Trademark

In this article, Tejaswinee Roychowdhury who is currently pursuing M.A. IN BUSINESS LAWS, from NUJS, Kolkata, discusses Indian Trademark law. Comparison with US and EU.

Be it India or the US or the EU, all three countries have made trademark laws adhering to the eight fundamental principles and the TRIPs Agreement, Paris Convention, and the Madrid Protocol. However, their structure and implementation in certain cases vary and this variation has been addressed hereafter.

Introduction

A trademark comes under the protection of Intellectual Property Rights. WIPO defines a trademark as a sign which is capable of distinctly distinguishing the goods or services of one individual or enterprise from those of other individuals or enterprises. [1]

A trademark is a visual symbol/a distinctive mark or design used by an individual or a company. The trademark helps the consumer identify the products and services of a particular individual/organization/company. They have been in existence as along as trade itself when makers started to “mark” their wares with a word or a symbol to help identify the maker and have been unearthed in excavations from China, India, Persia, Egypt, Rome, Greece, and so on, dating back almost 4000 years. [2]

A trademark’s main functions are identification of goods and distinguishing them, signifying source of goods, signifying quality of goods and advertisement of goods. [3] Additionally, trademark protection aims to prevent the use of fraudulent marks. With developments in trade and commerce in the era of globalization, the need for encouragement of investment flows and transfer of technology and the need for harmonization and simplification of the trademark management system, trademarks have today acquired the goodwill and reputation of consumers. [4]

The international status of Trademark System

To fulfill the object and aims of trademarks, and in consonance with its functions, all the countries have unequivocally accepted the eight fundamental principles of trademark protection. It has been observed that ,

it is of the highest importance that in such an important branch of commercial law as that relating to trademarks there should be uniformity as far as possible in all countries administering the same system of law.” [5]

The eight fundamental principles governing each of such countries including India, USA, and the EU are as follows:

  1. It is common knowledge that trademark registration confers upon the proprietor a monopoly right to use the concerned mark. But, since no right can be absolute some restrictions are to be imposed on the use of certain classes of words/symbols /other representations as marks.
  2. It should be maintained that the registration of a trademark should not be interfering with its bona fide use by persons who intend to use it in ordinary sense and ordinary purposes.
  3. Since property rights in a trademark are acquired by the use of superior and similar rights obtained by registration, prior users of a trademark should be protected against any monopoly right.
  4. The two main interests which are to be protected are – the interest of the public, so that the mark to be registered does not mislead the public; and the interest of the existing traders who may object if the mark is capable of being confused with existing marks. Similar observations were made by Lord Diplock [6] – “It has been held up on grounds of public policy that a trader ought not to be allowed to obtain by registration under the Trade Marks Act a monopoly in what other traders may legitimately desire to use.”
  5. Since it is also a matter of public policy, any public who wishes to object to the granting of registration to any trademark must be allowed to present his objections along with reasons. [7]
  6. It must be taken into consideration that situations may arise where a trader has been using a particular trademark for years although a similar mark is registered. Such a trader who has not registered his trademark but has been using it honestly and in good faith should not be deprived of the benefits of registration merely because he has not registered. Such registration is to be subject to certain suitable limitations and conditions.
  7. The trademark should be put to continuous use. Stopping its use will result in its eventual death as there will be no equitable or logical basis of continuing with the protection of such a trademark.
  8. A trademark is an intellectual property. The term ‘proprietor of a trademark’ is therefore used in its definition making it both assignable and transferable like any other property. However, owing to its nature, this kind of property cannot be assigned or transferred without adhering to certain conditions and limitations.

Indian Trademark Law. Comparison with US and EU

In light of the eight fundamental principles mentioned above, it is clear that be it India or the US or the EU, all three countries have made trademark laws adhering to these principles only. However, their structure and implementation in certain cases vary and this variation has been addressed hereafter.

Origin and Development

  • The European legal practice of trademark protection has always focused on prevention of mistake, deceptions and any confusion with regard to the origin of the mark. Protection of public policy is, therefore, the primary focus on common law of trademark, protecting both buyers and sellers. Statutes from as early as the thirteenth-century show evidence of the presence of medieval guilds the members of which could control the marks of their co-workers so as to avoid confusions and so that the public policy was adhered to. Manufacturers were also offered valuable methods of marketing their goods. Trademark, mainly served to indicate the origin, though the identity of the source may be in fact unknown to the public. [8]
  • The trademark laws followed by the European Community were incorporated in the Community Trade Marks (CTM) in 1996 based on the 1946 draft of the “Convention on European Trademark Law”. The European Union focuses on finding registered trademarks and does not adhere to the “first to use” rule used in India and the US.
  • The Anglo-American law on trademarks was meant only to prevent ‘palming off’, as in, preventing the passing off of goods of one producer by another producer calling it his own. The legal protection of trademark prevented producers from producing under the mark that was clearly used by someone else.
  • Later on, the law developed to allow the producer to promote his products using the mark and giving assurance to consumers as to the quality of such products. Trademark law in the US has been in constant development since 1870, the first of which was declared unconstitutional by the State Supreme Court [9] when the Congress sought to federalise the structure.
  • Then in 1905, the interstate use of trademarks was addressed which too were incomplete in essence. Today, the US trademark laws are governed by the Lanham Act, the federal trademark registration, which came into effect from 1946.

