Trademark is defined under The Trademarks Act, 1999 and means a mark which is 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 colors, etc[1]. Trademark is one of the elements under the Intellectual Property Rights and is either represented by the symbol TM or ®[2].
India has an obligation under the TRIPS agreement to protect the trademarks, which includes the protection for distinguishing mark, service mark, the indefinite periodical renewal of the registration, and the abolition of compulsory licensing of the trademarks[3] amongst other things. The Indian Trade and Merchandise Marks Act was enacted in 1958 followed by an amendment and the Trademark Act, 1999 was then brought into force. Before any statutory enactment, the trademark was governed through the principles of equity and common law[4]. The Trademark Act also conforms to the TRIPS agreement[5].
India has always taken a proactive role in the protection of Trademarks within India and in the landmark case of Tata Sons Ltd v. Manu Kosuri & Ors,[6] the court also extended the protection within the trademarks to the domain name. The court referred to the case of Rediff Communication Limited v. Cyberbooth[7] and Yahoo Inc. V. Akash Arora and Anr[8]. and concluded that domain names are not merely internet addresses but also incorporate assets that are extremely important to the company and such companies are entitled to the protection equivalent to the trademark. The Act is divided into XIII chapters with 159 sections and includes a schedule. The Indian Trademark law classifies the goods and services for registration and follows the International Classification of Goods and Services published by WIPO. Initially, the trademark is registered for 10 years and is renewed within 12 months before the date of expiry[9]. There are two essential ingredients which one must comply with while registering for Trademark
1, The mark should be represented graphically – graphical representation has been defined under Sec. 2(1)(k) of the Trademarks Rule, 2007. Graphical representation also encompasses within itself a trade dress[10]. A trademark to be registered must be capable to be put on the register in physical form[11]
2. It should be capable of distinguishing goods and services of one person from another[12]- Any good which is not able to distinguish itself from other goods would not qualify for protection under the Trademarks Act[13].
The registration and procedure for registration of the trademark are provided under Chapter III, from Sec. 18-23 of the Act where the person has to apply in writing in the prescribed manner the name of the mark, goods, and service, class of goods and service, required period and personal details of the applicant. It is important to classify the goods for trademark registration, Sec. 7 requires the classification based on the international standard. There are a total of 45 classes. India follows the Nice Classification. Class 1-34 is for goods and Class 34-45 is for services.
The Indian Trademark Act also recognizes the concept of a well-known trademark and Trans-Border Reputation. The well-known trademarks have their goodwill and reputation which is protected across nations and categories of goods and services. The Trademark registry is prohibited from registering any mark which is deceptively similar to any well-known mark[14]. Sec. 11(2) r/w Rule 124 of Trademarks Rule, 2017 allows a person to register for a well-known trademark and provides protection for the mark. Sec. 11(6) lays down the factors for consideration while determining the well-known mark[15] Furthermore, Transborder concept was recognized in India in the case of N. R. Dongre v Whirlpool[16] by the Apex court where the word Whirlpool had held to be required reputation and goodwill within India. It also became associated with Whirlpool Corporation due to wide circulation in advertisement despite the evidence of actual sale. The trademark whirlpool hence required transborder recognition.
Section 9 of the Act also lays down certain conditions for the rejection of a trademark. It states,
1. Marks which do not have any distinctive character[17]
2. Marks which serve to designate the kind, quality, purpose, value, geographical origin or the time of production of goods[18]
3. Marks which have become customary in the current language or the established practice of trade[19]
Further mentions the grounds when a mark cannot be registered as a trademark.
The word acquired distinctiveness has been interpreted by the judiciary in various cases, in the case of Woodlands Travels and Agencies v. K Vasudeva Rao and Anr. The court stated that a mark cannot acquire the distinctiveness only by use of a few days but should be used longer to attain the character[20]. Furthermore, in the case of Consolidated Foods Corporation v. Brandon and Company Private Ltd[21], it was observed that for obtaining proprietorship the mark doesn’t need to be used for a considerable period. Another landmark case in respect to the length of time and on the same lines of Brandon and Company was the Calcutta High Court Judgement of East End Hosiery Mills Pvt Ltd. V. Agarwal Textile Mills[22]
Sec.11 of the Act further lays down the relative grounds for refusal of trademark-
1. If the mark causes confusion
2. If the mark is identical to another trademark
3. If the mark’s use in India is liable to be prevented by the law of passing off or copyright law[23]
Both civil and criminal remedy is available against infringement and passing off.
