Trademarks Law In India
Trademark is one of the areas of intellectual property and its purpose is to protect the mark of the product. A Trademark is defined as 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. Marks include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.
Trademark is the conveyor of image, quality and the value of products. It gives a product a distinct personality of its own It identifies the product and its origin and further it creates an image of the product in the mind of the consumer or prospective consumer of such goods.
History Of Trademarks Laws In India
Prior to 1940 there was no statutory law relating to trademarks in India. The law applicable on the subject was based on common law as was applicable in England. Problems relating to infringement, passing off, etc., were decided in the light of Section 54 of the Specific Relief Act, 1877, and issues relating to registration were resolved by obtaining a declaration as to ownership of the Trademark under the Indian Registration Act, 1908. The Trademarks Act, promulgated in 1940, a replica of the UK Trademarks Act, 1938, introduced a machinery for the registration and statutory protection of trademarks in India. This Act was in force till 1958. The Trademarks Act, 1940 was replaced by the Trade and Merchandise Marks Act, 1958. This Act consolidated the provisions of Trademarks Act, 1940, the Merchandise Marks Act, 1889 and some provisions relating to Trademarks contained in Indian Penal Code, Criminal Procedure Code and the Sea Customs Act.
The Trade and Merchandise Marks Act, 1958 has subsequently been replaced by the new TradeMarks Act, 1999, which has come into force from 15th September 2003. The new Act, which has been sufficiently revised and revitalized to make it substantially acquiescent with the provisions of TRIPS(trade related aspects of intellectual property rights), was ratified by Parliament in 1999 with a view to simplify the procedures for registration of Trademarks.
The salient features of the new Act can be enumerated as follows:
Service Marks
The amended Act provides for the registration of Trademarks for services, in addition to goods. It is now possible to register trademarks for services in diverse areas including banking, telecommunication, financing, insurance, chit funds, real estate, building construction, transport, education, supply of energy, hotel industry, medical, legal, engineering services, computer programming, news, information, entertainment, advertising etc.
Definition of Trade Marks
The definition of Trademark has been enlarged to include shape of goods, their packaging and combination of colors.
Registrability of Trade Marks
The criteria for registration of a mark under the TradeMarks Act, 1999 has been simplified as compared to the criteria for registration prescribed under the old Act. Now, distinctiveness has been made the only criterion for registration of a trademark.
Collective Marks
The new Act provides for registration of collective marks which belong to an association or a group of persons and the use thereof is reserved for the members of the group or associations.
Protection of Well Known Trademarks
The new Act prohibits registration of certain marks, which are merely a reproduction or imitation of a well-known Trademark in relation to any goods or services, even if it is sought to be registered in respect of dissimilar goods or services.
Defensive Registration
With the enactment of the provision for protection of well-known Trademarks in the new Act, the provisions regarding defensive registration of well-known Trademarks under the old Act have become redundant. A defensive Trademark registered under the old Act will cease to have effect on the date immediately after the expiry of five years of the commencement of the new Act or after the expiry of the period for which it was registered or renewed, whichever is earlier.
Single register
In order to simplify the procedure for registration with equal rights the previously existing practice of registering the marks in either Part A or Part B of the register has been abolished.
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.
Multi Class Application
The new legislation enables an applicant to file a single application for registration of the same mark in respect of different goods or services falling in more than one class.
Appellate Board
With the commencement of the new Act an Intellectual Property Appellate Board has been set up in Chennai for the speedy disposal of appeals and rectification of applications which at present lie before the various High Courts. The benches of the Board shall also sit in Ahmedabad, Delhi, Mumbai and Kolkata in addition to Chennai.
Infringement
The scope of infringement of Trademark has been widened by the new Act, wherein the use of an identical or similar mark on goods or services which are not similar will constitute infringement, where the registered Trademark has a reputation in India and the use without due cause will take unfair advantage of or would be detrimental to the distinctive character or repute of the registered mark.
Enhanced punishment
The new Act has made Trademark offences cognizable and has 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.
Assignment of Unregistered Trade Marks
Under the new Act it is made possible to assign an unregistered Trademark with or without goodwill of the business concerned.
Other Salient Issues
Apart from the above changes in the new Act, there are various other changes which can be characterized as follows
1. The new Law has explicitly adopted the International Classification of Goods and Services;
2. It will not be possible to register International Non-proprietary names or deceptively similar marks declared by the World Health Organization and notified by the Registrar;
3. Simplifying the procedure for registration of registered user and enlarging the scope of permitted use of a Trademark;
4. Transferring the final authority relating to registration of certification Trademarks to the Registrar instead of the Central Government;
5. A registered user will have the right to institute infringement proceedings subject to agreement between parties, while an unregistered licensee who is also a permitted user has no such right;
6. Expeditious search of Trademarks on records and examination of Trademark application on payment of five times the application fee;
7. The new Act has also extended the application under convention countries to include countries which are members of a group of union of countries and other inter-governmental organizations;
Conclusion
In view of the extensive modifications necessitated by massive globalization, it was thought fit to repeal and re-enact the Trade and Merchandise Marks Act, 1958 and incorporate the necessary changes. With the bringing into force of the new legislations, Indian Law on Trademarks has become fully compatible with the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS Agreement).
