Trademark

Trademark

What is a Trademark?

A trademark can be any word, symbol, phrase, design, or numeral that helps in the identification of the product to which it has been attached and assists the firm in promoting its product. The most commonly used marks are words and pictures; however, other distinguishable marks may also be used if they are capable of graphical representation. Whatever the chosen trademark is that has been registered, becomes the intellectual property of that company and no one else can use the same mark, which helps the companies in keeping their consumers intact.

To know more about process of Registration of Trade Marks, visit the wiki page on Trade Marks Registry

Official Definition of Trademark

As defined in legislation

The term mark as mentioned in section 2(1)m of Trade Marks Act, 1999.  Accordingly, it provides that "mark" can take many different forms, as long as it serves to uniquely identify and distinguish the origin of goods or services in the marketplace. The potential "marks" that can be protected include;, devices, Brands names, Headings, Titles, slogans, Labels, Tickets, Names, Signatures, Words, Shapes etc.

Section 2(1)(zb) of Trade Marks Act, 1999 defines what is a trademark. According to it, a trade mark is a mark that can be represented graphically. It is capable of distinguishing the goods or services of one person from those of others. It may include the shape of goods, their packaging, and a combination of colors.

The definition encompasses both registered and unregistered marks used in the course of trade. It includes both proprietors and permitted users of the mark. The connection to the right holder can be indicated with or without explicitly naming them. In case of registered Trademark both right against infringement and an action of passing off lies; however in case of unregistered Trademark holder only the common law remedy of passing off exists.

As defined in International Instruments

NICE Agreement, 1957

The International Bureau of the World Intellectual Property Organization (WIPO) has brought about the Nice Classification (NCL), as established by the Nice Agreement of 1957. This is an international classification of goods and services which is applied for the registration of trademarks.

The classifications are as follows:

Class	Classification of the Good or Service
Class 1	Chemicals used in Industry, Science, and Photography, as well as Agriculture, Horticulture, and Forestry. It also included those that go into the making of products belonging to other classes.
Class 2	Mainly paints, colorants, and preparations used for protection against corrosion.
Class 3	Non-medicated toiletry preparations, as well as cleaning preparations for use at home and other environments.
Class 4	Mainly Industrial Oils, Greases, Wetting and Binding Compositions, Fuels and Illuminants.
Class 5	Mainly includes Pharmaceuticals and Preparations for Medical, Veterinary, and Sanitary Purposes.
Class 6	Unwrought and Partly Wrought common metals, including ores, as well as certain goods made of common metals.
Class 7	Machines, machine tools, motors, and engines. (Except for land vehicles)
Class 8	Hand-Operated Tools and Implements for performing tasks like drilling, shaping, cutting, and piercing. (Except firearms)
Class 9	Includes apparatus and instruments for scientific or research purposes, audio-visual and information technology equipment, as well as life-saving equipment.
Class 10	Mainly includes surgical, medical, dental and veterinary apparatus, instruments, and articles generally used for diagnosis, treatment or improvement of function or condition of persons and animals.
Class 11	Includes mostly environmental control apparatus and installations, specifically for the purposes of lighting, cooking, cooling and sanitizing.
Class 12	Mainly includes vehicles and apparatus for the transportation of people or goods by land, air or water.
Class 13	Includes mainly firearms and pyrotechnical products.
Class 14	Precious metals and certain goods made of precious metals or coated therewith, as well as jewellery, clocks and watches, and parts therefor.
Class 15	Includes Musical Instruments, their parts, and their accessories. (Eg: Instruments by Yamaha)
Class 16	Mainly paper, cardboard, and certain goods made of those materials, as well as office requisites.
Class 17	Includes electrical, thermal, and acoustic insulating materials and plastics for use in manufacture in the form of sheets, blocks, and rods, as well as certain goods made of rubber, gutta-percha, gum, asbestos, mice or substitutes.
Class 18	Leather, imitations of leather and certain goods made of those materials.
Class 19	Included mainly materials, not of metals, for building and construction.
Class 20	Includes mainly Furniture as well as certain goods made from wood, cork, reed, cane, wicker, horn, bone, whalebone, shell, amber, mother-of-pearl, meerschaum, and substitutes for all these materials, or of plastics.
Class 21	Household and Kitchen utensils and apparatus, as well as cosmetic utensils, glassware, and certain goods made of porcelain, ceramic, earthenware, terra-cotta or glass.
Class 22	Includes Canvas and other materials for making sails, rope, padding, cushioning and stuffing materials, and raw materials and raw fibrous textile materials.
Class 23	Includes mainly natural and synthetic yarns and threads for textile use.
Class 24	Mainly Fabrics and Fabric covers for household use.
Class 25	Mainly clothing, footwear and headwear for human beings. (Eg: Zara, Fendi, Louis Vuitton)
Class 26	Includes Dressmakers' article, natural or synthetic hair for wear, and hair adornments, along with small decoratives intended to have multiple objects.
Class 27	Products like carpets, rugs, mats, and so on to cover previously constructed floors and walls.
Class 28	Products like games and toys (Like Hamleys) or apparatus for playing sports, sports equipment, items of amusement, and Christmas decorations.
Class 29	Foodstuff that can be animal or fish meat as well as vegetables and other horticultural products, prepared or preserved for consumption. (Eg. Licious)
Class 30	Foodstuff from Plants, except fruits and vegetables, prepared or preserved for consumption, along with auxiliaries for improving the flavour of food.
Class 31	Mainly Land and Sea products, not being subjected to any form of preparation for consumption, and include live animals, plants, and foodstuff for animals.
Class 32	Non-alcoholic beverages, including beer. (Eg. Carlsberg, Kingfisher, etc)
Class 33	Alcoholic beverages, essences, and extracts. (Eg: Jack Daniel, Bacardi, etc)
Class 34	Tobacco and articles used for smoking, as well as certain accessories and containers related to their use.
Class 35	Advertising services: business organization and administration, and management of office functions.
Class 36	Financial, monetary, and banking services like insurance, real estate, financial valuation, and other such transactions.
Class 37	Constructional Services like installation and repair services, mining extraction, oil and gas drilling.
Class 38	Telecommunication services like broadcasting and transmission of data. (Eg: BSNL, Airtel)
Class 39	Transport services for packaging, storage of goods, and travelling. (Eg: Dunzo, Uber, Ola)
Class 40	Services for Treatment of Materials, like recycling of waste, air purification, treatment of water, food, and drink preservation.
Class 41	Educational services like training, aimed at entertainment and presentation of visual arts or literature to the public for cultural purposes.
Class 42	Scientific and Technological services like laboratory services, engineering, computer programming, architectural services, or interior design.
Class 43	Services for providing food and drinks, and temporary accommodations. (Eg: Zomato, SATS)
Class 44	Medical and Veterinary services for humans and animals, and also services relating to agriculture, horticulture, aquaculture, and forestry.
Class 45	Legal and Security Services as well as certain personal and social services rendered by others to meet the needs of individuals.

