122 PP-IPRL&P

meal
detini

TA trade mark (popularly known as brand name in 1aymans language) iS a

visual symbol
word to indicate the source of the goods, a signature, name, device, label, numerals, orwhich_may be a
combination of
colours used, or services, or other articles ot commerce to distinguish it from other
similar
originating from [Link] is a distinctive sign which identifies certain goods or services as those services
goods or

or provided by a specific person or enterprise. ltS origin dates back to ancient times, when produced
craftsmen
reproduced their signatures, or "marks" on their artistic or utilitarian products. Over the these
years marks
evolved into today's system of trade mark registration and protection. The
system helps consumers identify
and purchase a product or service because its nature and
quality, indicated by its unique trade mark, meets
their needs.

A trade [Link] protection to the owner of the mark by ensuring the

authorize another to use the same in return for
exclusive right to use it or to
can be renewed
payment.) The period of protection varies, but a trade mark
indefinitely beyond the time limit on payment of additional fees. Trade mark protection is
enforced by the courts, which in most systems have the authority to block trade mark
infringement.
In a larger sense, trade marks
promote initiative and enterprise worldwide by rewarding the owners of trade
marks with recognition and financial profit. Trade mark
protection also hinders the efforts of unfair
competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or
services. The system enables people with skill and
enterprise to produce and market goods and services in
the fairest possible conditions, thereby
facilitating international trade.

Historical Perspective
The Indian Trade MarksAct, 1940 was the first statute law ontrade marks in India/ Prior to that protection of
-

trade marks was governed by Common Law. Cases concerning trade marks were decided in the light of
Section 54 of Specific Relief Act, 1877, while
registration was secured by obtaining a declaration as to
ownership under the Indian Registration Act, 1908. Some of the provisions of the first Trade Marks Act,
came into force on
1940
11.3.1940 and the rest became effective on 1.6.1942 (Gazetteof India Extraordinary,
T942. p.684)
The said enactment was amended by the Trade Marks (Amendment) Act, 1941 and later by two other
amendments. By the Trade Marks (Amendment) Act, 1943, the Trade Marks Registry, which was formerly a
part of the Patent Office, Calcutta (now Kolkata) was separated from the Patent Office to constitute a
separate Trade Marks Registry under a Registrar of Trade Marks at Bombay (now Mumbai). Thereafter, the
Act was amended by the Trade Marks (Amendment) Act, 1946, to give effect to the
reciprocal arrangement
relating to trade marks between the Government of India and the then Indian States and further amendments
introduced by Part B States Laws Act, 1951.

The Trade Marks Enquiry Committee, which was constituted by the Government of India in November 1953
recommended some changes, but since the report showed some divergence of opinion among the
members, Mr. Justice Rajagopala Ayyangar (then a Judge of the Madras High Court, who later served and
retired as a judge of the Supreme Court) was appointed by the Government of India to examine the Trade
Marks Act, 1940, with reference to the report of the Trade Marks Enquiry Committee and to recommend as
to wiat changes in the then law were necessary. On the basis of the report of Mr. Justice Ayyangar, the
Trade Marks Act, 1940 was replaced by the Trade & Merchandise Marks Act. 1958. The Trade &
Merchandise Marks Act, 1958 consolidated the provisions of the Trade Marks Act. 1940, the Indian
1Merchandise Marks Act., 1889 (which was in 'orce since .4.1889) and the provisions relating to trade marks
in the Indian Penal Code. The Trade & Merchandise Marks Act. 1958 was brought into force on 25th
 Lesson 7 Trade Marks 125

and
& Armending Act, 1960
carried out by the Repealing
1959. Certain minor amendments were
is m o r e than a century old.
er to trade marks in India
S C , 1970. Thus, the history of legal protection

monization with International Norms and

Standards
thata
when it was felt
norms and standards started,
of harmonization with International new developments
PIOCesS Marks Act, 1958 be made in view of
review of the Trade & Merchandise need to encourage
enensive and industry, the
increasing globalization of trade mark
ldding and commercial practices, harmonization of trade
and need for simplification and
lows and transfer of technology
nent
management system in the country.
modernized under the
Trade MarkS Act of 1999
n the advent of WTO, the law of trade marks is now
with
various other provisions in conformity
marks and introduces
provides for the registration ofservice
ne Trade Mark Law in developed countries.
which was passed
Lok Sabha on 19.5.1993,
a the Trade Marks Bill, 1993 was introduced in the
this context,
Bill failed to get
Committee. However, as the
h e Lok Sabha on the lines recommended by the Standing Trade Maks Bill,
A new Bill titled as
rough the Sabha, it lapsed on the dissolution of the Lok Sabha.
Rajya Houses of Parliament. The Bill
9was introduced in Rajya Sabha and eventually passed by both the
the assent of the President 30.12.1999 and became an Act.
eived on

