What is Patent

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PATENT
A patent is a legal monopoly granted for a limited time to the owner of an invention. It
empowers the owner of an invention to prevent others from manufacturing, using, importing or
selling the patented invention. Patent Act, 1970 as amended in the years 1998 and 1999 along
with Patent Rules, 1972 govern patents in India.
What is Patent?
Patent is a monopoly granted by statute of a country for a limited term over a new and useful
invention that involves inventive step. Invention may either for a product or process. The rights
enjoyed by owner of the patent are proprietary in nature and the patentee or his agent or licensees
has the exclusive right to use and have the benefits of patented invention and prevent
unauthorized use, during the period of patent protection. Period during which the owner enjoys
the benefits is called term of the patent. Registration is a prerequisite for patent protection and
the protection granted is territorial in nature i.e., patent granted in a country will give the owner
of the patent right only within that country.
Indian Law on Patents
The law governing Patents in India is Patent Act, 1970 as amended in the years 1995 and 1999,
along with the patent rules, 1972.
Patent Act do not define the term 'Patent' [s.2 (m)], it simply states that ‘Patent’ means a patent
granted under this Act and includes for the purposes of sections 44, 49, 50, 51, 52, 54, 55, 56, 57,
58, 63, 65, 66, 68, 69, 70, 78, 134, 140, 153, 154 and 156 and Chapter XVI, XVII & XVIII, and
a Patent granted under the Indian Patents and design Act, 1911 (2 of 1911); the Patents (Second
Amendment) Bill, 1999 states that “Patent means a patent granted under this Act”.
Patent Act 1970 envisages that 'any invention that has a commercial application and which are
not exempted under the Act are eligible for grant of patent. S.2 (j) the Act defines ‘invention’ as:
any new and useful –
Ø art, process, method or manner of manufacture;
Ø machine apparatus or other Articles;
Ø substance produced by manufacture,
and includes any new and useful improvement of any of them, and an alleged invention;
The Second Amendment Bill, 1999 has introduced a new definition of invention as against 1970,
Act, i.e., 2(j) in 1999 Bill:
“invention means a new product or process involving an invention step and capable of industrial
application”.
Section 3 speaks about invention not patentable. Inventions which are 'frivolous, contrary to
Natural Law, Contrary to Law or morality or injurious to public health or formulation of an
abstract theory, discovery of any new property or new use for a known substance or a substance
obtained out of a mere admixture or it is a mere arrangement or re-arrangement or duplication or
horticulture, or any process for the medicinal, surgical, curative, prophylactic or other treatment
of human beings', are not patentable.
Where as it is important to note that the Amendment Bill 1999, has proposed major changes to
Section 3. It has made changes to clauses (b) of the Act, i.e.,
'Clause (b) of 1970 Act is prevention of an invention the primary or intended use of which would
be contrary to law or morality or injurious to public health'.
Where as in the bill, it has inserted the later part of sentence:
Ø An invention the primary or intended use or commercial exploitation of which could be
contrary to law or morality or Which causes serious prejudice to human, animal or plant life or
health or to the environment (cl. 3 (a) of the bill)
In the Act section 3 (c) is about abstract theory, but the bill proposes to add after words 'an
abstract theory', the words or discovery of any living things or non-living substance occurring in
nature. (Cl.3 (b) of the bill).
Similarly, 3 (c) of the bill proposes to omit 3 (g) of the Act, which is about method or process of
testing applicable during the process of manufacturing to render more efficiency to machineries.
Sub-clauses (j) to (o), (k) of the bill attempts to make a mathematically or business method or a
computer program or algorithms non-patentable.
(l) is all clear about not patenting literary, dramatic, musical or artistic works, including
cinematographic works and television productions. cl.3(i) proposes to the insert after the word
‘prophylactic’, the words ‘diagnostic, therapeutic’. And the words ‘or plants’ in 3 (i) of the Act
shall be omitted.
Bill has proposed to add further few Clauses after 3 (i) i.e., 3 (j), 3 (k), 3(l), 3(m), 3(n), 3(o).
3 (j) would be plants and animals other than micro-organisms in whole or any part there of
including seeds, varieties and species and essentially technological processes for production or
prolongation of plants and animals. The invention relating to above would not be patentable if
the bill is passed.
(m) of the bill excludes “a mere scheme or rule or method of performing mental act or method of
playing game”.
‘a presentation of information’ is intended to be kept out of patent protection.[cl.(o)]
(o) of the bill excludes topography of Integrated Circuits from being patented since there is
separate legislation for Semi Conductor and Integrated Circuits.
Term of patent
Section 53 speaks about the Term of Patents. Normally a patent remains in force for a period of
14 years from the date of application subject to the payment of the stipulated renewal fees. But
the term differs, when it is related to food, medicine or drug i.e., it is 5 years from the date of
selling of patent or it is 7 years from the date of patent whichever period is shorter.
Rights of Patentee
The Act confers on the patentee the exclusive right himself, his agents for licensees to make, use,
exercise, sell or distribute the invention India. If the patent is for an article or substance, the
exclusive right by himself, his agent or licensees to make, use, exercise, sell or distribute such
article or substance in India. If the patent is for a method or process of manufacturing an article or
substance, the exclusive right by himself, his agents or licensees to use or exercise the method or
process in India.
Enforcing Patent Right
The Patent Act confers on the patentee the exclusive right himself, his agents for licensees, to
make, use, exercise, sell or distribute the invention. If the patent is for an article or substance, the
exclusive right by himself, his agent or licensees to make, use, exercise, sell or distribute such
article or substance in India. If the patent is for a method or process of manufacturing an article
or substance, the exclusive right by himself, his agents or licensees to use or exercise the method
or process in India.
A patentee has a right to sue when a third party does any act that is within the rights conferred on
the patentee. Infringement proceedings can be initiated in District Court within whose
jurisdiction the actual infringement was committed, or where the defendant normally resides or
carries on his business. Section 104 clearly states that no suit shall lie or shall be instituted in any
court inferior to district court.
Relieves which a court may grant in any suit for infringement includes an injunction and at the
option of the plaintiff either damages or an account of profits.
In a suit for infringement of a patent, damages or an account of profits shall not be granted
against the defendant who proves that at the date of the infringement he was not aware and had
no reasonable grounds of believing that the patent existed.
Courts may refuse to grant any damages or an account of profits in respect of any infringement
committed after a failure to pay any renewal fee within the prescribed period and before any
extension of that period.
Where an amendment of a specification by way of disclaimer, correction or explanation has been
allowed under this act after the publication of the specification, no damages or account of profits
shall be granted in any proceeding in respect of the use of the invention before the date of the
decision allowing the amendment, unless the court is satisfied that the specification as originally
published was framed in good faith and with reasonable skill and knowledge.
The 1999 Amendment Bill proposes to insert a sub-section 104A (i), which lays that in any suit
for infringement of a patent, where the subject matter of the patent is a process for obtaining a
new product, the burden of proving that a new and identical product is not made by that process
shall be on the alleged infringer if a substantial likelihood exists that the identical product is
made by the process, and the proprietor, of the patent or a person deriving title or interest in the
patent from him has been unable through reasonable efforts to determine the process actually
used: Provided that the proprietor of the patent or a person deriving title or interest in the patent
from him first proves that the product is identical to the product directly obtained by the patented
process.
However, subsection (2) of 104 A of the bill says that in carrying out with 104 A (1), the court
shall not require him to disclose any manufacturing or commercial secrets, if it appears to the
court that it would be unreasonable to do so.
Rights of exclusive licensee to take proceedings against infringement
The rights of exclusive licensee are governed under Section 109 of the Act. The holder of an
exclusive license can enjoy the like right or a right alike as that of patentee institute a suit in
respect of any infringement of the Patent, which is committed after the date of the license.
However, before he institute suit himself he is mandated under the Act to require the patentee to
initiate the proceeding. Licensee can sue if the patentee on does not institute proceeding on such
calling up.
The court takes into consideration any loss suffered or likely to be suffered by the exclusive
licensee before awarding damages or an account of profits or granting any other relief in any
such suit. The court even considers the profits earned by means of infringement so far as it
constitutes an infringement of the rights of the exclusive licensee as such.
Section 109(2) of the Act envisages that in case of a suit for infringement of a Patent by the
holder of an exclusive license, the patentee shall be added as ad defendant, unless he has joined
as a plaintiff in the suit and such a patentee how is so added as a defendant will not be liable for
any costs unless he enters an appearance and takes part in the proceedings.
Defenses available in suits for infringement (Section 107)
In case of a suit for infringement of a Patent all grounds of revocation under section 64 shall be
available as a grounds for defense. Conditions specified under Section 47(Grant of patents to be
subject to certain conditions) should be implied with in my suit for infringement of a patent by
making, using or any process or by the importation, use or distribution of any medicine or drugs.
Amendment Bill of 1999 has proposed to insert 107A to the Act, according to this, any act of
making or using a patented invention within three years before the expiry of the term of the
patent by any person for the purpose of development and submission of information to any
regulatory authority responsible for grant of marketing approval for the product of invention
does not amount to an infringement of Patent rights.
Similarly, the bill proposes to insert 107A(b) that also does not consider importation (a right
proposed to be granted to the patentee under 1999 second amendment Bill) of patented products
by any person from a person who is duly authorized by the Patentee to sell or distribute the
product, as an infringement.
The defendant can challenge the validity of the patent.
District Courts are not empowered to pronounce the validity of the patent. When it comes to the
question of validity, the District Courts transfer the suit to the High Court.
Declaration of Non-infringement
Section 105 of the Act, envisage that ‘a person may institute a suit for a declaration that the use
by him of any process, or that making, use or sale of any article by him does not, or would not,
constitute on infringement of a claim of a patent against the patentee’ if it is shown that –
(a) that the plaintiff has applied in writing to the patentee or exclusive licensee for a written
acknowledgement to the effect of the declaration claimed to the effect of the declaration claimed
and has furnished him with full particular in writing of the process or article in question; and
(b) that the patentee or licensee has refused or neglected the give such an acknowledgement.
Section 105 (1) (a) clearly states that a person can institute a suit or a declaration that the use by
him or any process does not constitute an infringement if it is shown by him that he had applied
in writing to the patentee for a written acknowledgement to and has furnished him with full
particulars in writing of the process in question and that the patentee or licensee has
refused/neglected to give such an acknowledgement.
This can be brought at any time after the date of advertisement of acceptance of the complete
specification of a patent, and references in this section to the patentee shall be construed
accordingly.
The plaintiff shall pay the costs of all parties in a declaratory suit. The court may order otherwise
for special reasons.
In a suit for declaration, the validity of a claim of the specification of a patent shall not be called
in question under this section, and accordingly the making or refusal of such a declaration in the
case of a patent shall not be deemed to imply that the patent is valid or invalid.
Relief in Cases of Groundless Threat of Infringement Proceedings.
Section 106 of the Act speaks about power of the court to grant relief in cases of ground less
threat of infringement proceedings. The threatening may be in the form of circulars or
advertisements or by communications, oral or in writing. Then any person aggrieved thereby
may bring a suit against the person threatening him and he may pray for the following relieves:
(1) a declaration to the effect that the treats are unjustifiable, i.e., declaring the threats to be
unjustifiable.
(2) An injunction against the continuance of the threats i.e., getting an injunction order against
the continuance of threat, thereby stopping the continuance of such a threat
(3) Damages can be claimed if he has sustained any.
