- CJ ASSOCIATES, 10-12-2024
• Explanation of the term business :
It is indeed very difficult to define the term business. In common parlance, business can be said to be commercial activity and/or transaction between the parties for a certain object. It is nothing but exchange of something against consideration.The persons engaged in such activity can be said to be businessmen or traders. It is quite obvious that a trader engaged in any commercial activity would inevitably put great endeavour to protect his or her business. A trader who has been continuously shoving efforts would leave no stone unturned to safeguard his or her business reputation and goodwill earned over so many years of hard labour and business intellect. That is why it is of utmost importance to shield the valuable rights accrued in the business. A simple answer to this query is by adopting a trade mark which is capable of distinguishing the goods and/or services of that particular trader from other traders in the same course of trade or business. In this connection, let us discuss what is meant by trade mark.
• Definition of trade mark :
To put it very simply, trade mark means a mark by which the trader does business. A trade mark is nothing but an indication and/or source of origin by which the trader’s identity can easily be determined. If we split the expression then it would be like
TRADE MARK = TRADE (business) + MARK (identity)
Section 2(m) of Trade Marks Act, 1999 defines the term Trade Mark as follows
“mark†includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;
• Illustration :
Therefore, a mark is the identifying feature by which the business of a trader is distinguished from other traders in the course of trade. Let us understand it by an example-
The famous company ITC Ltd is India’s biggest tobacco company which has currently diversified into FMCG segment. By dint of extensive use for a couple of decades the said trade mark “ITC†has become so popular and well known that everybody in the course of trade easily distinguish that is to say identify the products being sold under the said mark to have been originated from the business of this company only. The said mark “ITC†has thus become a brand in the country of which all of us are well aware of.
Let us take another example-
• Illustration 2 :
We all know about the famous company Reliance Industries Ltd, being especially known for its director and key person Mr. Mukesh Ambani. Now, this company is all along engaged in the business of petrochemicals and natural gas. But later on, this company has diversified into other businesses as well amongst which retail sector and telecommunication sector have mostly become popular. This company since its business has been using the mark “RELIANCE†which forms part of it’s corporate name. By referring to this mark “RELIANCE†we all gather a general impression that any products or services being sold and/or offered to the public are hailing from the business house of “Reliance Industries Ltdâ€. The term “RELIANCE†therefore indicates the trade origin of the products or services. This term is thus called trade mark.
WAYS TO PROTECT THE TRADEMARK –
i) PRIOR AND BONA FIDE ADOPTION :- The adoption of the trade mark must be in good faith. The very adoption has to be bona fide otherwise the trader shall not get any protection. If it is found that the trader dishonestly adopted a trade mark he is not entitled to get any protection for the mark.It is relevant to mention in this regard that a person ought not copy and/or imitate any earlier trade mark of different trader.
Let us assume Mr. X intends to adopt a trade mark “AAAâ€. Now the legal proposition is that Mr. X must make it sure that the aforesaid mark which he intends to adopt is not similar or has not at all been adopted and/or used by someone else otherwise Mr. X would not be able to get any protection over the intended mark. It may not be out of place to note that in order to ascertain whether a new mark is available for adoption in the course of trade one should verify it from the official website of the Trade Marks Registry. If it is found that the mark indeed is available for adoption the trader may adopt the mark and the same shall be treated as bona fide adoption.
Further, the adoption of the mark has to be prior in trade. It must not be subsequent to anyone in the course of trade. If the trader has adopted a trade mark that is to say a new trade mark in that case it is one of the requirements that no one had ever adopted the same trade mark in respect of that trade or business.
The Trade marks Law is very specific on this point. It says that in order to protect a trade mark or accrue any legal right in respect of the mark so adopted the trader or that person must adopt the mark prior in point of time and in good faith. The notion is one must not imitate any one existing from a prior point of time.
In N. R. Dongre v. Whirlpool Corporation &Ors {1996 (16) PTC 476} it was explicitly laid down that registration of a trade mark does not provide a defence to the proceedings for passing off since as per the provision of Trade Marks Act,1999 a prior user of a trade mark can maintain an action for passing off against any subsequent user of an identical trade mark including a registered user thereof.
From the language of the aforesaid judgment it is evident that registration itself does not create a right in respect of a trade mark. It (registration) does not confer any new right to the mark or any greater right than what already existed at common law and at equity without registration. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected. Thus, it is mandatory to use the mark from prior in point of time in order to get protection over the mark. A prior user of a trade mark has better and superior right to that of prior registrant of a mark. Hence, the very adoption has to be in good faith and the simple way to make sure of it is to show prior adoption.
ii) CONTINUOUS USE : Long continuous use goes hand in hand with prior bona fide adoption. It is one of the ways to protect a trade mark is by simply using the same uninterruptedly since it’s adoption. Without continuous use, no trader can seek any protection of the mark so adopted even if the same was adopted prior in point of time. The notion is if a trader merely adopts a trade mark in good faith prior to other trader or traders and after adoption does not use the same for a certain period and in the meantime if some one else starts using the similar mark and continues the usage of the impugned mark then the prior trader cannot prevent the subsequent trader from using the same even if he (the first person) adopted the mark prior to the second one who is a subsequent entrant in the course of trade. Thus, the idea is to not merely adopt a trade mark and keep it under the table but to continue with the user of the same in the course of trade so that sufficient distinctiveness can be acquired amongst the members of the trade and public at large
In Century Traders v. Roshan Lal Duggar & co. { AIR 1978 DELHI 250 }, it was held that actual use of the trade mark showing an intention to adopt and use it as a trade mark is the test rather than the extent or duration of the use. A mere casual, intermittent or experimental use may be insufficient to show an intention to adopt the mark as a trade mark for specific article or goods.
Thus, the above stated are the ways to protect the trade mark of a trader. If you have any query regarding the subject topic you may contact us at the email ID given herein-below.