The TradeMarks Act, 1999

Trade-Related Aspects of Intellectual Property Rights, 1994 (TRIPS) recognizes that as a result of the globalization of business, brand names, trade names, marks, and other intellectual property have become enormously valuable and require uniform minimum levels of protection and efficient enforcement procedures. This led to a full examination and amendment of the former Indian Trade and Merchandise Marks Act, 1958 (repealed), and the adoption of the New Trademarks Act 1999. The aforementioned Trademarks Act 1999 complies with international norms and standards as well as TRIPS.

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This Story also Contains

1. The Meaning of the word ‘Trademark’
2. What is a Trademark Act 1999?
3. The Legal Background of India's Trade Mark Act
4. The Necessity of Trademarks - Trademarks Act 1999 bare act
5. Salient Features of the Trademarks Act 1999
6. Infringement of Trademarks
7. Case Laws
8. Trademarks Act 1999 latest Amendment
9. Conclusion

The Meaning of the word ‘Trademark’

• A trademark is a term, phrase, symbol, or design that is used to identify the source of goods from another person or organization.
• The Trademarks Act 1999 defines a trademark as "a mark that can be graphically represented and that can be used to distinguish the goods or services of one person from those of others. It can also refer to the shape of the goods, their packaging, or a combination of colours."
• Various elements, including signatures, names, labels, headers, etc., can be included in such a mark.

What is a Trademark Act 1999?

A trademark is a symbol that may be used to identify one company's products or services from those of other companies. Intellectual property rights (IPR) safeguard trademarks. The Trademarks Act 1999, which was modified in 2010, governs trademarks in India.

Section 2(1)(zb) of the Act provides a definition for the term "trade mark." It is articulable as follows:

• A mark must exist in the trade mark. That is to say, provided certain requirements are satisfied, only a mark as specified in Section 2 (1)(m) of the Act may be authorised as a trade mark.

• The fact that a mark like that can be illustrated. That is to say, registration of a mark is not possible if it is not visibly displayed.

• A mark of this kind has to be able to distinguish the products or services of one person from those of others.

• It suggests that for customers to easily identify a product carrying a mark with a certain owner or approved user, the mark has to possess certain distinctive features, whether they be phonetically, structurally, or aesthetically pleasing.

• Such difference can be acquired or intrinsic, as in the case of words that have been developed.

The Legal Background of India's Trade Mark Act

• Trade marks were not governed by statute in India until 1940. Instead, common law—which was substantially the same as English law before the first Registration Act was passed in 1908—formed the basis of the applicable law.

• The Trade Marks Act of 1940 (repealed) set up the legal framework and registration procedures for trademarks in India for the first time.

• The Trade and Merchandise Act of 1958 superseded this Act. The Trade Marks Act of 1999, which went into force in 2003, also repealed this Act.

• Since the Trademarks Act 1999, the legislation about trade marks has experienced substantial modifications. While certain legal rules of unregistered trade marks are codified, others still rely on common law, which means that judicial decisions are necessary.

• The Act has developed into a lengthy, intricate body of law with several cross-references, sections, and exclusions.

• The present Trademarks Act 1999 has included various additional laws that benefit both trade mark owners and consumers of goods, in addition to simplifying the existing legislation.

• Due to historical factors, English law has greatly influenced both Indian common law and statutory trade mark law.

• This Act combined the Merchandise Marks Act of 1889 with other trademark-related laws from the India Penal Code of 1860, the Criminal Procedure Code of 1973, and the Sea Customs Act of 1878 into a single piece of legislation, in addition to making substantial revisions to the prior law.

The Necessity of Trademarks - Trademarks Act 1999 bare act

With the use of a trademark, you can keep others from profiting from your brand and safeguard it. Trade marks include things like an item's form, packaging, and colour combination, which can distinguish one person's goods or services from another.

1. Important assets: A registered trade mark might be very beneficial to your company. These assets continue to increase in value over time. The value of your trademarks naturally rises with time as your business grows. As a result, the value of your trade mark increases along with your company.

2. Safeguarding your brand: Ownership of a brand, name, or logo is established by trade mark registration. It protects your trademark from unauthorised usage by third parties. The product is clearly all yours, and you are the only one with the authority to use, sell, and alter the brand or products any way you see appropriate thanks to the registered trade mark.

3. Bringing individuality to a brand: Every company needs a unique logo or brand to help it stand out from the competitors; thus, this type of brand has to be registered. Consequently, a registered trade mark gives your company a unique identification.

4. Tool for simple communication: Trademarks might end up being practical and straightforward communication instruments. They make sense on their own. You may identify the brand to which your items belong by registering your trade mark.

5. Customers can easily locate you: A registered trade mark makes the product stand out and attracts attention, which makes it easier for customers to identify it more quickly. It is both a helpful tool and has a distinct identity.

6. A trade mark lasts forever: A trademark can be used indefinitely when it is registered. A company's registered trademark is theirs forever, thus to preserve the brand's identity and continue for eternity, a trade mark registration has to be renewed every 10 years.

Salient Features of the Trademarks Act 1999

India's first trade mark law was the Trade Marks Act of 1940. Common law governed trade mark protection before then. The current trade mark laws in India are based on the Trademarks Act 1999, as amended. The Trademarks Act 1999 was enacted to abide by the TRIPS regulations. The Trademarks Act 1999 introduced notable characteristics to Indian trade mark law, which are as follows:

• Adding a service mark to the list of trademarks.

• Additional terms for the registration of collective marks.

• Restricting the registration of some marks that are just copycats or imitations of well-known marks.

• The ability to register many types of goods and/or services under a single application.

• Extending a trade mark's registration duration from seven to ten years, including a grace period of six months for fee payment.

• Extending the circumstances under which a registration's validity may be contested.

