Ipr Final 6 Sem

8/12/2019 Ipr Final 6 Sem

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[CHANGING DIMENTIONS OF TRADEMARK

PROTECTION IN INDIA] March 22, 2013

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INDEX

S.N. Sub Topic Page No.

1 Introduction 3

2 Defining Trade Mark 3

3 Origin of Trade Mark Laws 5

4 Brief History of Indian Trade Mark Laws 6

5 Salient Features of Trade and Merchandise Marks Act,

1958

7

6 The New Trade Marks Act 7

7 Developments in the field of Passing Off 10

8 Conclusion 11

9 Bibliography 12


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INTRODUCTION

Since the beginning of the 21stcentury, Indian Intellectual property laws were on their way to

be fully compatible with the Agreement on Trade Related Aspects of Intellectual Property

Rights (TRIPS). The enactment of Trade Mars Act, 1999 which came in effect on 15 th

September 2003 was a step forward in that direction. The new Act on Trademark is a

comprehensive modification of the Trade and Merchandise Marks Act 1958, which served its

purpose for four decades. It has been passed by the parliament-keeping in view the

developments in trading and commercial practices, increasing globalization of trade and

industry, the need to encourage the transfer of technology, need for simplification and

harmonization of trademark management systems and to give effect important judicial

decisions.1

This paper is a review of the changes which have taken place in the trade marks protection

regime in India with a blend of the historical background of the trademark protection laws.

Defining Trademark

A trade mark means a mark used in relation to goods for the purpose of indicating or so as to

indicate a connection in the course of trade between the goods and some person having the

right as proprietor to use that mark,2The function of trademark is to give an indication to the

purchaser or a possible purchaser as to the purchaser or a 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 source from which the goods come, or the trade through

which they pass or their way to the market.3Thus a trademark is a visual symbol in the form

of a word, a device or a label applied to articles of commerce with a view to indicate to thepurchasing public that they are the goods manufactured or otherwise dealt in by a particular

persons as distinguished from similar goods manufactured or dealt in by other persons. Under

TRIPS agreement, the term Trademark has been defined in the following words:-

Any sign or any combination of sign, capable of distinguishing the goods or services of one

undertaking from those of other undertakings, shall be capable of constituting a trademark.

1

Statement of object and Reasons, Trade Marks Act 19992Sumat Prasad v. Sheojahan Prasad, AIR 1972 SC 2488

3Ibid


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Such signs, in particular words including personal names, letters, numerals, figurative

elements and combination of colours as well as any combination of such signs, shall be

eligible for registration as trademarks.4

Complying with the above provisions of TRIPS agreement, the Trademarks Act 1999 and

Rules 2002 defines trademark and related terms as follows:-

Section 2(1)(zb) Trademark means a mark capable of being represented

graphically and which is 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; and

in relation to Chapter XII (other than section 107), a registered

trade mark or a mark used in relation to goods or services for

the purpose of indicating or so as to indicate a connection in

the course of trade between the goods or services, as the case

may be, and some person having the right as proprietor to use

the mark; and

in relation to the other provisions of this Act, a mark used or

proposed to be used in relation to goods or services for the purpose

of indicating or so as to indicate a connection in the course of trade

between the goods or services, as the case may be, and some person

having the right, either as proprietor or by way of permitted user,

to use the mark whether with or without any indication of the

identity of that person, and includes a certification trade mark or

collective mark.

Section 2(1) (m) Mark includes a device, brand, heading, label, ticket, name,

signature, word, letter, numeral, shape of goods, packaging or

combination of colours or any combination thereof.

Section 2(1) (z) Service means service of any description which is made

available to potential users and includes the provision of services in

connection with business of any industrial or commercial matters

4Article 15(1), TRIPS Agreements


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such as banking communication, education, financing, insurance,

chit funds, real estate, transport, storage, material treatment,

processing, supply of electrical or other energy boarding, lodging,

entertainment, amusement, construction, repair, conveying of news

or information and advertising.

