Trademark

Acts and Rules

• The Trademark Mark (Amendment) Rules, 2013
• The Trademark Mark (Amendment) Act, 2010
• The Trademarks Act, 1999
• The Trademarks Rules, 2002

Case Laws

• Elvis Presley Enterprises Inc. vs. Sid Shaw Elvisly Yours – UK Supreme Court

The Trade Marks Act, 1999 has been enacted to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks. It repealed the earlier Trade & Merchandise Marks Act, 1958. According to the Trade Marks Act, 1999, the term ‘trade mark’ means “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”.

Under the Act, the Controller-General of Patents, Designs and Trade Marks under Department of Industrial Policy and Promotion, Ministry of Commerce and Industry is the ‘Registrar of Trade Marks’. The Controller General of Patents, Designs & Trade Marks directs and supervises the functioning of the Trade Marks Registry (TMR). The ‘Trade Marks Registry’ administers the Trade Marks Act, 1999 and the Rules thereunder. TMR acts as a resource and information centre and is a facilitator in matters relating to trade marks in the country. The main function of the Registry is to register trade marks which qualify for registration under the Act and Rules.

The main provisions of the Act are:-

• The Central Government may, by notification in the Official Gazette, appoint a person to be known as the ‘Controller-General of Patents, Designs and Trade Marks’, who shall be the Registrar of Trade Mark for the purpose of this Act. Also, there shall be a ‘Trade Marks Registry’ at such place as the Central Government may specify, and for the purpose of facilitating the registration of trade marks.
• For the purposes of this Act, a record called the ‘Register of Trade Mark’ shall be kept at the head office of the Trade Marks Registry, wherein shall be entered all registered trade mark with the names, addresses and description of the proprietors, notifications of assignment and transmissions, the name, addresses and description of registered users, conditions, limitations and such other matters relating to registered trade mark as may be prescribed.
• The Register shall classify goods and services, as far as may be, in accordance with the International classification of goods and services for the purposes of registration of trade marks. Any question arising to the class within which any goods or services falls shall be determined by the Register whose decision shall be final.
• Absolute grounds for refusal of registration of trade marks:-
  • Which are devoid of any distinctive character (that is not capable of distinguishing the good or services of one person from those of another person);
  • Which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
  • Which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade;
• If it consists exclusively of shape of goods:-
  • which results from the nature of the goods themselves; or
  • which is necessary to obtain a technical result; or
  • which gives substantial value of the goods.
• Relative grounds for refusal of registration of trade marks:-
  • Existence of a likelihood of confusion on the part of the public due to:-
    • its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or
    • its similarity to an earlier trade mark and the identity or similarity of the goods of services covered by the trade mark.
• If its use in India is liable to be prevented:-
  • by virtue of any law, in particular the law of passing off protecting an unregistered trade mark used in the course of trade; or
  • by virtue of law of copyright.
• Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark. A single application may be made for registration of a trade mark for different classes of goods and services and fee payable thereof shall be in respect of each such class of goods or services.
• Any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration. The Registrar shall serve a copy of the notice on the applicant for registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter-statement of the grounds on which he relies for his application, and if he does not do so he shall be deemed to have abandoned his application. The Registrar shall, after hearing the parties, if so required, and considering the evidence, decide whether and subject to what conditions or limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not.
• The registration of trade mark, after the commencement of this Act, shall be for a period of ten years, but may be renewed from time to time in accordance with the provisions of the Act. The Registrar shall, on application made by the registered proprietor of a trade mark in the prescribed manner and within the prescribed period and subject to payment of the prescribed fee, renew the registration of the trade mark for a period of ten years from the date of expiration of the original registration or of the last renewal of registration, as the case may be.
• Grounds for infringement of registered trade marks are:-
  • By any advertising of that trade mark if such advertising:-
    • takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
    • is detrimental to its distinctive character; or (iii) is against the reputation of the trade mark.
  • By a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which:-
    • is identical with or similar to the registered trade mark; and
    • is used in relation to goods or services which are not similar to those for which the trade mark is registered; and
    • the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
  • By a person if he uses such registered trade mark, as his trade name or part of his trade name, or name is his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.
• Where the distinctive elements of a registered trade mark consists of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation.
• By a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
• Any person who:
  • falsifies any trade mark; or
  • alsely applies to goods or services any trade mark; or
  • makes, disposes of, or has in his possession, any die, block, machine, plate or other instrument for the purpose of falsifying or of being used for falsifying, a trade mark; or
  • applies any false trade description to goods or services; or
  • tampers with, alters or effaces an indication of origin which has been applied to any goods to which it is required to be applied under the Act, shall be punishable with imprisonment and with fine.