Preamble to the Act to amend and

e Act, 1999 has been enacted as indicated in the
Trade Marks
of trade marks for
Consolidate the law relating to trade marks, to provide for registration and better protection
the earlier Trade &
and services and for the prevention of the use of fraudulent marks. It repealed
ds
Merchandise Marks Act, 1958.
in harmony wih two major
The current law of trade marks contained in the Trade Marks Act, 1999 is
rnational treaties on the subject, namely, The Paris Convention for Protection of Industriai Property and
RIPS Agreement, to both of which India is a signatory.

Under the Trade Marks Act, the Controller -General of Patents, Designs and Trade Marks under Department
Industrial Policy and Promotion. Ministry of Commerce and Industry is the Registrar of Trade Marks'. The
Gontroller 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
reunder. TMR acts as a resource and information centre and is a facilitator in matters relating to trade
narks in the country. 1The main function of the Registry is to register trade marks which quality for registration
Lder the Act and Rules.

salient features of the Trade Marks Act. 1999 inter-alia include:

VProviding for registration of trade mark for services, in addition to goods.

(bAmplification of definition of trade mark to include registration of shape of goods. packaging and
combination of colours.

( c All 42 international classification ot goods and servIces (as earler used) now applicable to India as
well.

e r Recognition of the concept of "well-known trade marksS"

(e ncreasing the period of registraliOn and renewal ot trade marks trom 7 to 10 years. to bring it in
conformity with the accepted intenational practice.
dWidening the scope ot intngement ot trade marks For instance, use of a registered trade ma:k as
 126 PP-PRL&P

trade name or as a part of a trade name or use of a mark which is identical or deceptively similar to
a registered trade mark.

(g) Creation of an "Intellectual propertly Appellate Board" for hearing appeals against orders and
decisions of the Registrar of Trade Marks for speedy disposal of cases and rectification applications
which hitherto lie before High Courts.

)Criminal remedies in case of falsification of trade marks.

Recognition of use of trade mark by even an unregisteredlicensee.

9 Expeditious examination of a trade mark application on paymentoffive timesthe applicationfee.

The rights granted under the Act, are operative in the whole of India. The new Act also simplfied the
procedure for registration of registered user, enlarged the scope of permitted use and allowed the
registration of "collective marks" owned by associations, etc. The Act empowers the Registrar to register
certification trade marks. Earlier, this power was vested with the Central Government. Provision for
enhaneed punishment for the offences relating to trade marks on the lines of Copyright Act, 1957; restriction
on sale of spurious goods; and use of someone else's trade marks as part of corporate names, or name of
business concern have also been incorporated in the new Act.

The new Act also has broadned the definition of infringement of a registered trade mark to include action
against the unauthorized use of a confusingly similar mark, not only in respect of the goods and services
covered by registration, as was previously the case, but also in respect of goods and services which are so
similar that a likelihood of deception or confusion exists.

Civil suits can be instituted by any aggrieved parson beiore a District Court, within the local limits of whose
jurisdiction such aggrieved person actually and voluntarly resides or caries on business or personally works
for gain. This new provision brings the trade mark law in line with the provisions for jurisdiction contained in
the Copyright Act, 1957.

Under the Trade Marks Act, 1999 the Government of India is empowered to make rules for implementing the
Act and regulating the trade marks Administration. Accordingly, the Government framed Trade Marks Rules
2001. These rules were subsequently amended in 2002 and came into force on the date on which the Trade
Marks Act, 1999 came into force i.e. [Link] rules have been amended again in 2010 called
Trade Marks (Amendment) Rules, 2010 which have come into force with effect from May 20, 2010

Object of Trade Marks Law

The object of trade mark law has been explained by the Supreme Court in Dau Dayal v. State of Utttar
Pradesh AlR 1959 SC 433, in the following words

The object of trade mark law is to protect the rights of persons who manufacture and sell goods with distinct
trade marks against invasion by other persons passing off their goods fraudulently and with counterfeit trade
marks as those of the manutacturers. Normally, the remedy for such infringement will be by action in Civil
Courts.

