Trademarks Law in India- The Entirety

By: Aayush Kumar

LLB (Hons)
20GSOL1010026
Galgotias University
Greater Noida

Introduction

India's obligations under the TRIPS Agreement for protection of trademarks,

inter alia, include protection to distinguishing marks, recognition of service
marks, indefinite periodical renewal of registration, abolition of compulsory
licensing of trademarks, etc.
With the globalisation of trade, brand names, trade names, marks, etc, have
attained an immense value that require uniform minimum standards of
protection and efficient procedures for enforcement as were recognised under
the TRIPS. In view of the same, extensive review and consequential repeal of
the old Indian Trade and Merchandise Marks Act, 1958 was carried out and the
new Trade Marks Act, 1999 was enacted. The said Act of 1999, with
subsequent amendments, conforms to the TRIPS and is in accordance with the
international systems and practices.
The Trade Marks Act provides, inter alia, for registration of service marks,
filing of multiclass applications, increasing the term of registration of a
trademark to ten years as well as recognition of the concept of well-known
marks, etc. The Indian judiciary has been proactive in the protection of
trademarks, and it has extended the protection under the trademarks law to
Domain Names as demonstrated in landmark cases of Tata Sons Ltd. v Manu
Kosuri & Ors [90 (2001) DLT 659] and Yahoo Inc. v Akash Arora [1999 PTC
201].
India, being a common law country, follows not only the codified law, but also
common law principles, and as such provides for infringement as well as
passing off actions against violation of trademarks. Section 135 of the Trade
Marks Act recognises both infringement as well as passing off actions.

Well-known Trademark and Trans-border Reputation

India recognises the concept of the "Well-known Trademark" and the "Principle
of Trans-border Reputation". A well-known Trademark in relation to any goods
or services means a mark that has become so to the substantial segment of the
public, which uses such goods or receives such services such that the use of
such a mark in relation to other goods and services is likely to be taken as
indicating a connection between the two marks.
Trans-border Reputation concept was recognised and discussed by the Apex
Indian Court in the landmark case of N. R. Dongre v Whirlpool (1996) 5SCC
714. The Trademark "WHIRLPOOL" was held to have acquired reputation and
goodwill in India. The mark "WHIRLPOOL" was also held to have become
associated in the minds of the public with Whirlpool Corporation on account of
circulation of the advertisements in the magazines despite no evidence of actual
sale. Hence, the trademark WHIRLPOOL was held to have acquired trans-
border reputation which enjoys protection in India, irrespective of its actual user
or registration in India.

Legal Remedies against Infringement/ Passing off

Under the Trade Marks Act, both civil and criminal remedies are
simultaneously available against infringement and passing off.
Infringement of trademark is violation of the exclusive rights granted to the
registered proprietor of the trademark to use the same. A trademark is said to be
infringed by a person, who, not being a permitted user, uses an
identical/similar/deceptively similar mark to the registered trademark without
the authorisation of the registered proprietor of the trademark. However, it is
pertinent to note that the Indian trademark law protects the vested rights of a
prior user against a registered proprietor which is based on common law
principles.
Passing off is a common law tort used to enforce unregistered trademark rights.
Passing off essentially occurs where the reputation in the trademark of party A
is misappropriated by party B, such that party B misrepresents as being the
owner of the trademark or having some affiliation/nexus with party A, thereby
damaging the goodwill of party A. For an action of passing off, registration of a
trademark is irrelevant.
Registration of a trademark is not a pre-requisite in order to sustain a civil or
criminal action against violation of trademarks in India. In India, a combined
civil action for infringement of trademark and passing off can be initiated.
Significantly, infringement of a trademark is a cognizable offence and criminal
proceedings can be initiated against the infringers. Such enforcement
mechanisms are expected to boost the protection of marks in India and reduce
infringement and contravention of trademarks.

Relief granted by Courts in Suits for Infringement and Passing off

The relief which a court may usually grant in a suit for infringement or passing
off includes permanent and interim injunction, damages or account of profits,
delivery of the infringing goods for destruction and cost of the legal
proceedings.
The order of interim injunction may be passed ex-parte or after notice. The
Interim reliefs in the suit may also include order for:

(a)Appointment of a local commissioner, which is akin to an "Anton Pillar

Order", for search, seizure and preservation of infringing goods, account books
and preparation of inventory, etc.

(b)Restraining the infringer from disposing of or dealing with the assets in a

manner which may adversely affect plaintiff's ability to recover damages, costs
or other pecuniary remedies which may be finally awarded to the plaintiff.

