TRADEMARKS AND IT’S
REMEDIES
~Devita Shah [KLE Society’s Law College, Bangalore]
A trademark is a mark, logo or trade name which identifies a
business to its customers. It is generally words, phrases, logos
and symbols used by producers to identify their goods.
However, shapes, sounds, fragrances and colors may also be
registered as trademarks. The history of trademark dates back
to one thousand B.C. During that time, the craftsmen
engraved their names on the piece of art made by them just to
prove their authenticity over the work done. But today it is
used to distinguish between the products made by two unlike
companies. The different logos, design, symbols are made in
order to attract the consumers. Trademark helps the owner to
prevent the use of similar of identical signs by competitors if
such trademark can lead confusion. A trademark is different
from patent and copyright. Patent protects an invention
whereas copyright protects an artistic and literary works.
them to make benefit out of that services. Therefore,
establishing a goodwill on the part of plaintiff in his business
or his goods or services is necessary to which the trade or
public will be led to associate the defendant’s activities. In one
of the decided case Durga Dutt Sharma vs. Navaratna
Pharmacy Laboratories1 where it was held that the onus to
prove infringement is on plaintiff.
Types of trademark available are:
Lastly, Damages plays an important role in determining how
much loss is suffered by the owner. It is result of erroneous
step taken by the defendant which was against the rights of
the plaintiff. It degrades the value of the goods produced by
the original company.
1. Names, including any surname
2. an invented word or any arbitrary dictionary word
3. letters or any numeral or any combination
4. symbols
5. monograms
6. shape of goods or their packing
In India, the classification system prevails where goods and
services has been classified into classes of registration. This
classification made by WIPO namely the International
Classification of Goods and Services which consists of 34
classes of goods and 8 classes of services.
And this
classification is followed by many countries of the world. The
trademark provides an exclusive right to the proprietor and
any infringement will cost to the person who has infringed
the right in respect of any goods and services. Though
registration of trademark is not compulsory in India but if it
is done it protects the person and also provides legal remedies.
Registration is a legal process provided under for under Trade
Mark Act, 1999.
A trademark infringement hampers the reputation of the
owner as well as his business with devastating consequences.
For this purpose remedies are provide in order to mitigate the
expenses bear by the owner. It is a valuable part of a daily
business and informs the world about the product and its
services. In order to minimize the damages suffered by owner,
it is necessary to prove that genuinely his right has been
infringed.
Firstly, It is very necessary to be proved by the owner that the
goods and services provided by him must be associated with
goodwill which is spoiled by some other person who has
misused and infringed the right of owner. Goodwill is thus the
benefit and advantage of a name and get-up, and it is the
attractive force which brings in business. Goodwill is not
visible but is made in the mind of customers which allows
Secondly, False representation by the defendant to attract
more customers is a punishable offence. In Spalding vs.
Gamage2, it was explained by the Lord that: “Where the
plaintiff and defendant were not competing traders in the line
of business, a false suggestion by the defendant that their
business were connected with each other would damage the
reputation and thus the goodwill of plaintiff’s business.”
REMEDIES
Remedies are available to those whose right has been
infringed. Generally, damages are the most common remedy
but apart from that there are various other remedies are
available to mitigate the losses incurred by the owner.
1. Injunctions are provided by the court to stop the use of
trademark by the infringer. It is a kind of civil remedy
and its main purpose is to prohibit the person whose act is
unjust and ruing the reputation of the other by
unauthorized use of the trademark. There are mainly two
types of injunction, permanent and temporary injunction.
Former is for permanent restraining whereas latter is for
some specific time.
2. Another remedy is the unfair competition law which
provides for the trademark dilution. The main element of
the infringement is the confusion which arises between
the two products. However, in some cases where the
problem is nowhere related to confusion but is about
unfair use of the trademark which causes damage to the
owner. Thus, the law of unfair trade