The Trademark Act of 1999 and common law remedy of passing off protect trademark rights in India. The Trademark Act of 1999 oversees trademark registration, protection, and infringement prevention. It also covers the trademark holder’s rights, infringement penalties, damage remedies, and trademark transfer methods.
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What is a Trademark under Trademark Act?
Trademarks are a type of intellectual property. People can keep ownership of their inventive items and creative work by using intellectual property rights. Intellectual property was discovered due to human labour., so it gets limited by several charges for registration and infringement.
Name, word, symbol, or device represents a product or service’s origin, quality, and ownership. A trademark is used in product advertising and marketing, whereas a service mark gets used in service advertising and marketing.
According to Section 1 (zb) of Trademark Act, 1999;
“The term “trademark” refers to a visual mark that can be used to distinguish one person’s goods or services from those of another and can include the shape of the goods, their packing, and colour schemes.
Origin of Trademark Law in India
India has a long history of proprietary protection through marks. It gets documented that throughout the 10th century, the use of a mark associated with merchants’ marks expanded significantly among traders and merchants. These marks were primarily used to verify product ownership rights, such as branding animals, potteries, trading emblems on coins, etc.
India had a long history of trademark culture with other countries, but it wasn’t until 1940 that India passed its first trademark statute.
Before 1940, concerns of infringement, passing off, and others were handled by applying the Specific Relief Act of 1877 Section 54. Registration was decided by obtaining a declaration for the ownership of a trademark under the Indian Registration Act of 1908.
India passed the first trademark statute, known as the Trademarks Act 1940, in the year 1940. This Act was repealed in 1958 by the Trademark and Merchandise Act. The Trademark Act of 1999 was eventually passed by parliament, thereby eliminating the Trademark and Merchandise Act of 1958.
The Trademark Act of 1999 governs the protection, registration, and prevention of illegitimate use of trademarks. The Act of 1999, as amended, conforms to the Trade-Related Aspects of Intellectual Property Rights (TRIPS) and is consistent with international institutions and practises.
Types of Trademarks under Trademark Act 1999
Per the trademarks laws in India, trademarks get classified into several types, including product marks, service marks, collective marks, certification marks, shape marks, and so on. The primary goal of all of these trademarks is to assist customers in determining the underlying products or services’ origin and quality.
A product mark is much identical to a trademark. The only difference is that it applies to trademarks associated with items or things rather than services. It gets used to identify the origin of a product and distinguish the manufacturer’s product from others. Overall, a trademark is a crucial tool for protecting a company’s goodwill and image.
A service mark, simply a mark, identifies one proprietor or owner’s services from those of another. Service marks do not represent commodities but rather the company’s services. They are utilised in a service industry when no actual goods bearing the mark get exchanged. Companies that provide restaurant and hotel services, courier and transportation, advertising, publishing, and so on can now protect their names and marks from unauthorised use.
These are trademarks used by a group of entities and can be secured collectively by the company. Collective marks get used to educate the public about a specific product feature for which the collective mark gets employed.
Collective marks are used for marketing individual items with qualities unique to the producer in a specified field. Such marks may get owned by an association, a governmental institution, or a cooperative. As a result, more than one trader can use a collective trademark if the dealer is a member of the association.
As a result, a collective trademark can be used by more than one trader as long as the dealer is a member of the association.
The usage of certification marks defines the standard. They assure customers that the product meets specified requirements. The presence of a certification mark on a product implies that it has passed the prescribed standard tests. They assure consumers that the producers have gone through an audit procedure to ensure that the required quality of the product/service gets achieved. Food products, toys, cosmetics, and electrical goods have branding that describes the product’s safety and quality.
Per Indian Trademarks Act, 1999, a trademark may also encompass goods’ shape and packaging, as long as the shape can get graphically appropriately represented. It assists in differentiating goods sold under such a trademark from those offered by another producer. The current Trade Marks Ordinance (Cap. 559) still allows for the registration of such marks.