But in view of tie delay whiich is incidental to civil proceedings and the great injustice which might result if the
rights of manufacturers are not proniptly protected, tlie law gives them the right to take the matter before the
Criminal Courts. and prosecute the offenders, so as to enable them to effectively and speedil, vindicate their
rights
 Trade Marks 127
Lesson 77

in tne c a s e
the Supreme Court
property mark has been stated by
mark and a
C alstinction between a trade Ors., AIR 1972 SC
413. The Apex
Court held:
bumat Prasad Jain v. Sheojanam Prasad and
O that whereas the
former denotes the
mark is
distinction between a trade mark
and a property in them. In other
e attached, the latter denotes the ownership A
or quality of the goods to which it is
nuracture mark c o n c e r n s the proprietor.
while a property
the goods themselves, out or
OUS
rade mark concerns
remains even if part of such property goes
mark attached to the movable property of
a person
propery
his hands and ceases to be his."
marK. A
use of the
requires no evidence of prior
n e trade mark law in India is a 'first-to-file' system
that of the
basis or based on use
'proposed to be used or intent-to-use'
r a d e mark application can be filed on a and does not
acquired a broad meaning
Marks Act, 1999 has
mark. Ihe term 'use' under the Trade
India. Presence of
the trade mark on the lInternet
of the goods in
necessarily mean the physical presence considered as use
having circulation in India are also
and publication in international magazines and journals
case" [N. R. Dongre v. Whirlpool
in india. One of the first landmark judgments in
this regard is the "Whirlpool
maintain a passing off
in which the Court held that a rights holder can
Corporation, 1996 (16) PTC 583] trade marks and that the
actual
trans-border reputation of its
action against an infringer on the basis of the would sufice if the rights
actual use of the mark in India
is not mandatory. It
presence of the goods or the advertisements or other
of the mark in India through
holder has attained reputation and goodwill in respect
means.

MPORTANT DEFINITIONSIN THE TRADE MARKS ACT,1999

a d e Mark Cn 2

of words, phrases, symbols or designs

A trade mark is word, phrase, symbol or design, or combination
a
of the goods or services of one
course of trade which identifies
and distinguishes the s o u r c e
Used in the
enterprise from those of others m
a mark
As stated above, the of "trade mark"
ldefinition Section 2(11(zb) has been enlarged to mean
under services of one
and which is capable of distinguishing the goods
or
capable of being represented graphically of colours and covers
include shape of goods their packagina and combination
person from others and m1ay
both goods and services.

"Mark" includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of
of colours or any combination thereof". [Section 2(1)(m)]
goods, packaging or
combination
definition it will thus include any mark within the definition of trade mark so long as the
Being an inclusive
mark is-
and
capable of being represented graphically;
capable of distinguishing the goods or services of one person from those of others.

Service 2

The new definition of 'service' has been included for the benefit of service-oriented establishments such as
banking, communication, education, finance, insurance, chit funds, real estates, transport, storage, material
treatment, processing, supply of electrical or other energy, boarding. lodging. entertainment, amusement.
construction, repair, conveying ot rnews or information and advertising

(A service mark is the same as a trade mark except that it identities and distinguishes the source of a service
rather than a productNormaly, i nark tor guods appeais On the product or on its packaging. while a service
mark appears in advertising for the services.
 128 PP-PRL&P

The definition of "registered trade mark" under Section 2(1)0w) has been modified to mean a trade mark
which is actually on the Register and remaining in force. The renewal of registration of a trade mark should

be made for every ten years instead of seven years under the present Act.

Certification Trade Mark

"Certification trade mark' means a mark capable of distinguishing the goods or services in connection wh
which it is used in the course of trade which are certified by the proprietor of the mark in respect of orig,
material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics
from goods or services not so certified and registrable as such under Chapter IX in respect of those goods or

services in the name, as proprietor of the certification trade mark, of that person[ Section 2010e)

Collective Mark
The new definiion of 'collective mark has been provided for the benefit of members of an association ot
persons (but not partnership) and such inclusion of 'collective mark' will benefit the traditional Indian family
trade marks.
"Collective mark" under Section 2(1)Mg) of the Act means a trade mark distinguishing the goods or services of
members of an association of persons (not being a partnership within the meaning of the Indian Partnership
Act, 1932) which is the proprietor of the mark from those of others

