TRADEMARKS ACT, 1999
Abstract:
This composition centers on the Trademark. A trademark is an easily recognizable symbol. This particular article draws attention to the Trademark Act, of 1999, a clear understanding of the infringement of trademarks and remedies available for infringement of trademark are discussed. Functions of trademarks, registration of Trademark, jurisdiction and limitation to file a suit and last concluded with case laws on Trademark.
Introduction:
A trademark is one of the most essential aspects of any brand and to build a brand, you will need something more than just some amount of money. Trademarks Act, of 1999 is the primary legislation dealing with the protection of trademarks in India. It contains 3 chapters and 159 sections and is supplemented by the Trademark Rules, 2002. The Trademarks Rules, 2002. The Trademarks Act, of 1999 came into force on September 15, 2003. The Trademarks Act, 1999 is in line with the WTO recommendations and is in conformity with the TRIPS Agreement to which India is a signatory.
Meaning Trademark:
A trademark is a form of intellectual property that gives an exclusive right to the owner of the trademark. A trademark is a distinctive sign or symbol. A trademark may be a word, phrase, symbol design or combination of words, phrases, symbols or designs used in the course of trade which identifies and distinguishes the source from those of others.
Examples of trademarks: Google, Nike, Apple
Trademark symbol, TM
Service mark symbol, SM
Definition of Trademark:
Section 2(1)(zb) provides that trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from the choice of others, and include the shape of goods, their packaging and combination of colors.
Functions of trademarks:
The trademark ensures that a product is distinctive and it should not be deceptive. The trademark may be used to indicate not only that the goods are of a particular maker but are goods of that maker of a particular kind or quality. Under modern business conditions, a trademark performs the following four functions. They are:
It identifies the products and their origin
It guarantees its unchanged quality
It advertises the products
It creates an image for the product
Registration of trademark:
Sections 18 to 23 deal with registration of trademark:
Section 18:
Application for registration to Registrar, a single application for registration in different categories, fee payable for each category.
If the Registrar refuses the application, then the reason for rejection of the application must be stated.
Section 19:
The registrar may withdraw the application after it has been accepted but before the trademark is registered if he has reasons for it after hearing the applicant.
Section 20:
Advertisement of application
Section 21:
Opposition to registration within three months of the date of advertisement
Section 22:
Correction and amendment of application
Section 23:
Registration
Section 25: Terms of trademark
The term of registration of a trademark shall be for ten years. Before the expiration of the period of registration, the Registrar sends a notice of expiration in the prescribed manner to the registered proprietor of the Trademark. The registered proprietor may apply in the prescribed manner for the renewal of the period of registration. The period of ten years for which a trademark is registered may be renewed from time to time for another period of ten years. An application for the renewal of the registration trademark is made by the registered proprietor of the trademark.
Section 10 limitation as to color:
A trademark may be limited wholly or partly to any combination of colors, if then the trademark shall be deemed to be registered for all colors.
For example: Cadbury’s purple colour
Section 11 Grounds for Refusal of Registration:
No registration is made if identity or similarity to an earlier trademark or goods and services offered by an earlier trademark or if an earlier trademark is a well-known trademark and the new trademark will benefit from it.
If the owner of earlier trademark consent is granted then a new trademark can be registered.
M/S Hitachi Ltd vs. Ajay Agarwal:
Hitachi is already a registered trademark and the defendant wanted to register HITASHI which was very similar to HITACHI so it was refused.
Section 12 -A similar trademark is given in case of honest concurrent use
Section 13- No registration of name of chemical elements or compounds which are declared by WHO as an international non-proprietary name or which is similar to such name.
Section 14 using a person’s name either living or dead in the last 20 years will require permission of that person or his legal representatives.
Prima facie evidence of validity:
Section 11 deals with prima facie evidence of validity:
Registration is prima facie evidence of ownership of the trademark, if you do not register them also you can prove your right over it but registration makes it easier.
Infringement of Trademark:
Section 27 to 29 deals with infringement of trademark:
Trademark infringement is a violation of the exclusive rights attaching to a trademark without the authorization of the trademark owner or any licensee. Infringement occurs when one party, the infringer, uses a trademark that is identical or confusingly similar to a trademark owned by another party. Remedies against Infringement:
Administrative remedies, civil remedies, Criminal remedies are available for infringement of trademark.