Origin of Trade Mark Laws

According to Schechter5the modern law on trademarks has two roots. First in the form of a

regulator mark compulsory affixed to goods to indicate the craft man responsible for making

the product and the second root can be traced to the use of a proprietary mark by merchants

or traders for the benefit of illiterate clerks or as a means to identifying ownership of goods in

the event of piracy or shipwreck.6

As we know, that no one should seal another, property is an ancient dictum. With the

expansion of trade and commerce, no one should appropriate the goodwill of another became

its corollary. It was established in common law very early. In fact the present concept of

trademark is usually considered to be originated in the case of Southern v. How7. In the said

case, a prior case was summarized where a clothier had gained great reputation and started

putting his mark on clothes made by him. Another clothier used the same mark to deceive

and make profits. The court awarded him a remedy. In this way it was established that

nobody should appropriate the goodwill of another.

The position of the court has been explained by K.S. Shavasha in the following words:

A merchant who affixed a mark on his goods obtained a property right in the mark which he

so affixed and the property thus acquired like all other property was under the protection of

law and for the invasion of the right of the owner of such property the chancery courtsafforded a remedy similar in all respects to that by which the possession and enjoyment of all

property is secured to the owner.8

In this way the British courts evolved the principle of recognizing rights in trademark. This

come to be known as common law action for infringement of trademarks.

5The Historical Foundation to the Law Relating of Trade Marks, Columbia University Press, USA 1925, p. 78

sited by Rodney D. Ryder,Brands, Trademark and Advertising,, Lexis-NexisButterworths95 (2003)6Ibid p. 96

7

(1618) Popham 1448K.S. Shavasha, The Trade and Merchandis Marks Act, 1958: with aCommentary, Critical and Exhaustive,36

(1974)


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Brief History of Indian Trade Mark Laws

The roots of the modern laws protecting trademark in India lies in the common law system.

The jurisdiction of the common law courts and the chancery.Courts in England was separate

in the early 19thcentury. Suits seeking injunction for infringement of trademark were brought

in the Chancery Courts as actions in deceit. The modern concept of passing off is in fact a

result of that action in deceit. Later after 1838 the Chancery courts further refined the concept

of trademark by considering them as a property. The court held that any person who affixes a

trademark to his goods acquires a right in that mark.

In this way the courts accorded protection to the possession and enjoyment of trademark.

Later to facilitate trade, the first trademark legislation. The U.K. Trademark Registration Act

was enacted in 1875. That Act codified the rights recognized by the courts in trademarks. The

said Act provided for the registration of trademark. Once a trademark get registered it used to

become a proof of ownership in any suit for trademark infringement.

The U.K. Trademark Registration Act was amended in 1876 and 1877 and then repealed and

substituted by Patent, Designs and Trademark Act 1883 which was again replaced by theTrademarks Act, 1905. That Act of 1905 was later repealed by U.K. Trade Marks Act 1938.

In India the first trade mark legislation was enacted in 1940. In fact the Indian Trade Marks

Act of 1940 was almost a replica of the U.K. Trade Marks Act 1938. That Act was

subsequently replaced by Trade and Merchandise Marks Act 1958. That Act of 1958 was in

operation till September 2003. After that Trade Marks Act 1999 came into force which

repealed the Act of 1958. Thus today the law which is in force in India on the subject is Trade

Mark Act, 1999.

In order to meet the demands for an effective protection of trademark related rights the

aforementioned successive enactments have consolidated and amended the trademark laws in

the context of change in business and trade practices. Thus the best way of understanding the

new dimensions of trademark protection given under the existing law can be by highlighting

the salient features and working of the law which was in effect in the recent past and then

comparing the same with the existing laws. In this way we could examine the changes which

have been brought about by the Trademarks Act, 1999.


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Salient features of Trade and Merchandise Marks Act, 1958

Trade and Merchandise Marks Act 1958 was enacted to replace the Trade Marks Act 1940.

