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Citation:
Taj Kunwar Paul; Jitheesh Thilak, Reincarnation of
Trademark Law in India, 86 J. Pat. & Trademark Off.
Soc'y 237 (2004)

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 Reincarnation of
Trademark Law in India

Taj Kunwar Paul and Jitheesh Thilak*

INTRODUCTION:

T he much-awaited new Trademark Act of 1999 is in force from

September 15, 2003. It is good news for the investors and
businessmen in India. The 1958 Act was quite primitive as compared to
the trademark laws of rest of the world. The new Act incorporates the
basic requirements laid down by the TRIPs Agreements. However, to be
in competition with the trademark regime of the developed world, there
is still much to be done. Nonetheless, the new Act is a blessing for the
globalised world.

THE NEED FOR A CHANGE:

In view of the globalization of trade & industry and the need to

encourage investment flows, there was a need to simplify & harmonize
trade mark management systems. Therefore, it has been considered
necessary to bring out a comprehensive legislation on the subject.
The Trade & Merchandise Marks Act was passed in the year 1958,
since then it has been amended several times. The Trade and
Merchandise Marks Act, 1958 has served its purpose over the last four
decades. It was felt that to keep up with the pace of development of
industry and trade, India has to amend the existing laws and bring into
effect a modified Trade mark legislation. Also, India being a signatory to
the TRIPs Agreement, it makes it mandatory for the Legislators to
update the laws in conformity with the TRIPs Guidelines. The new Act
has been prepared after a comprehensive review of the existing laws and
its comparison with the TRIPs Agreement.

*Amitabha Sen & Co., New Delhi, India

 Taj Kunwar Paul and Jitheesh Thilak JPTOS

REFORMS BROUGHT IN BY THE NEW ACT:

The new Act is in absolute conformity with the TRIPs Agreement.
According to the new Act, imitation of well-known trade marks are not
permitted to be registered. Also, the new Act enlarges the grounds for
refusal' of registration of trade marks. Consequently, the provisions for
defensive registration of trade marks are omitted. The new Act has added
much more to the concept of a trade mark in India. The Act recognizes
service marks, well-known marks, three dimensional marks, collective
marks etc. which did not find place under the old Act.
The new Act specifies factors to be considered for deferring well-
known trade marks. It has done away with the redundant provision of
maintaining a dual register and only provides for a single register with
simplified procedure for registration with equal rights. Moreover, the Act
has enlarged the scope of 'permitted use' in order to simplify the
procedure for recordal of registered users agreements. The Act also
provides for enhanced punishment for the offences relating to
registration of certification trademarks. The Act emphasizes the
prohibitory use of someone else's trade marks as a part of corporate
names of the name of business concern. However, the element of
distinctiveness remains the most significant criterion for registrability of
a mark as trademark.
SERVICE MARKS

The twenty first century has witnessed the mammoth growth of the
service sector. The basic macro economic theory which promulgates that
the primary and secondary sector (Agriculture and Industries) alone can
not help the country to develop and the prevalence of the right balance
between secondary sector and the service sector (Industries and
Services) is the key to golden path of development. With the adoption of
new economic policy in 1991, the Indian economy is in its crossroads of
development. The service sector is growing day by day with the opening
up of the Indian economy. Realising the truth that the economic laws and
the intellectual property laws has to go hand in hand for the overall
development of the nation, the framers of this new Act have decided to
give ample protection for service marks.
Prior to the enactment of the Act, there was no room for protection
of service marks. The service providers used to register the products like

I Sections 9 and 1I. Trade Marks Act, 1999

March 2004 Reincarnation of Trademark Law ...

coffee mug, T-shirts, caps, pens, stationary etc with their marks depicted
on them in order to get the registration of the mark. However, the
strategy never had the blessing of law. Examples of this could be found
by observing the business strategies of famous service industry chains
like Caf6 Coffee Day, Oberoi hotels, Jet airways etc.
The New Act provides for the registration of service marks 2, which
was not recognised by the earlier Act. Of course, service marks were
protected under the common law of passing off. However, now it has a
superior statutory protection for the same.
WELL-KNOWN MARKS
Well-known marks were not protected by the old Act. Unarguably,
the cases like whirlpooP gave better footage to well-known marks
having trans-boarder reputation. However, there was nothing in the
statute, which provided protection to well-known marks. In this branded
world, where trademarks are a part of our lifestyle, the laws and
regulations have to be straight and stringent.
The new Act puts forth a statutory protection for well-known marks.
However, the criterion for determining a well-known mark is a question
of fact and it is to be determined according to the guidelines provided
under the new Act 4 which are in terms of the TRIPs Agreement. In
addition to the express factors provided under the Act, the Registrar,
before coming to a conclusion, can also use his discretionary power to
take into account any other facts which he considers to be relevant.
The Section 11 of the current Act conclusively puts down concrete
policies relating to the well-known marks and its protection. The
guidelines under the Act also reflect the inclusion of cross border
reputation of well-known marks.
COLLECTIVE MARKS