  • There was no statutory law on trademark in India before 1940 and common law was applicable to the subject as was applicable in England before their first Registration Act in 1875. The first statue introduced was the Trademarks Act, 1940, which introduced the machinery for registration and trademark protection.
  • This was replaced by Trade and Merchandise Marks Act, 1958, as the previous statute focused too much on European trademark laws which made governing very difficult in India. With the Act of 1958, it was sought to address these complex difficulties and it was deemed necessary to protect the bona fide interests of other traders from litigations by registered traders.
  • This made the Act very complex and extensive as well and a review was sought of the same to harmonize the laws in light of a rapidly globalizing trade and commerce system. India, being a party to the TRIPs Agreement sought to make laws in conformity with the Agreement.

Eventually, the Trade Marks Act, 1999, was adopted which replaced the Act of 1958. “The object of the Act was to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for prevention of the use of fraudulent marks.” [10]

  • Today, a thorough study of the Indian trademark law will show that it has deviated from the European system of focusing mainly on public policy and has adopted the US idea of “first to use” of a mark alongside the public policy concerns. Although it seems to have been adopted via the Trademarks Act, 1999, the principle was followed by the Indian Judiciary prior to the Act thus affording a wider scope to the term “first to use”, i.e., focusing on the concept of common law. Further, unlike in the US, first use is internationally accompanied by a transborder reputation of the mark and similarly, in India too, it is the determinant for ownership of trademark rights in India. [11]

 What constitutes a Mark

  • In India, according to the Section 2 (zb) of the Trade Marks Act, 1999, the definition of trademark is not just descriptive but exhaustive as well. The Indian law is very clear on what may be a trademark. There are no stipulations as to what may not be a trademark.
  • The Supreme Court in Laxmikant Patel v. Chetanbhat Shah [12] held that the definition of trademark under Indian law is very wide and means a mark which is capable of being represented graphically and is capable of distinguishing the goods or services produced and provided by various persons.
  • It, inter alia, includes a name or a word, abbreviation of a word or a name along with shape of goods, their packaging, and combination of colours.

The Section 2 (1) (m) further mentions that “mark” includes – ‘a device, brand, heading label, ticket, name, signature, word letter, numeral shape of goods, packaging or combination of colours or any combination thereof’, making the definition very descriptive and exhaustive.

Position in US

Trademark law in the US is governed by the Lanham Act. Its definition of the term ‘trademark’ is very broad in its description as to what may constitute a mark. It says in Section 1127 that a trademark,

includes any word, name, symbol, or device, or any combination thereof”.

  • This definition, unlike the Indian definition, is only exhaustive as it is not very descriptive compared to the Indian definition. This makes the definition under the Lanham Act much wider than that of the Indian law. This definition is also quite unrestrictive in nature as a symbol or device may be meant to include a wide array of things.

Position in EU

The trademark law followed by the European Union is called the Community Trade Marks (CTM). The CTM does not exclusively define a trademark or state what constitutes a trademark. As compiled from the various regulations, a trademark includes a ‘word mark’ [13]; and other marks consisting of numerals, letters, and signs [14] for which the applicant does not claim any special graphic representation or colour. [15]

What constitutes Use

  • As has been seen before, a trademark loses its lifeline when it falls into non-use for a considerable period of time. In India, the registration of a trademark may be attacked on the grounds of non-use under the Indian Trade Marks Act 1999. In such a case the mere fact that the mark is in use outside India or that the mark has an international reputation will not be sufficient to prevent it from its demise. In this aspect, the Indian Judiciary had given a wide meaning to the term ‘use’.
  • The Supreme Court held [16] that the use of a trademark may also be ‘non-physical’ but it is pertinent that such use is ‘material’, as in, meaningful. For instance, the use of trademark on invoices is deemed to be ‘use’ in connection with the goods which the mark represents. [17] However, an advertisement will not be used under the Act, unless it is used in relation with the sale of some goods, like it was held by the Supreme Court in a case relating to the use of Toshiba Corporation’s logo in an advertisement in India.