• Granting the Registrar final authority over requests for Certification Trade Mark registration.

• Bringing the Trade Marks Law's penal clauses into compliance with the Copyright Law.

• A clause allowing for the establishment of an appellate board.

Infringement of Trademarks

• Trademark infringement happens when someone other than the registered proprietor uses the same mark or one that is confusingly similar in the course of business in connection to the same goods or services for which the trade mark is registered. In general, trade mark infringement lawsuits involve the issues of probability of confusion, counterfeit marks, and mark dilution. Misunderstanding arises when customers are likely to be confused or misled about the use of marks by two parties.
• Infringement refers to the violation of someone's rights, and Section 29 of the Act addresses the infringement of registered trademarks. The following criteria must be completed to categorise trade mark infringement as stated under Section 29 of the Act:

  • If the trademark is only a duplicate of an already-registered trademark with a few small adjustments.

  • If the trademark that is being violated is printed or used in advertising.

  • Should the unauthorized logo be used in business activities,

  • Should the logo in use be sufficiently comparable to a registered logo, a consumer might be deceived or confused when selecting a product type.

Principle of Passing Off

• The Trademarks Act 1999 does not define the term "passing-off."

• The Trademarks Act 1999, Section 27, recognises the common law rights of the trade mark owner to take legal action against any person who attempts to exploit such rights or misrepresents his goods or services as those of a third party.

• In the case of Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001), the apex court of India clarified that "passing-off" is a form of unjust business competition or legal actionable deceptive conduct involving an individual, through dishonesty, aiming to profit from the goodwill gained by another in a specific industry or organization.

Redress in Cases involving Infringement or Passing Off

• Section 134 of the Trademarks Act 1999 states that a person who resides, conducts business or works for pay within the local limits of the court's jurisdiction at the time of filing the lawsuit or other proceeding, or any of the people filing the lawsuit jointly, may file a lawsuit for trade mark infringement before a District Court or High Court.

• The Act defines a person as both a registered user and a registered proprietor.

• A passing-off action is governed under the Code of Civil Procedure, 1908, Section 20.

• Courts within the boundaries of the defendant's residence, place of business, place of personal employment for compensation, or the location where all or part of the cause of action originated are granted jurisdiction by Section 20 of the Code.

Case Laws

Milmet Oftho Industries et al. v. Allergan Inc., 2004

• Fact about the Case - In the 2004 decision of Milmet Oftho Industries et al. v. Allergan Inc., the Supreme Court granted trade mark protection to a well-known multinational brand. The Indian company's use of the OCUFLOX trademark was prohibited by the court.
• Judgement of the Case - Even though the mark has never been used or registered in India, the decision was taken. The respondent was the first to utilise the mark and join the market, according to the court. It doesn't matter whether the responder is the first to enter the international market if they haven't used the mark in India. In the field of healthcare, it is imperative to eradicate any potential for fraud or misunderstanding, while simultaneously guaranteeing that the public interest is not jeopardised.

Yahoo!, Inc. v. Akash Arora and Anr,1999

• Fact about the Case - In Yahoo!, Inc. v. Akash Arora and Anr (1999), the Delhi High Court decided that a domain name has the same function as a trade mark and should be granted the same degree of protection for the first time in Indian history. "Yahoo India!" was the domain name of the accused. This was phonologically similar to the plaintiff's trade mark "Yahoo!"
• Judgement of the Case - The court claimed that people would be misled and tricked into believing that the two domain names came from the same place. The defendant said that a disclaimer had been put up on its website. The internet is designed in a way that makes it impossible for a disclaimer to rectify the use of a similar domain name, even if "Yahoo" is a dictionary term. For this reason, it was discovered that a simple disclaimer was insufficient. The appellation is now more unique and distinctive, and it has a strong connection to the plaintiff.

Sony Corporation v. K. Selvamurthy, 2021

• Fact about the Case - Sony Corporation sued a single owner running a tour and travel business under the name Sony Tours and Travels for trade mark infringement in the matter of Sony Corporation v. K. Selvamurthy (2021). The action claimed the dilution of Sony Corporation's well-known "SONY" trade mark.
• Judgement of the Case - After weighing the evidence, the District Court found that Defendant had not unduly capitalised on or tarnished the distinctive character or repute of Plaintiff's SONY mark. The Court arrived at this decision because Sony Corporation's operations are limited to media and technology, setting them apart from the defendant's travel and tour company.

Trademarks Act 1999 latest Amendment

• The Draft Trade Marks (1st Amendment) Rules, 2024, proposed by the Department for Promotion of Industry and Internal Trade under the Ministry of Commerce and Industry, are a strategic revision to the Trade Marks Rules, 2017. This regulatory endeavour is carried out under the delegated authorities outlined in Section 157 of the Trade Marks Act of 1999 ("the Act").
• These guidelines establish a single adjudication procedure that is carefully crafted to assure consistency. This substantially simplifies the Act's implementation by enhancing the Adjudicating Officer's powers. This comprehensive approach aims to improve and refine the adjudicative framework, resulting in a more robust and coherent administration of trademark-related problems.
• The draft regulations include new terminology to help expedite the adjudication process. The guidelines now specify terminology such as 'adjudicating officer', 'appellant', 'Appellate Authority', and 'complainant'.

Conclusion

The Trademarks Act 1999, on its whole, eliminates the onerous regulations of the former Act, and it has surely significantly strengthened the rights of entrepreneurs and other service providers. The purpose of the Trademarks Act 1999 is to deter infringers. Positively, this Act considers evolving business and commercial practices, the increasing globalisation of trade and industry, the need to facilitate investment flows and technology transfers, the need for standardised and simplified trade mark management systems, and the application of relevant court rulings. This law was much anticipated by the corporate and legal worlds alike. Now the long-held goal has been realised.