A trade mark is any sign/mark which is used in the course of business by a trader to differentiate the goods and/or services provided by him from those of other traders. Thus, a trade mark in essence is a “badge of origin”.
In its nascent stages, trade marks law was largely based on common law, wherein the right to not have another misrepresent goods as originating from another source was enforced by an action of “passing off”. The underpinnings of statutory protection of trade marks was set by the British Parliament in 1875 with the enactment of the , which provided a right to formal registration of trade marks after fulfilling certain criteria.
In India, the statutory protection to trade marks dates back to the Penal Code, 1860, which provided statutory protection for misappropriation of trade marks. The Indian Merchandise Marks Act, 1889 also came to be enacted in order to bar fraudulent marks on merchandise. After a series of amending acts, it was the British Trademarks Act, 1938, which was largely adopted by British India in order to create a regime of protection of trade marks in India. The Trade Marks Act, 1940 was the first statutory instrument relating to the registration and protection of trade marks in India. The 1940 Act provided for a register of trade marks, a procedure for registration of a trade mark, opposition procedures, renewal and duration of trade mark protection, trade mark infringement, etc.
The Trade and Merchandise Marks Act of 1958 was subsequently introduced by the Indian Parliament to provide for better protection of trade marks and for the prevention of use of fraudulent marks on merchandise. However, the 1958 Act was not up to expectations of the international market, the effects of which were felt post the economic liberalisation of India in 1992. India’s international obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (hereinafter, “TRIPS”), led to enactment of a law which was better aligned with TRIPS. The Trade Marks Act, 1999, was thus enacted and it continues to be the governing law even as of today. The foundations of trade mark law in India are set by the Trade Marks Act, 1999 (hereinafter, “the 1999 Act”), and the underlying Trade Marks Rules, 2017 (hereinafter, “the Rules”).
The 1999 Act is spread out over 14 chapters, contains 167 sections, and one schedule. The Preamble of the Act sets out the objective to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks. The Act greatly simplified the procedure for registration of a trade mark, unified the Register of Trade Marks, provided for registration of trade mark with respect to services, enlarged the definition of a trade mark, and increased the term of protection of a trade mark from seven, to ten years.
A trade mark must bear certain characteristics in order to qualify for protection, and these are set out in the definition of a trade mark under Section 2(1)(zb) of the Act. These requirements are
First, it must be capable of graphical representation, which simply means that the mark is capable of being depicted on paper.
Second, it must be capable of distinguishing the goods and/or services of one entity from another.
Third, the mark must be used or proposed to be used upon goods and/or services to indicate a connection in the course of trade between the goods and/or services and the entity.
The Act recognises the “…shape of goods, their packaging and combination of colours….” as capable of being trade marks as well, subject to them fulfilling the above three conditions. Furthermore, a “mark” is also defined within the Act 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.
Registration of a trade mark is sought by filing an application under Form TM-A to the Trade Marks Registry (hereinafter, “the Registry”). This application may be filed online or offline. Once the application is filed, it is numbered, and the filing date is issued immediately.
The application is examined and the Trade Marks Registry issues an examination report in case it has any objection. The issuance of this report can take anywhere between 1-3 months from the date of filing of the application. The statutory timeline of filing a response to the examination report (once it is officially served upon the applicant/its agent) is one month. In cases where the examination report is not officially served but is downloaded by the agents from the Registry’s online database, the one-month timeline to respond is not applicable. If objections are raised, the Registrar generally evaluates the same in about 8-10 months from the date of filing the response. If the objection is successfully overcome, the application will be published in the Trade Marks Journal for opposition purposes.
If there are no objections raised in the examination report or if the same are overcome by the applicant, the application is published in the Trade Marks Journal in about 3-6 months, for opposition purposes.
The opposition period is 4 months from the date of publication. If the mark sails through the opposition period unopposed, it proceeds to registration and it takes anywhere from 5-7 months for the issuance of the certificate by the Registry. The entire registration procedure normally takes around 1 to 2 years. However, if there is a serious registrability objection or an opposition, the registration procedure may get delayed. If the opposition is allowed, the application is dismissed, otherwise the mark is registered.
Post the registration of a trade mark, the registration may be modified for a change of proprietor name, address, etc. and may be renewed infinitely for the protection to subsist. The rights in a registered trade mark in India subsist for ten years from the date of filing of an application, which may be renewed indefinitely.
Registration under the 1999 Act, confers exclusive rights to the proprietor to use the mark in respect of goods or services, subject to any conditions imposed, and if these rights are infringed, to take action to restrain unauthorised users.
A trade mark is said to be infringed by a person, who, not being a permitted user, uses an identical/similar/deceptively similar mark to the registered trade mark without the authorisation of the registered proprietor of the trade mark. However, it is pertinent to note that the Indian trade mark law protects the vested rights of a prior user against a registered proprietor which is based on common law principles.
Apart from or in addition to registration, a person can also secure rights in an unregistered mark. By virtue of use of a trade mark, a proprietor acquires valuable goodwill which is protectable at common law by way of a passing-off action. The protection also extends to unauthorised use in relation to trade names and domain names.
Under the 1999 Act, both civil and criminal remedies are available against infringement and passing off. Registration of a trade mark is not a prerequisite in order to sustain a civil or criminal action against violation of trade marks in India. In India, a combined civil action for infringement of trade mark and passing off can be initiated.
