Meaning of Mark, Trademark and Concept of Distinctiveness

Meaning of Mark and Trademark

Mark is a distinguishing symbol which any person can use to exert public attention or to create some kind of impression in the minds of the peoples. When he wants that public do notice his creativity then he can use a mark for his creativity. Mark can be represented as a name, letter, shape of goods, heading, label, device, combination of colours etc.

Trademark is a brand entity which has a capability to distinguish your goods and services from any other persons goods and services. It is used by peoples so that any other persons do not dare to copy your goods or services. Trademark includes word, design, logo, shape of goods, their packaging and combination of colours. Trademark is used to indicate a connection between the goods or services and the person who has a right to use the mark as a proprietor.

Every person in his whole day watch atleast 50 different different trademarks like trademark of Google, Mcdonalds, Nike, Tide, Dettol, Microsoft, etc. So to sell your product in today’s time it is very important to do branding or promotion of your product. It maintains your goodwill in the market and it is not compulsory to register your trademark So you can use your trademark without any registration[1].

But the registration of the trademark is compulsory because it protects and promote your different and creative ideas. So those trademarks that are considered as different by the trademark department are granted registration only in India. Trademark has been defined under Section 2(zb) of  the Trademarks act, 1999. It is used on articles of commerce. A trademark in India is registrable for maximum period of 10 years thereafter you can renew it again. If you get registered your trademark then you are allowed to take action for its infringement but you are not allowed to take action for infrigement for non registered trademark.

It will be beneficial for the owner of the trademark if his trademark is easy while speaking or spell or remember and before taking the trademark the owner has conducted a survey in the market regarding the trademark which he is going to take[2] or he can search in the trademark database given at the official website of the trademark because there he can get complete information regarding various trademarks that are already registered or rejected.

The Supreme Court in the case of  Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories held that in an action for infringement of the trademark the burden would be on the Plaintiff to show that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar.

Concept of Distinctiveness of Trademarks

In this concept we will study about the Distinctiveness of the trademarks because Trademark’s act, 1999 registered only those trademarks which are distinctive in nature because trademarks without distinctiveness is considered as a weak trade mark for the trademark registration. Distinctiveness is the quality of being different from the other things. If a mark is not distinctive then it can create confusion in the minds of the consumers of the products regarding the origin of the products or services it represents. There is one way to obtain distinctiveness of trademark is when the owner of the trademark is continuosly from a very long time using the trademark. For prevention of such confusion, Section 9(1)(a) of the Trade Marks Act, 1999 prohibits the registration of the marks which have no distinctive in nature.

An invented mark is easily registrable because they have distinctive in nature. Invented marks are those marks which you have invented by using your own mind and it is not available in any dictionary or anywhere else.

An arbitrary (random) mark is also easily registrable because these marks have a meaning in dictionary before being adopted as trademarks, but these marks are used with those products or services which are not related to that meaning of dictionary. For example – Apple for computers and subway (which is being used for restaurants).

A suggestive mark is also easily registrable. They describe the quality of the products and these types of marks requires consumers preception or imagination about the product.

A geographical name can be registered as a trademark if its distinctiveness is proved.

So, the marks that indicate what the products or services are or marks that are in common use, generally does not get registrable as trademarks because they are not distinctive in nature.

Important Case Laws with respect to Trademarks

•   M/S. ITC Limited vs. Nestle India Limited[3]

The dispute between the plaintiff and the defendant in the present suit arose on account of adoption of the deceptively similar name “Magical Masala” by the defendant for marketing purpose of its noodles. But the plaintiff had already introduced its sunfeast yippie! Noodles Magic Masala”. It was submitted that the name “Magic Masala” had become distinctive and was identified very soon by the public as that of the plaintiff. It was also submitted that due to great quality and affordable prices, noodles bearing the above name “Magic Masala” earned huge profits and got extraordinary success. But the defendant introduced its variant “Maggi xtra-delicious Magical Masala” to gain profit on the goodwill of the plaintiff. After threatened by the plaintiff, defendant adopted “Magical Masala” but it was submitted that defendant copied the name “Magic masala by little tweaking it by adding “al” to the word “Magic”.

Plaintiff wants a permanent injunction restraining the defendant, their directors, servants, agents from passing off their products noodles by use of the offending mark “Magical Masala” or any mark similar to plaintiff’s mark “Magic Masala”.

Held – Though the defendant adopted the name “Magical masala” after inspired from the adoption of the name “Magic Masala” by the plaintiff and from the success of the plaintiff. There is no passing-off by the defendant so the plaintiff is not entitled to succeed in a passing-off. As there is no visual similarity between the two wrappers, there is no scope to infer passing-off from a visual comparison of the two labels. The suit is dismissed. The plaintiff is not entitled for any of the reliefs as prayed for.

•   Geepee Ceval Proteins vs. Saroj Oil Industry[4]

The plaintiff has filed this application for grant of ad-interim injunction restraining the defendants from manufacturing, selling, offering for sale or advertising directly or indirectly of edible oil under the trade mark “CHAMBAL” or any other trade mark or packing material amounting to passing off the trademark of the plaintiffs or amounting to association with the plaintiffs.

