Lawmatters.in

Copyright 2008 Amritesh Mishra

Introduction

The Trade Marks Act was passed in the year 1999. Prior to this Act, there was The Trade and Merchandise Marks Act, 1958. Till 1958, trade marks were governed by the Indian Penal Code. In the simplest terms, a trade mark is a name under which the goods are traded e.g. Reebok, Sony, Versace, French Connection UK etc. are trademarks.

In addition to this, the titles of movies like Swades and Rang De Basanti, coined names of characters by scriptwriters and authors like James Bond, Gabbar Singh, etc., logos such as Apple’s Apple, ‘tag lines‘ like Humara Bajaj, the shape of goods, their packaging, and combination of colours e.g. white and red in a blue border logo of Tommy Hilfiger. Under the new Act, certification marks like ISO 9002, SFA, ISI, and collective marks like Khadi are also trade marks.

Thus, anything which distinguishes goods and services of one from others and is used in trading is a trademark.

It would be pertinent to note that celebrity names e.g. Brad Pitt, David Beckham, Jennifer Lopez, perfume scents of Brut, Nivea or even of antiseptic lotions, advertising jingles that make it easy for people to distinguish one brand of goods or one person’s services from those offered by others are also treated as trade marks. For example, the signature tune of Nokia mobile phones, the engine sound of Harley Davidson motorcycles, and domain names such as ferrariworld.com (if they are not used merely as contact information) are also trademarks in those countries which are members of Madrid Agreement or Singapore Treaty. These marks are not recognized as trade marks in India.

The Trade Marks Act, 1999 gives legal protection to goods and services: ‘goods’ includes food, cosmetics, apparels, accessories, and electronics etc. while ‘services’ includes entertainment, telecommunications, transport, and education etc. In relation to goods, the marks are referred to as trademarks (TM) and whereas, in relation to services, they are called service marks (SM).

Registered Trademark and Unregistered Trademark

A trademark is registered when the name of its proprietor is entered in the register and a certificate of registration is issued by the registrar; till then it is an unregistered trademark. It is always advisable to get a trademark registered as it generally gets a better protection. However, Indian law recognizes the first-to-adopt and not the first-to-file system. So, even if a trademark is not registered but was adopted before anyone else, it would get a protection under the Indian Law; the person who adopts it later will be asked to desist from further using the trademark even if he has filed for registration and the person who adopted it earlier has not done so.

Once the trademark is registered, the proprietor can use the ® symbol to indicate that the mark is registered and the registration is subsisting. Many local traders use the sign on their trademark even when it is not registered. However, doing this may attract serious penalties: imprisonment upto 3 years or fine or both. The symbol ® can only be used for a registered trade mark. However, an unregistered trademark or service mark is not precluded from using the ™ / SM symbol, as the case may be.

How to Register

• Application: A written and signed application is to be made to the registrar in the appropriate trademark registry for registration + payment of fees.
• Advertisement: Once the application is fully accepted, it is advertised in the journal.
• Opposition: After the advertisement is made, any person may within three months oppose the registration. Generally, opposition is seen when any prior user exists who is using the trademark or when the trademark is identical with or similar to an existing trademark.
• Hearing: The registrar will give a hearing to the parties.
• Registration: If the hearing is decided in favour of the applicant, certificate of registration is issued.

Duration

A trademark registration is valid for ten years from the date of filing and after that it can be renewed again and again for a period of ten years by paying the renewal fee.

Infringement and its Remedy

When any person knowingly and without the permission of the registered proprietor uses a trademark, he infringes a trademark. This is a violation the law. Thus, a person using any trademark e.g. Panasonic, Dunhill, McDonald’s etc. without permission from its respective proprietor(s) infringes the trademark in question. In addition to this, if a person uses a trademark deceptively similar to another established trademark, he infringes the trademark e.g. a person adopting a trademark like Phillipz or Marootee would infringe the trade mark of Philips or Maruti respectively.

Relief

The infringer will be restrained (by an order of injunction) from using the trademark. He may be also asked to pay damages or share the profits earned and to deliver the infringing labels for their destruction. The infringer may also be punished under the criminal law (by imprisonment of six months to three years and fine). The civil and criminal actions may be initiated simultaneously.

The suit ordinarily is to be filed in a district court. Where the trademark is a registered one, a suit for infringement under the trademark law is filed. An unregistered trade mark can also be protected: where the trademark is an unregistered one, a suit for passing off is filed under the Common Law.

Passing off is not same as infringement. In the case of passing off, legal action is not merely for using the mark but for passing off goods by using an identical or a deceptively similar mark.

See Important Concepts in Indian Trade Mark Law