Shape Mark has helped in product advertising and has emerged as a trademark type as graphics technology has advanced. Shape marking can get used on any graphical representation that can distinguish one product from another.
These are the marks that consist of a pattern capable of identifying goods or services as coming from a specific undertaking and distinguishing them from other undertakings. Pattern Marks can get registered for such goods/services.
A sound mark is a trademark in which a specific sound serves the purpose of uniquely identifying the origin of goods or services. In the case of sound markings, a particular sound gets connected with a firm or its products or services, such as MGM’s lion roar.
How are Trademarks denoted As Per Trademark law in India?
- ™: The symbol ™ denotes an unregistered trademark. It gets used to market or brand products.
- ℠: It is used for a service mark that isn’t registered. It gets accustomed to market or brand services.
- ®: Letter R gets enclosed by a circle and is used for trademark registration.
Trademark’s Owner – Rights Conferred Under Section 28 of Trademark Act, 1999
A trademark protects its owner by allowing them exclusive rights to use it to identify goods or services, or by granting others permission to use it in exchange for money. Section 28 of the Trade Marks Act, 1999 provides the rights provided by registration.
- Trademark registration is valid if the right to use the trademark is granted to the certified owner of the brand.
- The owner gets the exclusive right to use the trademark concerning the goods or services for which the trademark gets registered.
- In the case of trademark infringement, the trademark holder has the right to seek maintenance.
- When more than two certified proprietors of a trademark are similar or substantially identical, the exclusive right to use each of those trademarks cannot be expected to be taken only by registration of the trademark by one of those against other persons.
- Unless their rights are limited by restrictions or limitations recorded in the register, everyone has the same rights as anyone else.
Procedure and Term for registration of Trademark in India under Trademark Act, 1999
The trademark registration period is ten years. The term of a trademark renewal is ten years from the date of expiration of the most recent renewal of registration or the original registration.
Before the prior registration expires, the registrar must deliver the notice to the registered proprietor in an essential manner. The notice specifies the registration’s expiration date, the costs that must be paid, and the conditions that must get completed to get a renewal. The registrar may withdraw the trademark from the register if those conditions are not satisfied within the period allocated.
The trademark will be removed by the registrar from the register and will increase the trademark registration for a term of ten years if an inference is made in the specified format and the specified rate is paid within six months of the final registration of the trademark expiry.
Suppose a trademark gets removed from the register due to non-payment of the necessary fee. In that case, the registrar must renew the trademark registration within six months and one year of the expiry date of the last registration.
The registrar also reinstates the trademark in the register and renews the registration for ten years after the previous registration expires upon the receipt of implication in the required form and payment of the prescribed fee.
Conditions of registration of Trademark in India under Trademark Act, 1999
- By declaring it in the official gazette, the central government designates a person known as the controller, general of patents, designs, and trademarks, the trademark registrar.
- Other officers may be appointed by the central government if they consider they are suitable for discharge, under the supervision and control of the registrar, who may allow them to discharge.
- In writing, the registrar can transfer or withdraw cases, outlining the reasons for doing so.
- Section 6 of the Act covers the maintenance of a registered trademark.
- Particulars of registered trademarks and other necessary details must get recorded at the head office except for notice of the trust.
- Each branch office must keep a copy of the register.
- It enables records to get stored on computers or other electronic devices.
Absolute grounds for Refusal of registration of Trademark – Section 9 Trademark Act, 1999
Section 9 of the Trademark Act, 1999 lists the absolute grounds for registration refusal. Any trademark that falls under the grounds specified in this section is ineligible for registration. The following are the absolute grounds for the denial of registration of a trademark:-
- Trademarks that don’t have any distinguishing features. The word ‘distinctive character’ refers to trademarks that can’t tell one person’s goods or services apart from someone else’s.
- Trademarks consisting solely of markings or indications used in the market to designate the type, amount, quality, values, intended purpose, or geographical origin of products or services delivered
- Trademarks that simply include signs or indicators that have become conventional in language or industry practice.
- Trademarks are of a character that deceives or confuses the general public.