Patent Useful Links
http://www.ljextra.com/patents/biotech.htmlThis page is part of the Patents Practice Group of Law Journal
Extra. It provides a great deal of sources to the most recent developments on Patent issues relating to
biotechnology. New links are added regularly. The links include articles from journals and newspapers
and more importantly to the entire texts of judgements. The page also contains some permanent links to
sites such as the USPTO and others related to the Human Genome Project and Genomic Research. An
ideal site to know the latest developments in Biotechnology and IP Law.
http://www.patents.ibm.com/This is the IBM Intellectual Property Network. This site contains a database
of all patent publications made by the USPTO, the WIPO and the EPO since 1971. Several of these
documents are viewable online while provision is made for ordering others. This site provides access to
several important publications, which might otherwise take months to acquire. The database is also
searchable either based on a keyword or on the patent number.
http://www.ljx.com/lawonline/practice/pages/pat_stat.htmlAs part of Law Journal Extra's Patent Practice
group, this page contains a list of all the important Patent legislation’s in the USA and internationally.
They include the NAFTA treaties, the US Code, the GATT Agreement, the PCT and the like.
http://www.law.cornell.edu/topics/patent.htmlThis page is Cornell University's Patent information site. It
provides a comprehensive introduction to patent law in the USA along with links to the relevant
constitutional and statutory provisions. The page also has links to the most recent Supreme Court and
Federal Court decisions. It also has links to the important international treaties and documents.
http://www.patents.com/This site, hosted by the law firm of Oppedahl & Larson, is a brief overview to the
pros and cons of filing for different forms of intellectual property rights in the USA, the various cost
involved, the procedure to be followed and also whom to contact. While the site does not purport to offer
any legal advice, it provides a simple overview.
Juris Diction [http://web.idirect.com/~dcameron/index.html] - Information on biotech law, information
technology law, intellectual property and more.
COPYRIGHT
Copyright is a bundle of exclusive rights granted by statute to the author of the works to exploit
or authorise the exploitation of the copyright work, based on international norms like Berne
Convention, Trade Related Aspects of Intellectual Property Rights (TRIPs) Agreement and
WIPO Copyright Treaty (WCT). The copyright works in which rights subsist are ‘original’
literary, dramatic, musical and artistic works, and cinematograph films and sound recording. This
page gives information as to Indian Law on Copyright and has full texts of Legislations, Cases
and International Conventions.
What is Copyright?
Copyright is one of the chief forms of intellectual property that is afforded protection by the law,
the other three being patents, trademarks, and industrial designs. In its most simplistic
formulation, copyright implies protection against copying of one’s work by another. Its chief
object is to encourage people to create original works in different fields like literature, art and
music by rewarding them with the exclusive right for a limited period of exploit the work for
monetary gain. Theoretically, it acts as an incentive for people to come out with newer and
newer copyrightable works, which add to the knowledge stock of mankind.
Copyright is a kind of intellectual property the importance of which has been increasing
tremendously due to the enormous changes in communication, entertainment and computer
industries. The law in this area of intellectual property deals with protection of rights on certain
type of works like literary, dramatics, musical, artistic, cinematograph film and sound recording,
which result from the intellectual labour of human beings. Copyright presents people with an
opportunity to exploit economically their creations either exploiting it themselves on by licensing
their exclusive rights to publishers, producers etc., for consideration.
Justification:
The whole basis of copyright lies in the fact that none should be allowed to appropriate to
himself the fruits of labour of another. In this way, almost all theorists justify the existence of
copyright on the ‘Labour Theory of Property’ propounded by Locke, according to which a
person can own any ‘property’ if he has added value to it by his own labour. The things for
which copyright subsists emerge from ideas, concepts, thoughts etc. that are common to all, but
these things have been put in a fixed form using one’s mental faculty. The only difference is that
while Locke justified property on the basis of physical labour, here its mental labour that is at
work.
History:
The law relating to copyrights has had a very chequered history. The concept of copyright arose
as an exclusive right of the author to copy the literature produced by him. Actually, if originated
not as a shield to protect the author’s right but as a sword to prevent unauthorized publication of
books in the medieval period in England against the Church and the King of literature against
them came to be published which necessitated control. Simultaneously, the birth of the printing
press led to a manifold increase in the capacity to copy and made author’s also conscious of their
rights and the profits that could be made.
In 1662, Licensing Act of Charles II recognised the rights of the authors for the first time by
controlling printing in a major way. Then in 1710, the Act of Anne (8 Anne c.19) was the first
legislation on copyright, which expressly declared the author’s exclusive right of copying and
publishing for a limited period in the case of books and imposed criminal penalties for violations.
The scope of copyright continued to be expanded with the development is society and things like
sculpture, art, engravings etc. were also included within its ambit by various enactments.
In 1911, the Imperial Copyright Act was passed which consolidated the law relating to copyright,
which brought under that legislation different copyrightable subject matters that were governed
by different legislation. The Act declared copyright to be a statutory right, settling the confusion
hitherto existed as to whether copyright is common law right or statutory right. Subject matters
of copyright continued to expand. Newer subject matters like cinematograph films started to be
protected. Copyright Act of 1956 in England substituted the 1911 Act.
In India also, simultaneous developments took place with the Indian Copyright Act of 1847
being based on the 1842 Act in England. The Indian Copyright Act, 1914, was an extension of
the Copyright Act, 1911, to India with necessary modifications and then in 1957, a new
Copyright Act was passed which was modelled along the English Copyright Act of 1956.
The main international treaties governing the law of Copyright ands Neighbouring rights are
TRIPs Agreement; Berne Convention, 1886; Rome convention, 1961; Universal Copyright
Convention, 1952;WIPO Copyright Treaty, 1996; and WIPO Performance and Phonograms
Treaty, 1996
INDIAN LAW ON COPYRIGHT
st
In India, the 1 legislation on Copyright was the Indian Copyright Act, 1847. This Act continued
to be in force till it was replaced by Indian Copyright Right Act, 1914. The Copyright Act, 1957,
as amended in the years 1984,1994 and 1999, to accommodate the obligations under
international treaties, governs the present law relating to copyright.
Copyrights subsist in:
a) Original literary, musical, dramatic and artistic works.
b) Cinematograph films
c) Sound recordings
Computer programme is considered to be literary work and protected as such. Copyright also
subsists in translations, abridgements or compilations of other works, provided that the consent
of the original Copyright holder had been obtained. The author will then have separate copyright
in respect of the translated or abridge work. All these are considered to be literary work.
General rule of copyright is that author is the first owner of the copyright. However, this rule is
subject to exceptions in the case of employments work, and commissioned work and government
work. Author is the person who put intellectual labour to create the copyright work. But in the
case of sound recording and cinematograph film author is the producer is author.
Copyright Act makes it very clear that copyright is only a statutory right and common law
copyright is not recognised. It is a very exhaustive piece of legislation that seeks to encompass
the entire spectrum of rights and liberation even minutely related to copyright.
Section 14 of the Act lists various rights of a copyright owner of literary, dramatic, musical or
artistic work, cinematograph film, sound recording and computer programme.
Along with the copyright for the author, various neighbouring rights to protect the interests of
performances, broadcasters etc. have also developed to safeguard their interests. The 1994
Amendment Act has incorporated these into the Copyright Law in India. “Performers rights” was
introduced as Section 38 by the 1994 amendment to the Copyright Act. Under Section 37 right
known as “Broadcasting Reproducing Right” is given to every broadcasting organization in
respect of its broadcasts for a period of 25 years. Performer’s rights, protection is given to
various types of performers like actors, dances, musicians, jugglers, acrobats etc. These rights are
also available for a period of 25 years and guarantee rights such as reproduction of sound or
visual recording of the performances and its broadcast or other communication to the public etc.
Term of Protection
The term for which copyright subsists varies according to the nature of the work and whether the
author is a natural person or a legal person. Generally speaking, copyright subsists for a term of
the lifetime of the authors plus 60 years in case of a literary, dramatic, musical or artistic work.
In the case of joint authorship, the term is computed from the death of the last living author. If a
work is published posthumously it is a flat term of sixty years from the date of the publication,
but if the name of the author is disclosed before the expiry of such period, it will be for sixty
years after the death of the author. In the case of cinematograph films and sound recording
copyright subsists for a period of 60 years from publication. Where the owner of the copyright is
the Government on other organization, copyright is for 60 years from publication. Publication, in
this connection would mean making the particular work available to the public by issue of copies
or by communicating the work to the public.
ENFORCING COPYRIGHTS
The owner of a copyright work has the exclusive rights of enumerated under Section 14. In case
a person produces the work or any part of it without being authorized by the copyright owner to
do so, he is said to have infringed the copyright. Section 51 of the Copyright Act deals with
infringement of copyright and labels any act in violation of Copyright Owner’s rights (contained
in Section 14) or any act of communication to the public without license as infringement of
Copyright. Infringement of copyright would also be constituted if one sells, advertises for sale,
and distributes, infringement of imports copies of the work. In R. G. Anand v. Deluxe Films
where a number of propositions have been laid down by the Supreme Court.
The tests to determine infringement laid down by the Supreme Court are following
1. There can be no copyright in an idea, subject matter, themes, plots or historical or
legendary facts and violation of the copyright in such cases is confined to the form,
manner and arrangement and expression of the idea by the author of the copyrighted
work.
2. Where the same idea is being developed in a different manner, it is manifest that the
source being common, similarities are bound to occur. In such a case the courts should
determine whether or not the similarities are on fundamental or substantial aspects of the
mode of expression adopted in the copyrighted work. If the defendant’s work were
nothing but a literal imitation of the copyrighted work with some variations here and
there it would amount to violation of the copyright. In other words, in order to be
actionable the copy must be a substantial and material one which at once leads to the
conclusion that the defendant is guilty of an act of piracy.
3. One of the surest and the safest test to determine whether or not there has been a violation
of copyright is to see if the reader, spectator or the viewer after having read or seen both
the works is clearly of the opinion and gets an unmistakable impression that the
subsequent work appears to be a copy of the original.
4. Where the theme is the same but is presented and treated differently so that the
subsequent work becomes a completely new work, no question of violation of copyright
arises.
5. Where however apart from the similarities appearing in the two works there are also
material and broad dissimilarities which negate the intention to copy the original and the
coincidences appearing in the two works are clearly incidental, no infringement of the
copyright comes into existence.
6. As a violation of copyright amounts to an act of piracy it must be proved by clear and
cogent evidence after applying the various tests laid down by the case law discussed
above.
7. Where, however, the question is of the violation of the copyright of stage play by a film
producer or a director, the task of the plaintiff becomes more difficult to prove piracy. It
is manifest that unlike a stage play a film has a much broader perspective, wider field and
a bigger background where the defendants can by introducing a variety of incidents give
a colour and complexion different from the manner in which the copyrighted work has
expressed the idea. Even so, if the viewer after seeing the film gets a totality of
impression that the film is by and large a copy of the original play, violation of the
copyright may be said to be proved.
But if the alleged activities come under fair use exceptions such activities are considered as not
an infringement. There are a lot of statutory exceptions provided to infringement in Section 52,
the basic purpose of which is to protect public interest and encourage the use of all things for
academic or other similar purposes.
There are 3 types of remedies against infringement of copyright:Civil, Criminal and
Administrative. Civil remedies include injunction, accounts of profits, delivery of infringing
copies and damages for conversion. Criminal remedies provides for the imprisonment of the
accused or fine or both seizure of infringing copies and delivering them to the owner of the
copyright. Administrative remedies include moving the Registrar of the Copyright to impose a
ban on the import or the infringing copies into India.
Civil Remedies:
The kind of civil remedies available against Copyright infringement have already been
enumerated. Very often, a suit for infringement also prays for a grant of interim injunction to
stop the alleged infringement for containing further during the pendency of the suit. However, it
is necessary to bear in mind that if the defendant proves that at the date of the infringement he
was not aware and had no reasonable ground for believing that copyright subsisted in the work,
the plaintiff shall not be entitled to any remedy other than an injunction in respect of
infringement and a decree for the whole or part of the profits made by the defendants by sale of
the infringing copies as the court may in the circumstances deem reasonable.
