorily in order to describe the mark. Thus, it can be concluded from this judgement that applying for a taste mark for a medicine is a futile exercise as this is generally done to offset to bitter taste of the medicines.

Adding a flavour to a medicine is usually performing a functional aspect of the product. New kinds of trademark will come as the technology and business progress. These are necessary to resolve the conflict between the producers and to bring healthy competition among the business. These trademarks are also valuing the hard work of each labours who work behind the product or service.


[1] https://www.wipo.int/ipadvantage/en/details.jsp?id=2561

[2] AIR 1994 Del 2369

[3] 2009 (41) PTC 284 (Del.)

[4] Case C-283/01 in The European Court of Justice.

[5] case C-273/00 ECJ

Author Details: Istinaf Abdullah (Alliance School of Law, Bangalore)

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