Function
of Trade Mark
The
function of a trade mark is to give an indication to the
purchaser or possible purchaser as to the manufacture or
quality of the goods, to give an indication to his eye of
the trade source from which the goods come, or the trade
hands through which they pass on their way to the market. It
tells the person who is about to buy that what is presented
to him is either what he has known before under the similar
name as coming from a source with which he is acquainted, or
that it is what he has heard of before as coming from that
similar source. It gives the purchaser a satisfactory
assurance of the mark and quality of the article he is
buying, the particular quality being not discernible by the
eye. It is on the faith of the mark being genuine and
representing a quality equal to that which he has previously
found a mark may be used to indicate not only that the goods
are of a particular maker but are goods of that maker of a
particular kind or quality. Thus a trader may indicate his
best quality by one trade mark, his second quality by
another trade mark and so on.
Under
modern business conditions a trade mark performs four
functions:
(1) it
identifies the product and its origin,
(2) it
guarantees its unchanged quality,
(3) it
advertises the product, and
(4) it
creates an image for the product.
Object of
Protecting Trade Mark
With the
immense growth in the scale of business, and the advertising
that accompanies it, modern customers rarely have that
personal knowledge of suppliers which is the hallmark of a
village economy. Even so, their interest in source of supply
has not in essence changed. Information about origin is only
a means towards an end : their main concern is in the
quality of what they are buying. In the case of some goods,
part of that quality may be bound up with source in a
specific way : as for instance, when the goods will need
servicing and the manufacturer or supplier is looked to for
the services. But in a great may cases source, particularly
when indicated by a Cypher such as a product mark or get-up,
does not have even this significance. What it does is to
enable the purchaser to link goods or services to a range of
personal expectations about quality which derive from
previous dealings, recommendations of others, attractive
advertising and so on. Nor should it be forgotten that,
however persuasively the advertiser may seek to promote this
sort of symbol, it retains a neutral character in one sense
: once a consumer learns that he does not want particular
goods, the mark, name or get-up becomes a significant
warning signal.
A law
protecting marks, names and get-up accordingly, seems
unavoidable in a capitalist economy. In various aspects,
however, these laws have tended to develop in a manner that
may appear to confer power without responsibility. The trade
mark owner acquires the all important right to stop
imitations of his indication of source, but his own use is
conditioned by few limitations of positive requirement. It
is perfectly possible for the public to be taught that a box
bearing a particular mark and get-up contains 500 gm. of
chocolates and then, by discreet expansion of the packaging,
to reduce that amount to 475 gms.(See Surya Roshni Ltd.
v. Samana Steel Ltd., AIR 1997 Del 321, where plaintiff
was held entitled to temporary injunction for protecting its
trade mark).
Different
forms of Protecting Trade Mark
If the
mark is a registrable one the best way to protect it is by
registration. Infringement of the mark can be easily
established. If the infringing mark is identical and the
goods covered by registration, the success in an action for
infringement is almost certain unless the registration can
be attacked on the ground of invalidity of registration or
the defendant could established honest concurrent user, or
acquiescence on the part of the registered proprietor, or
prior user. If the marks are not identical but only similar
then the plaintiff will have to establish that the
defendants` mark is deceptively similar, that is to say, the
similarity is such as to be likely to deceive or cause
confusion which is a proposition not easy to establish.
Ultimately the question of similarity is one for the judge
to decide on which opinion may often differ.
In the
case of unregistered marks and marks which are not
registrable the only way they can be protected is by an
action for passing off. The plaintiff will have to prove
sufficient use of the mark so as to create valuable goodwill
of the business connected with the goods bearing the mark.
Property
in Trade Mark
Under
common law a trader acquires a right of property in a
distinctive trade mark merely by using it upon or in
relation to some goods irrespective of the length of such
user or the extent of his trade. As between two who are each
desirous of adopting the same mark it is entirely a question
of who gets there first.
Property
in a trade mark which is only proposed to be used in
relation to some goods can be obtained by registration of
the mark under the Trade and Merchandise Marks Act, 1958.