In a suit for infringement of Copyright in appropriate cases, the court may grant authority to the
along with his advocate to enter the defendants’ premises and inspect for any infringement and
remove such copies for safe custody without even letting the defendant know of this order. This
is to prevent any destruction of the infringing copies. However, this remedy is given only in very
rare cases and only after the court is satisfied that it is necessary in the interests of justice. The
plaintiff also has to be very particular and thorough in his application if he were to avail of this
remedy.
A suit for Copyright infringement can be filed in the District Court within the local limits of
which one of the plaintiff’s is residing, irrespective of where the defendant lives there. It can also
be filed at a place where the cause of action arises, meaning thereby that at a place where the
alleged infringement is said to have been committed. The period within which a suit must be
filed is three years from the date of infringement otherwise the claim will become time barred. A
suit for infringement can be filed either by the owner, the licensee or the assignee of the
Copyright; the publishers in case of an anonymous publication.
Criminal Remedies:
The Copyright Act also enables the owner of Copyright to take criminal proceedings against an
infringer. These two remedies are totally independent in their application and can be available of
simultaneously. But for any conviction, knowledge that an infringement will be committed is
necessary. Any infringement is punishable with a term ranging between seven days to 3 years
and a fine of Rs. 50,000/- to Rs. 2,00,000/- (depending on the facts and circumstances of the
case).
However, if a claim for damages for conversion is made, a separate civil proceeding is necessary.
Enhanced punishment is provided for second and subsequent convictions and the minimum
sentence is 1 year and minimum fine is Rs. 1,00,000/- in these cases.
The complaint is triable only by a metropolitan magistrate or a Magistrate of the first class and
only a police officer of the rank of Sub-inspector and above is given the power to seize the
infringing copies, without warrant for production before the Magistrate. The provisions the
Criminal Procedure Code, 1973, govern the progress of the complaint. In the case of an offence
committed by a company, the company as well as the person who at the time of the offence
responsible for the business of the company shall be deemed to be guilty of such offence.
It should also be noted that all infringing copies and all equipment used for making these copies
are deemed to be the property of the owner of the Copyright and this may be delivered to him.
Transaction with Copyright
Eventhough Copyright protects the right of an author against unauthorised copying of his works,
the author of Copyright rarely exploits the Copyright by himself, instead authorizes others to use
his copyrighted work in return for a proportionate payment. This can be don in two ways:
(a) assignment
(b) royalty
Assignment
The main provisions relating to assignment are contained in Section 18 and 19 of the Copyright
Act. Assignment is actually a transfer of ownership of the Copyright to the assignee on mutually
agreed terms. This is done for a lump sum consideration or for royalty payment. An agreement in
writing signed party is mandated under the law for an assignment to be valid. The period of
assignment is taken to be 5 years if there is no express term in the contract. The assignee has to
exercise his rights within one year from the date of assignment for the assignment to continue
unless there is a contract to the contrary. Assignments are also possible in respect of future work.
These will take effect on the work coming into existence.
It should also be noted that there are various ways in which it is possible to assign Copyright. An
author may assign Copyright for the territory of one country and reserve rights for other
countries to him or he may assign some of the rights to one person and assign the rest of the
rights to others.Another important thing to keep in mind is that registration of assignment is not
compulsory.
Copyright can move from one to another under a bequest. (Section 20)
Licenses:
The law relating to licenses is contained in Chapter VI of the Copyright Act. [A license is an
authority to do something that in the absence of that authority would be unlawful.] Licenses are
generally of two types:
(a) Voluntary licences (those granted by the owners of Copyright)
(b) Compulsory licenses (those provided for by legislation)
It is difficult to distinguish between assignment and license. It will have to be determined only
by looking at the stipulations in the contract. The difference between license and assignment is
that the licensee does not become the owner while an assignee does. As the case of an
assignment, the period of a license is 5 years from the date of assignment in the absence of a
contract to the contrary and the licensee has to exercise his right within one year. For the license
to subsist unless there is a contrary stipulation in the contract.
A license is possible in respect of a furtive work and it takes effect when the work comes into
existence.
The Copyright Act also provides for certain compulsory licences under Section 31. The object
behind this is to safeguard public interest in dissemination of knowledge. The Berne Convention
of 1971 and the Universal Copyright Convention have also made special provisions for
compulsory licenses in developing countries provided that they fulfil certain conditions and are
limited to translation and broadcasting rights.
The Copyright Act provides for compulsory licenses for and “Indian work” (work whose author
is an Indian on which work is first published in India) if the work have been published or
performed in public and the author has refused to allow further publication, performance,
broadcast etc. Compulsory licenses are also issued to produce and publish translations
copyrightable materials in the interest of public. Copyright Board is the authority, which has the
authority to issue compulsory license.
THE INDIAN MUSIC INDUSTRY
The Indian Music industry is a non-commericial and non-profitmaking organisation affiliated
to the International Federation of Phonographic Industry (IFPI). IMI is registered under the
West Bengal societies Registraion Act. The main objectives and functions of the IMI include, to
defend preserve and develop the rights of pho0nogram producers,to promote and encourge the
development of musical culture, to facilitate the evolution of fair trade policies and business
practices and to organise and conduct anit-piracy operations.
Mumbai (Admin. Office) :IMI, Flameproof, Equipment Bldg., B-39, 2nd floor, Off New Link
Road, Andheri (W), Mumbai 400 053. Tel. Nos. 6391391/92/93. Fax No. 6391394. E-mail –
[email protected]
Mumbai (Anti-piracy Wing) : IMI, Neelam Centre, Unit 1, ‘B’ Wing, Ground floor, Hindi Cycle
Lane, Worli, Mumbai 400025. Tel. Nos. 4939978/4939979. Fax. No. 491 5974. E-mail –
[email protected]
New Delhi :IMI, C-47, Nizamuddin (East), New Delhi 110013. Tel. No. 4358693; Tel. Fax
4359439. E-mail – [email protected]
Kolkata (Regd. Office) :IMI, 1/3, Bangur Avenue, Block ‘D’, Kolkata 700055. Tel. No.
5745792; Tel. Fax. 5744803.
Website:www.indianmi.org
PHONOGRAPHIC PERFORMANCE LTD.
Phonegraphic Performance Ltd. (PPL) is the copyright society in respect of sound recordings and
is registered with the Government of India. PPL administers the broadcasting / telecasting /
webcasting and public performance rights on behalf of about 60 recording companies which are
its members. PPL members include IMV (Sa Re Ga Ma India), Tips, Universial, Venus, Sony
Music, Magnasound, BMG Crescendo, Virgin, Milestone, Times Music and others.
Mumbai (Admin. Office) : PPL, B-39, Flameproof Equipments Bldg., Off New Link Road,
Andheri (W) Mumbai 400053. Tel:6391391/92/93; Fax:6391394.
Kolkata (Regd. Office) : PPL, 1/3, Bangur Avenue, Block ‘D’, Kolkata 700055, Tel:5745792;
Tel fax 5744803.
New Delhi : PPL, C-47, Nizamuddin (East) New Delhi 110013. Tel.:4358693; Tel fax:4359439.
Chennai : PPL, A-94-A, Karthik Stree, Vetri Nagar, Chennai 600082. Tel:5589191; Tel fax
5378839.
Website:www.pplindia.org
Trademark means any mark used to represent or identify a product or its maker. In a market
economy trademarks are most important because it is the biggest assest of a company that really
sells the products.
Trade Mark
Trade Marks Act,1999 s.2(1)(zb)... 'trade mark' means a mark capable of being represented
graphically and which is capable of distinguishing the goods or services of one person from
those of others and may include shape of goods, their packing and combination of colours; and(i) in relation to Chapter XII(other than section 107), a registered trade mark or a mark
used in relation to goods or services for the purpose of indication or so as to indicate a
connection in the course of trade between the goods or services, as the case may be, and
some person having the right as proprietor to use the mark; and
(ii) in relation to other provisions of the Act, a mark used or proposed to be used in
relation to goods or services for the purpose of indicating or so to indicate a connection in
the course of trade between the goods or services, as the case may be, and some person
having the right, either as proprietor or by way of permitted user, to use the mark whether
with or without any indication of the identity of that person, and includes a certification
trade mark or collective mark;
Therefore, trade mark means
(i) a mark(I)
(ii) capable of represented graphically
(iii) mark is capable of distinguishing the goods or services of one person from those of
others, and
(iv) include shape of goods, their packaging and combination of colours;
Trademark can be any mark(II) that can be represented graphically. It includes a device, brand,
heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or
combination of colours or any combination thereof. However, the definition of mark under the
Act is only an inclusive definition and a mark can be other than those mentioned in the definition
also. For e.g. there could be a smell mark. In addition to this, such mark should be capable of
distinguishing the goods(III) or services(IV) of one person from those of others. That is, the
mark should represent the goods or services of one person (includes legal persons like company)
and capable of distinguishing the goods it represents from that of other persons. It is important to
note that the first part of the definition of the trade mark under s.2 (1)(zb) is a general definition
of trademark. s.2(1)(zb)(i) & (ii) adds additional conditions for purpose different parts of Act.
S.2(1)(zb)(i) prescribes the conditions for the purpose of Chapter XII that deals with Offences,
Penalties and Procedures(other than section 107 [V]) ). It says a trade mark for the purpose of
criminal remedies can be a registered or under registered trade mark provided if it used in
relation to goods or services for purpose of indicating or so as to indicate a connection in the
course of trade between the goods or services, as the case may be, and some person having the
right as proprietor to use the mark. Therefore, it is clear that criminal remedies can be claimed by
owners of unregistered trade marks too. s.2(1)(zb)(ii) prescribes the conditions for the purpose of
all chapters other than chapter XII which deals with criminal remedy for the trade mark
violation. So in relation to other provisions of the Act, trade mark means a mark used or
proposed to be used in relation to goods or services for the purpose of indicating or so as to
indicate a connection in the course of trade between the goods or services, as the case may be,
and some person having the right, either as proprietor or by way of permitted user, to use the
mark whether with or without any indication of the identity of that person, and includes a
certification trade mark(VI) or collective mark(VII) .
Foot Notes
(I) s.2(1)(m) 'mark' includes a device, brand, heading, label, ticket, name, signature, word, letter,
and numeral, shape of goods, packaging or combination of colours or any combination thereof;
(II) ibid
(III) s.2(1)(j) Goods mean anything which is subject of trade or manufacture;
(IV) s.2(1)(z) 'service' means service of any description which is made available to potential
users and includes the provision of services in connection with business of any industrial or
commercial matters such as banking, communication, education, financing, insurance, chit funds,
real estate, transport, storage, material treatment, processing, supply of electrical or other energy,
boarding, lodging, entertainment, amusement, construction, repair, conveying of news or
information and advertising;
(V) s. 107 Penalty for falsely representing a trade mark as registered.
(VI) s.2(1)(e) Certification trade mark means a mark capable of distinguishing the goods or
services in connection with which it is used in the course of trade which are certified by the
proprietor of the mark in respect of origin, material, mode of manufacture of goods or
performance of service, quality, accuracy or other characteristics from goods or services not so
certified and registerable as such under chapter IX in respect of those goods or services in the
name, as proprietor of the certification trade mark, of that person;
(VII) s.2(1)(g) Collective mark means a trade mark distinguishing the goods or services of
members of an association of persons [not being a partnership within the meaning of the Indian
Partnership Act, 1932(9 of 1932)] which is the proprietor of the mark from those of others;
THE TRADE MARKS ACT, 1999
INTRODUCTION
The Trade and Merchandise Marks Act was passed in the year 1958, since then it has been
amended several times. Moreover in view of developments in trading and commercial practices,
increasing globalization of trade and industry, the need to encourage investment flows and
transfer of technology and the need to simplify and harmonize trade mark management systems
it has been considered necessary to bring out a comprehensive legislation on the subject.
