INTRODUCTION TO TRADEMARK LAWS

This article is written by Neha P. Gavade, of  10^th Semester of BALLB of Thakur Ramnarayan College of Law, an intern under Legal Vidhiya

ABSTRACT

With the advent of new-age technology and better resources to back more innovative ideas, intellectual property reign in India is expanding at a great rate. In an ever-rising competitive market, various brands, companies, etc. are persistently working towards making their products ‘seen’ and ‘recognised’ by using various marketing techniques as well as by designing products in such a way as to make it stand out from the rest of the market. That is when the logo, symbol or trademark of a company comes into the picture. A trademark is a distinctive symbol which is associated to a particular company which is used by the said company for marketing of their product. A trademark comprises of not just a symbol or a logo but also shape, packaging of the product as well as the colour used for the same[1]. Such trademarks are created by persons and, or companies but they are officially registered and protected from infringement by law of the state, i.e., by enacting a law to regulate the registration of trademarks, appointment of Registrar, Trademark Register, Effect of Registration of Trademarks, Appellate body for issues of trademarks, certified trademarks and marks of deceptive marks and other key provisions.                                         For this purpose, the Trademark Act is enacted in India. Both the innovation and creativity of Indian ‘creators’ have received legal protection even since before independence. Currently, Trademarks Act 1999 is in force in the territory of India. In this article we will understand the history of trademark laws in India, objectives behind the enactment of the Trademark Act, its salient features and key provisions.

Keywords

Trademark laws, WIPO, Registration of trademarks, e-filing of Trademarks, Trademark rules, infringement of trademarks.

INTRODUCTION

Intellectual property laws in India are drafted by the Central Government under the power conferred upon it by the Constitution of India in the Union list of the Sevent Schedule.[2] The Trademarks Act in India has regulated the trademarks in India since before Independence. Currently, The Trademarks Act, 1999 is in force in India.  The trademark laws, like any other laws have undergone a number of amendments since their enactment. The historical evolution and development of Tradmarks law in India is consistently beneficial. Before its statutory development, in India the trademark law used to work on principles of passing off and equity which were also followed in England. The first statute dedicated to Trademarks was enacted in India in 1940 titled, Trade Marks Act 1940. It was inspired from the UK Act of the same subject-matter and as a result had many similar provisions which was also recognized by the judiciary of our country. The Supreme Court of India in Registrar of Trademarks vs. Ashok Chandra Rakshit Ltd. commented that our trademark Act bears resemblance to the UK’s trademark laws with the exception of minor modifications hence a reference made to the English decisions based on sections that are pari-materia must be helpful.[3]

The 1940 act was replaced by the Trade and Merchandise Marks Act, 1958. This Act was an amalgamation of various provisions with respect to trademarks given under different Indian legislations such as Indian Penal Code, The Code of Criminal Procedure, Sea Customs Act. Further, the 1958 Trade and Merchandise Marks Act was repealed by Trademarks Act 1999. While being aided by a number of Trademarks Rule and other beneficial amendments made every so often, the Trademarks Act 1999 is currently governing all the trademark related practices in India.  

WHY WAS THERE A NEED OF TRADEMARKS ACT 1999?

While the Trade and Merchandise Marks Act 1958 already existed where all the laws relating to trademark from various Acts had already been incorporated? What was the necessity behind passing a new enactment all together? Why wasn’t simply an amendment introduced into the existing Act? The Statement issued by the parliamentary committee[4] regarding the purpose behind passing the new legislation i.e. the Trademarks Act 1999 explained that the new bill (Trade Marks Bill 1993) was introduced not because the existing Act was inefficient, in fact, according to the Government it had served its purpose well. But the bill was brought up in the Union legislature for other causes such as:

• Because the existing Act was more than 30 years old and hence, required certain amendments given the rapidly changing domestic and international trade situation.
• With time, there was quite an increase in the judicial proceedings pertaining to trademark as its subject matter which made the legislature believe that there was a need to inculcate these judicial precedents into an enactment.
• As a result of increasing globalization, the provisions of the 1958 Act were appearing to be lacking the tariff barrier.
• As rather a large number of amendments and modifications in the Act were being anticipated it was reasoned by the legislature that a new bill for the law, than that of an amendment was more prudent.

