Introduction
Trademark is one of the species of intellectual property rights. A trademark can essentially be a word, a logo, a type of packaging, a sound or any three-dimensional mark owned by the proprietor of such mark, which distinguishes the goods or services of the proprietor of the trademark from others. The proprietor of the trademark has a right to prevent any other entity or person from using the proprietor’s trademark.
Section 2(zb) of the Trademarks Act,1999 (“The Act”) defines a trademark as meaning a mark capable of being represented graphically, which is capable of distinguishing the goods or services of one person from those of others and which may include the shape of goods, packaging and combination of colours, etc.
Registration of a Trademark
The Act provides for the mechanism for registration of the trademark and a registered trademark is defined as a trademark which is on the register of trademarks as envisaged under section 6 of the Act and which remains in force.
Registration in a Specific Class only
Important aspect concerning registration of a trademark is that the registrar of the trademark is required to classify the goods and services in accordance with the international classification of goods and services for the purpose of registration of trademarks.
To give an idea of classification, it will be appropriate to mention that for example Class 1 pertains to chemicals used in industry, science, photography, agriculture, horticulture, forestry, etc., Class 30 relates to the goods items of coffee, tea, cocoa, sugar, rice, artificial coffee, flour, and preparations made from cereals, vinegar, etc. While classes 1 to 34 are assigned to different kinds of goods and Classes 35 to 45 are assigned to different kinds of services.
Registration in Multiple Classes
When a trademark is registered under the provisions of the Trademarks Act, the registration is under a specific class of goods or services as mentioned in the register. This is not to say that a business owner who is selling different kinds of goods and services falling in different classes cannot have registration of trademark for goods and services falling in multiple classes. In fact, Section 18 (2) of the Act expressly provides that a single application may be made for the registration of trademarks for different classes of goods and services and the fee payable therefore shall be in respect of each class of goods or services.
This means that a person who is providing different services or selling goods and say as many as 5 to 10 classes, can make a single application for registration of the trademark in all these classes subject to payment of the fee for each class.
Rights Conferred Upon Registration of a Trademark
Section 28 of the Trademark Act provides that a valid registration will give to the registered proprietor of the trademark the exclusive right to use the trademark in relation to goods or services in respect of which the trademark is registered and to obtain relief in respect of infringement of such trademark in the manner provided under Trademarks Act.
The right to use the trademark will also include the right to grant a license to any other entity to use the trademark or to permit any other entity to use the trademark under any commercial arrangements.
Remedies in Case of Infringement of a Trademark
Section 29 provides that if the registered trademark is infringed by any person who not a registered proprietor or a person using the trademark by way of permitted use, uses a mark identical with or deceptively similar to the registered trademark in the course of his trade then the trademark is infringed.
Section 135 of the act provides the court in any suit for infringement or for passing off the goods could grant an injunction against the use of such mark and at the option of the plaintiff, it could either grant damages or an account of profits, together with or without any order for delivery of the infringing labels and marks for destruction and erasure.
Rights and Remedies when Mark similar to Registered Trade Mark is used for Sale of Goods or services falling in a different Class
Usage of a mark for sale of goods or services in a different class will not be normally considered to be an infringement of a trademark and a suit for infringement could not be therefore filed.
Passing Off
However, the common law remedy of passing off could be availed by the aggrieved person. The owner of the registered trademark could file a suit to initiate an action for passing off the goods/services even when they are falling in a different class as this right is distinct from a right granted to the owner of the registered trademark under the Act by virtue of registration of the trademark. The action for passing off could be brought even by the user of an unregistered trademark.
The test for remedy of the passing off action is to look into whether two marks could be said to be deceptively similar. This could be established if the plaintiff has a long-standing reputation and goodwill in the market.
The aspect can be better understood from the observations in the case of Sunder Parmanand Lalwani and Ors. Vs Caltex (India) Ltd.[1], where Bombay High Court observed as under;
“In this case, the goods are totally different. There is no connection in the course of trade nor re there aany common trade channels. There are factors against holding that there would be any danger of deception or confusion but we must consider the factors that tend to show that there is a likelihood of creating deception or confusion while goods of Caltex (India)Ltd. were mainly petroleum, kerosene and lubricants etc. and the goods of the applicant (watches) were different in nature, Caltex (India) Ltd. was a large company known to have large resources and capable of starting any new industry or trade, creating a probability of the public believing that goods with the mark “Caltex” on them would be the goods of Caltex (India) Ltd. and a large number of persons if they see or hear about the mark “Caltex” in connection with watches, would be led to think that the watches were in some way connected with Caltex (India) Ltd. or they would at least wonder whether they were in any way connected with the said company.”
Accordingly, the Bombay High Court held that if the application for registration of a trademark in a different class was granted it was likely to cause deception and confusion. While this was a decision pertaining to opposition to the registration, the same principle will apply when someone is seeking to use a mark deceptively similar to a registered mark (for goods or services falling in a different class) which is likely to confuse the minds of a large number of people, such person could be restrained.
Infringement Action
In the scenario envisaged under section 29 (4) of the act, the use of a mark similar to the registered trademark for sale of goods/services can be considered an infringement. For such action for infringement, the conditions which are required to be conjointly satisfied as detailed in Section 29 (4) Act are: –
“(a) the mark is identical with or similar to the registered trade mark; and
(b) the mark is used in relation to goods or services that are not similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.”
The principles pertaining to infringement action for the usage of the mark for sale of goods or services in a class different from the class under which the trademark is registered are explained in the case of Aktiebolaget Volvo & Ors. Vs Mr Vinod Kumar & Ors.[2]. The court held that in the facts of the case, usage of the mark Volvo in respect of ice cream amounted to diluting the trademark and trade name of Aktiebolaget Volvo. Using the word Volvo in respect of ice cream would certainly give an impression as if said ice cream belonged to the same family of companies which manufactured quality products in different fields including buses and cars.
While passing off action for usage of the mark for goods or services in different classes requires confusion in the public and the likelihood of injury to the plaintiff’s goodwill, infringement action for usage of goods falling in a different class additionally requires proof that the registered trademark has an India-wide reputation.
Application under Companies Act, 2013
It will be worthwhile to mention that if any company is registered with a name that is identical with or nearly resembling a registered trademark, proprietor of registered trade mark can make an application under Section 16 of the Companies Act, 2013 to the central government within three years of incorporation of registration of the company and if the central government forms an opinion that the name is identical with or too nearly resembles an existing mark, it could issue directions to the company to change its name.
While Section 16 of the Companies Act, 2013 is silent about whether such an application could be made if the company with a name similar to the registered trademark is dealing with the goods or services falling in class other than the class for which the trademark is registered and theoretically an application could be made against the company even if it is dealing in goods or services falling in a different class, it is believed by the author that for such action against a company dealing in goods falling in different classes, satisfaction of s.29(4) of the Trademarks Act, 1999 may be essential.
*The content of this article is intended to provide general information. No reader or user should act or refrain from acting on the basis of the information written above without first seeking legal advice from a qualified law practitioner.