Accordingly the Trade Marks Bill, 1999 was introduced in the Parliament.
STATEMENT OF OBJECTS AND REASONS
The Trade and Merchandise Marks Act, 1958 has served its purpose over the last four decades. It
was felt that a comprehensive review of the existing law be made in view of developments in
trading and commercial practices, increasing globalisation of trade and industry, the need to
encourage investment flows and transfer of technology, need for simplification and
harmonization of trade mark management systems and to give effect to important judicial
decisions. To achieve these purposes, the present Bill proposes to incorporate, inter alia the
following, namely:
(a) providing for registration of trade mark for services, in addition to goods;
(b) registration of trade marks, which are imitation of well known trade marks, not to be
permitted, besides enlarging the grounds for refusal of registration mentioned in clauses 9
and 11. Consequently, the provisions for defensive registration of trade marks are
proposed to be omitted;
(c) amplification of factors to be considered for defining a well-known mark;
(d) doing away with the system of maintaining registration of trade marks in Part A and
Part B with different legal rights, and to provide only a single register with simplified
procedure for registration and with equal rights;
(e) simplifying the procedure for registration of registered user and enlarging the scope of
permitted use;
(f) providing for registration of 'Collective Marks' owned by associations, etc.;
(g) providing an Appellate Board for speedy disposal of appeals and rectification
applications which at present lie before High Courts;
(h) transferring the final authority relating to registration of certification trade marks to
the Registrar instead of the Central Government;
(i) providing enhanced punishment for the offences relating to trade marks on par with
the present Copyright Act, 1957, to prevent the sale of spurious goods;
(j) prohibiting use of someone else's trade marks as part of corporate names, or name of
business concern;
(k) extension of application of convention country to include countries which are
members of Group or union of countries and Inter-Governmental Organisations;
(l) incorporating other provisions, like amending the definition of 'trade marks',
provisions for filing a single application for registration in more than one class,
increasing the period of registration and renewal from 7 to 10 years; making trade mark
offences cognizable, enlarging the jurisdiction of courts to bring the law in this respect on
par with the copyright law, amplifying the powers of the court to grant ex parte injunction
in certain cases and other related amendments to simplify and streamline the trade mark
law and procedure.
2. In view of the extensive amendments necessitated in the Trade and Merchandise Marks Act,
1958, it has been thought fit to repeal and re?enact the said Act incorporating the necessary
changes.
3. The Bill seeks to achieve the above objects.
ACT 47 OF 1999
The Trade Marks Bill, 1999 having been passed by both the Houses of Parliament received the
assent of the President. It came on the Statute Book as THE TRADE MARKS ACT, 1999 (47 of
1999).
THE TRADE MARKS ACT, 1999
(47 of 1999)
An Act to amend and consolidate the law relating to trade marks, to provide for registration and
better protection of trade marks for goods and services and for the prevention of the use of
fraudulent marks.
Be it enacted by Parliament in the Fiftieth Year of the Republic of India as follows:
CHAPTER I
PRELIMINARY
1. Short title, extent and commencement. - (1) This Act may be called the Trade Marks Act,
1999.
(2) It extends to the whole of India.
(3) It shall come into force on such date as the Central Government may, by notification in the
Official Gazette, appoint:
Provided that different dates may be appointed for different provisions of this Act, and
any reference in any such provision to the commencement of this Act shall be construed
as a reference to the coming into force of that provision.
2. Definitions and interpretation. - (1) In this Act, unless the context otherwise requires, (a) 'Appellate Board' means the Appellate Board established under section 83;
(b) 'assignment' means an assignment in writing by act of the parties concerned;
(c) 'associated trade marks' means trade marks deemed to be, or required to be, registered
as associated trade marks under this Act;
(d) 'Bench' means a Bench of the Appellate Board;
(e) 'certification trade mark' means a mark capable of distinguishing the goods or services
in connection with which it is used in the course of trade which are certified by the
proprietor of the mark in respect of origin, material, mode of manufacture of goods or
performance of services, quality, accuracy or other characteristics from goods or services
not so certified and registrable as such under Chapter IX in respect of those goods or
service in the name, as proprietor of the certification trade mark, of that person;
(f) 'Chairman' means the Chairman of the Appellate Board;
(g) 'collective mark' means a trade mark distinguishing the goods or services of members
of an association of persons [not being a partnership within the meaning of the Indian
Partnership Act, 1932 (9 of 1932)] which is the proprietor of the mark from those of
others;
(h) 'deceptively similar'. - A mark shall be deemed to be deceptively similar to another
mark if it so nearly resembles that other mark as to be likely to deceive or cause
confusion;
(i) 'false trade description' means (I) a trade description which is untrue or misleading in a material respect as
regards the goods or services to which it is applied; or
(II) any alteration of a trade description as regards the goods or services to which
it is applied, whether by way of addition, effacement or otherwise, where that
alteration makes the description untrue or misleading in a material respect; or
(III) any trade description which denotes or implies that there are contained, as
regards the goods to which it is applied, more yards or metres than there are
contained therein standard yards or standard metres; or
(IV) any marks or arrangement or combination thereof when applied (a) to goods in such a manner as to be likely to lead persons to believe that
the goods are the manufacture or merchandise of some person other than
the person whose merchandise or manufacture they really are;
(b) in relation to services in such a manner as to be likely to lead persons
to believe that the services are provided or rendered by some person other
than the person whose services they really are; or
(V) any false name or initials of a person applied to goods or services in such
manner as if such name or initials were a trade description in any case where the
name or initials (a) is or are not a trade mark or part of a trade mark; and
(b) is or are identical with or deceptively similar to the name or initials of
a person carrying on business in connection with goods or services of the
same description or both and who has not authorised the use of such name
or initials; and
(c) is or are either the name or initials of a fictious person or some person
not bona fide carrying on business in connection with such goods or
services,
and the fact that a trade description is a trade mark or part of a trade mark shall not prevent such
trade description being a false trade description within the meaning of this Act;
(j) 'goods' means anything which is the subject of trade or manufacture;
(k) 'Judicial Member' means a Member of the Appellate Board appointed as such under
this Act, and includes the Chairman and the Vice-Chairman;
(l) 'limitations' (with its grammatical variations) means any limitation of the exclusive
right to the use of a trade mark given by the registration of a person as proprietor thereof,
including limitations of that right as to mode or area of use within India or outside India;
(m) 'mark' includes a device, brand, heading, label, ticket, name, signature, word, letter,
numeral, shape of goods, packaging or combination of colours or any combination
thereof;
(n) 'Member' means a Judicial Member or a Technical Member of the Appellate Board
and includes the Chairman and the Vice-Chairman;
(o) 'name' includes any abbreviation of a name;
(p) 'notify' means to notify in the Trade Mark Journal published by the Registrar;
(q) 'package' includes any case, box, container, covering, folder, receptacle, vessel,
casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork;
(r) 'permitted use', in relation to a registered trade mark, means the use of trade mark (i) by a registered user of the trade mark in relation to goods or services (a) with which he is connected in the course of trade; and
(b) in respect of which the trade mark remains registered for the time
being; and
(c) for which he is registered as registered user; and
(d) which complies with any conditions or limitations to which the
registration of registered user is subject; or
(ii) by a person other than the registered proprietor and registered user in relation to
goods or services (a) with which he is connected in the course of trade; and
(b) in respect of which the trade mark remains registered for the time being; and
(c) by consent of such registered proprietor in a written agreement; and
(d) which complies with any conditions or limitations to which such user is
subject and to which the registration of the trade mark is subject;
(s) 'prescribed' means prescribed by rules made under this Act;
(t) 'register' means the Register of Trade Marks referred to in sub-section (1) of section 6;
(u) 'registered' (with its grammatical variations) means registered under this Act;
(v) 'registered proprietor', in relation to a trade mark, means the person for the time being
entered in the register as proprietor of the trade mark;
(w) 'registered trade mark' means a trade mark which is actually on the register and
remaining in force;
(x) 'registered user' means a person who is for the time being registered as such under
section 49;
(y) 'Registrar' means the Registrar of Trade Marks referred to in section 3;
(z) 'service' means service of any description which is made available to potential users
and includes the provision of services in connection with business of any industrial or
commercial matters such as banking, communication, education, financing, insurance,
chit funds, real estate, transport, storage, material treatment, processing, supply of
electrical or other energy, boarding, lodging, entertainment, amusement, construction,
repair, conveying of news or information and advertising;
(za) 'trade description' means any description, statement or other indication, direct or
indirect (i) as to the number, quantity, measure, gauge or weight of any goods; or
(ii) as to the standard of quality of any goods or services according to a
classification commonly used or recognised in the trade; or
(iii) as to fitness for the purpose, strength, performance or behaviour of any
goods, being 'drug' as defined in the Drugs and Cosmetics Act, 1940 (23 of 1940),
or 'food' as defined in the Prevention of Food Adulteration Act, 1954 (37 of
1954); or
(iv) as to the place or country in which or the time at which any goods or services
were made, produced or provided, as the case may be; or
(v) as to the name and address or other indication of the identity of the
manufacturer or of the person providing the services of the person for whom the
goods are manufactured or services are provided; or
(vi) as to the mode of manufacture or producing any goods or providing services;
or
(vii) as to the material of which any goods are composed; or
(viii) as to any goods being the subject of an existing patent, privilege or
copyright,
and includes (a) any description as to the use of any mark which according to the custom of the
trade is commonly taken to be an indication of any of the above matters;
(b) the description as to any imported goods contained in any bill of entry or
shipping bill;
(c) any other description which is likely to be misunderstood or mistaken for all or
any of the said matters;
(zb) 'trade mark' means a mark capable of being represented graphically and which is
capable of distinguishing the goods or services of one person from those of others and
may include shape of goods, their packaging and combination of colours; and (i) in relation to Chapter XII (other than section 107), a registered trade mark or a
mark used in relation to goods or services for the purpose of indicating or so as to
indicate a connection in the course of trade between the goods or services, as the
case may be, and some person having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used
in relation to goods or services for the purpose of indicating or so to indicate a
connection in the course of trade between the goods or services, as the case may
be, and some person having the right, either as proprietor or by way of permitted
user, to use the mark whether with or without any indication of the identity of that
person, and includes a certification trade mark or collective mark;
(zc) 'transmission' means transmission by operation of law, devolution on the personal
representative of a deceased person and any other mode of transfer, not being assignment;
(zd) 'Technical Member' means a Member who is not a Judicial Member;
(ze) 'tribunal' means the Registrar or, as the case may be, the Appellate Board, before
which the proceeding concerned is pending;
(zf) 'Vice-Chairman' means a Vice-Chairman of the Appellate Board.
(zg) 'well-known trade mark', in relation to any goods or services, means 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
firstmentioned goods or services.
(2) In this Act, unless the context otherwise requires, any reference (a) to 'trade mark' shall include reference to 'collective mark' or 'certification trade mark';
(b) to the use of a mark shall be construed as a reference to the use of printed or other
visual representation of the mark;
(c) to the use of a mark, (i) in relation to goods, shall be construed as a reference to the use of the mark
upon, or in any physical or in any other relation whatsoever, to such goods;
(ii) in relation to services, shall be construed as a reference to the use of the mark
as or as part of any statement about the availability, provision or performance of
such services;
(d) to the Registrar shall be construed as including a reference to any officer when
discharging the functions of the Registrar in pursuance of sub-section (2) of section 3;
(e) to the Trade Marks Registry shall be construed as including a reference to any office
of the Trade Marks Registry.
(3) For the purposes of this Act, goods and services are associated with each other if it is likely
that those goods might be sold or otherwise traded in and those services might be provided by
the same business and so with descriptions of goods and descriptions of services.