Position in EU

  • This test is very similar to the test under the Community Trade Marks (CTM) of the European Union where the use should not be some mere symbolic use. The use should be ‘genuine’ meaning the use should be actual and authentic.

Practically speaking, the definition of ‘use’ in India is much easier to work with. For instance, in the aforementioned Hardie Case [18], “the circulation of a price list for a product that was not yet available for sale” was held to be a material use of the mark in question.

  • The point being that the Indian law is much wider when it comes to defining what constitutes ‘use’. The judiciary has been very active in this aspect so as to prevent the hardships of the traders and producers.

Position in US

The US trademark law makes a difference between the actual use of a mark and the intent to use a mark. Although registration can be applied for by producers under both circumstances, i.e., actual use of a mark and bona fide intention of using a mark, the registration is not granted by the Patents Office unless the actual use of the mark is shown and the use of this mark should be shown again after the 5th and 6th year and at the time of renewals in order to maintain the registration.

Dilution

  • The doctrine of dilution is a concept peculiar to trademark law where if a trademark is well reputed and famous, the proprietor can forbid others from using the mark. The US trademark law allows such a proprietor to sue anyone who uses his famous mark whether by blurring or by tarnishment as both of these instances would give rise to a cause of action against the person who is making any such use of the mark.
  • For the doctrine of dilution to apply, it is pertinent that the mark in question be in actual use in the US and for it to be qualified as famous, it is essential that majority of the US “general consuming public” readily identify the mark in relation to its proprietor or the goods or services that the mark purports to represent.

Under the trademark law of the EU, it is not necessary for the mark in question to be ‘famous’ in similar parameters as that in the US. It is enough if a substantial amount of the public can identify with the mark relation to its proprietor or the goods or services that the mark purports to represent. This implies that the mark must be in use in the European Community as well for a cause of action in dilution to arise.

  • The doctrine of dilution had been accepted judicially in the Indian trademark law system since a long time. Today, it is distinctly provided for in the Section 29 of the Trade Marks Act, 1999, be the goods similar or otherwise.
  • Therefore, in India, globally well-known and famous trademarks have automatic protection from any diluted use by blurring or by tarnishment. Companies such as Apple, Dunhill, Ford, Honda, Hyundai, Cartier, Mercedes-Benz, and Caterpillar have successfully passed off dilution based actions against persons who have used diluted versions of identical marks or similar marks which could not be readily distinguished, whether for similar goods or dissimilar ones.

In this light, the Delhi High Court had held [19] that, “It will be a great perversion of the law relating to trademarks and designs, if a mark of the order of the ‘Mercedes Benz’… is humbled by indiscriminate colourable imitation by all or anyone.

Distinctiveness

  • Indian Law is specific on the fact that a mark should not be ‘deceptively similar’ [20] and should be capable of distinguishing the goods and services of one person from those of others. The Indian Judiciary has incorporated distinctiveness as to being a mandatory quality of a mark in a trademark. The mark must be ‘adapted to distinguish’ the goods and words like ‘good’, ‘best’ or ‘superfine’ are not so adapted. [21]
  • Further, user for one year prior to application is not sufficient to acquire distinctiveness under Section 9 to qualify for registration under the section, the mark should have acquired distinctiveness by long user. [22]

Under the US trademark law, a mark is required to be distinct under four classifications – Arbitrary and Fanciful (the distinctiveness is the strongest), Suggestive (the distinctiveness is medium), Descriptive (the distinctiveness is weak) and Generic (the distinctiveness is the weakest and so no protection is given in such cases).

Under the EU also, it must be seen to it that the mark has a distinctive character. Firstly, a mark can be used in a form where the elements differ and do not alter the distinctive character of the mark in the form in which it was primarily registered. [23] Secondly, a word mark may fall into non-use if the words or figurative elements used affects the mark’s distinctive character. Thirdly, if the mark contains a non-distinctive element, the applicant may disclaim any exclusive right to such element, separately. [24] [25] This exclusive right is also granted under the Section 17 of the Indian Trade Marks Act, 1999.

Enforcement

  • In India, infringement of trademark protection amounts to penalised offences under the Chapter XII of the Trade Marks Act, 1999. Further, administrative proceedings are available to applicants for dealing with grievances relating to registration. The Act provides for the establishment of the Intellectual Property Appellate Board (IPAB) under Section 83 of the Act where the appeals are to be preferred after proceedings have been conducted before the Registrar of Trademarks.
  • The IPAB is to be constituted of a Chairman, Vice-Chairman and a bench comprising of a technical member and a judicial member, as appointed by the Central Government. The proceeding and appeal procedures are to be conducted in accordance with the procedural laws of the country.
  • Cancellation of Registration matters may also be preferred before one of the four High Courts of Delhi, Bombay, Calcutta and Madras as these Courts have the authority to try IPR cases. If a particular suit is outside the jurisdiction of these Courts, the suit must be instituted in the relevant District Court.