The reliefs available to trade mark owners, among others, include a permanent or temporary injunction, damages, or rendition of account of profits with or without any order of delivery up of the infringing labels and marks for destruction and erasure, including costs. The order of interim injunction may be passed ex parte or after notice. The interim reliefs in the suit may also include:
Criminal proceedings involve filing of a complaint in the Court of a Magistrate against unknown persons with a view to secure directions to the police to register a case and investigate activity complained of (including a search and seizure operation). Alternatively, one can also file a complaint with the police directly, and if it is satisfied that the named entity is committing any of the offences complained of, it may, without the order of the Court, to carry out the raid/search and seizure operation.
Under the 1999 Act, “offences” relevant for the filing of a criminal complaint are:
Any person found guilty of any of the aforementioned offences is punishable with imprisonment for a term between six months to three years and fine of Rs 50,000 up to Rs 2,00,000. Enhanced punishment for subsequent conviction(s) is also envisaged in the Act.
The latest amendment to the Act has been brought by the Tribunals Reforms Act, 2021. The amendment abolished the Intellectual Property Appellate Board (IPAB) as established under Chapter XI of the Act, acting as a specialised tribunal for appeals from the order of the Registrar. The functions of the erstwhile IPAB now vest with the country’s commercial courts, and the High Courts.
The 1999 Act was amended in 2010 predominantly to incorporate provisions of the Madrid Agreement concerning the International Registration of Marks, 1891 (also known as the “Madrid Agreement”) under Chapter IV-A of the Act. Thus, now one could apply to the Registry for protection of a trade mark in up to 130 countries by means of a single international application.
New Rules enacted in 2017, also greatly reduced the seventy-five forms in the old Rules to merely eight forms, and pushed for digitisation of the processes concerning trade marks. Pertinently, the requirement for representation of the trade mark was widened to include sound marks, and three-dimensional marks in the form of an MP3 file, and picture/graphic respectively. Thus, these non-conventional marks were also brought into the scope of protection. Notably, the Rules also enabled any person to apply to the Registrar for recognition of their mark as “well-known” as per the Act, subject to the discretion of Registrar, and third-party objections. The Rules also recognised electronic communications via e-mail for service of documents to the Registry and allowed for hearings to be taken up through videoconferencing.
The trade marks regime in India has experienced various transformations and continues to expand with judicial interpretation, and legislative amendments. However, the rise of non-conventional trade marks has also extended the scope of trade marks. This includes olfactory marks (which distinguish goods/services by smell), colour marks, sound marks, motion marks, etc. The Fourth Industrial Revolution has given rise to trade mark infringements in the metaverse, as well as other augmented reality and virtual reality applications, which present new opportunities for businesses to promote their business, but also raise new challenges for the enforcement of trade marks.
2 Southern v. How, (1618) 79 ER 1243 (KB)..
3 <https://www.cambridge.org/core/books/abs/trade-marks-and-brands/making-of-modern-trade-mark-law-the-uk-18601914-a-business-history-perspective/E8BF02680F73AFA32D6D5673FF8D70A7>. (the website is accessible from our end)
4 World Intellectual Property Organisation, The Indian Merchandise Marks Act, 1889 <https://www.wipo.int/wipolex/en/legislation/details/15866#:~:text=IV%20of%201889),-Repealed%20Text&text=Notes%20This%20Act%20was%20enacted,the%20Indian%20Penal%20Code%2C%201860>. (No, as it appears so in the short title of the Act)
5 <https://iprlawindia.org/wp-content/uploads/2021/04/1940.pdf> (link not accessed). (the website is accessible from our end)
6 The Trade and Merchandise Marks Act, 1958 <https://wbconsumers.gov.in/writereaddata/ACT%20&%20RULES/Relevant%20Act%20&%20Rules/The%20Trade%20And%20Merchandise%20Marks%20Act.pdf>. (pls check) (the website is accessible from our end)
7 Trade Marks Act, 1999, Preamble.
8 <https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_107_1_new-elements-in-the-trademarks-act-1999act.pdf>. (not accessed) (the website is accessible from our end)
9 Trade Marks Act, 1999, S. 2(1)(zb).
10 Trade Marks Act, 1999, S. 2(1)(zb).
11 Trade Marks Act, 1999, S. 2(m).
12 Trade Marks Act, 1999, S. 18.
13 Trade Marks Rules, 2017, r. 23.
14 Trade Marks Act, 1999, S. 20.
15 Trade Marks Act, 1999, S. 23.
16 Trade Marks Act, 1999, S. 25.
17 Trade Marks Act, 1999, S. 28.
18 Trade Marks Act, 1999, S. 29(1).
19 Trade Marks Act, 1999, S. 101.
20 Trade Marks Act, 1999, S. 102.
21 Trade Marks Act, 1999, S. 102.
22 Trade Marks Act, 1999, S. 104.
23 Trade Marks (Amendment) Act, 2010.
24 Trade Marks Rules, 2017.)
25 Trade Marks Rules, 2017, R. 26.
26 Trade Marks Rules, 2017, R. 124.
27 Trade Marks Rules, 2017, R. 18.
28 Trade Marks Rules, 2017, R. 115.
This article was originally published in SCC Online on 11 September 2023 Co-written by: J.V. Abhay, Partner; Maidini Phul, Counsel; Sushain Sobti, Associate. Click here for original article
Contributed by: J.V. J.V. Abhay, Partner; Maidini Phul, Counsel; Sushain Sobti, Associate
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