(4) For the purposes of this Act, 'existing registered trade mark' means a trade mark registered
under the Trade and Merchandise Marks Act, 1958 (43 of 1958) immediately before the
commencement of this Act.
CHAPTER II
THE REGISTER AND CONDITIONS FOR REGISTRATION
3. Appointment of Registrar and other officers. - (1) The Central Government may, by
notification in the Official Gazette, appoint a person to be known as the Controller-General of
Patents, Designs and Trade Marks, who shall be the Registrar of Trade Marks for the purposes of
this Act.
(2) The Central Government may appoint such other officers with such designations as it thinks
fit for the purpose of discharging, under the superintendence and direction of the Registrar, such
functions of the Registrar under this Act as he may from time to time authorise them to
discharge.
4. Power of Registrar to withdraw or transfer cases, etc. - Without prejudice to the generality
of the provisions of sub-section (2) of section 3, the Registrar may, by order in writing and for
reasons to be recorded therein, withdraw any matter pending before an officer appointed under
the said sub-section (2) and deal with such matter himself either de novo or from the stage it was
so withdrawn or transfer the same to another officer so appointed who may, subject to special
directions in the order of transfer, proceed with the matter either de novo or from the stage it was
so transferred.
5. Trade Marks Registry and offices thereof. - (1) For the purposes of this Act, there shall be a
trade marks registry and the Trade Marks Registry established under the Trade and Merchandise
Marks Act, 1958 (43 of 1958) shall be the Trade Marks Registry under this Act.
(2) The head office of the Trade Marks Registry shall be at such place as the Central
Government may specify, and for the purpose of facilitating the registration of trade marks, there
may be established at such places as the Central Government may think fit branch offices of the
Trade Marks Registry.
(3) The Central Government may, by notification in the Official Gazette, define the territorial
limits within which an office of the Trade Marks Registry may exercise its functions.
(4) There shall be a seal of the Trade Marks Registry.
6. The Register of Trade Marks. - (1) For the purposes of this Act, a record called the Register
of Trade Marks shall be kept at the head office of the Trade Marks Registry, wherein shall be
entered all registered trade marks with the names, addresses and description of the proprietors,
notifications of assignment and transmissions, the names, addresses and descriptions of
registered users, conditions, limitations and such other matter relating to registered trade marks
as may be prescribed.
(2) Notwithstanding anything contained in sub-section (1), it shall be lawful for the Registrar to
keep the records wholly or partly in computer floppies diskattes or in any other electronic form
subject to such safeguards as may be prescribed.
(3) Where such register is maintained wholly or partly on computer under sub-section (2) any
reference in this Act to entry in the register shall be construed as the reference to any entry as
maintained on computer or in any other electronic form.
(4) No notice of any trust, express or implied or constructive, shall be entered in the register and
no such notice shall be receivable by the Registrar.
(5) The register shall be kept under the control and management of the Registrar.
(6) There shall be kept at each branch office of the Trade Marks Registry a copy of the register
and such of the other documents mentioned in section 148 as the Central Government may, by
notification in the Official Gazette, direct.
(7) The Register of Trade Marks, both Part A and Part B, existing at the commencement of this
Act, shall be incorporated in and form part of the register under this Act.
7. Classification of goods and services. - (1) The Registrar shall classify goods and services, as
far as may be, in accordance with the International classification of goods and services for the
purposes of registration of trade marks.
(2) Any question arising as to the class within which any goods or services falls shall be
determined by the Registrar whose decision shall be final.
8. Publication of alphabetical index. - (1) The Registrar may publish in the prescribed manner
an alphabetical index of classification of goods and services referred to in section 7.
(2) Where any goods or services are not specified in the alphabetical index of goods and services
published under sub-section (1), the classification of goods or services shall be determined by the
Registrar in accordance with sub?section (2) of section 7.
9. Absolute grounds for refusal of registration. - (1) The trade marks (a) which are devoid of any distinctive character, that is to say, not capable of
distinguishing the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications which may serve in trade to
designate the kind, quality, quantity, intended purpose, values, geographical origin or the
time of production of the goods or rendering of the service or other characteristics of the
goods or service;
(c) which consist exclusively of marks or indications which have become customary in
the current language or in the bona fide and established practices of the trade,
shall not be registered:
Provided that a trade mark shall not be refused registration if before the date of
application for registration it has acquired a distinctive character as a result of the use
made of it or is a well-known trade mark.
(2) A mark shall not be registered as a trade mark if (a) it is of such nature as to deceive the public or cause confusion;
(b) it contains or comprises of any matter likely to hurt the religious susceptibilities of
any class or section of the citizens of India;
(c) it comprises or contains scandalous or obscene matter;
(d) its use is prohibited under the Emblems and Names (Prevention of Improper Use)
Act, 1950 (12 of 1950).
(3) A mark shall not be registered as a trade mark if it consists exclusively of (a) the shape of goods which results from the nature of the goods themselves; or
(b) the shape of goods which is necessary to obtain a technical result; or
(c) the shape which gives substantial value to the goods.
Explanation. - For the purposes of this section, the nature of goods or services in relation to
which the trade mark is used or proposed to be used shall not be a ground for refusal of
registration.
10. Limitation as to colour. - (1) A trade mark may be limited wholly or in part to any
combination of colours and any such limitation shall be taken into consideration by the tribunal
having to decide on the distinctive character of the trade mark.
(2) So far as a trade mark is registered without limitation of colour, it shall be deemed to be
registered for all colours.
11. Relative grounds for refusal of registration. - (1) Save as provided in section 12, a trade
mark shall not be registered if, because of (a) its identity with an earlier trade mark and similarity of goods or services covered by
the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods o
services covered by the trade mark,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of
association with the earlier trade mark.
(2) A trade mark which (a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for which the
earlier trade mark is registered in the name of a different proprietor,
shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in
India and the use of the later mark without due cause would take unfair advantage of or be
detrimental to the distinctive character or repute of the earlier trade mark.
(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be
prevented (a) by virtue of any law in particular the law of passing off protecting an unregistered
trade mark used in the course of trade; or
(b) by virtue of law of copyright.
(4) Nothing in this section shall prevent the registration of a trade mark where the proprietor of
the earlier trade mark or other earlier right consents to the registration, and in such case the
Registrar may register the mark under special circumstances under section 12.
Explanation. - For the purposes of this section, earlier trade mark means (a) a registered trade mark or convention application referred to in section 154 which has
a date of application earlier than that of the trade mark in question, taking account, where
appropriate, of the priorities claimed in respect of the trade marks;
(b) a trade mark which, on the date of the application for registration of the trade mark in
question, or where appropriate, of the priority claimed in respect of the application, was
entitled to protection as a well-known trade mark.
(5) A trade mark shall not be refused registration on the grounds specified in subsections (2) and
(3), unless objection on any one or more of those grounds is raised in opposition proceedings by
the proprietor of the earlier trade mark.
(6) The Registrar shall, while determining whether a trade mark is a well-known trade mark, take
into account any fact which he considers relevant for determining a trade mark as a well-known
trade mark including (i) the knowledge or recognition of that trade mark in the relevant section of the public
including knowledge in India obtained as a result of promotion of the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
(iii) the duration, extent and geographical area of any promotion of the trade mark,
including advertising or publicity and presentation, at fairs or exhibition of the goods or
services to which the trade mark applies;
(iv) the duration and geographical area of any registration of or any publication for
registration of that trade mark under this Act to the extent they reflect the user
recognition of the trade mark;
(v) the record of successful enforcement of the rights in that trade mark; in particular, the
extent to which the trade mark has been recognised as a well-known trade mark by any
court on Registrar under that record.
(7) The Registrar shall, while determining as to whether a trade mark is known or recognised in a
relevant section of the public for the purposes of sub-section (6), take into account (i) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the goods or
services;
(iii) the business circles dealing with the goods or services,
to which that trade mark applies.
(8) Where a trade mark has been determined to be well-known in at least one relevant section of
the public in India by any court or Registrar, the Registrar shall consider that trade mark as a
well-known trade mark for registration under this Act.
(9) The Registrar shall not require as a condition, for determining whether a trade mark is a wellknown trade mark, the any of the following, namely:
(i) that the trade mark has been used in India;
(ii) that the trade mark has been registered;
(iii) that the application for registration of the trade mark has been filed in India;
(iv) that the trade mark (a) is well known in; or
(b) has been registered in; or
(c) in respect of which an application for registration has been filed in, any
jurisdiction other than India; or
(v) that the trade mark is well-known to the public at large in India.
(10) While considering an application for registration of a trade mark and opposition filed in
respect thereof, the Registrar shall (i) protect a well-known trade mark against the identical or similar trade marks;
(ii) take into consideration the bad faith involved either of the applicant or the opponent
affecting the right relating to the trade mark.
(11) Where a trade mark has been registered in good faith disclosing the material informations to
the Registrar of where right to a trade mark has been acquired through use in good faith before
the commencement of this Act, then, nothing in this Act shall prejudice the validity of the
registration of that trade mark or right to use that trade mark on the ground that such trade mark
is identical with or similar to a well known trade mark.
12. Registration in the case of honest concurrent use, etc. - In the case of honest concurrent
use or of other special circumstances which in the opinion of the Registrar, make it proper so to
do, he may permit the registration by more than one proprietor of the trade marks which are
identical or similar (whether any such trade mark is already registered or not) in respect of the
same or similar goods or services, subject to such conditions and limitations, if any, as the
Registrar may think fit to impose.
13. Prohibition of registration of names of chemical elements or international nonproprietary names. - No word (a) which is the commonly used and accepted name of any single chemical element or
any single chemical compound (as distinguished from a mixture) in respect of a chemical
substance or preparation, or
(b) which is declared by the World Health Organisation and notified in the prescribed
manner by the Registrar from time to time, as an international non?proprietary name or
which is deceptively similar to such name,
shall be registered as a trade mark and any such registration shall be deemed for the purpose of
section 57 to be an entry made in the register without sufficient cause or an entry wrongly
remaining on the register, as the circumstances may require.
14. Use of names and representations of living persons or persons recently dead. - Where an
application is made for the registration of a trade mark which falsely suggests a connection with
any living person, or a person whose death took place within twenty years prior to the date of
application for registration of the trade mark, the Registrar may, before he proceeds with the
application, require the applicant to furnish him with the consent in writing of such living person
or, as the case may be, of the legal representative of the deceased person to the connection
appearing on the trade mark, and may refuse to proceed with the application unless the applicant
furnishes the Registrar with such consent.
15. Registration of parts of trade marks and of trade marks as a series. - (1) Where the
proprietor of a trade mark claims to be entitled to the exclusive use of any part thereof separately,
he may apply to register the whole and the part as separate trade marks.
(2) Each such separate trade mark shall satisfy all the conditions applying to and have all the
incidents of, an independent trade mark.
(3) Where a person claiming to be the proprietor of several trade marks in respect of the same or
similar goods or services or description of goods or description of services, which, while
resembling each other in the material particulars thereof, yet differ in respect of (a) statement of the goods or services in relation to which they are respectively used or
proposed to be used; or
(b) statement of number, price, quality or names of places; or
(c) other matter of a non-distinctive character which does not substantially affect the
identity of the trade mark; or
(d) colour,
seeks to register those trade marks, they may be registered as a series in one registration.
16. Registration of trade marks as associated trade marks. - (1) Where a trade mark which is
registered, or is the subject of an application for registration, in respect of any goods or services
is identical with another trade mark which is registered, or is the subject of an application for
registration, in the name of the same proprietor in respect of the same goods or description of
goods or same services or description of services or so nearly resembles it as to be likely to
deceive or cause confusion if used by a person other than the proprietor, the Registrar may, at
any time, require that the trade marks shall be entered on the register as associated trade marks.