Plaintiff has involved in the business of manufacturing of edible oil. He was selling its various oil products under the trade mark “CHAMBAL” since 1997. The trade mark “CHAMBAL” has acquired distinctiveness after so many years because of large advertisement in printed form and electronic media over which the plaintiff had spent a large amount. In February, 2003 the plaintiff came to know that the defendant is also selling oil manufactured by it under the trade mark “CHAMBAL” using the same packaging and label. The defendant did not stop from doing so despite of service of notice. The defendant contested that the trade mark used by the defendant was “CHAMBAL DEEP”, which is adequate to distinguish it with the trade mark of the plaintiff.

Held – The word ‘Chambal’ used by the plaintiff and the word ‘Chambal Deep’ used by the defendant are deceptively similar and they are likely to cause confusion and deception in the mind of the consumers and others in the trade. Plaintiff is likely to suffer greater inconvenience than that of the defendant if ad interim injunction prayed for by him declined at this stage. Plaintiff is using the trademark ‘Chambal’ since 1997′ whereas the defendant has just started using it very recently in 2001, according to its own averment in the application for registration of the trademark. The balance of convenience is, therefore, in favor of the grant of interlocutory injunction. Plaintiff may also suffer irreparable loss and injury if the defendant is allowed to continue to sell its products also in the trade name of ‘Chambal Deep’ during the pendency of this suit.

It was held that the plaintiff has been able to establish his case for grant of interlocutory injunction, as prayed for in the application. Accordingly, the application is allowed and the defendants, their servants, agents, dealers, shop keepers and all other persons on their behalf by way of ad interim injunction order are restrained from manufacturing, selling, offering for sale or advertising directly or indirectly in dealing in order oil under the trade mark ‘CHAMBAL’ or any other trade mark or packing material amounting to pass off of the trade mark ‘CHAMBAL’ of the plaintiff or any other trade mark or packing material amounting to association with the plaintiffs.

•   Brahmos Aerospace Pvt. Ltd. Vs Fiit Jee Limited & Anr.

The plaintiff, Brahmos Aerospace Pvt. Ltd. has filed the present suit for permanent injunction restraining infringement of the trademark, passing off, unfair competition, rendition of accounts, damages, etc. against the two defendants, namely, FIIT JEE Limited, New Delhi and USA Univ. Quest, New Delhi. It is claimed that the trademark “BRAHMOS” is an eminent well-known and reputed trademark of the plaintiff-Company and plaintiff regulates various educational programmes pertaining to the aerospace industry, including training of its employees and engineers. The defendants have shadily adopted the same trademark in respect of the same services in order to give an impression to students that their online test is affiliated to the plaintiff. Some of the students belonging to Delhi had gone to the plaintiff’s office many times and have also sent e-mails for making inquiries whether taking the BRAHMOS aptitude test of the defendants entitles them for jobs or internships in the plaintiff-Company.

Defendant No.1 is a coaching institute in New Delhi which tutors engineering aspirants for differents entrance exams in India, like NTSE, KVPY, IIT-JEE. Defendant No.2 is a company which is in some way related to defendant No.1. The defendant No.1 is advertising a course made for Indian students to get admission in colleges located in the United States. Both the defendants are in the realm of education and they are advertising the mark BRAHMOS in various forms of print, digital and internet advertisement constituting a visual representation. It is alleged that by adopting the same trademark BRAHMOS for the above said aptitude test the defendants are encashing the massive goodwill attached with the mark BRAHMOS of the plaintiff and the confusion is hence bound to occur, as the defendants are showing that somehow they are affiliated with the plaintiff.

Held –  Under these circumstances, the plaintiff has been able to make out a strong prima facie case for the grant of interim injunction. Since the plaintiff is the registered proprietor of the trademark, the case of infringement is also made out and the balance of convenience also falls in favour of the plaintiff and against the defendants. So in this case, the defendants are not allowed to use the trademark BRAHMOS to conduct in the course of trade as alleged by them, they can use another name in order to avoid the confusion and deception. At the same time, if the interim order is not passed, the absolute right of the plaintiff to take benefit of goodwill, name and reputation would be breached. The plaintiff will also suffer an irreparable loss and injury in case the interim order is not passed.

Taking into Consideration the overall facts and circumstances of the case, the defendants, their servants, agents and all other persons acting on their behalf are restrained from using the trademark BRAHMOS in relation to educational activities or part of domain name and in any manner whatsoever in order to create the confusion and deception and infringing the trademark of the plaintiff. The application of the plaintiff is accordingly allowed.

[1] https://www.mondaq.com/india/trademark/537964/difference-between-unregistered-and-registered-trademark#:~:text=The%20Trademarks%20Act%20deals%20with%20the%20laws%20relating%20to%20trademarks,protected%20and%20has%20certain%20benefits.

[2] https://taxguru.in/corporate-law/trademark-meaning-examples-application-procedure-cancellation.html

[3] https://indiankanoon.org/doc/30082527/

[4] https://indiankanoon.org/doc/567112/

Author Details: Nikhil Jain (Delhi Metropolitan Education, GGSIPU)