The introduction of Trademarks Act 1999 seems very relevant after viewing its provisions and how it regulated the diverse proceedings related to Trademarks in India.

SALIENT FEATURES OF TRADEMARK LAWS IN INDIA

The Trademark Act 1999 was enacted on 30^th December 1999. The Act came into force from 15^th September 2005. The objective behind the legislation was similar to that of the Act of 1958 upto the extent of consolidating the laws for registration or trademarks and securing them against the infringement. It is applicable on both goods and services. It goes on further to avert the usage of fraudulent marks. Following are the important provisions of the Trademark Act 1999 that perfectly capture the very essence of the purpose of the Act and aid in its execution.

• Member countries of TRIP and Paris Convention are ‘convention countries’: As India has become a signatory to the TRIPS agreement and Paris Convention and because of its adjunction with Madrid Protocol the countries which are groups or union of countries or inter-governmental organization ratifying the Paris Convention will be termed as ‘convention countries’. This provision was a part of Trade and Merchandise Marks Act 1958 under section 131 which has been saved by saving clause of section 159 (1)[5].
• Wider scope of the definition of trademark: The definition has expanded the scope of the term trademark by making it inclusive of shape of the product, its packaging and combination of colours. The definition further gives scope to treat something which does not come under the ambit of above-mentioned groups as trademark for reaching the end-objective of the Act.[6]
• Segregation of marks as per their types: The Act provides for different types of marks such as: Generic Marks (which cannot be recognised as ‘trademark’ unless they incorporate some distinct characteristic), Descriptive Marks (It represents the feature of the brand as well as the individual or group that the brand represents. It has a primary and secondary feature.), Suggestive remarks (they are of suggestive nature and based on the imagination of the creator,), Fanciful marks (marks that do not have specific meaning as a result are unique in nature and do not infringe upon the marks of other brands or companies), Arbitrary marks (marks that show no similarity with the purpose or feature of the product that they represent), Trade dress (a feature of the physical state of the product that makes it easily identifiable and in turn, distinct)
• Classification of goods and services: The Registrar classifies goods and services in a manner in a manner as followed at International level for categorization of goods and services.
• The process of Registration of Trademark has been simplified: On the ground of distinguishability of a mark than that of others will qualify it as a registrability. The only condition under the Act is that it must be distinct from the other marks.
• Registration of Collective Marks: Collective Marks are those marks which are owned by a group or association of persons and the use of such collective marks is limited to the members of that group only. It has given a proper set of provisions for the registration of the same.
• Well known trademarks: The Act has included a definition of well-known trademarks. It has also provided measures for the owners of well-known trademarks to protect their trademark from infringement as it has been added in the grounds for refusal of registration.
• Facility of multi-class filing: The applicant can file for a one single application for registration of a good or service that is falling under more than one class. No separate applications are required.
• Grounds of refusal of registration: As there is a criterion for approval of trademark for registration, similarly there are certain grounds on which trademarks are refused for registration. These are absolute grounds and relative grounds. The trademarks that lack distinctiveness, that made up specifically of certain feature or shape of the good or service, a mark created with deceptive intention, a mark that may be prone to harm religious sentiments of people Reasons for which a mark may harm people’s sentiment, deceive people while illegally using goodwill of some other business or create confusion among the people etc. will be denied registration. The grounds for refusing the registration are specifically mentioned alongside the application on the IP India’s website.
• Penalties for trademark related offences: The Delhi High Court in the case of Armasuisse vs. The Trade Mark Registry and Anr.[7] Stated in its judgment that the Trademark Act regulates registration of trademarks and provides for process thereunder. Hence, the rights of those trademarks which are declared impugned shall be viewed in accordance with the provisions given under the Act.  The trademark Act has inculcated severe punishments for misuse of trademarks, false trademarks and trademark related malpractices. It has also recognised such offences as ‘cognizable’.
• Amendments in the companies Act: To prevent the misuse of a trademark owned by one person, the Act has motioned under section 159 for amendments in the section 20 & 22 of the Companies Act.  Also, under section 27 clause (5) that such unauthorised use will amount to infringement of such a trademark.
• Trademark Rules: Apart from the regular amendments in the Trademark Act, Trademark Rules are made by the Government and they are publishing in the Official Gazzete thereby amending the relevant provisions from the Trademark Act. For instance, as per the Trademark Rule (Amendment) 2013, the charges over applications for registration under different schedules are hiked. The recent most Trademark Rule amendment was executed in 2017[8].  
• Weekly publication of approved trademarks: Every week on Monday, a list of the approved trademarks is published on the online website of Department of Promotion of Industry and Internal Trade (www.ipindia.gov.in). It is published along with the trademark, name of the company, application no., name of the applicant, address of the company.