(2) Where there is an identity or near resemblance of marks that are registered, or are the subject
of applications for registration in the name of the same proprietor, in respect of goods and in
respect of services which are associated with those goods or goods of that description and with
those services or services of that description, subsection (1) shall apply as it applies as where
there is an identity or near resemblance of marks that are registered, or are the subject of
applications for registration, in the name of the same proprietor in respect of the same goods or
description of goods or same services or description of services.
(3) Where a trade mark and any part thereof are, in accordance with the provisions of sub-section
(1) of section 15, registered as separate trade marks in the name of the same proprietor, they shall
be deemed to be, and shall be registered as, associated trade marks.
(4) All trade marks registered in accordance with the provisions of sub-section (3) of section 15
as a series in one registration shall be deemed to be, and shall be registered as, associated trade
marks.
(5) On application made in the prescribed manner by the registered proprietor of two or more
trade marks registered as associated trade marks, the Registrar may dissolve the association as
respects any of them if he is satisfied that there would be no likelihood of deception or confusion
being caused if that trade mark were used by any other person in relation to any of the goods or
services or both in respect of which it is registered, and may amend the register accordingly.
17. Effect of registration of parts of a mark. - (1) When a trade mark consists of several
matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark
as a whole.
(2) Notwithstanding anything contained in sub-section (1), when a trade mark (a) contains any part (i) which is not the subject of a separate application by the proprietor for
registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-distinctive
character,
the registration thereof shall not confer any exclusive right in the matter forming only a part of
the whole of the trade mark so registered.
CHAPTER III
PROCEDURE FOR AND DURATION OF REGISTRATION
18. Application for registration. - (1) Any person claiming to be the proprietor of a trade mark
used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the
Registrar in the prescribed manner for the registration of his trade mark.
(2) A single application may be made for registration of a trade mark for different classes of
goods and services and fee payable therefor shall be in respect of each such class of goods or
services.
(3) Every application under sub-section (1) shall be filed in the office of the Trade Marks
Registry within whose territorial limits the principal place of business in India of the applicant or
in the case of joint applicants the principal place of business in India of the applicant whose
name is first mentioned in the application as having a place of business in India, is situate:
Provided that where the applicant or any of the joint applicants does not carry on business in
India, the application shall be filed in the office of the Trade Marks Registry within whose
territorial limits the place mentioned in the address for service in India as disclosed in the
application, is situate.
(4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it
absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he
may think fit.
(5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record
in writing the grounds for such refusal or conditional acceptance and the materials used by him
in arriving at his decision.
19. Withdrawal of acceptance. - Where, after the acceptance of an application for registration
of a trade mark but before its registration, the Registrar is satisfied (a) that the application has been accepted in error; or
(b) that in the circumstances of the case of the trade mark should not be registered or
should be registered subject to conditions or limitations or to conditions additional to or
different from the conditions or limitations subject to which the application has been
accepted,
the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and
proceed as if the application had not been accepted.
20. Advertisement of application. - (1) When an application for registration of a trade mark has
been accepted whether absolutely or subject to conditions or limitations, the Registrar shall, as
soon as may be after acceptance, cause the application as accepted together with the conditions
or limitations, if any, subject to which it has been accepted, to be advertised in the prescribed
manner:
Provided that the Registrar may cause the application to be advertised before acceptance if it
relates to a trade mark to which sub-section (1) of section 9 and subsections (1) and (2) of section
11 apply, or in any other case where it appears to him that it is expedient by reason of any
exceptional circumstances so to do.
(2) Where (a) an application has been advertised before acceptance under sub-section (1); or
(b) after advertisement of an application (i) an error in the application has been corrected; or
(ii) the application has been permitted to be amended under section 22,
the Registrar may in his discretion cause the application to be advertised again or in any case
falling under clause (b) may, instead of causing the application to be advertised again, notify in
the prescribed manner the correction or amendment made in the application.
21. Opposition to registration. - (1) Any person may, within three months from the date of the
advertisement or re-advertisement of an application for registration or within such further period,
not exceeding one month in the aggregate, as the Registrar, on application made to him in the
prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the
prescribed manner to the Registrar, of opposition to the registration.
(2) The Registrar shall serve a copy of the notice on the applicant for registration and, within two
months from the receipt by the applicant of such copy of the notice of opposition, the applicant
shall send to the Registrar in the prescribed manner a counterstatement of the grounds on which
he relies for his application, and if he does not do so he shall be deemed to have abandoned his
application.
(3) If the applicant sends such counter-statement, the Registrar shall serve a copy thereof on the
person giving notice of opposition.
(4) Any evidence upon which the opponent and the applicant may rely shall be submitted in the
prescribed manner and within the prescribed time to the Registrar, and the Registrar shall give an
opportunity to them to be heard, if they so desire.
(5) The Registrar shall, after hearing the parties, if so required, and considering the evidence,
decide whether and subject to what conditions or limitations, if any, the registration is to be
permitted, and may take into account a ground of objection whether relied upon by the opponent
or not.
(6) Where a person giving notice of opposition or an applicant sending a counterstatement after
receipt of a copy of such notice neither resides nor carries on business in India, the Registrar may
require him to give security for the costs of proceedings before him, and in default of such
security being duly given, may treat the opposition or application, as the case may be, as
abandoned.
(7) The Registrar may, on request, permit correction of any error in, or any amendment of, a
notice of opposition or a counter-statement on such terms as he thinks just.
22. Correction and amendment. - The Registrar may, on such terms as he thinks just, at any
time, whether before or after acceptance of an application for registration under section 18,
permit the correction of any error in or in connection with the application or permit an
amendment of the application:
Provided that if an amendment is made to a single application referred to in subsection
(2) of section 18 involving division of such application into two or more applications, the
date of making of the initial application shall be deemed to be the date of making of the
divided applications so divided.
23. Registration. - (1) Subject to the provisions of section 19, when an application for
registration of a trade mark has been accepted and either (a) the application has not been opposed and the time for notice of opposition has
expired; or
(b) the application has been opposed and the opposition has been decided in favour of the
applicant,
the Registrar shall, unless the Central Government otherwise directs, register the said trade mark
and the trade mark when registered shall be registered as of the date of the making of the said
application and that date shall, subject to the provisions of section 154, be deemed to be the date
of registration.
(2) On the registration of a trade mark, the Registrar shall issue to the applicant a certificate in
the prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry.
(3) Where registration of a trade mark, is not completed within twelve months from the date of
the application by reason of default on the part of the applicant, the Registrar may, after giving
notice to the applicant in the prescribed manner, treat the application as abandoned unless it is
completed within the time specified in that behalf in the notice.
(4) The Registrar may amend the register or a certificate of registration for the purpose of
correcting a clerical error or an obvious mistake.
24. Jointly owned trade marks. - (1) Save as provided in sub-section (2), nothing in this Act
shall authorise the registration of two or more persons who use a trade mark independently, or
propose so to use it, as joint proprietors thereof.
(2) Where the relations between two or more persons interested in a trade mark are such that no
one of them is entitled as between himself and the other or others of them to use it except (a) on behalf of both or all of them; or
(b) in relation to an article or service with which both or all of them are connected in the
course of trade,
those persons may be registered as joint proprietors of the trade mark, and this Act shall have
effect in relation to any rights to the use of the trade mark vested in those persons as if those
rights had been vested in a single person.
25. Duration, renewal, removal and restoration and registration. - (1) The registration of a
trade mark, after the commencement of this Act, shall be for a period of ten years, but may be
renewed from time to time in accordance with the provisions of this section.
TRADEMARKS LINKS
www.uspto.gov/web/offices/tac/tmlaw2.htm - a link to the U.S. Patent and Trademark Office
www.uspto.gov/web/offices/tac/tmep - a link to the U.S. Patent and Trademark Office
http://www.fake-busters.com/fake/index.shtml - Site maintained by Federation of Indian
Chamber of Commerce and Industry [FICCI]. This site aims to eradicate from India counterfeit
and pass-off consumer products by advocating more effective enforcement of anti-pass-off /
counterfeit laws and leveraging the support of concerned stakeholders by providing on-line
actionable information and data.
QUALITEX COMPANY, PETITIONER
v.
JACOBSON PRODUCTS COMPANY, INC.
No. 93-1577 U.S. Supreme Court
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE NINTH
CIRCUIT
Argued January 9, 1995 Decided March 28, 1995
JUSTICE BREYER delivered the opinion of the Court.
The question in this case is whether the Lanham Trademark Act of 1946 (Lanham Act), 15
U.S.C. 1051-1127 (1988 ed. and Supp. V), permits the registration of a trademark that consists,
purely and simply, of a color. We conclude that, sometimes, a color will meet ordinary legal
trademark requirements. And, when it does so, no special legal rule prevents color alone from
serving as a trademark.
I
The case before us grows out of petitioner Qualitex Company's use (since the 1950's) of a special
shade of green-gold color on the pads that it makes and sells to dry cleaning firms for use on dry
cleaning presses. In 1989 respondent Jacobson Products (a Qualitex rival) began to sell its own
press pads to dry cleaning firms; and it colored those pads a similar green-gold. In 1991 Qualitex
registered the special green-gold color on press pads with the Patent and Trademark Office as a
trademark. Registration No. 1,633,711 (Feb. 5, 1991). Qualitex subsequently added a trademark
infringement count, 15 U.S.C. 1114(1), to an unfair competition claim, 1125(a), in a lawsuit it
had already filed challenging Jacobson's use of the green-gold color. [ QUALITEX CO. v.
JACOBSON PRODUCTS CO., ___ U.S. ___ (1995) , 2]
Qualitex won the lawsuit in the District Court. 21 U.S. P. Q. 2d 1457 (CD Cal. 1991). But, the
Court of Appeals for the Ninth Circuit set aside the judgment in Qualitex's favor on the
trademark infringement claim because, in that Circuit's view, the Lanham Act does not permit
Qualitex, or anyone else, to register 'color alone' as a trademark. 13 F.3d 1297, 1300, 1302
(1994).
The courts of appeals have differed as to whether or not the law recognizes the use of color alone
as a trademark. Compare NutraSweet Co. v. Stadt Corp., 917 F.2d 1024, 1028 (CA7 1990)
(absolute prohibition against protection of color alone), with In re Owens-Corning Fiberglas
Corp., 774 F.2d 1116, 1128 (CA Fed. 1985) (allowing registration of color pink for fiberglass
insulation), and Master Distributors, Inc. v. Pako Corp., 986 F.2d 219, 224 (CA8 1993)
(declining to establish per se prohibition against protecting color alone as a trademark).
Therefore, this Court granted certiorari. 512 U.S. ___ (1994). We now hold that there is no rule
absolutely barring the use of color alone, and we reverse the judgment of the Ninth Circuit.
II
The Lanham Act gives a seller or producer the exclusive right to 'register' a trademark, 15 U.S.C.
1052 (1988 ed. and Supp. V), and to prevent his or her competitors from using that trademark,
1114(1). Both the language of the Act and the basic underlying principles of trademark law
would seem to include color within the universe of things that can qualify as a trademark. The
language of the Lanham Act describes that universe in the broadest of terms. It says that
trademarks 'includ[e] any word, name, symbol, or device, or any combination thereof.' 1127.
Since human beings might use as a 'symbol' or 'device' almost anything at all that is capable of
carrying meaning, this language, read literally, is not restrictive. The courts and the [
QUALITEX CO. v. JACOBSON PRODUCTS CO., ___ U.S. ___ (1995) , 3] Patent and
Trademark Office have authorized for use as a mark a particular shape (of a Coca-Cola bottle), a
particular sound (of NBC's three chimes), and even a particular scent (of plumeria blossoms on
sewing thread). See, e.g., Registration No. 696,147 (Apr. 12, 1960); Registration Nos. 523,616
(Apr. 4, 1950) and 916,522 (July 13, 1971); In re Clarke, 17 U.S. P. Q. 2d 1238, 1240 (TTAB
1990). If a shape, a sound, and a fragrance can act as symbols why, one might ask, can a color
not do the same?