(c)The 'John Doe' order, known as "Ashok Kumar Orders" are injunction orders
passed by a court of law against entities, whose identity is not known at the time
of the issuance of the order. These orders are an exception to the general rule
which requires the defendant to be identified prior to the filing of a law-suit.
The John Doe order, is important in cases of fly-by-night operators who do not
operate from a fixed location. It allows the plaintiff to search the premises and
deliver up evidence of infringement of the rights of the plaintiff against the
unknown infringers.

(d)A 'Norwich Pharmacal' order is a court order for the disclosure of

information or documents against a third party. It is usually granted against a
third party which has been innocently mixed up in wrongdoing, forcing the
disclosure of documents or information. In the case of Souza Cruz v N K Jain
(1995 PTR 97), the Court directed excise and customs commissioners to
disclose the complete export records of infringing cigarettes to Ukraine by the
Defendant.

Procedure for registration of trademark in India

Convention applications

In order to fulfill the obligations of any treaty, convention or arrangement with a

country or countries that are members of inter-governmental organisations,
which accord to Indian citizens similar privileges as granted to their own
citizens, the Central Government notifies such countries to be Convention
Countries. In case of an application for registration of a trademark made in any
of the Convention countries, a priority date can be claimed with regard to the
application in India, provided that the application is made within six months of
the application having been filed in the Convention country. The Government
has notified and extended this privilege of priority to the members who have
ratified the Paris Convention on Protection of Industrial Property.

Madrid Protocol

After the amendment in the Trade Marks Act in 2010, Chapter IV A was
inserted, which contains the special provisions relating to protection of
trademarks through international registration under the Madrid Protocol. This
amendment allows Indian entities to register their trademarks in 97 countries by
filing a single application and in the same way also allows the
foreign entities of the member countries of the Madrid Protocol to register their
mark in India. India has joined the Madrid Protocol with effect from 8th July,
2013. As per the Amendment Act, from the date of the international registration
of a trademark where India has been designated or the date of the recording in
the register of the International Bureau about the extension of the protection
resulting from an international registration of a trademark to India, the
protection of the trademark in India shall be the same as if the trademark had
been registered in India.

One of the major changes brought about by the 2010 amendment is inclusion of
the words "within eighteen months of the filing of the application" in Section 23
of the Trade Marks Act. The said inclusion puts an obligation on the Registrar
to complete the registration process for a mark in a time bound manner. This
change will challenge every aspect of the registration process within trademark
office in India, forcing deadlines at every stage of the registration procedure laid
out under the Trade Marks Act and supplemented by the Trade Mark Rules in
India.
Classification of goods and services

For the purpose of classification of goods and services for registration of

trademarks, India follows the International Classification of Goods and Services
(Nice Classification) published by World Intellectual Property Organization
(WIPO). For the purpose of classification of the figurative elements of marks,
India follows the Vienna Agreement.

Opposition proceedings

After advertisement of a trademark in the Trade Marks Journal, (which is

available online at the website of Office of Registrar of Trademarks) an
opposition challenging the application for registration can be filed by any
person within a period of 4 months.

Renewal of registration

The trademark is initially registered for a period of 10 years, which is calculated

from the date of filing of the application and in case of convention application,
from the date of priority. The registration is required to be renewed within 12
months before the date of expiry of the registration, ie, 10 years from the date of
the application or subsequent renewals.
The failure in renewing the trademark within the stipulated period of time and a
grace period of maximum one year granted for restoration of the trademark,
automatically leads to removal of the trademark from the Register of
Trademarks.

Rectification of Trademark

An aggrieved person may file an application before the Registrar of Trademarks

or to the Intellectual Property Appellate Board (IPAB) for cancellation or
varying the registration of the trademark on the ground of any contravention or
failure to observe a condition entered on the Register in relation thereto.
The application for rectification can also be filed for removal of an entry made
in Register, without sufficient cause or wrongly remaining on the Register and
for correction of any error or defect in any entry in the Register.
Assignment, Transmission and Licensing of Trademarks in India

"Assignment" means an assignment in writing by an act of the parties

concerned. While in case of licensing, the right in the trademark continues to
vest with the proprietor, the assignment of the trademark leads to a change in
the ownership of the mark. A registered trademark is assignable with or without
the goodwill in respect of all or only some of the goods/services for which the
mark is registered. India is a member to TRIPS and Article 21 of the TRIPS
dealing with Licensing and Assignment mandates that "... the owner of a
registered trademark shall have the right to assign the trademark with or without
the transfer of the business to which the trademark belongs." Section 39 of the
(Indian) Trade Marks Act, 1999 allows for the assignment of an unregistered
trademark with or without the goodwill of the business concerned.