Collective marks are made a part of the Trademarks Act. A

trademark can now be legally and validly owned by more than one
person. The provisions relating to collective marks 5 have been
introduced for the first time in India by the 1999 Act. The Act defines a
collective mark as a mark distinguishing the goods or services of an

2 Sections 2 (ii) (c) and 2 (ii) (3). Trade Marks Act, 1999
3 Whirlpool Co. v. N. R. Dongre (1995) PTC 415(Del)
4 Sections 11(6) to 11(9) Trade Marks Act, 1999
5 Sections 2 (I) (g), 61 and 68. Trade Marks Act, 1999
 Taj Kunwar Paul and Jitheesh Thilak JPTOS

association of persons, from those of others. The proprietor of the said

collective mark would be association of the members and the use of the
mark should be governed by the regulations framed by the association in
this regard.
The concept of collective mark is very useful for the persons who
are producers of particular products eg. Apple, Basmati, Tea etc. Such
producers can form the association and regulate the use of such
trademarks by the members and also ensure certain standards of
genuineness and the quality of the product. The introduction of the
registration of collective marks thereby goes back to the root principles
of intellectual property and trademarks, which is also the leading lamp
of TRIPs.
SHAPE MARKS

Shape of goods is included in the definition of mark 6 under the new

Act. It is for the first time in the trademark law that statutory recognition
has been given to shape of goods as a mark capable of registration as a
trademark. Under the old Act, shape of goods were not considered to be
the trademark. It was something extra added to the goods. A part of the
goods was never considered a trademark.
PACKAGING MARKS

Additionally, Packaging was not specifically included in the

definition of mark under the previous Act, although package 7 was
defined under the Act. Under the new Act 8 also, it is defined in terms of
the old Act only. However, it has been given the status of a mark under
the new Act 9 .
The new Act' ° regards the items like Case, box, container, covering,
folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel,
frame, capsule, cad, lid, stopper and cork as marks. However, this
definition is not exhaustive and has room for more expansion. The
various items of packaging will qualify as a trademark only if they are
capable of being represented graphically and capable of distinguishing
the goods of one person from those of others is a question of fact and
will have to be dealt in the application stage.

6 Section 2 (I) (m), Trade Marks Act, 1999

7 Section 2 (1) (I) The Trade and Merchandise Marks Act, 1958.
8 Section 2 (1) (q), Trade Marks Act, 1999.
9 Section 2 (I) (m), Trade Marks Act, 1999.
10 Section 2 (1) (q), Trade Marks Act, 1999.
March 2004 Reincarnation of Trademark Law ...

COMBINATION OF COLORS

The definition of mark under the new Act includes the combination
of colors too". A scheme of coloring applied to goods may have a
distinctive character in certain circumstances. If color, is sufficiently
distinctive, can be a very effective indication of origin.
A trademark may be limited wholly or in part to any combination of
colors. The necessity of such colors arise when the device representing a
particular color or colors and the device taken by itself without colors is
not distinctive but is capable of distinguishing when represented in
12
particular color or color combination. In such a case the Registrar is
given discretion to impose the limitation of mark to particular color or
any combination of colors as a condition to registration.
LICENSING OF UNREGISTERED TRADEMARK

Under the new Act 13 "Permitted use" means not only the use by the
third person of a registered trademark as registered users but also use by
a third person of a registered trademark by consent of the registered
proprietor in a written agreement without recording the same with the
Trademark Registry.
The introduction of this provision will make it easier to enter into
foreign technology transfer agreements. Under the prior Act, it had to be
necessarily registered with the Registrar of Trademarks. However, the
new Act recognizes the common law licenses also.

CONCLUSION:

India has reformed its IPR regime in all its IP sectors, be it Trade
marks, Patents, Geographical Indications or Plant Varieties. Under the
new trademarks Act, various new forms of trade marks are recognised.
But of course, there is still room for improvement. The Act still, does
not recognise the marks of the new era as movements marks, smell
marks, sound marks etc. However, the Act does not expressly prohibits
them also.
In spite of certain limitations, India is all set to keep up with its
trade relations with the developed world with a brand new IPR image.
The change is brought, not only in the legislation but practically, the

II Section 2 (1) (m), Trade Marks Act, 1999.

12 Section 10,Trade Marks Act, 1999.
13 Section 2 (1) (x), Trade Marks Act, 1999.
242 Taj Kunwar Paul and Jitheesh Thilak JPTOS

whole registry is changed today. The modernisation and computerisation

has done wonders to the Registry. Almost everything works on jet speed
today, if we compare it to the olden days! An Examination Report which
we used to receive after two to three years of filing the application, now
comes almost within a week of filing the trademark application. A search
report which used to take about a month to reach the applicant after
filing, can now be obtained within 10 minutes of filing the application.
The readers can well imagine the improvement. We keep our fingers
crossed and sincerely hope and pray that the Registry improves at the
same pace. If it does, ours could easily be one of the fastest Registries in
the world.
 April, 2004
Volume 86, No. 4
Pages 243-320
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