The Act provided for registration of trade mark essentially in respect of goods. It provided oninclusive definition of the term mark as mark includes a device, brand, heading label,

ticket, name, signature, word, letter or numeral or any combination thereof. Under that Act, a

trademark was to be registered only in relation to specific goods falling in a specific class of

goods. The Act along with rules, created 34 classes. A class covered similar and related

goods. The registration of trade mark under the said Act existed for a period of 7 years.

However it could be renewed from time to time. The scope of infringement of trademark was

very narrow as it contained very strict conditions to be fulfilled for constituting trademark

infringement. The Act also declared the infringement of trade mark as a non-cognizable

offence. It also contained provisions related to the assignability and transmissibility of

registered trademark and provided that registered trademark shall be assignable and

transmissible with or without goodwill of the business while an unregistered trademark was

not assignable or transmissible except along with the goodwill of the business concerned.

The New Trade Marks Act

The new Act, which has been sufficiently revised and revitalized to make it substantially

acquiescent with the provisions of TRIPS, was ratified by Parliament in 1999 with a view to

simplify the procedure for registration of trademarks. The salient features of the changes

brought by the new Act can be enumerated as follows:-

Inclusion of Service Marks The new Act provides for the registration of Trademarks for

services, in addition to goods. Earlier the repeled Act i.e. the Trade and Merchandise Marks

Act, 1958 provided for the registration of Trademark only for goods. Misues of a mark

associated with services could only be contested as a passing off action. Services have

become prominent in the past two decades. The new Act has taken note of this development.

The rules framed under the Act have made seven classes of services. A mark associated with

a service could be registered under the Act. Service includes banking, communication,

education, financing, insurance, chit funds, real estate, transport, supply of energy, hotel

industry, medical, legal engineering services, entertainment, conveying of news or

information and advertising etc.


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Expanded definition of Trade Mark9- The definition of the term trademark has been

expanded to include shape of goods, their packing and combination of colours, so long as

the mark is capable of distinguishing the goods and services of one, from the goods and

services of another. It was not possible to register these in the earlier Act.

Registrability of Trade Marks-The criteria for registration of a mark under the Trade Marks

Act, 1999 has been simplified as compared to the criteria for registration prescribed under the

repealed Act.10Now, distinctiveness has been made the only criterion for registration of a

trademark. Provided that such mark must not be expressly prohibited to be registered under

the Act.

Collective Mark-The new Act provides for registration of collective mark11which belongs

to an association or a group of persons and the use thereof is reserved for the members of the

groups or association. It means now an association can get a mark, distinguishing the goods

and services of its members, register as a collective mark. A condition of membership of the

association and regulations governing the use of the collective mark has to be furnished and

approved.12

Protection of well knownTrade marks-The new Act prohibits registration of certain marks,

which are merely a reproduction or imitation of a well known Trademark in relation to anygoods or services, even if it is sought to registered in respect of dissimilar goods or services.

Under the Act, a well-known trademark is a mark used over particular goods or services that

has gained sufficient recognition among the consumer. The trade mark need not be registered

in India. Further, a mark can be a well known trademark even if there are no goods in the

Indian market. In other words, familiarity even through advertisement is adequate to

constitute a trademark as a well known trademark. A mark to qualify does not have to be

known to the public at large. It needs to be known only to that segment of the population that

buys/uses those goods. The concept of well known trademark has given very wide and

unconditional protection to foreign trade names. A mark cannot be registered if it is to the

detriment of a well known trade name.

