Trade Marks Act, 1999

A Trade Mark distinguishes the goods of one manufacturer or trader from similar goods of others and therefore, it seeks to protect the interest of the consumer as well as the trader. In other words, a trade mark is a visual symbol which may be a word signature, name, device, label, numerals or combination of colors. It seeks to protect the interest of the consumer as well as the trader. A trade mark may consist of a device depicting the picture of animals, human beings, symbols, numerical etc. The trademark indicates a relationship between the trader and goods, it serves as a useful medium of advertisement for the goods and their quality. 

The law relating to trademark contained in the Trade Marks Act, 1999 is in harmony with the two major international treaties namely, The Paris Convention and the TRIPS Agreement. The Trade Marks Act, 1999 correspondence with the Trade Marks Rules, 2002 govern the law relating to Trade Marks in India.

In other words, the object of trademark law is to permit an enterprise by registering its trademark in order to obtain an exclusive right to use, share, or assign a mark.  Thus, it provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks.

A trade mark can perform the following functions:-

  • It identifies the goods or services and its origin.
  • It guarantees its unchanged quality.
  • It advertises the goods and services.
  • It creates an image for the goods and services.

With an increased globalization of trade and industry, the need to encourage investment flows and transfer of technology and the need for simplification and harmonization of trade mark management systems.

Section 2(1) (zb) explains the term trade mark ass 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; and—

  • in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as 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 proprietor to use the mark; and
  • (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so as 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 trade mark or collective mark; [1]

The prerequisites for a trade mark to be registered are:-

  • The selected mark should be capable of being represented graphically that is it must be in the paper form;
  • It should be capable of distinguishing the goods or services of one undertaking from those of others;
  • It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person;

A well-known trade mark in relation to any goods or services means a mark which has become so to the substantial segment of the public which uses such goods or services such that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

Section 18 explains with the procedure for making an application for registration. Any person claiming to be the Proprietor of a trademark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trademark. Sub-section (2) of Section 18 allows registration in several classes of goods or services by means of a single application. However, the fee payable is to be calculated on the basis of the number of classes in which registration is sought.

The Act allows registration of a trademark for a period of 10 years. It also allows renewal of registration for successive periods of 10 years, from the date of the original registration or the last renewal on payment of renewal fee. A trade mark which is not used within five years of its registration becomes liable for removal either completely or in respect of those goods or services for which the mark has not been used.

When a registered trade mark is used by a person who is not entitled to use such a trade mark under the law it constitutes as an infringement.

 A registered trade mark is infringed, if

  1. a) The mark is identical and is used in respect of similar goods or services; or
  2. b) The mark is similar to the registered trade mark and there is an identity or similarity of the goods or services covered by the trade mark; or
  3. c) The trade mark is identical and is used in relation to identical goods or services; and that such use is likely to cause confusion on the part of the public or is likely to be taken to have an association with the registered trade mark.[2]

However, there are certain exceptions which do not constitute infringement of a trade mark. The following acts are as follows:-

  • where the use is in relation to goods or services to indicate the kind, quality, quantity, etc. of the goods or of rendering of services, or other characteristics of goods or services.
  • where a trade mark is registered subject to conditions or limitations, the use of the trade mark in a manner outside the scope of registration.
  • where a person uses the mark in relation to goods or services for which the registered owner had once applied the mark, and had not subsequently removed it or impliedly consented to its use.
  • a trade mark registered for any goods may be used in relation to parts and accessories to other goods or services and such use is reasonably necessary and its effect is not likely to deceive as to the origin.
  • the use of a registered trade mark being one of two or more registered trademarks which are identical or nearly resemble each other, in exercise of the right to the use of that registered trade mark.[3]

A registered user of a registered trademark is not entitled to interfere with or restrain the use by any person of a trademark identical with or nearly resembling it in relation to goods or services in relation to which that person or a predecessor in title of his has continuously used that trade mark from a prior date. Therefore, in case of unregistered marks, the owner of the trade mark may lodge a case against passing off action in case his trademark is used by some other person. It has been held by the courts in various cases and the ownership of a trademark is decided by its usage in commercial transactions.

