Trade Marks- Introduction

A "mark" has been defined under Section 2 (m) of the Trade Marks, Act 1999 as which includes a device, brand, heading, label, ticket, name, signature, word, letter,numeral, shape of goods, packaging or combination of colours or any combination thereof 1999

Strength of Trade Marks

Trade Marks can be classified into 5 types depending upon their strengths for example A Fanciful Mark enjoys the highest and the maximimum protection followed by an Arbitrary trade mark an example of which would be Apple for Computers . The next in line is Suggestive Trade Marks which merely suggests and does not describe directly for example Penguin for Refrigerators , such a trade mark considered a strong trade mark . The next in line is Descriptive which can acquire distinctiveness through secondary meaning which means after long use has acquired distinctiveness . The last in strength is Generic trade marks which actually have no trade mark significance for example Xerox for photocopies.

Concept of Deceptive Similarity

The Hon'ble Supreme Court in the decision reported as 1969 (2) SCC 131 K.R. Chinna Krishna Chettiar Vs. Shri Ambal and Co., Madras & Anr. held that the resemblance between the two marks must be considered with reference to the ear as well as the eye.

Essential features of a Trade Mark

Identification of essential features of the trade marks has been discussed in details in the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories and very recently in Delhivery Private Limited v. Treasure Vase Ventures Private Limited, 278 (2021) DLT 485


Prior User of a Trade Mark

A registered proprietor cannot disturb or interfere with the rights of a prior user of a trademark even if the prior user is not registered. Hon’ble Supreme Court in Syed Mohideen Vs. P. Sulochana Bai (2016) 2 SCC 683 . Division Bench of High Court of Delhi in Rajkumar Prasad Vs. Abbott Healthcare 2014 SCC OnLine Del 7708.8.

Dominant Element in a Trade Mark

A registered proprietor cannot disturb or interfere with the rights of a prior user of a trademark even if the prior user is not registered. Hon’ble Supreme Court in Syed Mohideen Vs. P. Sulochana Bai (2016) 2 SCC 683 . Division Bench of High Court of Delhi in Rajkumar Prasad Vs. Abbott Healthcare 2014 SCC OnLine Del 7708.8.

Domain Registration

In NRB Bearings Limited v. Windsor Export, 2014 SCC OnLine Del 1672, this Court reiterated that a domain name serves the same function as the trade mark and is not a mere address or CS(COMM) 675/2019 Page 14 of 19 like-finding number on the internet and, therefore, is entitled to equal protection as a trade mark. Where there is a probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently.