In the light of the ECJ’s judgement in Societe des produits Nestle SA v Mars UK Ltd, it is clear that, as a matter of law, there is no bar on a mark acquiring a distinctive character as a result of its use as part of another trade mark. Word marks are ften used with device marks but that does not mean that the consumer could not look upon the use as being of two trade marks used together. The rights of the registered proprietor are very clearly defined in section 17(1) which state that the exclusive right is in respect of the use of the trade mark taken as a whole . If the proprietor desires statutory protection to the exclusive use of any part of the trade mark, he has to apply to register not only the whole of the mark but also each such part as separate trade mark. Obviously any part , which is common to trade or is otherwise of a non-distinctive character will not be allowed registration, unless the applicant is able to adduce evidence of acquired distinctiveness for such part to claim exclusive right. It is apparent that there would be no difficulty for the proprietor to obtain separate registration in respect of a part of trade mark if such part is inherently distinctive The use of “HAVE A BREAK, HAVE A KIT KAT” was not accepted as use of HAVE A BREAK as a trade mark because that approach was found (as in the example above) to represent an artificial dissection of the used trade mark, contrary to the likely reaction of an average consumer to the use in question.
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Certification Trade mark Registration India
In the context of an application for registration of certification trade mark under section 71 the provisions of section 18 as to making of an application will apply. Rule 134 provides that Part I, Part IV and Part VII of the Rules will apply subject to the provisions of Part III of the Rules. The substantive examination of an application for certification trade mark will include . – examination of the draft
regulation, – statement of case and more particularly about the competency of the applicant to certify the goods in respect of which the mark is to be registered and whether in the circumstances of the case , the registration applied for would be to public advantage. – The proprietor should be an independent competent certifying agency without itself being engaged in dealing with those goods or provision of services. – The draft of the regulation should meet the requirements of Act and Rules and the contents should include matters set out in rule 135(5), namelya) A description of the applicant b) Nature of applicantfs business c) Particulars of infrastructure like R & D, technical manpower support d) Applicantsf competence to administer certification scheme e) The applicantfs financial arrangement f) An undertaking from the applicant that there will be no discrimination between parties if they meet the requirement set down in the regulation. g) The characteristic the mark will indicate in the certified goods or services h) The manner of monitoring the use of the mark
TRADE MARK LAW INDIA
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 trade marks is based mainly on two concepts ; distinctiveness and deceptive similarity.
Trademark Registration India
It is not any trade mark which is registrable. To be registrable the trademark should be distinctive and should not be similar to any other trade mark registered for the same or similar goods or used by a competitor whether registered or not. In the case of a similar mark used by a competitor but not registered difficulties for registration will arise only if the owner of the mark chooses to oppose the registration. In choosing a trade mark therefore one has to see whether the mark satisfies the requirement of distinctiveness contained in section 9 of the Trade and Merchandise Marks Act, 1958. This is not very difficult. Thereafter the applicant has to verify as far as possible whether a similar mark, has been registered or used by others for similar goods. The applicant can make a search in the indexes kept for public inspection at the Trade Marks Office with or without professional assistance from practitioners of trade mark law. In the alternative a request for a search report may be made to the Registrar of Trade Marks in the prescribed form. It may be advisable to do both as it will provide some sort of evidence of bona fide of the applicant in adopting the mark which is very important. While choosing a trade mark it is dangerous to start from some existing trade mark and then make modifications. However, after independently adopting the mark, it should be ascertained whether a similar mark has been registered or used or already applied for registration. If the investigations discloses the existence of a similar mark, it is best to discard the mark chosen and start again the whole process. It is not always easy to decide whether two marks are similar. The best way to determine the question is to consider one`s reaction and apply common sense. 6PSAZBXWH64N
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