TRADE MARK ACT, 1999

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Prior to 1940, there was no statutory law relating to trademarks in India. The law applicable to the subject was based on the common law of England before the passing of the first Registration Act in 1875. The Trade Marks Act 1940 introduced for the first time to address the issues relating to the registration and statutory protection of trademarks in India. This Act was in force until 1958 when the Trade and Merchandise Marks Act was passed. This Act was repealed and the present law is governed by the Trade Marks Act 1999. The Trade Marks Act of 1999 has made substantial changes in the law. The Present Act of 1999, apart from simplifying the law, has introduced many new provisions, which are in the interest of trademark owners as well as the consumers of goods.

The Trade Marks Act, 1999 is an act to amend and consolidate the law relating to trademarks, to provide for registration and better protection of trademarks for goods and services and for the prevention of the use of fraudulent marks. Statutory protection of a trademark is administered by the Controller General of Patents, Designs and Trademarks, a government agency which reports to the Department of Industrial Policy and Promotion (DIPP), under the Ministry of Commerce and Industry. The law also provides for the rights acquired by registration of a trademark, modes of transfer and assignment of the rights, nature of infringements, penalties for such infringement and remedies available to the owner in case of such infringement.

DEFINITION OF TRADEMARK

Section 2(1) (zb) under the 1999 Act defines the term "trademark" as follows:

 "'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 the shape of goods, their packaging and combination of colours; and: 

  1. . in relation to Chapter XII (Offences, Penalties and Procedures) (other than Section 107), a registered trademark 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 the proprietor to use the mark; and

  2. in relation to 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 trademark or collective mark.

" Section 2 (1)(m) defines a "mark" to include 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) (j) defines "goods" to mean anything which is the subject of trade or manufacture. 

Section 2(1)(q) defines "package" to include any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and cork. 

Section 2(1)(z) defines "service" to mean service of any description which is made available to potential users and includes the provision of services in connection with the business of any industrial or commercial matters such as banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, the supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising

THE OBJECT OF TRADEMARK LAW 

The object of trademark law is to deal with precise nature of the rights which a person can acquire in respect of a trademark, the mode of acquisition of such rights, the method of transfer of those rights to others, the precise nature of infringement of such rights, the procedure for enforcement of those rights and the remedies available in respect thereof. This branch of Commercial Law has undergone a change from time to time in tune with changing patterns of business methods and practices. Even the very concepts of a trademark and its functions have changed. In India, the law now is governed by the Trade Marks Act 1999.

The salient features of the Trade Marks Act 1999 are presented below 

  1. The Trade Marks Act, 1999 deals with the entire law relating to trademarks and its procedures.

  2. The provisions of this Act are in conformity with the obligations imposed by the Agreement on TRIPs.

  3. Provisions for filing a single application for registration of a mark in more than one class. Class 1 to 34 related to goods and Class 35 to 45 related to services. 

  4. Section 9 of the Act specifically mentions absolute grounds for refusal of registration. 

  5. Section 12 empowers the Registrar to permit registration by more than one proprietor of trademarks in the case of concurrent use even though marks are identical or similar.

  6. Widening the definition of a trademark by recognizing the shape of goods, packaging and combination of colours as marks and trademarks.

  7. Simplifying the procedure for registration of registered users and enlarging the scope of the permitted use.

  8. Marks which are not registrable elaborated.

  9. Abolition of the necessity for disclaimer. 

  10. The Act has abolished the system of maintaining the registration of trademarks in Part A and Part B with different legal rights and provides only a single register with the simplified procedure for registration and with equal rights. Abolition of Part B registers.  

  11. Provisions for protection of well-known trademarks and test for determination of such marks. 

  12. Increasing the period of registration and renewal from 7 to 10 years. 

  13. Widening the scope of infringement of registered trademarks. 

  14. Assignment of unregistered trademarks without the goodwill of a business is permitted.

  15. Registered user provisions simplified. Registrar has been given the power to decide. 

  16. Non-registered licensing of registered trademarks is permitted.

  17. Licensing of an unregistered trademark is permitted. 

  18. Creation of Appellate Board to hear and decide appeals from the decisions of Registrar. 

  19. Publication of alphabetical Index of classification of goods and services. 

  20. Transferring the final authority relating to registration of certification trademarks to the Registrar instead of the Central Government. 

