Trade Market Act, 1999

Prior to statutory enactment of regulations governing trademark law and practice in India, the proprietary rights vested in a trademark were protected through common law principles and principles of equity. Majority of Indian Laws owe their origin to English Laws which were substantially subsumed while formulating Laws for the Indian subcontinent prior to Independence. The passing of the English Act, 1875, which provided for the protection of trademarks in England prompted passing of a similar Bill in India. Subsequently, requests were made to the Bombay Government by the Bombay Chamber of Commerce and Mill Owners’ Association for introducing a Bill in the Bombay Legislative Council on the lines of the English Act. The Central Government took up the matter and circulated the Trademark Bill for public opinion in 1879. However, the Bill met heavy opposition from vested interests and commercial public and was not proceeded with further.

The need for a law exclusively addressing trademark practice and procedure in India was again sought for in the 19^th century which eventually materialized into the Trademark Act, 1940. The Trademark Act, 1940 predominantly reflected the provisions incorporated in the UK Trademark Act, 1938. Subsequently, in the wake of ensuing trade and commerce development, the Trademark Act, 1958 was passed to address the lacunae being witnessed in the Trademark Act, 1940. The Trademark Act, 1958 also consolidated the provisions associated with trademarks in the Indian Penal Code, Criminal Procedure Code and Sea Customs.

The Trademark Act, 1958 was thereafter repealed by the Trademark Act, 1999 which at present governs trademark law and practice in India. The Trademark Act, 1999 was enacted with the intent to revise the Act in congruity with latest developments witnessed in trading and commercial practices, rapid globalization and for harmonization with International trade laws.

Some of the epoch- making inclusions in the Trademark Act, 1999 inter alia include:

• Provision was made for trademark registration in respect of services in addition to goods;
• Statutory protection was extended to well-known trademarks;
• Widened the scope and purview of ‘trademark’ in India;
• Provision for registration of ‘collective marks’;
• Incorporated provision to prevent use of trademark as a corporate or trade name by third party.

Widened Definition of Trade Mark

The Trademark Act, 1999 under Section 2 (zb) defines “trade mark” as 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…”

Furthermore, the Act also provided for definition of ‘mark’ under Section 2(m) which enumerates a mark to include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

Two essential ingredients for Trademark registration

1. The Mark is Capable of Being Represented graphically: ‘Graphical representation’ has been defined under Section 2(1) (k) of Trademark Rules, 2007 as representation of a trademark for goods or services represented or capable of being represented in paper form and include representation in digitized form. Such graphical representation of a trademark also encompasses within its purview shape of goods, their packaging, combination of colours, in other words it brings within its ambit “trade dress”.This essential requisite for qualification as a valid trademark merely implies that the mark should be capable of being put on the register in a physical form and also being published in the Journal. This requirement of a valid trademark was further expounded by the European Trademark Office, wherein it elucidated two primary reasons for geographical representation a trademark:

• Enable traders to identify with clarity what other traders have applied for registration as trademark and for what product;
• Enable public to determine with precision the sign which forms the subject of trademark registration

2. Capable of Distinguishing Good and Services of One Person From Those of Others: The definition of “trade mark” under of the 1999 Act means a mark “which is capable of distinguishing the goods or services of one person from those of others”. Therefore, the use of a mark that is not capable of distinguishing the goods of such proprietor of the trade mark would not qualify for the protection under the TM Act. This requisite of a trademark primarily enumerates that a trademark must be distinctive i.e. it should not be devoid of a distinctive character.

Absolute Grounds for Refusal of Trademark Registration

Section 9 of the Trademark Act, 1999 enumerates grounds on which a trademark registration can be absolutely refused. The Act provides that following marks can be refused:

• Marks that are devoid of any distinctive character;
• Marks which serve to designate kind, quality, intended purpose, values, geographical origin or the time of production of goods;
• Marks which have become customary in the current language or in the established practices of trade;

Exception: Aforesaid mark shall not be refused registration if prior to date of trademark application; the mark has acquired distinctive character or is a well-known trademark.

• Marks that may cause deception or confusion in public;
• Mark comprises of matter that is likely to religious sentiments any class of people;
• Mark comprises of scandalous or obscene matter;
• Mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950;
• If the mark consists of shape of goods which results from the nature of the goods themselves;
• Mark consists of shape of goods which is necessary to obtain a technical result;
• Mark gives substantial value to the goods;

Mark devoid of distinctive character

This requirement entails that a trademark should be of a distinctive character. While determining that a mark is distinctive or not, it has to be seen that the mark does not have a direct and close reference to the character and quality of applicant’s goods. In order to ascertain whether one mark is deceptively similar to another it is not necessary to place the two marks side by side to find out if there are any differences. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.

Relative Grounds for Refusal of Trademark Registration

Section 11 provides that a mark shall not be registered:

• If the mark causes likelihood of confusion on part of the public i.e. likelihood of association with the earlier trademark;
• If the mark is identical to a well-known trademark in India and use of the later mark may be detrimental to the distinctive character of the well-known trademark;
• If the mark’s use in India is liable to be prevented by law of passing off or copyright law;

The provision further envisages that where the goods are of different description refusal will not be justified but registration may be refused if the mark is likely to be deceptive or cause confusion.

Trademark Passing Off

The Trademark Act, 1999 under Section 27 provides for the remedy of passing off for misuse of an unregistered trademark by the Defendant. It enumerates that no person shall be entitled to institute any proceeding to prevent infringement of an unregistered trademark. The law further entails that the provision shall not affect the rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in respect thereof.

Section 27 of the Act recognizes common law rights of the trademark owner to take action against any person for passing of goods as the goods of another person or as services provided by another person or remedies thereof. The remedy made available under Section 27 protects the rights of the proprietor of an unregistered trademark to register complaint against another person for passing off his goods as goods the goods of proprietor. An unregistered proprietor of trademark can also oppose an application for registration on grounds as enumerated under Section 11 of the Act.

In an action of passing off, the Plaintiff has to establish prior use to secure an injunction and that the registration of the mark or similar mark in point of time, is irrelevant.

Classical Trinity Test in Passing off Action

Lord Oliver in the case of Reckitt & Colman Products Ltd. v. Borden Inc. enumerated three elements for a successful passing off action: (1) Goodwill owned by a trader, (2) Misrepresentation and (3) Damage to goodwill. Thus, the passing action is essentially an action in deceit where the common law rule is that no person is entitled to carry on his or her business on pretext that the said business is of that of another.

Trademark Infringement

Section 29 of the Act provides remedy in cases of trademark infringement. The statutory provision also enlists the circumstances under which a mark is infringed:

1. Infringement of a mark occurs when a person not being registered proprietor uses a mark which is identical or deceptively similar to a registered mark in relation to goods or services in respect of which the trademark is registered.
2. When a person not being a registered proprietor uses a registered trademark which because of its identity with registered trademark and similarity with goods or services is likely to cause confusion in public.
3. When a person not being registered proprietor of a mark uses mark which is identical or similar to the registered trademark in relation to similar goods or services and the registered mark has a reputation in India.
4. A registered trademark is infringed by a person if he uses such registered trademark as part of his trade name of his business concern dealing in goods or services in respect of which the trade mark is registered.
5. A registered trademark is infringed by any advertising of that trademark if such advertising takes unfair advantage and is detrimental to its distinctive character.

Under this Section we would deal with cases in which the Judiciary has shed light on trademark infringement law in India.