Introduction to Collective marks under Trademark law
Adv. Sakshi Shairwal
The term ‘Collective mark’ is defined under Section 2(1)(g) of Trade Marks Act, 1999 as a trademark that distinguishes the goods or services of members of an association of persons who is not being a partnership with the meaning of the Indian Partnership Act,1932and which is the importance of the trademark those of others. It is dealt with Chapter VIII of the Act from Sections 61 to 68 and Part II of the Trade Mark Rules, 2002 deals with important provisions for collective marks.
Article 7B is of the Paris Convention for Protection of Industrial Property makes it mandatory for a member country to accept for secure and to protect the collective marks belonging to associations, who generally belong to the association of producers, manufacturers, distributors, sellers, or other merchants of goods, in accordance with the national law. India is a member of the above convention. Trade Marks Act, 1999 is in compliance with its obligations and laws.
Section 61 of this act provides that the provisions shall apply to collective marks subject to the provisions contained in Chapter VIII of this particular act. In relation to the collective mark to distinguish the goods or services of one person from those of others shall be referred as a guide to distinguishing the goods or services of members of an association of persons which is the proprietor of the trademark, from those of others. Thus the entire definition of ‘trade mark’ is applicable to collective trademark subject to the provisions contained in Chapter VIII of this act.
Section 62 of this act deals with the registration of a collective trademark. There is two components of Section 62 are as follows:
A collective mark shall not be registered if there are chances to deceive or cause confusion or irregularity on the part of the public and there is the likelihood to be taken to be something other than a collective mark then in such case the Registrar may require that the mark in respect of which application is made for registration shall comprise some indication that it is a collective mark. Section 63 of the Act provides that an application for registration of a collective mark must be followed by the regulation that governs the use of such collective mark. The regulation shall also specify the persons authorized under this to use the mark, the conditions of membership of the association, and the conditions to use this mark including any sanctions against misuse and such other matters as may be directed. The Registrar has the power to require that the mark must have some indication that it is a collective mark. Rule 25 (7)(a) of the Trade Marks Rules, 2002 makes it mandatory that the application for registration for a collective Trademark must comply with Form No.TM – 3. Rule 128 (1) says that an application for the registration of a collective mark for goods or service under Section 63 (1) must be made to the Registrar in the Form TM-3, Form TM – 4 or in the case of a single application Form TM-66 or from TM – 67, as the case may be, in triplicate and shall be followed by five additional representations of the collective mark. The draft regulations to be submitted with the application shall be in triplicate and shall be followed by Form TM – 49 of the rule. The guidelines to acceptance of an application for the registration of a trademark shall be replaced by references to authorization to continue with the application.
The regulations for the draft shall specify-
i.) The person who is authorized to use the collective mark;
ii.) The conditions which are required for membership of the association;
iii.) The Conditions used for the collective mark;
iv.) The Sanctions against misuse the mark.
The Regulations shall include the details as required under Rule 128-
i.) The name of the association and the persons of their respective office addresses;
ii.) The object and aim of the association;
iii.) The details of members of the association;
iv.) The conditions required for membership of the mark and relation of each member with the group;
v.) The persons who have authority to use the mark and the nature of the power of the applicant exercise over the use of the collective mark;
vi.) The Conditions which governs the use of the mark include sanctions;
The rules and procedure for dealing with appeals against the use of the mark;
vii.) There are several other relevant particulars as may be called for by the Registrar.
ACCEPTANCE OF APPLICATION AND REGULATIONS
Section 64 of the act provides that if it appears to the Registrar that the conditions for registration are fulfilled shall accept the application together with the conditions, either unconditionally or subject to such conditions including changes of the said regulations, if any, as he may deem fit or refuse to accept it and if accepted shall notify the regulations. Section 65 of this provides that the regulations shall be open to public examination in the same way as that of the register as provided in Section 148.
EXAMINATION AND HEARING
The applicant shall submit to the Registrar with his application a statement of case setting out the grounds on which he relies in support of the application. This case shall be given in triplicate. The Registrar shall give the application to examine, in the first instance, to check whether it fulfills the requirements of the Act and Rules and issue a report to the applicant. The Registrar shall not refuse an application or accept the application subject to any conditions or can suggest certain amendments or modifications to the application or to the condition without giving the applicant an opportunity of being heard and the conditions thereto shall be regulated by the provisions of Rule 38 (4) to 42.