  21. Enlarging the jurisdiction of courts to bring the law on par with the Copyright Laws, amplifying the powers of the court to grant an injunction in certain cases and other related amendments to simplify and streamline the Trade Mark Law and procedure.

  22. The Act provides registration of trademarks for services also in addition to goods. 

  23. Registrations of names of chemical elements or international non-proprietary names are prohibited under Section 13. So also the names and representations of living persons or persons recently dead cannot be used for registration unless the consent is obtained from the concerned persons. 

  24. The Trade Marks Act, 1999, provides registration of collective marks by associations, certification trademarks.

  25. For speedy disposal of appeals and rectification of applications, the Act establishes Intellectual Property Appellate Board.

  26. The duration of a valid registration is for a period of 10 years from the date of its registration. It may be renewed for any number of periods (Section 25). 

  27. The provisions of this Act do not affect rights of action against any person for passing off goods or services (Section 27 (2)]. 

  28. Section 28 confers to the registered proprietor of a trademark, (i) the exclusive right to the use of the trademark and (ii) right to obtain the relief against infringement of the trademark

  29. The Trade Marks Act, 1999, provides reliefs in any suit for infringement of trademarks or for passing-off under Section 135. They are injunction and at the option of the plaintiff either damages or an account of profits. 

  30. The Act provides enhanced punishment for the offences relating to trademarks on par with the present Copyright Act, 1957, to prevent the sale of spurious goods.

  31. Section 5 of the Act establishes the Trademarks Registry. The Act also empowers the Central Government to appoint the Registrar of Trademarks (Section 3). He is in control and management of the Register of Trademarks. The registration of trademarks is under the control of the Registrar. 

  32. Section 142 protects the persons against groundless threats of legal proceedings. 

  33. The Act provides assignability and transmissibility of registered as well as unregistered trademark either with goodwill or without goodwill.

Essentials of a trademark under the 1999 Act: 

  1. it must be a "mark";

  2. it must be capable of being represented graphically;

  3. it must be capable of distinguishing the goods or services of one person from those of others;

  4. it must be used or proposed to be used in relation to goods or services; 

  5. there must be a visual representation of the mark;

  6. use of the mark in relation to goods must be upon or in physical or in any other relation whatsoever to the goods; and in relation to services, it must be used as a part of any statement about the availability, provision or performance of such service; and

  7. The objective of use of the mark should be to indicate a connection in the course of trade between the goods or services, and some persons having the right to use the mark either as proprietor or by way of the permitted use. It is not necessary to reveal the identity of the person using the mark.

Infringement of Trademark

The term infringement means the violation of someone’s rights. Therefore infringement of trademark means the violation of trademark rights. A trademark is said to be infringed when there is unauthorised use of a trademark or a substantially similar mark on goods or services of a similar nature. In such a case, the court will look at whether such use of the trademark will cause any confusion to the consumer as to the actual brand they are purchasing.

Therefore, according to the Act, a trademark is infringed if:-

  1. If the trademark is a copy of a registered trademark with a few additions or alterations.

  2.  If the infringed mark is printed or used in advertisements.

  3.  If the infringed mark is used in the course of trade

  4.  If the mark used is so similar to a registered mark that it is likely to confuse or deceive a consumer when selecting a category of product.

In case of infringement of a registered trademark, the person may file a suit for damages. For filing such a suit the following conditions must be met:

  1. The person filing the suit (plaintiff) must be the registered owner of the trademark.

  2. The person who is infringing (defendant) must be using a mark that is similar to that of the plaintiff such that it can easily be confused as one another.

  3. Such use by the defendant is not accidental in nature.

  4. The use of the mark by the defendant must be in the course or similar goods or services to that which the trademark is registered to.

Classification of Trademarks

Section 7 of the Trademark Act, 1999 requires the classification of trademark according to the international classification of goods and services. There are a total of 45 classes’ goods and services may fall under in such a classification. The international classification system used is called the Nice Classification (NCL); it was established in 1957 during the Nice Agreement.

According to the NCL, there are 45 classes under which goods and services fall. Classes 1 – 34 are for goods and the classes 35 – 45 are for services.