9See section 2 (zb), Trade Marks Act, 1999

10Section 9 of the Trade and Merchandise Marks Act 1958 contained provision related to requisites for

registration of trademark.11Section 61, Trade Marks Act, 1999

12Ibid, Section 63


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Expansion of the Meaning of trademark infringement-In the earlier Act, a trademark was

infringed by use of identical or similar mark, in relation to any goods in respect of which the

trademark is registered. Thus, the benefit of registration was confined strictly to the goods in

relation to which the mark was registered. The scope of infringement of Trademark has been

widened by the new Act, wherein the use of an identical or similar mark will constitute

infringement, where the registered Trademark has a reputation in India and the use without

due cause will take unfair advantage of or could be determental to the distinctive character or

repute of the registered mark.13

This clause is borrowed from American law where it is called as a dilution of trade mark. The

concept of dilution is longer and different than passing off. Take the case of a trader who

starts selling pesticides in the name of Amul. There is no case of passing off here, as no one

is likely to imagine that the pesticides come from the makers of dairy product. But the use of

Amul in relation to pesticides, tends to associate food with pesticides and reduces the worth

of the trade name Amul. Thus, it dilutes the worth of trademark and thus, a cause for

concern.

Also, the new Act has expanded the meaning of what constitutes use of a registered trade

mark. In the earlier law, the dominant sense was a registered trade mark could be used if the

mark was attached to goods.14The new Act states that a trade mark is infringed not only by

attaching it to goods but also by printing it on packaging material and using it in

advertisement.15

Term and Renewal of Trade Marks- The new Act provides for increase in the term of

registration and its subsequent renewal. The term has been increased from 7 to 10 years and

also provides for a grace period of six months for payment of renewal fees.16

Enhanced Punishment-The new Act has made Trademark related offences cognizable andhas incorporated major provisions in synchronization with the changes taking place in other

parts of the world. To prevent sale of spurious goods, the new Act has also enhanced the

quantum of punishment for offences relating to Trademarks and made it at par with the

present Indian Copyright Act, 1957.

13Ibid, Section 29(4)

14

See section 29, Trade and Merchandise Marks Act,195815See, clauses (6) and (7) of section 29, Trade Marks Act, 1999

16Ibid, Section, 115(3)


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Development in the field of passing off

Trade Marks Act provided remedy only against the infringement of a registered trade mark.

For unregistered marks, use of marks in relation to goods in other classes17, or appropriation

of goodwill other than by way of misuse of trade mark infringement, the common law

remedy of passing off was available.

The concept of passing off which is a form of tort has undergone changes in the course of

time. At first it was restricted to the representation of one persons goods as those of another.

Later it was extended to business and services. Subsequently, it was further extended to

professions and non-trading activities. Today it is applied to many forms of unfair trading and

unfair competition where the activities of one person cause damage or injury to the goodwill

associated with the activities of another person or group of persons.

A significant development in the field of passing off India in the past decade has been in the

field of foreign trade marks. For years, foreign trade marks holders could not pursue passing

off action in India, as their trademarks was not in use in India. The courts held that use of a

trademark could only be by affixing it to the goods and putting the goods in the IndianMarket.18 The courts, however, reversed their position in the late 1990s and recognized

advertisement in foreign magazines to which Indian people had access as in use thus

creating the basis for trans-border reputation. In theWhirlpool case,the Delhi High Court

observed that:-

The knowledge and awareness of a trade mark in respect of goods of a trader is not

necessarily restricted only to people of the country where such goods are freely available but

the knowledge or awareness of the same reaches even the shares, of those countries wherethe goods have not been marketedIn todays world it cannot be said that a product and the

trademark under which it is sold abroad, does not have a reputation or goodwill in countries

where it is not availableDissemination of knowledge of a trademark in respect of a product

17Now under the new Trade Marks Act of 1999, infringement action can be brought even in case of use of

marks in relation to goods in other classes.18See judgment of the Calcutta High Court in Toshiba Corporation v. Toshiba Appliances Company,Manu

WB/0129/1993.


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through advertisement in media amounts to use of the trademark whether or not the

advertisement is coupled with the actual existence of the product in the market.19

The case moved to the Supreme Court in appeal and was approval by it.20The case created to

basis for a series of cases of foreign corporations initiating passing off action. For example, in

Daimler Benz and Another v. Hybo Hindustan,21 the Delhi High Court, at the instance of

German manufacturer Mercedes Benz Car restrained selling of VIP Benz undergarments.

