The use of a trademark

Use of the mark in relation to goods or services

Section (2) says that the mark may be used “upon or in any physical or in any other relation to such goods” which shows that a mark need not necessarily be depicted or represented and separately applied to an existing article. The trademark must be visible at the time of purchase of the goods. The representation by means of a specimen is clearly sufficient to satisfy the requirements of the act. Use has been constructed as meaning “Use in India”.

A mark would be in physical relation to goods, if it were stamped on a container holding the goods which might themselves possibly be incapable of being stamped. Use of the trademark in catalogues and trade literature is also recognized as use in relation to goods. Use of the mark in advertisements would constitute use in relation to goods provided the goods are also offered for sale in the market.

Size of the trademark

There is nothing in the definition of the mark or in the reference of visual representation in section 2, which is expressly directed to the size of the mark. The trademark must have some size to be a mark at all, but the size required to satisfy the act cannot be defined.

Use on video tapes

Where a trademark registered in respect of pre-recorded video tapes is recorded on the tapes by means of magnetic signals, such signals being converted into images on a screen when played through video cassette recorder, such use constitutes use of the mark in relation to pre-recorded video tapes.

Proposed to be used

The question of a mark “proposed to be used” arises only in connection with an application for registration of a new mark. In such a case the applicant at the time of application must have a definite and bona fide intention to use the mark.

Provisions in which user arises

The question of use of a mark arises under various provisions of the act, for example, s.11 in proving reputation (well known trademark), in establishing honest concurrent user under section 12, in the definition of infringement under section 29, in determining whether a person is a proprietor of the mark under section 18, in passing off actions and so on.

National User

The concept of “national user” has been introduced in some decided cases while dealing with section 12 (1) of the repealed Act of 1958. But this does not appear to be materially different from the statutory definition of “use”.

Use of trademark in export trade

 

The application in India of a trademark to goods to be exported from India would constitute use of the trademark for the purposes of the act or any other law. It is not necessary that the goods so marked should be sold in India.

Territorial nature of trademark law

The trademark law is not extraterritorial. This follows from the preamble to the act read with section (12). Use in foreign countries cannot constitute use for any purpose of the act. The use of a trademark for the purposes of the act must be within the territorial limits of India, or for export of the marked goods to foreign countries.

For the purpose of indicating or so as to indicate

The purpose of a trademark is to indicate a trade connection between the proprietor of the mark and his goods. The expression “for the purpose of” need not necessarily be read as “with the intention of”. A mark originally adopted to indicate a particular quality of the goods may later come to be recognized as indicating origin. A deliberate resolution on the part of the proprietor of the mark to the effect that the trademark has been used for the purpose of indicating trade origin is not contemplated. It is enough if in practice the mark has been so used as to denote the origin of the goods.

Use of the words “Trademark”

By the use of the words “Trademark” attention may be directed to a particular device or word on a label to indicate that is the feature intended by the trader to be the trademark. This does not necessarily mean that he is claiming a right only to that particular part of the label. It is a question of fact in every case where a man puts the term “trademark” on his device, or some part of it.

Connection in the course of trade

It is a fundamental principle of trademark law that the function of a trademark is to indicate the origin of the goods to which it is applied. Connection in the course of trade would therefore, mean any kind of connection consistent with the principle. “Trade” is a wide term but its meaning must vary with and be controlled by its context. A connection with goods in the course of their production and preparation for the market.

After the goods have reached the customer they are no longer in the course of trade. The trading in them has has reached its objective and conclusion in their acquisition by the consumer.

Nature of connection

The expression would appear to include any connection in the course of trade by which the proprietor retains the ability to specify or control the nature or quality of the goods sold under the mark. The principle that a trademark should indicate the origin of the goods must be understood as including such a connection. It is from such a connection that the proprietor derives his goodwill in the goods and it is this connection. So long as it exists in fact, which enables the public to rely upon the goods of the proprietor being of the nature and quality which he has determined. Trade means the trade in which the applicant is engaged.

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