Trade Description
description, statement or other indication, direct or
Trade description under Section 2(1)(za) means any
indirect

(9 as to the rumber, quantity, measure, gauge or weight of any goods; or

to the standard of quality of goods or services according to a classification commonly used

(i) as any
or recognized in the trade; or

behaviour of any goods, being "drug", as

(ii) as to fitness for the purpnse, strength, performance or
defined in the Prevention of Food
defined in the Drugs and Cosmetics Act, 1940 or "cod", as
Adulteration Act, 1954; or
the time at which any goods or services were made, produced
(iv) as to the place or country in which or

or provided, as the case may be; or

other indication of the identity of the manufacturer or of the person

to the name and address or
(v) as
are manufactured or services are
services of the person for whom the goods
providing the or

provided; or

producing any goods or providing services; or

(vi) as to the mode of manufacture or

composed; or
(Vil) as to the material of which any goods are

copyright, and includes

being the subject of an existing patent, privilege or
(viti) as to any goods
the custom of the trade is
as to of any mark which according to
the use
(a) any description
to be an indication of any of
the above matters
commonly taken
contained in any bill of entry or shipping
bill;
(b) the description as to any imported goods
for all or any of the said
to be nisunderstood or mistaken
(C) any other description wlhich is likely
matters
 Trade Marks 129
Lesson 7

Vell Known Trade mark L 2

well known trade
recognizes the concept of
a

to the Paris Convention and TRIPS, India

sgnatory
arks
or
in relation to any goods
"well-known trade mark",
Section of the Trade Marks Act, 1999
2(1)(zg) uses such
Tuer substantial segment of
the public which
means a mark which has become so to the would be
es, mark in relation to
other goods or services
or receives such services that the use of such those
9Ods services between
taken as indicating a connection in the course of
trade or rendering of
De or services.
or services and a person using the mark in relation
to the first-mentioned goods
us
The Act casts an
which has been designated as a well known mark, is
accorded stronger protection.
Amark, or similar trade mark.
mark against an identical
g a t i o n on the Registrar to protect a well known

rmitted Use
trade mark, as to mean the use of
defines the term "permitted use", in relation to a registered
ction 2(1) (7)
irade mark-

relation to goods or services

() by a registered user of the trade mark in
with which he is connected in the course of trade; and
(a)
and
in respect of which the trade mark
remains registered for the time being;
(b)
for which he is registered as registered user, and
(c)
registration of registered usser is
conditions or limitations to which the
(d)which complies with any
subject; or
user in relation to goods or services
(ii) by a person other than the registered proprietor and registered

with which he is connected in the

course of trade; and
(a)
remains registered for the time being: and
(b) in respect of which the trade mark
in a written agreement; and
(c) by consent of such registered proprietor

conditions or limitations to which such user is subject and to which the

(d) which complies with any
registration of the trade mark subject.
is

Section 2(1)(ze) has been modified to include "Appellate

Board" in place of
The definition of "Tribunal" under
Court" has been deleted consequent to the provision to
constitute Appellate
igh Court". The word "High
for appeals.
Board in lieu of High Court,

HE REGISTRAR OFTRADEMARKS of
Act, 1999, the Central GOvernment appoints Controller-General
Under Section 3 of the Trade Marks
Trade Marks, as the Registrar of Trade Marks for the purposes of the Trade Marks Act
:tents, Designs, and
als0 be appointed by the Central Government under Section 3(2) for the purpose of
1999. Other officers may
the Registrar as he may authorize them to discharge under his
scharging such functions of
perintendence and direction.

SINGLE REGISTER OFTRADE MARKS

to mantenance ol a single RegIster of Trade Miarks at the Head Office
Section 6 contains provisions relating
imaintenaiCe ot records in computer tloppies or diskettes or in
the Trade Marks Registry and allows the
 130 PP-IPRL&P

any other electronic form subject to the prescribed safeguards. Section 7 empowers the Registrar to classiry
goods and services according to International classification of goods and services for the Durpose O1
registration oft trade marks and to determine any question related thereto. Section 8 requires the Registrar to

publish an alphabetical index of classification of goods and services.

REGISTRATION OF TRADE MARKS

The process whereby a trade mark is entered on the register of the trade marks is referred to as registration.