Types of Trademarks:

Well Known Trademark:

The section 2(zg) of the Act defines well known trademark as “a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.”

Section 11(6) lays down the factors to be considered by the Registrar while classifying any Trademark as a well known Trademark.

1. The recognition of the Trademark in the relevant section of society.
2. The duration, extent and geographical area of use of the trade mark;
3. The duration, extent and geographical area of any promotion of the trade mark,
4. The duration and geographical area of any registration of or any application for registration of that trade mark
5. The record of successful enforcement of the rights in that trade mark,

However, these are not the exhaustive factors. Such fact was highlighted before the Bombay High Court in TikTok v. Registrar of Trade Marks (2023), whereupon the Court upheld the Registrar's refusal to recognize TikTok as a well-known mark under Rule 124 of the Trade Marks Rules, 2017.

The Registrar took the stand that despite TikTok being an immensely popular app with more than 2 billion downloads in 155 countries and 75 languages, the app was banned nationwide in India in 2020, citing national security and data privacy concerns, while the High Court stated that the Registrar is not bound by statutory factors but may consider any relevant fact, including public policy considerations.

This case adds to the scant Indian jurisprudence on what may constitute a well-known trademark. It gives an example, however, of practical and contextual considerations, such as conformity with national interest, prevailing over mere commercial popularity. The opposite approach is taken in Playboy Enterprises, Inc. v. Bharat Malik (2001), where the trademark Playboy was protected despite the product not being in circulation in India. The TikTok decision may represent a turn, stating that in certain cases, public interest and state policy may outweigh traditional trademark considerations.

Other Trademarks based on their nature:

• Product Mark: A mark that is linked to a product, helps to identify the source of production of that product. But it has no relation with any services.  
• Service Mark: it is the complete contrast of product mark, and is referred for the underlying service being provided.
• Collective Mark: A mark that is being protected by a group of people, denoting a particular class. For instance the mark of Chartered Accountant, as a prefix can be used by all those groups of people who have gained that position.
• Certification Mark: Indicative of the quality of the product. To know more check the wikipage on Certification Mark
• Color-blind trademarks are marks that do not rely on color as a distinctive element
• Trade Dress: the overall packaging of a product that includes the elements such as color combination, product shape, texture, illustrations and graphics taken together are known as Trade dress. To know more check the wiki page on Trade dress