For registering a Brand name in India, it is essential to give an appropriate and true trade description. It will be helpful during the different stages of the trademark registration process, especially in differentiating your brand from other similar mark based on trade activities or trade descriptions. Also, if in case of any error in a trade description, there will be a possibility that the trademark application would get rejected. Hence, the overall procedure for the same must be submitted with care.
Role of Trade Description in Trademark Registration
As the name suggests, Trade Description briefly describes the service or product that a company or an individual is going to sell. The main aim of adding its description is to prevent retailers, manufacturers, or service providers from misleading customers.
The Trade Marks Act[1] gives power to the judiciary for punishing companies or individuals who make false claims about any products or services that they sell. The Section 104 of the Trade Marks Act, levies punishment on a person or a company who sells, or hire or exposes for sale, the product or service which gives any false impression of trademark or false trade description.
Section 101 – Meaning of applying trademarks and trade descriptions
A person has to apply for a trademark or its description to goods or services if who –
- Applies for the goods themselves or use it in relation to services
- Applies for any package with which the goods are sold, or exposed for sale, or had in possession of sale for the purpose of trade or manufacture
- Places, encloses or annexes the goods which is sold, or exposed for sale, or had in possession of sale for the purpose of trade or manufacture. Applies with any package to which a trademark or its description has been applied.
- Use of trademark or trade description in a manner likely to belief that goods or services in connection with which are used is designated or described by the trademark.
- In relation to goods or services uses a trademark or trade description in any sign, advertisement, catalogue, invoice, business letter, business paper, price list or other commercial documents. The goods are delivered, or services are rendered to a person in pursuance of a request or order made by reference to description of the trademark as so used.
Read our article:An Overview on Document Required for Trademark Registration
Importance of Trade Description
The registered trademark will provide the exclusive rights to its proprietor with respect to trade description provided in the application. However, different class covers various activities; the scope of protection provided by trademark will be limited only to the area defined by a trade description in trademark registration application.
Relevant Case Laws on Trade Description
The importance of filling true and correct trade description can be easily understood supported by famous case laws.
Yahoo Inc. v. Akash Arora and another, 1999 Arb L. R. 620:
In the matter of “Yahoo Inc. v. Akash Arora and another, 1999 Arb L. R. 620” (Delhi High Court), it turns out to be an example of how a specific trade description can secure a trademark.
Interpretation of the Case
In this matter the specific trade description for the Yahoo! Inc. barred defendant from taking advantage of the goodwill of an original trademark. The defendant was stopped from using the deceptively similar mark as they offered the similar services. Trade descriptions help in differentiating the goods and services of one trader, and it lets the public connect the mark with any identity. Here the defendant was being sued for sweeping benefits with the similar name. In this case it was held liable as ‘Yahoo!’ and ‘Yahoo India!’ were almost similar. The court held that defendant legally responsible for using the similar domain name.
P. Manikam v. Assistant Commissioner, 2017
In the matter of P. Manikam v. Assistant Commissioner, 2017 (Madras High Court) is another case where the company was selling similar products with a same trade name and description.
Interpretation of the Case
The complainant has being sold beedies under a name and style ‘Syed Beedi’, whereas the Petitioner and another also sold duplicate beedies under the same brand name. They used deceptively similar labels as that of a complainant and hence caused damage to its reputation and cheated the customers.
The charges under sections 103 and 104 of the Trade Marks Act, 1999 were applicable that deals with false trade descriptions and its penal provisions.
Conclusion
The uniqueness and distinctiveness play a pivotal role in brand making. Hence, every company that aims to create a brand and makes their company stand out in the eyes of their consumers. The trade description further provides distinction in product/service in their feature and name, so it becomes easier for the buyers or users to differentiate.
Trademark comes in the picture when an owner of the brand or the company wants to secure the name and exclude everyone else from using it commercially. The registration application includes the class and trade description as well as trade activities.
Read our article:When to use Symbol of ® or ™ while having Trademark Registration
