Trademarks in India: Laws , Procedures, Registering and Challenging Trademarks

Intellectual Property Laws in India

LEGISLATION (INDIA TRADEMARK LAW)

The Indian law of trademarks is enshrined in the Trade & Merchandise Marks Act, 1958 (hereafter "the existing Act"). However, the existing Act is set to undergo a transformation to bring it in conformity with the TRIPS Agreement to which India is a signatory. A new statute i.e. the Trade Mark Act, 1999 (hereafter, the "new Act") has been enacted in India. However, the enforcement of the new Act is pending till a date is finalized by the Government of India.

WHAT IS COVERED UNDER TRADEMARKS

Under the existing Act, a trademark is a mark used in relation to goods so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark.

For the purpose of registration, a trade mark chosen should not be deceptively similar to an existing mark of another person and not the one expressly prohibited under the law. _____****_____

At present, the protection of trademark is available only on physical goods or commodities traded. But under the new Act trademark registration would be extended to services also.

WHAT IS A TRADEMARK

A ‘Mark` may consist of a word or invented word, signature, device, letter, numeral, brand, heading, label, name written in a particular style, the shape of goods other than those for which a mark is proposed to be used, or any combination thereof or a combination of colors and so forth. Subject to certain conditions, a trademark may also be symbolized by the name of a person, living or dead.

For the purpose of registration, a mark chosen should not be deceptively similar to an existing mark of another person and not the one expressly prohibited under the Act. The marks devoid of any distinctive character, or which are only indicative of the kind, quality, quantity, purpose, value or geographical origin of the goods, or which are marks already in vogue in the trade due to their customary use may not be registered. But these disqualifications do not apply to marks, which have already acquired distinction due to their popularity and consistent use. The new Act also seeks to make internationally acclaimed brand names freely available for use in India.

WHO CAN APPLY FOR A TRADEMARK

The right to use a mark can be exercised either by the registered proprietor or a registered user. A person may apply for registration of a trade mark to the Trademark office under whose jurisdiction the principal place of the business of the applicant in India falls. In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company's favor.

Before making an application for registration it is prudent to make an inspection of the already registered trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.

DURATION OF A TRADEMARK

The present term of registration of a trademark is seven years, which may be renewed for a further period of seven years on payment of prescribed renewal fees. Under the new Act, the term of registration would be extended to ten years, subject to renewal.

But non-user of a registered trademark for a continuous period of five years is a ground for cancellation of registration of such trademark at the behest of any aggrieved party.

CONVENTION APPLICATION AND INTERNATIONAL TREATIES

India has declared certain countries as convention countries, which afford to citizens of India similar privileges as granted to its own citizens. A person from a convention country, may within six months of making an application in his or her home country, apply for registration of the trademark in India. If such a trademark is accepted for registration, such foreign national will be deemed to have registered his or her trademark in India, from the same date on which he or she made application in his or her home country.

Where the applications have been made for the registration of trademark in two or more convention countries, the period of six months would be reckoned from the date on which the earlier or earliest of those applications was made.

Although the recovery of damages for infringement of a trademark is possible only if the infringement takes place after the date of filing application for registration with the concerned trademark office in India, yet the deemed seniority in making application in home country may entitle the applicant to initiate an action in India for injunction, delivery of impugned labels etc.

REMEDIES FOR INFRINGEMENT AND PASSING-OFF

Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party. These remedies are: - ‘an action for infringement' in case of a registered trademark and ‘an action for passing off' in the case of an unregistered trademark. While former is a statutory remedy, the latter is a common law remedy. In a suit for infringement or for passing off, the relief that the court may grant includes injunction and either damages or an account for profits with or without any order for delivery of the infringing labels and marks for destruction or erasure.

Although registration under the existing Act is prima facie evidence of validity of a trademark, yet the registration can not upstage a prior consistent user of trademark, for the rule is ‘priority in adoption prevails over priority in registration`.

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