I.INTRODUCTION
I.1. INTRODUCTION
This research work on the subject “Law relating to Trademarks in India –
A study with Special reference to Passing Off and Infringement of Trademarks” is
of immense importance in view of the several infirmities and draw backs in
implementation of the existing laws. Out of all the Intellectual Property Rights,
the trade mark is the only property which can be retained permanently as long as it
is renewed. World is constantly changing, apart from the physical phenomenon
this change is attributed to various inventions and developments in trade and
commerce. These inventions, advertising materials, books etc., are part of the
human minds backed by the intellectual labour. The products of the great minds
are protected throughout the world by legislations.
The necessity and amendments to the existing Trade Mark Act has arisen
due to globalization and in order to curtail the unfair trade practices. Companies
spent enormous amount of money for the promotion of their goods and when the
particular products and brand names become famous, the undersized businessmen
and general public try to imitate the same to encash the goodwill and reputation
established by the reputed companies. Therefore, the brand name becomes famous
and more often the product itself becomes synonym for the brand name.
For instance “XEROX” which has become synonym for the photocopy and
also some of the similar Indian names and famous brands like “DALDA” have
become synonyms for the similar range of products. As India is the signatory to
TRIPs agreement, it is bound to incorporate the international law and its
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covenants into the local laws. In view of that the Trade and Merchandise Act,
1958 is transformed to a new act named as the Trademarks Act, 1999. The
question of passing off and infringement arises when someone is imitating the
brand name of the true owner in order to encash the goodwill and reputation of the
said brand name.
Historically speaking, the Trademarks Registration Act of 1875 (UK) has
created a legal register of marks and the first Trademarks Registry in the world,
which opened in London in 1876. The Trademark law was consolidated in 1883
and the Trademarks Act of 1905 gave the first statutory definition of a
‘trademark’. In 1938 it saw further legal changes, which had major effect on trade
mark registration.
As regards to India, the Parliament has enacted the Trademarks Act 1999
by substituting the existing Trade and Merchandise Act 1958 and the Government
has framed the Trademarks Rules 2002 (with effect from September 15, 2003) to
ensure adequate protection for domestic and international brand owners, in
compliance with the TRIPs agreement.
I.2. S IGNIFICANCE OF THE STUDY
The Trademark is an intangible asset and its impact on the market is
immense. Once brand/Trademark becomes famous or well known it creates
revenue to the trader. The Trademark/Service mark can be assigned and licensed
to the prospective user for good consideration. The quality of the product and
brand value plays vital role in the promotion of goods and the business. The
valuation of the brand significantly creates the status to the trader in the market.
Not only the financial standing but it creates the social status in the market. In the
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recent past the value of the brand of APPLE (mobile phone) is stated as 100
billion dollars. Any imitation or copying of the well known trademarks by way of
passing off and infringement results in costly litigation. A well chosen and well
publicized trademark often has value far beyond the physical assets of a company.
I.3. SCOPE OF THE STUDY
Intellectual property right is like any other tangible property. Accordingly
the trade mark is a matter of asset like any other Intellectual Property Rights
which can be possessed, enjoyed and transferred like any other property. The
marking of goods for various purposes, including identifying them from those of
other traders, dates back to ancient times. In the same way, the existence of rules
governing the use of such marks goes back to the medieval craft guilds. In 19th
century the people began to think of marks, which had become distinctive of
trader’s goods and so attracted goodwill as a type of property. The fruits of the
same have sustained the intellectual labour of inventors and have created wealth
directly or indirectly among the nations for the purpose of creating further wealth
in India. We have codified and enacted laws on all Intellectual Property Rights
including trademarks. On par with international laws and conventions and in view
of the TRIPS Agreement domestic & international brand owners are protected.
Even if trade mark is not registered in India, a foreign trade mark owner can
initiate a passing off action against the protection of infringer. The Trademarks
Act provides statutory protection to all the trademarks including the well known
trademarks, which were protected under the common law.
In view of the said developments there is much litigation that is pending
before the civil courts and High courts apart from oppositions to the trademarks
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before the Trade Mark Registry. The question arises whether adjudicatory and
quasi-judiciary bodies have geared up to deal with the cases related to trade mark.
It is a common phenomenon that law has to follow the technological
developments in the society. In that direction there should be updating about the
new developments and orientation among the adjudicatory mechanism and the
need has arisen to awake the general public with regard to the value and
importance of Intellectual Property Rights. Since the subject proposed to study is
related to Intellectual Property Rights and more particularly to Trademarks, the
scope of the study will be restricted to the remedial measures to be taken in case
of infringement and passing off actions. The rest of the discussion will be
incidental to the above area.