A color is also capable of satisfying the more important part of the statutory definition of a
trademark, which requires that a person 'us[e]' or 'inten[d] to use' the mark
'to identify and distinguish his or her goods, including a unique product, from those
manufactured or sold by others and to indicate the source of the goods, even if that source
is unknown.' 15 U.S.C. 1127.
True, a product's color is unlike 'fanciful,' 'arbitrary,' or 'suggestive' words or designs, which
almost automatically tell a customer that they refer to a brand. Abercrombie & Fitch Co. v.
Hunting World, Inc., 537 F.2d 4, 9-10 (CA2 1976) (Friendly, J.); see Two Pesos, Inc. v. Taco
Cabana, Inc., 505 U.S. ___, ___ (1992) (slip op., at 6-7). The imaginary word 'Suntost,' or the
words 'Suntost Marmalade,' on a jar of orange jam immediately would signal a brand or a
product 'source'; the jam's orange color does not do so. But, over time, customers may come to
treat a particular color on a product or its packaging (say, a color that in context seems unusual,
such as pink on a firm's insulating material or red on the head of a large industrial bolt) as
signifying a brand. And, if so, that color would have come to identify and distinguish the goods i.e. 'to 'indicate' their 'source' - much in the way that descriptive words on a [ QUALITEX CO.
v. JACOBSON PRODUCTS CO., ___ U.S. ___ (1995) , 4] product (say, 'Trim' on nail clippers
or 'Car-Freshner' on deodorizer) can come to indicate a product's origin. See, e.g., J. Wiss &
Sons Co. v. W. E. Bassett Co., 59 C. C. P. A. 1269, 1271 (Pat.), 462 F.2d 567, 569 (1972); CarFreshner Corp. v. Turtle Wax, Inc., 268 F. Supp. 162, 164 (SDNY 1967). In this
circumstance, trademark law says that the word (e.g., 'Trim'), although not inherently distinctive,
has developed 'secondary meaning.' See Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456
U.S. 844, 851 , n. 11 (1982) ('secondary meaning' is acquired when 'in the minds of the public,
the primary significance of a product feature . . . is to identify the source of the product rather
than the product itself'). Again, one might ask, if trademark law permits a descriptive word with
secondary meaning to act as a mark, why would it not permit a color, under similar
circumstances, to do the same?
We cannot find in the basic objectives of trademark law any obvious theoretical objection to the
use of color alone as a trademark, where that color has attained 'secondary meaning' and
therefore identifies and distinguishes a particular brand (and thus indicates its 'source'). In
principle, trademark law, by preventing others from copying a source-identifying mark,
'reduce[s] the customer's costs of shopping and making purchasing decisions,' 1 J. McCarthy,
McCarthy on Trademarks and Unfair Competition 2.012., p. 2-3 (3d ed. 1994) (hereinafter
McCarthy), for it quickly and easily assures a potential customer that this item - the item with
this mark - is made by the same producer as other similarly marked items that he or she liked (or
disliked) in the past. At the same time, the law helps assure a producer that it (and not an
imitating competitor) will reap the financial, reputation-related rewards associated with a
desirable product. The law thereby 'encourage[s] the production of quality products,' ibid., and
simultaneously discourages those who hope to sell inferior products by [ QUALITEX CO. v.
JACOBSON PRODUCTS CO., ___ U.S. ___ (1995) , 5] capitalizing on a consumer's inability
quickly to evaluate the quality of an item offered for sale. See, e.g., 3 L. Altman, Callmann on
Unfair Competition, Trademarks and Monopolies 17.03 (4th ed. 1983); Landes & Posner, The
Economics of Trademark Law, 78 T. M. Rep. 267, 271-272 (1988); Park 'N Fly, Inc. v. Dollar
Park and Fly, Inc., 469 U.S. 189, 198 (1985); S. Rep. No. 100-515, p. 4 (1988). It is the sourcedistinguishing ability of a mark - not its ontological status as color, shape, fragrance, word, or
sign - that permits it to serve these basic purposes. See Landes & Posner, Trademark Law:An
Economic Perspective, 30 J. Law & Econ. 265, 290 (1987). And, for that reason, it is difficult to
find, in basic trademark objectives, a reason to disqualify absolutely the use of a color as a mark.
Neither can we find a principled objection to the use of color as a mark in the important
'functionality' doctrine of trademark law. The functionality doctrine prevents trademark law,
which seeks to promote competition by protecting a firm's reputation, from instead inhibiting
legitimate competition by allowing a producer to control a useful product feature. It is the
province of patent law, not trademark law, to encourage invention by granting inventors a
monopoly over new product designs or functions for a limited time, 35 U.S.C. 154, 173, after
which competitors are free to use the innovation. If a product's functional features could be used
as trademarks, however, a monopoly over such features could be obtained without regard to
whether they qualify as patents and could be extended forever (because trademarks may be
renewed in perpetuity). See Kellogg Co. v. National Biscuit Co., 305 U.S. 111, 119 -120 (1938)
(Brandeis, J.); Inwood Laboratories, Inc., supra, at 863 (White, J., concurring in result) ('A
functional characteristic is `an important ingredient in the commercial success of the product,'
and, after expiration of a patent, it is no more the property of the [ QUALITEX CO. v.
JACOBSON PRODUCTS CO., ___ U.S. ___ (1995) , 6] originator than the product itself')
(citation omitted). Functionality doctrine therefore would require, to take an imaginary example,
that even if customers have come to identify the special illumination-enhancing shape of a new
patented light bulb with a particular manufacturer, the manufacturer may not use that shape as a
trademark, for doing so, after the patent had expired, would impede competition - not by
protecting the reputation of the original bulb maker, but by frustrating competitors' legitimate
efforts to produce an equivalent illumination-enhancing bulb. See, e.g., Kellogg Co., supra, at
119-120 (trademark law cannot be used to extend monopoly over 'pillow' shape of shredded
wheat biscuit after the patent for that shape had expired). This Court consequently has explained
that, '[i]n general terms, a product feature is functional,' and cannot serve as a trademark, 'if it is
essential to the use or purpose of the article or if it affects the cost or quality of the article,' that
is, if exclusive use of the feature would put competitors at a significant non-reputation-related
disadvantage. Inwood Laboratories, Inc., 456 U.S., at 850 , n. 10. Although sometimes color
plays an important role (unrelated to source identification) in making a product more desirable,
sometimes it does not. And, this latter fact - the fact that sometimes color is not essential to a
product's use or purpose and does not affect cost or quality - indicates that the doctrine of
'functionality' does not create an absolute bar to the use of color alone as a mark. See OwensCorning, 774 F.2d, at 1123 (pink color of insulation in wall 'performs no non-trademark
function').
It would seem, then, that color alone, at least sometimes, can meet the basic legal requirements
for use as a trademark. It can act as a symbol that distinguishes a firm's goods and identifies their
source, without serving any other significant function. See U.S. Dept. of Commerce, Patent and
Trademark Office, [ QUALITEX CO. v. JACOBSON PRODUCTS CO., ___ U.S. ___ (1995)
, 7] Trademark Manual of Examining Procedure 1202.04(e), p. 1202-13 (2d ed. May, 1993)
(hereinafter PTO Manual) (approving trademark registration of color alone where it 'has become
distinctive of the applicant's goods in commerce,' provided that 'there is [no] competitive need
for colors to remain available in the industry' and the color is not 'functional'); see also 1
McCarthy 3.011., 7.26 ('requirements for qualification of a word or symbol as a trademark' are
that it be (1) a 'symbol,' (2) 'use[d] . . . as a mark,' (3) 'to identify and distinguish the seller's
goods from goods made or sold by others,' but that it not be 'functional'). Indeed, the District
Court, in this case, entered findings (accepted by the Ninth Circuit) that show Qualitex's greengold press pad color has met these requirements. The green-gold color acts as a symbol. Having
developed secondary meaning (for customers identified the green-gold color as Qualitex's), it
identifies the press pads' source. And, the green-gold color serves no other function. (Although it
is important to use some color on press pads to avoid noticeable stains, the court found 'no
competitive need in the press pad industry for the green-gold color, since other colors are equally
usable.' 21 U.S. P. Q. 2d, at 1460.) Accordingly, unless there is some special reason that
convincingly militates against the use of color alone as a trademark, trademark law would protect
Qualitex's use of the green-gold color on its press pads.
III
Respondent Jacobson Products says that there are four special reasons why the law should forbid
the use of color alone as a trademark. We shall explain, in turn, why we, ultimately, find them
unpersuasive.
First, Jacobson says that, if the law permits the use of color as a trademark, it will produce
uncertainty and unresolvable court disputes about what shades of a color a competitor may
lawfully use. Because lighting [ QUALITEX CO. v. JACOBSON PRODUCTS CO., ___ U.S.
___ (1995) , 8] (morning sun, twilight mist) will affect perceptions of protected color,
competitors and courts will suffer from 'shade confusion' as they try to decide whether use of a
similar color on a similar product does, or does not, confuse customers and thereby infringe a
trademark. Jacobson adds that the 'shade confusion' problem is 'more difficult' and 'far different
from' the 'determination of the similarity of words or symbols.' Brief for Respondent 22.
We do not believe, however, that color, in this respect, is special. Courts traditionally decide
quite difficult questions about whether two words or phrases or symbols are sufficiently similar,
in context, to confuse buyers. They have had to compare, for example, such words as 'Bonamine'
and 'Dramamine' (motion-sickness remedies); 'Huggies' and 'Dougies' (diapers); 'Cheracol' and
'Syrocol' (cough syrup); 'Cyclone' and 'Tornado' (wire fences); and 'Mattres' and '1-800-Mattres'
(mattress franchisor telephone numbers). See, e.g., G. D. Searle & Co. v. Chas. Pfizer & Co.,
265 F.2d 385, 389 (CA7 1959); Kimberly-Clark Corp. v. H. Douglas Enterprises, Ltd., 774
F.2d 1144, 1146-1147 (CA Fed. 1985); Upjohn Co. v. Schwartz, 246 F.2d 254, 262 (CA2
1957); Hancock v. American Steel & Wire Co., 40 C. C. P. A. of New Jersey, 931, 935 (Pat.),
203 F.2d 737, 740-741 (1953); Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675, 678
(CA2 1989). Legal standards exist to guide courts in making such comparisons. See, e.g., 2
McCarthy 15.08; 1 McCarthy 11.24-11.25 ('[S]trong' marks, with greater secondary meaning,
receive broader protection than 'weak' marks). We do not see why courts could not apply those
standards to a color, replicating, if necessary, lighting conditions under which a colored product
is normally sold. See Ebert, Trademark Protection in Color:Do It By the Numbers!, 84 T. M.
Rep. 379, 405 (1994). Indeed, courts already have done so in cases where a trademark consists of
a [ QUALITEX CO. v. JACOBSON PRODUCTS CO., ___ U.S. ___ (1995) , 9] color plus a
design, i.e., a colored symbol such as a gold stripe (around a sewer pipe), a yellow strand of wire
rope, or a 'brilliant yellow' band (on ampules). See, e.g., Youngstown Sheet & Tube Co. v.
Tallman Conduit Co., 149 U.S. P. Q. 656, 657 (TTAB 1966); Amstead Industries, Inc. v.
West Coast Wire Rope & Rigging Inc., 2 U.S. P. Q. 2d 1755, 1760 (TTAB 1987); In re HodesLange Corp., 167 U.S. P. Q. 255, 256 (TTAB 1970).
Second, Jacobson argues, as have others, that colors are in limited supply. See, e.g., NutraSweet
Co., 917 F.2d, at 1028; Campbell Soup Co. v. Armour & Co., 175 F.2d 795, 798 (CA3 1949).