The infringement of a trademark is mentioned under Sec.29 of the trademarks Act. It is the violation of exclusive rights which is granted to a proprietor of the trademark. But it is important to note that the Trademark law protects the vested right of a prior user against a registered proprietor on common law principles[24]. Furthermore, passing off is also a common-law tort that is used to enforce unregistered trademark rights. It mostly arises when the reputation of one party is misappropriated by the other party in the sense, the other party misrepresents as being the owner or tries to establish a nexus with the party. The relief for infringement of passing off is granted under Sec. 135 of the Act which includes damages, injunction, cost of legal proceedings etc. One of the important aspects of the trademark law is that an injunction order can be passed in the name of ’John doe‘/ ’Ashok Kumar’ (in India) against the entities whose identity is not known at the time when such order is issued. These orders are an exception to the general rule and do not require the identification of the defendant’s pre-filing suit. In the case of Cadila Healthcare Ltd v. Cadila Pharmaceutical Ltd.,[25] the apex court laid down a test for passing off.
Any aggrieved person can file an application before the Registrar of Trademarks or IPAB for the cancellation of varying the registration of a trademark which is contained in Chapter VII of the Act. It can be done on the ground of any contravention or failure to observe the conditions entered in the register. An application for rectification can also be filed. This is how the Trademark Laws stand in India today.
References –
[1] Sec. 2(zb) (i) concerning Chapter XII (other than section 107), a registered trademark or a mark used concerning goods or services to indicate or 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
(ii) In relation to other provision of this Act, a mark used or proposed to be used in relation to goods or services to indicate or so 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:
[2] Legal Services India.com, Trademark Law in India and Its Violation, Amit Kumar, http://www.legalservicesindia.com/article/307/Trade-Mark-Law-in-India-&-Its-Violation.html, last seen on 21st June 2020.
[3] Mondaq, Trademarks Law in India- Everything you must know by Vaish Associates Advocates, https://www.mondaq.com/india/trademark/127680/trademarks-law-in-india-everything-you-must-knowlast seen on 20th June 2020,
[4] Vakilno1.com, Trademark law in India: A Nutshell, https://www.vakilno1.com/legal-news/trademark-law-in-india-in-a-nutshell.html, last seen on 21st June 2020.
[5] Supra 2.
[6] [90 (2001) DLT 659]
[7] AIR 2000 Bombay 27
[8] [1999 PTC 201].
[9] Supra 3
[10] Rich Products Corporation And vs Indo Nippon Food Limited; CS (OS) 246/2004
[11] KC Kailasam & Ramu Vedaraman, Law of Trademarks & Geographical Indications, 2nd Edition
[12] Supra 4
[13] Pioneer Nuts & Bolts Pvt. Ltd. v. M/s Goodwill Enterprises, FAO (OS) 334/2008
[14] Supra 4
[15] Mondaq, India: All you need to know about well-known trademarks, Sonal Sodhani, https://www.mondaq.com/india/trademark/808148/all-you-need-to-know-about-well-known-trademarks, last seen on 21st June 2020.
[16] 1996) 5SCC 714
[17] S.9(1)(a) of Trademarks Act, 1999.
[18] S.9(1)(b) of Trademarks Act, 1999.
[19] S.9(10(c) of Trademarks Act, 1999.
[20] Sarda Plywood Industries Ltd. v. Deputy Registrar of Trademarks, 2007 (34) PTC 352 (IPAB)
[21] AIR 1965 Bom 35
[22] AIR 1971 Cal 3
[23] Supra 4
[24] Supra 3
[25] 2007 (35) PTC 95 Del
This article has been written by Sanjana Sahay, 4th year BBA LLB student at Bennett University.
Also Read – Can Religious Symbols Be Registered As A Trademark?