Apart from these important provisions which may also be looked as features of the Trademark Laws in India, there are other favourable provisions such as the registration and renewal duration for trademarks have been extended from 7 years to 10 years, trademarks are now registered in a single register and no A and B register is used, punishments are provided in the Act for trademark offences which are in par with the Copyright Act, 1957, availability of e-filing system[9] etc.

CONCLUSION

In today’s era of increasing globalization and constantly expanding markets, all the companies, firms and brands are in the heist of making their brand appear different from the other products in the market with unique and captivating features given to the product which may also be viewed as trademarks. A trademark is not a mere symbol but it is the identity of the brand in the market, it represents the goodwill that the company has gained amongst its customer base. Therefore, the infringement of the same will certainly cost a great deal to the company, not just monetarily but reputation wise as well.  Hence, the provisions of the Trademarks Act seem more than relevant. The laws governing trademark in India have constantly gone through amendments with changing times new scenarios and upcoming challenges. From administering justice in the matters of trademarks, by basing the decisions on preceding judgments to having a full-fledged legislation regulating every aspect of trademarks, Indian legislation has come a long way with respect to trademark laws.

REFERENCES

1. Indian Trademark Act, 1999
2. India Const. Seventh Schedule, Article 246, Entry 49.
3. Registrar of Trademarks vs. Ashok Chandra Rakshit Ltd., (1955) 2 S.C.R. 252, AIR 1955 SC 55.
4. K.C. Kailasam, Ramu Vedaraman, Law Of Trade Marks, pg no. 8, (LexisNexis Third edition 2015).
5. Trade and Merchandise Marks Act 1958, Act No. 43 of 1958.
6. Armasuisse vs. The Trade Mark Registry and Anr., 2023/DHC/000019.
7. Trademark Rules, 2017.
8. ipindiaonline.gov.in/trademarkefiling/user/How-To-Register.aspx.

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[1] Indian Trademark Act, 1999.

[2] India Const. Seventh Schedule, Article 246, Entry 49.

[3] Registrar of Trademarks vs. Ashok Chandra Rakshit Ltd., (1955) 2 S.C.R. 252, AIR 1955 SC 55.

[4] K.C. Kailasam, Ramu Vedaraman, Law Of Trade Marks, pg no. 8, (LexisNexis Third edition 2015).

[5] Trade and Merchandise Marks Act 1958, Act No. 43 of 1958.

[6] Trade Marks Act, 1999 (Act no. 47 of 1999)

[7] Armasuisse vs. The Trade Mark Registry and Anr., 2023/DHC/000019.

[8] Trademark Rules, 2017.

[9] ipindiaonline.gov.in/trademarkefiling/user/How-To-Register.aspx.

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