Indian law contains restriction on the assignments of trademark, whether

registered or unregistered, whereby multiple exclusive rights would be created
in more than one person which would result in confusion. However, the
assignment with limitations imposed, such as goods to be sold in different
markets, ie, within India or for exports are valid. The Registrar is authorized to
issue a certificate of validity of the proposed assignment on a statement of case
by the proprietor of a registered trademark who proposes to assign the mark.
The said certificate as to validity is conclusive unless vitiated by fraud. The
assignments, wherein exclusive rights are created with respect to different
markets within India are also valid.

A trademark is a property which can be transferred by a document for

consideration, subject to certain provisions in the relevant Act. An assignment
of trademark has to be in writing by acts of the parties concerned. When an
assignment of a trademark is made, the assignee must apply to the Registrar of
Trade Marks to register his or her title. Until such an application is filed by the
Assignee, the assignment shall be ineffective against a person acquiring a
conflicting interest in or under the registered trademark without the knowledge
of the assignment. Where the validity of an assignment is in dispute, the
Registrar of Trade Marks may refuse to register the assignment, unless
adjudicated by a competent court.
Expanding boundaries of the scope of trademark
• Domain name
Every company on the internet has a domain name with a different address in
cyberspace at which the website is located. Nowadays companies have internet
pages as the producer and consumer are far away located as well as every
company is going global. The other purpose is that the Internet has become an
essential tool in marketing. The rule came to be revealed as IP numbers are hard
to remember therefore they came up with the Domain Name System.
A user of the internet will find the domain name very useful in finding the
goods or services that he expected to find. But sometimes a distinct name of a
highly commended business may be allowed and passed off as the original one,
For example, Tata, Google and Maruti. People visit a website or domain name
through a website or a URL. Cybercrime generally means the registration of
another party’s mark as a domain name for the purpose of misuse. A domain
name has to be related to the product given and it has to be different. While
choosing a domain name for a website it is desirable that it should be different.
A high level of distinctiveness is allowed that two domain names could not be
alike. Two types of disputes that occur which concerns with the domain name.
(i) That both the parties have the legal right to forming the words for the
domain name in use. In this way, the court decides that who is the original
owner and who the infringer is.
(ii)The second type is cyber piracy where a party with no legal right questions
the real owner. In this type of problem, there is a number of ways by which a
trademark owner can fight with cyberpiracy.

• Smell
It is a non-traditional type of trademark. There is a large problem in registering
this type of trademarks as there is no physical representation. Due to its high
level of distinctiveness, for example, the smell of a perfume strawberry etc., it is
difficult to register this kind of trademark. Smell marks are accepted if they are
represented with a graphical representation. But this provision is only in some
countries. Smell the trademark is protected under copyright. In some instances a
particular scent is also a commodity by itself in other circumstances it is a scent
used or attached to the commodity not the natural smell of the product itself.
 • Sound
A sound may be trademark and can also be registered. A sound mark is a sound
or a theme with a different identification effect. A well-known sound mark is
music owned by Hemglass. When applying for a sound mark the mark can be
expressed by a sound file or by an accurate description of the sound in notation.

• Shape
Distinguishing the one product from another assures that the customer doesn’t
get confused by similar products. The shape of goods registered as a trademark
as long as the shape is not working. A shape is working if it affects the use or
performance of the product. The shape of goods can be a trademark if,
➢ The shape doesn’t superior working.
➢ The shape has become connected with public and manufacturer.
A shape of goods may be registered as a trademark when the shape is not
working. Thus, if a certain shape is delicate more than useful in daily life and
serves no purpose then it may be registered.
Conclusion
Intellectual Property reflects the meaning that it’s subject body is the product of
the mind or the intellect. As it’s the product of a productive and creative mind,
It can be traded, purchased, given and reserved. All this can be done but there
are issues related that to be dealt. Trademarks are very important aspects of
Intellectual Property so, the protection of the trademark has become essential in
the present day because, every generator of a good or service will want his mark
to be different, eye-catching and it should be easily distinguishable from others.
Designing a mark like this is difficult and after this when infringing of the mark
takes place it will cause maximum difficulty to the producer. Capital Protection
is very important and there should be a step towards Global Intellectual
Property Order, if there is no IPR protection, it can be explained that inventive
activity will terminate. The reason for Intellectual Property protection is that it
can arouse creativity and discovery and prevent the exploitation of inventions.
Public policy here points at keeping an Intellectual Property system which
promotes innovation through protection initiatives, while at the same time
assuring that this is not at the value of societal interests. In this meaning, the
challenge for the World Intellectual Property Organisation would be to include
public policy effects in applications carried out with developing countries, such
as increasing awareness of flexibilities in existing international intellectual
property treaties.
Intellectual Property is not an unusual concept, in fact, it is a concept which is
discussed in everyday life whether a movie, book, plant variety, food item,
cosmetics, electrical gadgets, software’s etc. It has become a concept of
pervasiveness in everyday life. The World Intellectual Property Day on 26th
April every year.