- Trademarks that contain or are likely to include material that will insult the religious sensibilities of any class or segment of Indian people.
- Trademarks that contain or integrate indecent or scandalous content.
- If the Emblems and Names (Prevention of Improper Use) Act, 1950 prohibits the use of the trademark.
- Trademarks consisting of marks on the shape of goods that are required to achieve a technical outcome
- Trademarks consist of marks on the shape of items that are the outcome of the nature of the goods themselves.
- If Trademarks gets made up of marks of the shape that provide significant value to the goods
The Act makes an exemption for the first 3 points, namely, when trademarks lack distinguishing character, comprise exclusive marks used in the trade to describe sort, quality, and so on, or contain marks that have become conventional in trade activities.
The exemption is that if the trademark has acquired a unique character due to the use or is a well-known trademark before applying for the registration, it will not be refused registration.
Relative grounds for Refusal of registration of Trademark – Section 11 of Trademark Act, 1999
Section 11 of the Trademark Act, 1999 lists the relative grounds for refusal of trademark registration. Exemptions to the refusal grounds also get listed in this section.
Trademarks under Section 11 can get registered if the exemptions are satisfied.
The grounds for refusal of trademarks listed in Section 11(1) of the Trademark Act, 1999:
- Trademarks that are confusing to the public because they are identical to a previous similar trademark for products or services.
- Trademarks can cause public confusion because they are comparable to an earlier identical trademark for products or services.
If there is an honest concurrent use of the trademark, the Registrar of Trademarks may grant registration.
The following grounds for refusal get listed in Section 11(2) of the Trademark Act, 1999:
- Trademarks that might take unfair advantage of an earlier well-known trademark in India that is similar or identical.
- Trademarks that might be harmful to the distinctive character or reputation of a prior well-known trademark
The following grounds for refusal get listed in Section 11(3) of the Trademark Act, 1999:
- The law of passing off, which protects an unregistered trademark used in the course of business, is bound to restrict the use of the trademark.
- The law of copyright will almost certainly prevent the use of the trademark.
Unless the proprietor of the earlier trademark objects to the opposition proceedings, the trademarks described in Sections 11(2) and 11(3) will not get denied registration.
All of the grounds mentioned above are excepted under Section 11(4) of the Trademark Act, 1999. It states that trademarks covered by Section 11 can be registered if the owner of the previous trademark agrees to the registration. The registrar can register the latter trademark if the owner of the prior well-known trademark consents to its registration.
Effects of Registration of Trademark
If valid, a trademark registration grants the registered proprietor the right to use trademarks in connection with the goods and services for which the trademark gets registered, as well as the right to seek remedy for trademark infringement.
Infringement of Trademark under the Trademark Act, 1999
Infringement refers to when someone’s rights get violated. As a result, trademark infringement entails the breach of trademark rights.
When a trademark or a substantially similar mark gets used without permission on products or services of a similar nature, it gets infringed. In such a case, the court will consider whether the trademark’s usage will confuse the customer about the genuine brand they are buying.
As a result, under the Trademark Act, 1999, a trademark is violated if:-
- If the trademark is a close copy of an existing trademark with a few changes
- If the trademark infringed is printed or utilised in advertisements.
- If the infringing mark gets utilised in the course of business, it gets considered as infringed.
- If the mark utilised is similar to a registered mark, consumers are likely to be confused or deceived when choosing a product category.
If a registered trademark gets infringed upon, the trademark owner has the right to sue for damages. The following requirements must get completed to file such a lawsuit:
- The individual who files the lawsuit (plaintiff) must be the trademark’s registered owner.
- The infringing person (defendant) must be using a mark similar to the plaintiffs so that the two can easily be confused.
- It is not an unintentional usage by the defendant.
- The defendant’s use of the mark must get connected with similar products or services to those for which the trademark is registered.
Case Laws of Trademark in India
In recent years, there has been a fixed rise in notable trademark cases in India. Some of the rulings were historic in terms of the precedents they established. Here are some of India’s recent significant trademark cases:
Yahoo! Inc. V. Akash Arora & anr.