Opposing a Trademark Registration

The members of the public are given the opportunity to oppose the registration of a Trademark during its registration process. The person filing the opposition of registration maybe anyone, it could be a customer, competitor or any member of the public. In the process of registration of a trademark, the mark will be advertised in the Trade Mark Journal, upon this advertisement anyone can file an opposition to it during a period of three months. This period of three months may be extended by no more than one month in special cases. The filing of the opposition has to be done at the Trademark Registrar’s Office and not at the Intellectual Property Appellate Board (IPAB).

While filing an opposition, one must include the following:

  1.  Details of the trademark application against which opposition is being filed.

  2. Details of the earlier mark that the registering mark is infringing upon. It could be an already registered mark or a mark that is still undergoing its registration.

  3.  Details of the filing party.

  4. Grounds upon which such opposition is based on.

 

Recent Cases 

1. Yahoo!, Inc. v. Akash Arora & Anr

The first landmark judgment on cybersquatting. The Delhi High Court, for the first time ever in India, held that a domain name serves the same function as a trademark and is entitled to equal protection. The defendant had a domain name ‘Yahoo India!’ which was identical and phonetically similar to the plaintiff’s trademark ‘Yahoo!’ The court held that internet users would be confused and deceived into believing that both the domain names have the same source. The defendant took a defence that it had put a disclaimer on its website. However, it was observed that a mere disclaimer was not sufficient because the nature of the internet is such that use of a similar domain name cannot be rectified by a disclaimer and it does not matter that ‘yahoo’ is a dictionary word. The name possesses acquired distinctiveness and uniqueness and was largely associated with the plaintiff.

 

2. DM Entertainment v. Baby Gift House and Ors.

Daler Mehendi, the famous pop star from Punjab has a large fan base and is extremely popular amongst Punjabi pop music lovers. DM Entertainment was incorporated in 1996 to manage the artist’s escalating career. The defendant company was making a large business by selling miniature dolls of the artist and cashing on his popularity. The plaintiff company was extremely aggrieved and filed for a permanent injunction from infringing the artist’s right of publicity and false endorsement leading to passing off.

 

The plaintiff company was assigned all rights, titles and interests in the personality of the artist along with the trademark, Daler Mehendi. The plaintiff argued that the unauthorized or unlicensed use of the artist’s reputation with respect to goods or services will deceive the public into believing that the goods and services are associated with the singer and hence, would lead to passing off. The plaintiff further submitted that such use was done for commercial exploitation without adequate permission from the person or any other authorized by him and shall constitute an infringement of the person’s right to publicity.

Character merchandising is an area of law that is still unexplored in India. This was the first case that dealt with the issue of celebrity merchandising where the publicity rights of the artist were given due recognition.


3. Milmet Oftho Industries & Ors. V. Allergan Inc.

The Supreme Court granted trademark protection to a well-known foreign brand. The court restrained an Indian company from using the mark OCUFLOX. The judgment was given irrespective of the fact that the mark was neither used nor registered in India. The court held that the respondent was the first to enter the market and adopt the mark. It does not matter that the respondent has not used the mark in India if they are the first to enter the world market.

In the field of health care, it is highly important that all chance of deception and confusion should be avoided, keeping in mind that the public interest is not jeopardized.

4. The Coca Cola Company v. Bisleri International Pvt. Ltd.

The defendant, Bisleri by a master agreement, had sold and assigned the trademark MAAZA including formulation rights, know-how, intellectual property rights and goodwill for India with respect to a mango fruit drink known as MAAZA to Coca Cola.

In 2008, the defendant company filed for registration of the mark MAAZA in Turkey and started exporting fruit drink under the name MAAZA. The plaintiff, Coca Cola claimed permanent injunction and damages for infringement of trademark and passing off.

The court granted an interim injunction against the defendant (Bisleri) from using the trademark MAAZA in India as well as for export, which was an infringement of the trademark.

5. Cadila Health Care v. Cadila Pharmaceutical Ltd.

The Supreme Court held that it is insignificant whether the plaintiff and the defendant trade in the same field or in the same or similar products. The court laid down certain criteria to determine passing off of an unregistered trademark:

• The nature of the marks (word, label or composite);
• The degree of resemblance between the marks;/
• The nature of goods for which the marks are used;
• Similarities in the nature, character and performance of goods of rival traders;
• The class of purchasers who are likely to buy goods bearing the marks;
• The method of purchasing the goods or placing orders; and
• Other circumstances that may be relevant.