Jacobson claims that, if one of many competitors can appropriate a particular color for use as a
trademark, and each competitor then tries to do the same, the supply of colors will soon be
depleted. Put in its strongest form, this argument would concede that '[h]undreds of color
pigments are manufactured and thousands of colors can be obtained by mixing.' L. Cheskin,
Colors:What They Can Do For You 47 (1947). But, it would add that, in the context of a
particular product, only some colors are usable. By the time one discards colors that, say, for
reasons of customer appeal, are not usable, and adds the shades that competitors cannot use lest
they risk infringing a similar, registered shade, then one is left with only a handful of possible
colors. And, under these circumstances, to permit one, or a few, producers to use colors as
trademarks will 'deplete' the supply of usable colors to the point where a competitor's inability to
find a suitable color will put that competitor at a significant disadvantage.
This argument is unpersuasive, however, largely because it relies on an occasional problem to
justify a blanket prohibition. When a color serves as a mark, normally alternative colors will
likely be available for similar use by others. See, e.g., Owens-Corning, 774 F.2d, at 1121 (pink
insulation). Moreover, if that is not so - if a 'color depletion' or 'color scarcity' problem does [
QUALITEX CO. v. JACOBSON PRODUCTS CO., ___ U.S. ___ (1995) , 10] arise - the
trademark doctrine of 'functionality' normally would seem available to prevent the
anticompetitive consequences that Jacobson's argument posits, thereby minimizing that
argument's practical force.
The functionality doctrine, as we have said, forbids the use of a product's feature as a trademark
where doing so will put a competitor at a significant disadvantage because the feature is
'essential to the use or purpose of the article' or 'affects [its] cost or quality.' Inwood Laboratories,
Inc., 456 U.S., at 850 , n. 10. The functionality doctrine thus protects competitors against a
disadvantage (unrelated to recognition or reputation) that trademark protection might otherwise
impose, namely their inability reasonably to replicate important non-reputation-related product
features. For example, this Court has written that competitors might be free to copy the color of a
medical pill where that color serves to identify the kind of medication (e.g., a type of blood
medicine) in addition to its source. See id., at 853, 858, n. 20 ('[S]ome patients commingle
medications in a container and rely on color to differentiate one from another'); see also J.
Ginsburg, D. Goldberg, & A. Greenbaum, Trademark and Unfair Competition Law 194-195
(1991) (noting that drug color cases 'have more to do with public health policy' regarding generic
drug substitution 'than with trademark law'). And, the federal courts have demonstrated that they
can apply this doctrine in a careful and reasoned manner, with sensitivity to the effect on
competition. Although we need not comment on the merits of specific cases, we note that lower
courts have permitted competitors to copy the green color of farm machinery (because customers
wanted their farm equipment to match) and have barred the use of black as a trademark on
outboard boat motors (because black has the special functional attributes of decreasing the
apparent size of the motor and ensuring compatibility with many different boat colors). See [
QUALITEX CO. v. JACOBSON PRODUCTS CO., ___ U.S. ___ (1995) , 11] Deere & Co.
v. Farmhand, Inc., 560 F. Supp. 85, 98 (SD Iowa 1982), aff'd, 721 F.2d 253 (CA8 1983);
Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1532 (CA Fed. 1994), cert. pending,
No. 94-1075; see also Nor-Am Chemical v. O. M. Scott & Sons Co., 4 U.S. P. Q. 2d 1316,
1320 (ED Pa. 1987) (blue color of fertilizer held functional because it indicated the presence of
nitrogen). The Restatement (Third) of Unfair Competition adds that, if a design's 'aesthetic value'
lies in its ability to 'confe[r] a significant benefit that cannot practically be duplicated by the use
of alternative designs,' then the design is 'functional.' Restatement (Third) of Unfair Competition
17, Comment c, pp. 175-176 (1995). The 'ultimate test of aesthetic functionality,' it explains, 'is
whether the recognition of trademark rights would significantly hinder competition.' Id., at 176.
The upshot is that, where a color serves a significant nontrademark function - whether to
distinguish a heart pill from a digestive medicine or to satisfy the 'noble instinct for giving the
right touch of beauty to common and necessary things,' G. K. Chesterton, Simplicity and Tolstoy
61 (1912) - courts will examine whether its use as a mark would permit one competitor (or a
group) to interfere with legitimate (nontrademark-related) competition through actual or potential
exclusive use of an important product ingredient. That examination should not discourage firms
from creating aesthetically pleasing mark designs, for it is open to their competitors to do the
same. See, e.g., W. T. Rogers Co. v. Keene, 778 F.2d 334, 343 (CA7 1985) (Posner, J.). But,
ordinarily, it should prevent the anticompetitive consequences of Jacobson's hypothetical 'color
depletion' argument, when, and if, the circumstances of a particular case threaten 'color
depletion.'
Third, Jacobson points to many older cases - including Supreme Court cases - in support of its
position. In 1878, this Court described the common-law definition of [ QUALITEX CO. v.
JACOBSON PRODUCTS CO., ___ U.S. ___ (1995) , 12] trademark rather broadly to 'consist
of a name, symbol, figure, letter, form, or device, if adopted and used by a manufacturer or
merchant in order to designate the goods he manufactures or sells to distinguish the same from
those manufactured or sold by another.' McLean v. Fleming, 96 U.S. 245, 254. Yet, in
interpreting the Trademark Acts of 1881 and 1905, 21 Stat. 502, 33 Stat. 724, which retained that
common-law definition, the Court questioned '[w]hether mere color can constitute a valid trademark,' A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co., 201 U.S. 166, 171
(1906), and suggested that the 'product including the coloring matter is free to all who make it.'
Coca-Cola Co. v. Koke Co. of America, 254 U.S. 143, 147 (1920). Even though these
statements amounted to dicta, lower courts interpreted them as forbidding protection for color
alone. See, e.g., Campbell Soup Co., 175 F.2d, at 798, and n. 9; Life Savers Corp. v. Curtiss
Candy Co., 182 F.2d 4, 9 (CA7 1950) (quoting Campbell Soup).
These Supreme Court cases, however, interpreted trademark law as it existed before 1946, when
Congress enacted the Lanham Act. The Lanham Act significantly changed and liberalized the
common law to 'dispense with mere technical prohibitions,' S. Rep. No. 1333, 79th Cong., 2d
Sess., 3 (1946), most notably, by permitting trademark registration of descriptive words (say, 'UBuild-It' model airplanes) where they had acquired 'secondary meaning.' See Abercrombie &
Fitch Co., 537 F.2d, at 9 (Friendly, J.). The Lanham Act extended protection to descriptive marks
by making clear that (with certain explicit exceptions not relevant here),
'nothing . . . shall prevent the registration of a mark used by the applicant which has
become distinctive of the applicant's goods in commerce.' 15 U.S.C. 1052(f) (1988 ed.,
Supp. V). [ QUALITEX CO. v. JACOBSON PRODUCTS CO., ___ U.S. ___ (1995) ,
13]
This language permits an ordinary word, normally used for a non-trademark purpose (e.g.,
description), to act as a trademark where it has gained 'secondary meaning.' Its logic would
appear to apply to color as well. Indeed, in 1985, the Federal Circuit considered the significance
of the Lanham Act's changes as they related to color and held that trademark protection for color
was consistent with the
'jurisprudence under the Lanham Act developed in accordance with the statutory
principle that if a mark is capable of being or becoming distinctive of [the] applicant's
goods in commerce, then it is capable of serving as a trademark.' Owens-Corning, 774
F.2d, at 1120.
In 1988 Congress amended the Lanham Act, revising portions of the definitional language, but
left unchanged the language here relevant. 134, 102 Stat. 3946, 15 U.S.C. 1127. It enacted these
amendments against the following background:(1) the Federal Circuit had decided OwensCorning; (2) the Patent and Trademark Office had adopted a clear policy (which it still
maintains) permitting registration of color as a trademark, see PTO Manual 1202.04(e) (at p.
1200-12 of the January 1986 edition and p. 1202-13 of the May 1993 edition); and (3) the
Trademark Commission had written a report, which recommended that 'the terms `symbol, or
device' . . . not be deleted or narrowed to preclude registration of such things as a color, shape,
smell, sound, or configuration which functions as a mark,' The United States Trademark
Association Trademark Review Commission Report and Recommendations to USTA President
and Board of Directors, 77 T. M. Rep. 375, 421 (1987) (hereinafter Trademark Commission); see
also 133 Cong. Rec. 32812 (1987) (statement of Sen. DeConcini) ('The bill I am introducing
today is based on [ QUALITEX CO. v. JACOBSON PRODUCTS CO., ___ U.S. ___ (1995) ,
14] the Commission's report and recommendations'). This background strongly suggests that the
language 'any word, name, symbol, or device,' 15 U.S.C. 1127, had come to include color. And,
when it amended the statute, Congress retained these terms. Indeed, the Senate Report
accompanying the Lanham Act revision explicitly referred to this background understanding, in
saying that the 'revised definition intentionally retains . . . the words `symbol or device' so as not
to preclude the registration of colors, shapes, sounds or configurations where they function as
trademarks.' S. Rep. No. 100-515, at 44. (In addition, the statute retained language providing that
'[n]o trademark by which the goods of the applicant may be distinguished from the goods of
others shall be refused registration . . . on account of its nature' (except for certain specified
reasons not relevant here). 15 U.S.C. 1052 (1988 ed., Supp V)).
This history undercuts the authority of the precedent on which Jacobson relies. Much of the pre1985 case law rested on statements in Supreme Court opinions that interpreted pre-Lanham Act
trademark law and were not directly related to the holdings in those cases. Moreover, we believe
the Federal Circuit was right in 1985 when it found that the 1946 Lanham Act embodied crucial
legal changes that liberalized the law to permit the use of color alone as a trademark (under
appropriate circumstances). At a minimum, the Lanham Act's changes left the courts free to
reevaluate the pre-existing legal precedent which had absolutely forbidden the use of color alone
as a trademark. Finally, when Congress re-enacted the terms 'word, name, symbol, or device' in
1988, it did so against a legal background in which those terms had come to include color, and its
statutory revision embraced that understanding.
Fourth, Jacobson argues that there is no need to permit color alone to function as a trademark
because a firm already may use color as part of a trademark, say, [ QUALITEX CO. v.
JACOBSON PRODUCTS CO., ___ U.S. ___ (1995) , 15] as a colored circle or colored letter
or colored word, and may rely upon 'trade dress' protection, under 43(a) of the Lanham Act, if a
competitor copies its color and thereby causes consumer confusion regarding the overall
appearance of the competing products or their packaging, see 15 U.S.C. 1125(a) (1988 ed., Supp.
V). The first part of this argument begs the question. One can understand why a firm might find
it difficult to place a usable symbol or word on a product (say, a large industrial bolt that
customers normally see from a distance); and, in such instances, a firm might want to use color,
pure and simple, instead of color as part of a design. Neither is the second portion of the
argument convincing. Trademark law helps the holder of a mark in many ways that 'trade dress'
protection does not. See 15 U.S.C. 1124 (ability to prevent importation of confusingly similar
goods); 1072 (constructive notice of ownership); 1065 (incontestible status); 1057(b) (prima
facie evidence of validity and ownership). Thus, one can easily find reasons why the law might
provide trademark protection in addition to trade dress protection.
IV
Having determined that a color may sometimes meet the basic legal requirements for use as a
trademark and that respondent Jacobson's arguments do not justify a special legal rule preventing
color alone from serving as a trademark (and, in light of the District Court's here undisputed
findings that Qualitex's use of the green-gold color on its press pads meets the basic trademark
requirements), we conclude that the Ninth Circuit erred in barring Qualitex's use of color as a
trademark. For these reasons, the judgment of the Ninth Circuit is
&&
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