Copyright 2008 Amritesh Mishra

Consider the case of a renowned brand not trading in India and whose trademark is not registered in India. A domestic trader may think of taking undue advantage of that trade mark and adopting it to prosper. Moreover, he may do this because the original brand may not come to know of such such use which it has not permitted.

Indian Trademark law gives protection to any original trademark which is being used without the permission of its proprietors provided that the trademark is well known in India. That a trade mark is ‘Well known’ can be shown through advertisements made in India in electronic media and print media while the brand was not carrying on business in India, or sales figures world wide in the preceding 5 to 10 years so as to show that the Indian public was aware of the existence of the trademark before the infringer dishonestly adopted it. The rules which apply to unregistered trademarks apply to such foreign trademarks.

Some of the foreign brands which have faced such problems in India include Dunhill, Pfizer, Pizza Hut, Time, Whirlpool, McDonalds, Volvo, Mercedes Benz , Jolen, etc.

2. What cannot be registered

Trademarks like surnames e.g. Sharma, geographical names e.g. London, deceptively similar trademarks e.g. Phillipz, Marootee, those which may hurt religious sentiments, those which designate kind / quality / geographical origin / other characteristics of goods or services, common words, those which are scandalous / obscene, marks which are prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 etc. cannot be registered as trade marks.

3. Acquired Distinctiveness, Well known Trademark

Where a trademark has gained such a reputation that if it is used for any other goods or services, the general public might think that the use of trademark in latter case and person using it in former case are connected in trade, it is a well known trademark. It can be registered on such a ground provided that the registrar is satisfied that it meets the criteria.

Where a common word, surname etc. which cannot ordinarily be registered under the Act has acquired distinctiveness through use, it can get a registration on such a ground provided that the registrar is satisfied that it qualifies for such registration. For example, Cadbury (a Swiss brand of chocolates) is a surname and has been given registration. Similarly, Windows (a trademark owned by Microsoft), which is a common word, is a registered trademark.

4. Assignment, Transmission

Assignment:

The proprietor of a trademark can assign the trademark with or without the goodwill of the business. It has to be done in writing. In case of assignment, some or all the rights get transferred to the assignee. This may be for a specific limited period or forever. All of this depends on the terms of the contract.

Transmission:

It takes place by operation of law, devolution, any other mode which is an assignment. For example, on the death of the proprietor, his right gets transmitted to his legal representatives.

5. Registered User and Permitted User

Registered Users:

The registered proprietor can make any other person a registered user. For this, both of them must apply in writing to the registrar along with their agreement, affidavit, conditions, period etc. When the registrar is satisfied, he may enter the name of the registered user. UTI Bank (now AXIS Bank) was using the trademark UTI as a registered user till June 2007. If a registered user commits any breach of his agreement with the registered proprietor, his name can be removed from the register.

Permitted Users:

These include wholesalers, retailers, franchisees etc. A registered user is also a permitted user. They merely have the right to use the trademark in relation to the actual goods. The use of the trade mark must be backed by a written permission from the proprietor.

6. Intellectual Property Appellate Board (IPAB)

There is an IPAB established by Central Government under the Trade Marks Act. Any person who is not satisfied by any order or decision of the registrar may appeal to IPAB within three months.

7. Power to make rules

The Ministry of Commerce and Industry (Department of Industrial Policy and Promotion) of the Central Government is the appropriate ministry which can make rules to carry out the provisions of the Trade Marks Act, 1999.

(Amritesh Mishra is an ex-student of ILS Law College, Pune.)