Any person, claiming to be the proprietor of a trade mark used or proposed to be used by him, can appiy tor
registration of a trade mark to the Trade Mark Registry under whose jurisdicticon, the principal place ot tne
business of the applicant falls, in the prescribed manner for the registration of his trade mark. In case ot a
n
company about to be formed, anyone may apply in his name for subsequent assignment of the registration
the company's favour.
The provisions contained in Rules 25 to 31 and 33 to 36 of the Trade Marks Rules, 2002 preseribe the

procedure for application of trade marks.

Registration Procedure
The registration procedure in India is based on the 'first to file' system. It is therefore important that the rights
holder applies for the registration of its mark as soon as possible. The registration of a trade mark in India

takes about 2 to 3 years, subject to the trade mark not being opposed by a third party.
The Office of
typically
for filing of a trade mark
the Controller General of Patents, Designs and Trade Marks is the appropriate office
Ahmedabad and Kolkata. A trade
application in India. This office has branches in Mumbai, Delhi, Chennai,
mark application may be filed in any of these offices based on the territorial jurisdiction. The different steps

process in India are as follows:

that are involved in the registration
Trade Mark Search

Before making an application registration, it is prudent to make an inspection of the already registered
for
resemblance of the proposed mark to an
trade marks to ensure that registration may not be denied in view of
existing one or prohibited one.

should also be conducted in order to ascertain if there are any third

It is advisable that a common law search
the trade mark.
parties that might already be using
Mark ?
Nho May Apply for Trade
1999 any person "claiming to be the proprietor"
of the trade mark
As per Section 18 of the Trade Marks Act,
manner for registration of
or proposed to be used' by
him may make an application in the prescribed
used
his trade mark.
association persons body of or of
to include any individual, company, or
"Any person" is wide enough trust etc. [Section 3(42),
firm, whether registered or not, Government.
individuals, society, HUF, partnership
General Clauses Act, 1897]

Company
name. In the case
A company may make an registration of a trade mark in its own corporate
application for
if is
of incorporation and the nature of registration, any,
of a company incorporated outside India , the country
to be mentioned.
 Trade Marks 131
Lesson 7

Firr
When
within the firm partner.
names of all trading
parte shall make the application in the also
m of guardian representing
the minors should
the name of a minor in the partnership, the name
g
e mentioned.
to register a
of any partner in
TM-1 (i.e. application
the
a s been held that if there is omission of
name
the omission can
corresponding new application form,
n a r k tor a specification of goods or services) or in the
ue will not constitute change
Such corrections
Corrected when supported by necessary documents However,
v. Jupiter
Works, 1991 PTC 61).
Match
rOprietorship of the mark. (Vivekananda Match company will mean change in
to the date of application
y ew [Link] deletion of name of a partner subsequent

he partnership.
Trust
trustee/chairman etc.
by its managing
may be made in the name of a trust, represented
Application
Government sUch Government
owned or controlled by
central or State Government or any undertaking/company
ne other person.
also make application for registration of trade mark like any
ay
Joint Applicant
the trade mark,
to be registered as joint proprietors of
ection registration of two or more persons
24 enables connected with the joint
or services
to be used in relation to goods
where the mark is used or proposed
plicants.
if they have a place ui
a trade mark application only
trade mark law in India allows the proprietor to file
he
holder will be required to file an application
through
Should that not be the case, the rights
usiness in India. do a trade mark search, prepare, file and
The trade mark agent/attorney can
a trade mark agent/attorney.
rosecute the applications.
Trade mark Applications
iling and Prosecuting Form TM-1 with prescribed fee
trade mark may be made on
application for registration of
a
s per rule 4, Chennai
an
located at Mumbai, Delhi, Kolkata,
one of the five office
of the Trade Marks Registry
of 2500/- at the applicant resides or has his principal place
of business.
depending on the place where
Ahmedabad the
nd in India of the applicant will be that of
applicants, the principal place of business
In the case of joint business. If the applicant has no principal place
mentioned as having a place of
erson whose name is first office within whose territorial jurisdiction.
the
in India, he should file the application at that in
business in Rule 18) is located. No change
by him (as per mandatory provision
address for service in India given the jurisdiction of the
addresS for service in India shall affect
of business in India or in the
e place
principal
entered (Rule 5).
appropriate otfice
once

filed electronically throughthe website

Can be
urthermore,
trade mark applications
[Link]/etmr/).

Trade Marks Office

eview by the
rade Marks Oftice review it to ensure that it is complete in all
application has been filed, tiie the
ter the
inumber to tie applications. lf the trade mark is registered,
thereafter allots an application
respects and number.
becomes the registration
ppiication number