The first major decision on cybersquatting
For the first time in India, the Delhi High Court ruled that a domain name serves the same purpose as a trademark and is entitled to the same level of protection. The defendant had a domain name called “Yahoo India!” identical to and phonetically similar to the plaintiff’s trademark “Yahoo!”.
According to the court, internet users would get misled and tricked into believing that both domain names are from the same source. The defendant claimed that it had posted a disclaimer on its website as a defence.
However, it was noted that a simple disclaimer was insufficient because the nature of the internet is such that a disclaimer cannot remedy the use of a similar domain name. It makes no difference if ‘yahoo’ is a dictionary word. The plaintiff’s name has acquired distinction and uniqueness as a result of its association with him.
DM Entertainment v. Baby Gift House and Ors.
Daler Mehendi, a well-known Punjabi pop artist, has a fairly large fan base and is immensely popular among Punjabi pop music fans. In 1996, DM Entertainment was formed to manage the artist’s rapidly growing career.
The defendant corporation was making a lot of money from the artist’s fame by selling his small dolls. The plaintiff corporation was so outraged that it sought a permanent injunction to prevent infringing on the artist’s right to publicity and passing off by fake endorsement.
All rights, titles, and interests in the artist’s personality and the trademark Daler Mehendi were assigned to the plaintiff corporation.
The plaintiff claimed that the unauthorised or unlicensed use of the singer’s reputation in connection with goods or services would fool the public into believing that the goods or services are affiliated with the singer, resulting in the passing off.
The passing off principle states that “no one has the right to portray his products as the goods of another.” Passing off is a legal strategy for preserving or protecting the goodwill associated with an unregistered trademark.
The plaintiff also claimed that such use was for commercial purposes without the person’s or anyone else’s permission. It amounted to an infringement of the person’s right to privacy.
Character merchandising is a field of law in India that has yet to get explored. It was the first lawsuit involving celebrity commercialization in which the artist’s publicity rights had fair consideration.
The Coca-Cola Company V. Bisleri International Pvt. Ltd.
Bisleri, the defendant, had sold and assigned the trademark MAAZA, including formulation rights, know-how, intellectual property rights, and goodwill for India, to Coca-Cola under a master agreement.
The defendant corporation registered the mark MAAZA in Turkey in 2008 and began exporting fruit drinks under the MAAZA name. Coca-Cola, the plaintiff, sought a permanent injunction and damages for trademark infringement and passing off.
The court issued an interim restraining order prohibiting the defendant (Bisleri) from using the brand MAAZA in India or for export, citing trademark infringement.
Trademarks are critical components of intellectual property. The protection of a trademark has grown increasingly important in recent years since every manufacturer of a commodity or service wants his or her mark to be distinctive, eye-catching, and easily identified from others. Designing a trademark like this is tough, and when the mark gets infringed upon, the producer will face the most significant trouble.
The Trademarks Act of 1999 considerably promotes the rights of traders as well as other service providers. It serves as a deterrent to infringers. The Indian Trademarks Act responds to changes in trading and commercial practises, increasing globalisation of trade and industry, the requirement to encourage capital inflows and technology transfers, the need for trademark management system simplification and harmonisation, and the need to give effect to relevant court decisions.
The motto of intellectual property protection is to encourage creativity and discovery while also preventing invention exploitation. The public policy aims to maintain an Intellectual Property system that fosters innovation through protection policies while also ensuring that this does not come at the expense of societal interests.
Which section defines ‘trademark’ as defined under the Trademark Act, 1999?
Section 1 (zb) of the Trademark Act, 1999
In which year, the first trademark statute passed?
What is the period of trademark registration?
What is the period of trademark renewal?
Which was the first landmark judgment on cybersquatting?
Yahoo! Inc. V. Akash Arora & anr.
Under which section, absolute grounds of refusal of registration of a trademark gets defined?
Trademark Act, 1999 section 9