In Mahendra and Mahendra Paper Mills Ltd. Vs. Mahindra and Mahindra Ltd. [4]Supreme Court broadly stated, in an action for passing – off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered—

  • The nature of the marks i.e. whether the marks are word marks or labels marks or composite marks i.e. both words and label works.
  • The degree of resemblances between the marks, phonetically similar and hence similar in idea. • The nature of the goods in respect of which they are used as trademarks.
  • The similarity in nature, character and performance of the goods of the rival traders
  • Class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and /or using the goods.
  • The mode of purchasing the goods or placing orders for the goods. • Any other surrounding circumstances which may be relevant in the extant of dissimilarity between the competing marks.

The Supreme Court in Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd[5]and Others observed that (i) for inherently distinctive marks ownership is governed by priority of use for such marks. The first user of sale of goods/services is the owner who is senior to others. (ii) These marks are given legal protection against infringement immediately upon adoption and use in trade. (iii) Some courts indicate that even prior sales of goods – though small in size with the mark – are sufficient to establish priority, the test being to determine continuous prior user and the volume of sale or the degree of familiarity of the public with the mark.

Collective Marks means a trades mark distinguish the goods or services of members of an association of person not being a partnership within the meaning of the Indian Partnership Act, 1932 which is the proprietor of the mark from those of others.

Sections 69 to 78 deal with registration of certification trade mark. The purpose of certification trade mark is to show that the goods on which the mark is used have been certified by some competent person in respect of certain characteristics of the goods such as origin, mode of manufacture, quality, etc. The proprietor of a certification trade mark does not himself deal in the goods.

There are various sectors that are benefitted from trade mark:-

  • Registered Proprietor: The Registered Proprietor of a trade mark can stop other traders from unlawfully using his trade mark, sue for damages and secure destruction of infringing goods and or labels.
  • Government: The Trade Marks Registry is earning revenue.
  • Professionals: The Trade Marks Registration system is driven by professionals like Company Secretaries who act as trademark agents for the clients in the processing of the trademarks application.
  • Purchaser and ultimately Consumers of trade marks goods and services.

Where any person falsely representing a trade mark as registered it constitutes an offence.

  • where that word or other expression, symbol or sign is used in direct association with other words delineated in characters at least as large as those in which that word or other expression, symbol or sign is delineated and indicating that the reference is to registration as a trade mark under the law of a country outside India being a country under the law of which the registration referred to is in fact in force; or
  • where that other expression, symbol or sign is of itself such as to indicate that the reference is to such registration as is mentioned above; or
  • where that word is used in relation to a mark registered as a trade mark under the law of a country outside India and in relation solely to goods to be exported to that country or in relation to services for use in that country.[6]

However, where a person committing offence is a company, every person in charge of and responsible to the company for the conduct of its business will be liable. Where a person accused proves that the offence was committed without his knowledge or he has exercised all due diligence to prevent the commission of such offence, he will not be liable. However, where it is proved that an offence has been committed with the consent or connivance or is attributable to any neglect of any Director, Manager, Secretary or any other officer of the company, he shall be deemed to be guilty of the offence. Explanation to this section defines a company as to mean body corporate and includes a firm or other association of individuals.


References:

  1. http://lawmin.nic.in/ld/P-ACT/1999/The%20Trade%20Marks%20Act,%201999.pdf
  2. http://www.iflr.com/
  3. Law Relating To Intellectual Property Rights (Fourth Edition,2015)- M.K Bhandari
  4. Intellectual Property Law- P.Narayanan

Bibliography:

[1] The Trade Marks Act,1999 Section 2(1) ( zb) -http://lawmin.nic.in

[2] Section 29-Infringement of Registered Trade Mark

[3] Section 30-Limits on Effect of Registered Trade Mark

[4] AIR 2002 SC117-Supreme Court Judgement

[5] Case no: Appeal (Civil) 3415-3420 of 2001.

[6] Section 107- Penalty for Falsely Representing a Trade Mark as Registered.

 

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