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EVOLUTION OF TRADEMARK LAW IN INDIA

The new Trademarks Act 1999, was introduced in compliance with TRIPs (Trade Related Aspects of Intellectual Property Rights) obligations. The objective of the Act was to provide the traders and organizations to with the power to protect their business and good and/or services. The act provided the businesses with the power to file cases of infringement and passing-off against the infringer. The affected party had the right to approach the court to file for an injunction.

INTRODUCTION

Intellectual Property Rights (IPR) are a set of rights, which are awarded for the creations which are a result of the human intellect. The ambit of IP law is vast covers the domains like trademark, copyright, patent, design, trade secret. This article presents in a precise manner the evolution of Trademark law in India.

TRADEMARK: MEANING AND DEFINITION

To state in a layman’s word, a trademark is a symbol either in the form of a word or a logo or a combination of both which helps customer/consumer to differentiate the goods and services of one brand or company from that of another. Along with it, it helps the owner of the mark to protect the mark from being infringed or being used maliciously. A trademark helps in differentiating the source of origin, manufacturer and the organization producing the goods or services.

Presently, The Trademarks Act 1999, deals with the definition, registration and procedure of filing trademark applications. Sec. 2 (1)(zb) of the Act defines a ‘Trademark’ as:

  1. 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
  2. in relation to other provision of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so 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

Sec. 2(m) of the Act defines a ‘mark’ as it ” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.

‘Trademark’ is an umbrella term which includes in itself ‘trade name’ or the ‘business name’, i.e. the name under which the brand or the company sells it goods or provides services. The whole concept of trademark revolves around three basic factors:

  • the mark should not be deceptively similar or similar or resemble to an existing mark
  • the mark should have a distinctive character or must be capable of distinguishing it from others
  • the mark should not be in use for goods or services of same description

 

 

HISTORY OF TRADEMARKS

The concept of protection of marks in India is not a new. The rules and laws have come into play over the period of time only. The first incident of protection of business name and business goods was in the 10th century, when the term ‘merchant’s mark’ became famous. Along with the name, symbols attracted a lot of attention of the merchants, traders and craftsmen. These marks and symbols became a proof of the quality and standard of the goods produced by the merchants, and helped the people from differentiating the goods of low quality.

The 20th century saw the making of laws for the protection of trademarks. India till this point had no laws for the same. The issues of infringement and passing-off were solved by applying the provisions of Specific Relief Act 1877, and the registration of the marks was in accordance with the Indian Registration Act 1908. To overcome the above issues, the British came up with the Indian Trademark Act 1940, which was set in accordance with the English Trademarks Act. The trade and commerce flourished, and the need was felt to protect the trademarks even more than before. The replacement to this act came in 1958, when Trademark and Merchandise Act was introduced. It was only after this that India became a part of WTO (World Trade Organization) in 1995 and of Paris Convention in 1998. The increasing globalization, development in the commerce section and to encourage the investment flow, need was felt to bring changes into the present Act. A bill was introduced in the Parliament in 1994 to bring the changes to the Trade and Merchandise Act, but the bill elapsed. Another bill was introduced in 1999, which received the President’s assent on 30th December 1999 and replaced the Trade and Merchandise Act, 1958 with Trademarks Act 1999.

EVOLUTION IN INDIA

The new Trademarks Act 1999, was introduced in compliance with TRIPs (Trade Related Aspects of Intellectual Property Rights) obligations. The objective of the Act was to provide the traders and organizations to with the power to protect their business and good and/or services. The act provided the businesses with the power to file cases of infringement and passing-off against the infringer. The affected party had the right to approach the court to file for an injunction.

The main features of the Act include:

  • protection to service marks under sec. 2(1)(z): signing of the Paris Convention made it mandatory for India to include trademarks for services.
  • provision of registration of collective marks: collective marks is a category of marks which belongs to a group or an association and is reserved for use for the members of that group only
  • expanding the scope of the term ‘trademark’ so as to include shape of goods, their packaging and combination of colour
  • simplification of registration of trademark, i.e. only the distinctive character would have to highlighted
  • protection of well- known marks under sec. 2(1)(zg): the law prevents registration of trademarks which are similar or deceptively similar to well-known marks. Any objection against such marks can be raised under sec. 9 & 11
  • the period for which a trademark enjoys protection was increased from 7 to 10 years
  • filing of single application for registration of the mark in more than one class: though the Act provides for the use of single application for filing trademark in various classes but the fees payable is paid in respect to every class.
  • non-use of the mark for 5 years will lead to removal of the mark: the period after which the registration of a mark can be revoked was increased from 61 months to 5 years
  • International Classification of Goods & Services was adopted by the new Act for thr registration of marks

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