Trade marks: meaning, evolution, functions and forms

1. Meaning

“Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours, or any combination of these (section 2(1)(m)).

“Trade mark” means a mark capable of being represented graphically and 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 (section 2(1)(zb)). For most of the Act it means a mark used or proposed to be used in relation to goods or services to indicate a connection in the course of trade between them and a person having the right, as proprietor or permitted user, to use it; it includes certification and collective marks.

Three things follow. A mark may be proposed to be used, so registration can be sought before use. Services are covered: the 1958 Act protected only goods, and the 1999 Act added service marks. And the test is capacity to distinguish, so a mark that merely describes the goods fails (section 9(1)).

2. Evolution of trade mark law

• Marks on goods are very old: potters’ and masons’ marks, and the compulsory marks of medieval guilds, which identified the maker so that bad work could be traced.
• In England the common law protected traders through the action for passing off and equity through injunctions; the Trade Marks Registration Act, 1875 introduced registration.
• In India, before 1940, protection was through passing off and section 54 of the Specific Relief Act, 1877, with the Indian Merchandise Marks Act, 1889 dealing with false marks. The Trade Marks Act, 1940 introduced registration; it was replaced by the Trade and Merchandise Marks Act, 1958.
• The Trade Marks Act, 1999, in force from 15 September 2003, implemented TRIPS: service marks, collective marks, well-known marks, shape and colour marks, ten-year renewable terms, and enhanced criminal penalties. The 2010 amendment added Chapter IVA for the Madrid Protocol; the Tribunals Reforms Act, 2021 abolished the IPAB; the Jan Vishwas Act, 2023 replaced some offences with penalties.

3. Functions of a trade mark

• Origin or source function. It tells the buyer that goods bearing the mark come from one trade source, even if the buyer does not know the name of that source.
• Distinguishing function. It separates one trader’s goods from those of competitors.
• Quality or guarantee function. It assures the buyer that goods bearing the mark are of the same quality as those he bought before.
• Advertising function. It carries the reputation and goodwill built up by promotion and creates demand.
• Protection of consumers. It saves the buyer from being deceived into buying inferior imitations. This is why trade mark law is often described as protecting both the trader and the public.

4. Features of a good trade mark

• Distinctive, preferably an invented word (Kodak, Xerox) or an arbitrary word with no relation to the goods (Apple for computers).
• Not descriptive of the kind, quality or origin of the goods, and not a common surname or geographical name.
• Short, easy to pronounce, spell and remember, and with no awkward meaning in other Indian languages.
• Not similar to existing marks, not deceptive, and not prohibited by sections 9 and 11 or the Emblems and Names (Prevention of Improper Use) Act, 1950.
• Capable of graphical representation and of being used across products and advertising.

Marks are often placed on a scale: generic (never registrable), descriptive (registrable only on acquired distinctiveness), suggestive, arbitrary and invented (the strongest).

5. Different forms of trade mark

• Word marks, letters and numerals — Tata, BMW, 555.
• Device or logo marks — a picture, emblem or stylised word.
• Shape of goods and packaging — a distinctive bottle shape; subject to the exclusions in section 9(3) for shapes resulting from the nature of the goods, necessary for a technical result, or giving substantial value.
• Colour combinations — section 10 allows a mark to be limited to colours.
• Sound marks — registrable since they can be represented graphically by musical notation; the Trade Marks Rules, 2017 allow filing as an audio file.
• Service marks — for banking, hotels, telecom and other services.
• Collective marks — distinguishing goods or services of members of an association (section 2(1)(g); sections 61 to 68).
• Certification marks — certifying origin, material, mode of manufacture, quality or other characteristics, such as Agmark or the Woolmark (section 2(1)(e); Chapter IX). The proprietor certifies; he does not trade in the goods.
• Well-known marks — marks known to a substantial segment of the relevant public, protected even for dissimilar goods (section 2(1)(zg) and section 11(2), (6) to (10)).
• Series and associated marks (sections 15 and 16).

6. The Registry and the Register

The Controller General of Patents, Designs and Trade Marks is the Registrar of Trade Marks (section 3). The Trade Marks Registry continues from the 1958 Act (section 5); its head office is at Mumbai, with branch offices at Delhi, Kolkata, Chennai and Ahmedabad, each with territorial jurisdiction. The Register of Trade Marks is kept at the head office and records registered marks, proprietors, assignments, transmissions, registered users, conditions and limitations; it may be kept in electronic form, and no notice of any trust may be entered in it (section 6). Goods and services are classified according to the international (Nice) classification (section 7).

7. Property in a trade mark

A trade mark is property, but of a special kind: it exists only in connection with the goodwill of a business. Property in a mark is acquired in two ways.

• By use. A trader who first adopts and honestly uses a mark acquires a common law right protected by passing off, whether or not he registers it (section 27(2)).
• By registration. Registration gives the exclusive right to use the mark for the registered goods or services and to sue for infringement (section 28), and is prima facie evidence of validity (section 31).

Where the two conflict, prior use generally prevails. Section 34 saves the rights of a person who has used a mark continuously from before the registrant’s use or registration. In Neon Laboratories Ltd. v. Medical Technologies Ltd., 2015 INSC 728, (2016) 2 SCC 672, the Supreme Court upheld an injunction in favour of the prior user of “PROFOL” against the registered proprietor of “ROFOL”, who had applied earlier but not used the mark for years.

Like other property, a trade mark can be assigned or transmitted, with or without goodwill (sections 38 and 39), licensed to registered or permitted users (section 48), and passes on death.

How this is examined

February 2025 asked “Explain the functions and essential features of a trade mark”; January 2026 asked “What is a Trade Mark?” as the first half of a question on grounds of refusal. For the essay, give both definitions with their elements, the five functions, the features of a good mark, and the forms with an example each. The evolution and the Registry make good opening and closing paragraphs. Neon Laboratories is the case to cite on property and prior use.