Another significant development in the field of passing off action has been in providing

protection to domain names. The first case before the Indian Courts was where a person

started a domain name yahooindia.com. The layout of the site was also similar to the yahoo

site. The Yahoo Inc. of the US initiated passing off proceeding. It was submitted by the

defendant that the trademark/domain name yahoo! of the plaintiff is not registered in India

and, therefore, there cannot be action for infringement of the registered mark, nor could there

be any action of passing off as the services rendered both by the plaintiff and the defendants

cannot be said to be goods within the meaning of Trade and Merchandise Marks Act 1958

which concerned only with goods and not services. Rejecting this contention the Honble

High Court observed that:

The law relating to passing off is fairly well settled. The principle underlying the action isthat no man is entitled to carry on his business in such a way as to lead to the belief that he is

carrying on the business of another man or to lead to believe that he is carrying on or has

any connection with the business carried on by another man.22

After the afore quoted case the courts in case after case have given the protection to Internet

domains for passing off action.23

19N.R. Dongre and Others v. Whirlpol Corporation and Another, AIR 1995 Delhi 300

20N.R. Dongre and Others v. Whirlpol Corporation and Another, AIR (1996) 5 SCC 714

21AIR 1994 Delhi 239

22Yahoo! Inc. v. AkashArora and Another MANU/DE/0120/1999

23

See judgment of the Delhi High Court in Tata Sons Ltd v. Manu Kosuri, 2001 (52) CLA 45, judgment of theBombay High Court inRediff Communication Ltd.v. CyberboothBLR 1999 (3) ARBLR 639; AcquaMilenals

Ltd. PromodBorse and another AIR 2001 Delhi 463


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Conclusion

The new Act on Trade mark has been enacted undoubtedly to ensure a stronger trademark

protection regime in India. It has three strands. One aspect is reiterating the principles oftrade mark protection which have been formulated more than 100 years back by common

law. The second aspect is incorporation of more and more aspects of what was passing off

in the domain of trademark infringement. The third aspect in taking stock of emergent

business practices, for example, in introducing service marks, collective marks and enhanced

definition of trade marks. These are the interesting areas of development for businesses.

However, it is in the reversal of the Act of 1958 in giving protection to foreign trade marks

through the category of well known trade marks. Thus if the Act of 1958 wasnationalist

in reducing the presence of foreign trade marks and guarding marks of domestic firms, the

new law, understandably, has reserved to give overwhelming protection to foreign trade

marks.

Bibliography

Arora Manish, Guide to Trade Marks Law, Universal Law PublishingCompany Pvt. Ltd. Delhi (2007).

Cornish W. and Llewellyn D.,Intellectual Property: Patents, Copyright,Trade Marks andAllied Rights, Sweet and Maxwell Ltd. London (2007)

Jain Pankaj and pandeySangeetRai, Copyright and Trade Mark LawsRelating toComputers, Eastern Book Company, Lucknow (2005).

Narayanan P,Law of Trade Marks and Passing off, Eastern Law House,Kolkata (2004).

Ryder Rodney D,Brands, Trade Marks and Advertising,Lexis-NexisButterworths

(2003). UnniV.K, Trade Marks and Emerging Concepts of Cyber Property

Rights, Eastern Law House Kolkata (2002).

VermaS.K.and and Mittal Raman (ed.),Intellectual Property Rights: AGlobalVision (ATRIP Papers), (Indian Law Institute (2002-2003).


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WadehraB.L,Law Relating to Intellactual Property,Universal LawPublishing Company Pvt. Ltd. Delhi (2007).

http://www.ipindia.nic.in/tmr_new/default.htm http://www.foxmandal.com/publication/ipr/oct/2003.pdf http://www.trademarksmanagement.com/trademarks_act1999.html http://www.bhateponkeshshe.com/trademarks.htm

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