The Indian Judiciary has been promoting the need for an expeditious disposal of intellectual property infringement cases.

The Supreme Court has observed [26] that “all courts and tribunals in the country hearing IP cases should proceed with such matters on a day-to-day basis and final judgment should be given, normally, within four months from the date of filing of the suit.” There have also been encouragements for alternative remedies such as mediation for determining damages along with injunctions keeping in mind that not every defendant may have a strong finance.

Administrative hearings are also a part of the US and EU trademark law system. In the EU, the Register is maintained by the EUIPO and the trademark protection is valid for 10 years (same as in India under Section 25 of the Indian Trade Marks Act, 1999).

In the US, trademark is registered with the USPTO Trademark Examiner and the entries are made in the Principal Register. Infringement cases can be tried in the Federal courts of the country while cases relating to registration are to be tried before the Trademark Trial and Appeal Board. Additionally, the US Customs has the power to prevent goods bearing infringing marks from being imported into the country.

Conclusion

Being a matter of trade and commerce, capable of derailing the entire system, it is important that the nations keep a certain parity while formulating laws on intellectual property protection, and in this case, specifically trademark protection. India, US and the EU, though a little different in their approaches to the trademark law jurisprudence have been adhering to all the important international agreements and conventions and protocols such as the TRIPs Agreement, The Paris Convention and the Madrid Protocol.

Let’s take the EU to being a single country although it is essentially a community of all the European countries. EU effectively brings an entire set of countries under its umbrella thus creating a larger harmony in the trademark statutes of the world. All three countries have incorporated the definition of trademark, use, and so on from the TRIPs Agreement into their respective legislations. Registration procedures have been orchestrated and echoed through the Paris Convention in all three legislations. India has incorporated special provisions under the Madrid Protocol in Chapter IV A of the Indian Trademarks Act, 1999 through the Amendment Act 40 of 2010. US and EU have also acted and enacted laws with strict adherence to the protocol.

References

[1] http://www.wipo.int/trademarks/en/

[2] William H. Browne, A Treatise on the Law of Trade Marks (1885), p. 14

[3] J. T. Me Carthy, Trade Marks and Unfair Competition (1973), p. 86

[4] Dr. J. K. Das, Intellectual Property Rights

[5] Shredded Wheal, (1940) 57 RPC 137 at 149

[6] Smith Kline’s Appln (1976) RPC 511 at 538

[7] Bass v. Nicholson (1932) 49 RPC 88 at 111 (HL)

[8] United States v. Steffens, 100 US 82 L. Ed. 550 (1879)

[9] United States v. Steffens, 100 US 82 L. Ed. 550 (1879)

[10] Meghraj Biscuits Industries V. Commissioner of Central Excise (2007) 3 SCC 780

[11] Shwetasree Majumder, Fidus Law Chambers, Uttar Pradesh, India; Eesheta Shah, Nabarro LLP, London, UK; Sujata Chaudhri, Cowan Liebowitz & Latman, P.C., New York, New York, USA; Mahua Roy Chowdhury, Solomon & Roy, Mumbai, India, Indian Trademark Law: A Comparison with EU and U.S. Laws, INTABulletin (The Voice of International Trademark Association), Vol. 65 No. 7, April 1, 2010

[12] AIR 2002 SC 275

[13] Article 4 of CTMR

[14] Rule 3 of CTMIR

[15] An overview of conditions for registration and scope of protection for various trade mark categories under comparison from the perspective of the CTMR (http://euipo.europa.eu/en/office/ejs/pdf/von_Kapff.pdf)

[16] Hardie Trading v. Addison Paints, 2003

[17] Vulcan v. Palanichamy, AIR 1969 Cal 43

[18] Hardie Trading v. Addison Paints, 2003

[19] Daimler Benz Aktiegesellschft v. Hybo Hindustan, 1994

[20] Section 2 (h), Trade Marks Act, 1999

[21] Dr. J. K. Das, Intellectual Property Rights

[22] Sarda Plywood Industries Ltd. V. Deputy Registrar of Trade Marks, 2007 (34) PTC 352 (IPAB)

[23] Article 15, CTMR

[24] Article 38 (2), CTMR

[25] An overview of conditions for registration and scope of protection for various trade mark categories under comparison from the perspective of the CTMR (http://euipo.europa.eu/en/office/ejs/pdf/von_Kapff.pdf)

[26] Bajaj Auto Ltd. v. TVS Motor Co. Ltd.

 

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