Administrative remedies:
An aggrieved party can oppose the infringement before the Registrar. Opposition can only be done after the publication of the trademark and within 3 months of the date time. Similarly, an aggrieved party can also apply for cancellation before the register as well as the Appellate Board on the grounds of non-use for 5 years and 3 months and proof of intention on part of intention on part of the registered owner not to use the trademark at the filing date and non-use till the cancellation petition.
Civil Remedies:
Under common laws, the owner of a trademark, whether registered or unregistered, may sue for passing off in respect of any trademark used by the Defendant that’s identical with or deceptively similar to his trademark. The registered owner also has the remedy to take infringement action. Injunction
Damages
Anton Pillar Order
Rendition of accounts
Injunction:
An injunction is an order directing a party to an actor to refrain from doing an act.
Damages:
If any damages occur due to the infringement of trademarks are recovered. Generally, damages are classified as compensatory and punitive damages.
Accounts of Profit:
The trademark act also provides for a rendition of accounts i.e. compensation to the plaintiff which is original to the defendant’s gains from the infringement act or passing off. Plaintiff’s loss isn’t equal to the defendant’s gain from the infringing act.
Criminal Remedies:
Section 63- 69 deals with the criminal remedies. Besides civil remedies, the proprietor of the trademark as well as licensed users, also have the option to initiate criminal prosecution against the infringers etc. The following acts have been recognized as offences, against which a criminal complaint can be registered
Falsifying a trademark
Falsely applying a trademark
Making or possessing instruments for falsifying a trademark
Applying false trade description
Applying false indication of country of origin
Selling goods or possessing for sale goods falsely marked
Falsely representing a trademark as registered
Improperly describing a place of business connected to the Trademark office
Falsification of entries in the register.
Punishment:
For the first time, the offense is committed imprisonment for a period not lower than six months which may extend to three years and of fine not lower thanRs. 50,000 that may extend toRs. 2 lakhs.
For the subsequent time imprisonment for a period not lower than one year that may extend to three years and of fine not lower thanRs. 1 lakhs that may extend toRs. 3 lakhs.
Passing off:
Section 27 of the Act provides that no person shall be entitled to institute any proceedings to prevent, or to recover damages for, the violation of an unregistered trademark. The infringement of unregistered trademarks is called passing off.
Elements of passing off
Reputation
Misrepresentation
Damages
Remedies for passing off :
The remedies in a passing off action include an injunction, damages or an account of profits and delivery-up of the offending article for erasure or destruction. Before filing suit for damages against the infringer it’s necessary to examine whether the passing off action could also be included in the body of the claim, particularly in a case where the trademark isn’t registered. Jurisdiction:
Section 134 deals with jurisdiction. A plaintiff file a suit for trademark infringement in a district court within the jurisdiction.
Where the plaintiff is actually and freely residing or carrying on business
Where the defendant resides carrying business or
Where the cause of action arose
Limitation Period:
The limitation period to file a suit is three years.
Case laws :
TOYOTA JIDOSHA KABUSHIKI KAISAV. M/ S PRIUS AUTO INDUSTRIESLTD.
PATEL FIELD MARSHAL AGENCIES LTD. VP.M. DIESELS LTD
COCA COLA VS BISLERI
The court set up in favor of the complainant since the defendant had been using the” MAAZA” trademark on the incorrect assumption that the agreement it had signed with the complainant was limited to India and that exporting the goods would not constitute a violation of any rights or laws.
STARBUCKS COFFEE V SARDARBUKSH COFFEE
The Court gave the decision in the complainant’s favor. It instructs the respondent to change the name of the business from “Sardarbuksh Coffee &Co.” to “Sardarji- Bakhsh Coffee &Co.”. The order was executed upon twenty of the defendant’s stores in total, all of which hadn’t been opened as of also. The Court allowed the use of the name “Sardarbuksh Coffee &Co.” for two stores that were formerly operating. On the 27th of September, 2018, the defendant conceded and changed all of its outlets’ names to” Sardarji- Bakhsh Coffee &Co.” It was also held that if a third party were to use the term “Bakhsh”, the defendant would be granted the right to file a suit against such violation. The suit at hand was therefore settled.
Conclusion:
At last, concluded that a Trademark is a symbol that represents the goods or services that make it unique and different from other products or services in the market. A trademark protects the proprietor of the mark by assuring the exclusive right to use it. Structure and maintaining a brand value isn’t possible without having a trademark.
Author: Nagasreelekha Yelliboina, a student of Sri Padmavati Mahila Visvavidyalayam, Tirupati