I.4. REVIEW OF LITERATURE
The researcher has extensively used the books available on intellectual
property law especially books concerning the law and practise of trademark law.
To analyse the doctrinal aspects of the trademarks Halsburys Laws of India and
Halsburys Laws of England are used. To understand the jurisprudence behind the
current trademark law, international conventions and agreements such as the
Trademark Law Treaty, Agreement on Trade Related Aspects of Intellectual
Property rights etc; have been referred.
To analyse the procedural aspects of registration of trademarks and of
related issues Draft Manual of Trademarks Practice and Procedure published by
the Controller General of Patents Designs and Trademarks has been used. To
understand the concept of infringement and passing off, the books used by
researcher interalia include The Trade And Merchandise Marks Act 1958 by K S
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Shavaksha, Law Of Trademarks And Geographical Indications by K.C.Kailasam
and Ramu Vedaraman, Law Of Trademarks And Tradenames by Kerly,
Intellectual Property Rights by Dr. J.K.Das, Law of Trademarks and Passing off
by P.Narayanan, Intellectual Property Rights in India by V.K.Ahuja.
The researcher has extensively referred to the online publications of World
Intellectual Property Organisation. Mechanisms and procedures of Alternate
dispute resolution including online dispute resolution are understood by referring
to the publications made by WIPO and ICANN.
To understand current approach of judiciary towards various aspects of
trademarks case law reporters such as All India Reporter, Supreme Court Cases,
Patents and Trademarks cases have been used. The researcher has also considered
views put forth by various scholars in their articles. Such articles are appropriately
cited at various places.
I.5. OBJECTIVES OF THE STUDY
The present study is aimed to understand the practical implications in
deciding the matters by the courts in passing off and infringement of Trademarks
as judicial precedents are still to follow. The products of great minds are protected
throughout the world by legislations as in the case of real estates which are taken
to be property in the common parlance. As the trademarks are an intangible
property having all the parameters of tangible property, it has to be protected by
proper legislation. It is the fact that the creating the brand name is one aspect and
protection of the said brand name/trade mark from the imitators who falsify the
goods as that of the original owners is an another aspect. Even though legislature
has taken all the precautions to incorporate the international implications in the
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municipal law by repealing the Trade & Merchandise Act, 1958, and thus the
Trademarks Act, 1999 is framed and it has come into force from 15-09-2003. But
there are lot of loopholes and lacunae in the new act. The true owner and
proprietor of the trade mark has got three remedies to protect the Intellectual
Property Rights;
1)
By opposing of the trademark at the concerned Trade Mark Registry,
when the trade mark is published in Trade Mark Journal,
2)
By Filing of suit for injunction for passing off/infringement of trade
mark and also by way of claiming of damages before the civil court;
and
3)
By prosecuting the violators of for infringing the rights over the
registered Trademark under Trade Mark law for award of
punishment.
Since the present trend shows that the maximum of IPR litigation in terms
of quantity is relating to trademarks; and more particularly to the passing-off and
infringement actions. The present topic for the doctoral study is carried out.
1)
To trace the origin of trade mark law in the world with special
reference to India.
2)
To analyze the Trade Mark legislation in India from the British days
till the latest law of 1999.
3)
To compare and contrast the Indian legislation with that of other
countries, for the purpose of assessing the pros and cons of Indian law.
4)
To make an in-depth study of the concepts of passing-off and
infringement of Trademarks.
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5)
To assess the advantages and disadvantages of both the actions from
the view-point of the owners and users of Trademarks.
6)
To analyze the global trends and developments relating to the passingoff and infringement actions, particularly in the light of the initiatives
taken by WIPO and other bodies.
7)
To analyze the effect of Madrid protocol
8)
To analyze the latest judicial trends relating to the above; and
9)
To find and suggest practical solutions to curb the theft of Intellectual
Property in Trade Mark s to the advantage of the owners and users of
Trademarks.
I.6. HYPOTHESES
Adoption of TRIPS agreement and consequent scrupulous obedience to the
treaty by enacting Trademarks act 1999 has enlarged the umbrella of protection
accorded to trademarks. However, experience has shown that it is not devoid of
challenges. For the purpose of the present research study the following hypotheses
have been formulated and tested keeping in view objectives of the study:
1)
The passing-off and infringement of trademarks are global
phenomenon and most domestic jurisdictions have been experiencing
the consequences thereof.
2)
The passing-off and infringement of trademarks result not only in
causing loss to the affected trade mark owner/user but they also result
in causing immeasurable loss to the consumers.
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3)
The laws relating to protection of trademarks in India
have been
proved to be inadequate in effectively preventing the large scale theft
of Trademarks by unscrupulous elements.
4)
The enforcement of rights relating to well known trademarks has
implications on the domestic market and some multinational
companies are indulging in litigation in India to harass the domestic
companies under the pretext of infringement of well-known
trademarks.
I.7. METHODOLOGY ADOPTED
This research work is carried out with the following objectives.