When the application is accepted, the Registrar shall cause the applications to be given in the Journal. In any case of doubt regarding the proceedings on the opposition to the registration of a collective trademark, any party may apply to the Registrar for the mark.
An application registered proprietor of a collective trademark for any changes to the regulation must be made in Form TM – 42. If the Registrar accepts any such changes he shall advertise such application in the Journal or paper and further proceedings in the matter shall be followed by Rules 47 to 57.
Section 67 provides that in a suit for infringement filed by the registered proprietor of a collective mark as plaintiff the Court shall consider any loss suffered or likely to be affected by authorized users and may give such directions as it thinks fit as to the extent to which the plaintiff shall hold the proceeds of any monetary remedy of such authorized users.
REMOVAL OF REGISTRATION
Section 68 provides that the registration of a collective trade mark may also be removed from the register on the ground that the way in which the collective trade mark has been used by the proprietor or the person who is authorized user has caused it to become liable to misuse the public as a collective mark or the proprietor has not observe, or to secure the observance of the guidance governing the use of the mark. The application for removal of a collective mark from the register including on any of the grounds above, shall be made in Form No. TM – 43 and shall set regulation for the particulars of the grounds on which the application is made.
International Society for Krishna Consciousness (ISKCON) vs. Iskcon Apparel Pvt. Ltd and Ors
Recently The High Court of Bombay declared ISKCON the registered trademark of International Society for Krishna Consciousness as a "well known trademark" in India. The matter related to a trademark infringement and passing off suit against a certain Iskcon Apparel , an apparel company, selling products using the brand name ISKCON. When ISKCON files a suit Court claiming trademark infringement of their organization’s registered brand name, the Court also delved into the contention of whether "ISKCON" qualifies as a well-known trademark within the ambit of Section 2(1) (zg) of the Trade Marks Act, 1999.
The court held while taking serious steps against ISKON Apparel for misusing their brand name through the civil action (in which, IA gave an undertaking before the Court that it will not use the brand name at all), ISKCON also requested for declaring ISKCON to be a well-known trademark. In order to support their case, ISKCON proved before the Court that they created the name for the first time, were established in the year 1966 in New York, and with the passage of time they have created a global presence, including in India. Furthermore, ISKCON also proved that the prominence of the ISKCON brand was not restricted to any particular goods, services or activities, but to a diverse range of categories.
On the basis of the above-mentioned reasoning, the Court was of the opinion that the trademark "ISKCON" fulfills all the requirements stipulated in the TMA and qualifies to be recognized as a well-known trademark.
NESTLE INDIA LIMITED VS. MOOD HOSPITALITY PVT. LTD.
This case is also Known as YO! China" vs. " 'Masala Yo!' &'Chilly Chow Yo!. 'YO!' a plain and informal expression used world over to convey excitement has been subject of a trade mark war in India. Moods Hospitality (MH) that runs a chain of Chinese restaurants in India under the name 'Yo! China' filed a suit for trade mark infringement and passing off at the Delhi High Court seeking an interim injunction against the use of the expression 'Yo' by Nestle India for their recently-launched Maggi Cuppa Mania Instant Noodles in two flavors – 'Masala Yo!' and 'Chilly Chow Yo!'. MH claimed prior rights over the use of 'YO!' in relation to noodles. MH argued that the trade mark 'Yo!' has become distinctive of its popular Chinese restaurant chain 'Yo! China' and its products. On the other hand, Nestle India argued that mark 'Yo!' lacks trade mark character and is publici juris.
Setting aside the order of the single judge bench, wherein Nestle was restrained from using the expression "YO!", the Appellate Court observed that there is nothing to suggest that the word "Yo" in "Masala YO!" and "Chilly Chow Yo!" would create a connection in the minds of the customers with respondent as being the source of the product. On the contrary, the use of mark "Yo" retains its primary meaning of inviting attention or as an exclamation. This is all the more so because the appellant's distinctive trade mark "MAGGI" is prominently displayed on the appellant's "Cuppa Mania" products. It must also be remembered that the dispute here is with the use of the mark "Yo" (with or without the exclamation mark) and, therefore, the comparison has to be made with MH's registered trademark "Yo!" and not "Yo! China" which, taken as a whole, cannot be confused with "YO!”
The article first published on Lexology.com and the same can be accessed here.