"Trade Mark" means a registered trade mark or a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark ; and a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark. (See Section 2(v) of the Trade and Merchandise Marks Act, 1958)
In other words, a trade mark is a visual symbol in the form of a word, a device, or a label applied to articles of commerce with a view to indicate to the purchasing public that they are the goods manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt in by other persons. A person who sells his goods under a particular trade mark acquires a sort of limited exclusive right to use of the mark in relation to those goods. Such a right acquired by use is recognized as a form of property in the trade mark, and protected under common law. A person can also acquire a similar right over a trade mark, not so far used but only proposed to be used, by registering it under the Trade and Merchandise Marks Act, 1958. The law of trademarks is based mainly on two concepts ; distinctiveness and deceptive similarity.
The function of a trade mark is to give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods, to give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market. It tells the person who is about to buy that what is presented to him is either what he has known before under the similar name as coming from a source with which he is acquainted, or that it is what he has heard of before as coming from that similar source. It gives the purchaser a satisfactory assurance of the mark and quality of the article he is buying, the particular quality being not discernible by the eye. It is on the faith of the mark being genuine and representing a quality equal to that which he has previously found a mark may be used to indicate not only that the goods are of a particular maker but are goods of that maker of a particular kind or quality. Thus a trader may indicate his best quality by one trade mark, his second quality by another trade mark and so on.
Under modern business conditions a trade mark performs four functions:
(1) it identifies the product and its origin,
(2) it guarantees its unchanged quality,
(3) it advertises the product, and
(4) it creates an image for the product.
Object of Protecting Trade Mark
With the immense growth in the scale of business, and the advertising that accompanies it, modern customers rarely have that personal knowledge of suppliers which is the hallmark of a village economy. Even so, their interest in source of supply has not in essence changed. Information about origin is only a means towards an end : their main concern is in the quality of what they are buying. In the case of some goods, part of that quality may be bound up with source in a specific way : as for instance, when the goods will need servicing and the manufacturer or supplier is looked to for the services. But in a great may cases source, particularly when indicated by a Cypher such as a product mark or get-up, does not have even this significance. What it does is to enable the purchaser to link goods or services to a range of personal expectations about quality which derive from previous dealings, recommendations of others, attractive advertising and so on. Nor should it be forgotten that, however persuasively the advertiser may seek to promote this sort of symbol, it retains a neutral character in one sense : once a consumer learns that he does not want particular goods, the mark, name or get-up becomes a significant warning signal.
A law protecting marks, names and get-up accordingly, seems unavoidable in a capitalist economy. In various aspects, however, these laws have tended to develop in a manner that may appear to confer power without responsibility. The trade mark owner acquires the all important right to stop imitations of his indication of source, but his own use is conditioned by few limitations of positive requirement. It is perfectly possible for the public to be taught that a box bearing a particular mark and get-up contains 500 gm. of chocolates and then, by discreet expansion of the packaging, to reduce that amount to 475 gms.(See Surya Roshni Ltd. v. Samana Steel Ltd., AIR 1997 Del 321, where plaintiff was held entitled to temporary injunction for protecting its trade mark).
If the mark is a registrable one the best way to protect it is by registration. Infringement of the mark can be easily established. If the infringing mark is identical and the goods covered by registration, the success in an action for infringement is almost certain unless the registration can be attacked on the ground of invalidity of registration or the defendant could established honest concurrent user, or acquiescence on the part of the registered proprietor, or prior user. If the marks are not identical but only similar then the plaintiff will have to establish that the defendants` mark is deceptively similar, that is to say, the similarity is such as to be likely to deceive or cause confusion which is a proposition not easy to establish. Ultimately the question of similarity is one for the judge to decide on which opinion may often differ.
In the case of unregistered marks and marks which are not registrable the only way they can be protected is by an action for passing off. The plaintiff will have to prove sufficient use of the mark so as to create valuable goodwill of the business connected with the goods bearing the mark.
Under common law a trader acquires a right of property in a distinctive trade mark merely by using it upon or in relation to some goods irrespective of the length of such user or the extent of his trade. As between two who are each desirous of adopting the same mark it is entirely a question of who gets there first.
Property in a trade mark which is only proposed to be used in relation to some goods can be obtained by registration of the mark under the Trade and Merchandise Marks Act, 1958.
There is no right to the exclusive ownership of a trade mark apart from its use or application of it in connection with some vendible commodity. In other words property in a trade mark does not exist in vacuo.