Analysis of the provisions of law and its abuse and to expound principles
of law regarding the validity of the Act.

Comparative study between the old and new Act and its implications.
Keeping the above hypothesis and objectives, the scholar has adopted the both
doctrinal method and the secondary survey.

Historical method is followed to trace the origin, history and evolution of
Trade Mark law in India and elsewhere.

Similarly, the changes as said in the local system and traditions of the
countries particularly where there has been change in the nature and
character of business methods is studied by following historical and
analytical methods of research.

The research is carried out with the object of expounding the principles of
law and tracing the origin and development of the rules.
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
The researcher referred both the primary and secondary data. The
amendment to the existing Act, judicial precedents by the courts are
considered as primary data. The information gather from the books by
different authors is taken as secondary data. Various articles from websites
which deals with Trademark laws have also been referred.
I.8. SCHEME OF CHAPTERISATION
The present research work is divided in to 9 chapters. The first chapter
contains the significance of the study, scope of the study, objectives of the study,
hypotheses, methodology adopted and scheme of chapterisation.
The second chapter contains the scope of the study in view of the
development across globe due to liberalization and globalization and its impact on
the trade describes the aim attributes for the reasons why research is conducted on
passing off and infringement of trade mark. It also describes the hypothesis of
research work undertaken, the aims and objectives of the research and the method
adopted for the purpose. Trademark law in different countries is discussed.
Economic importance and functions of trademark are discussed elaborately.
The third chapter deals with international treaties concerning trademarks.
India being a signatory of TRIPS Agreement has an obligation to incorporate the
international laws and conventions into local laws. In view of that Trade &
Merchandise Act, 1958 is transformed to Trademarks Act, 1999. Now the
registration and protection of the trademarks across the globe has to be made as
per the rules and regulations of each country It is also discussed whether all
Intellectual Property Laws of India are in parity with international laws,
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conventions and those of other countries. Different conventions including the
Madrid protocol is discussed.
The fourth chapter deals with protection of trademarks. The rights over the
trade mark were protected in India under Trade & Merchandize Act, 1958. In
view of the developments internationally and because of conventions to compete
at par with world members countries, the law is changed to Trademarks Act,
1999. This chapter deals with the analysis of the Trade Mark law in India. In view
of the several additions like service marks, penal provisions, powers to Registrar
and well known trademarks etc., the comparative study and its implications and
Comparative study of Trade and Merchandise Act 1958 and Trademarks Act 1999
is discussed. New concept of Domain name, Sound marks and smell marks are
discussed.
The fifith chapter deals with the registration process of trademarks, powers
to the registrar, functioning of the registry, delegation of powers as per the
jurisdiction, zone wise establishment of trade mark registry, establishment of
appellate tribunal for adjudication of grievances on the orders passed by the
Registrar of Trademarks. The trademarks which cannot be registered are also
discussed.
The sixth chapter deals with infringement and passing off of trademarks.
By falsification of the goods and selling the same in the market by creating an
impression that the mark is similar to that of true owner is the action of passing
off and the similar activity constitutes infringement if the trade mark is registered.
Under the civil remedy an injunction can be sought, damages can be claimed and
rendition of accounts can be sought from the court. Under criminal remedy by the
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order of court the search and seizure of the infringing material and award of
punishments can be sought. More importantly getting the information with regard
to the infringement and passing off has become the order of the day. Piracy can
be traced out by the own marketing network of the companies and by an
engagement of detective agencies. Concept, legal remedies and differences
between passing off and infringement are discussed in this chapter. Jurisdiction
for filing of the cases and elements of passing off action are discussed elaborately.
The seventh chapter is included keeping in view the development of new
mechanisms to resolve intellectual property disputes. Alternate dispute resolution
is gradually emerging as the best means to resolve complex intellectual property
disputes. WIPO is also actively 11lobalization the owners of intellectual property
of the advantages of resolving disputes through non conventional means of
arbitration, mediation etc. Internet revolution and rampant connectivity are
facilitating people to adopt online dispute resolution mechanisms.
The eighth chapter deals with lacunae in current trademark law and
discusses the possible recourses to rectify them. In India the judicial process is
time consuming process due to the pendency of the litigations in the courts and to
understand the concept, the awareness among the general public and police
authorities for execution of the orders is very much essential for effective
implementation of the legal provisions under the trade mark act. It is necessary to
know the judiciary in India before we go in depth. Indian Judicial system is a
creation of the constitution of India and absolutely independent from executive
and legislation. All central & state governments and their functionaries are duty
bound to obey and implement the orders of the courts in India and any non
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compliance of the orders of the courts are taken very seriously which may result
in the contempt of the court leading to fine and or imprisonment.
With that concept the practical approach to the litigations, lacunae in the law
and suggestions are discussed. The discretionary powers of the registrar to decide
the similarity between the trademarks and also to decide the factor of well known
trade mark apart from the powers conferred under section 9 and 11 of Trade Mark
Act, 1999 will lead to the pandemonium if the powers are not properly utilized.
Means and execution of the court orders is an important factor to give the effect of
court orders. Entire Government machinery including police is under an
obligation to follow and implement the orders of the court. Apart from the regular
injunction orders from the courts means of execution are by way of appointment
of local commissioner and receivers etc., are discussed. The non supply of
documents under Rule 54 and its implications and delay in justice, Abuse of
Section 134 of Trademarks Act 1999, concept of filing of an application with
proposed user status are discussed and the suggestions are given.
In the ninth chapter findings, solutions and necessary suggestions with
regard to passing off and infringement of trademarks is discussed.
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