TRADE MARKS-A PRACTICAL POINT OF VIEW
A.A. MOHAN*
The object of this paper is to analyse the practical problems faced
by corporate executives in protecting trade marks.
1. Legal Basis:
The Trade And Merchandise Marks Act, 1958 read with Trade And
Merchandise Marks Rules, 1959 govern the registration and protection of
Trade Marks in India.
2. What is A Trade Mark?
Trade Mark is a word, invented such as "BINACA" or dictionary such
as "CLINIC", a device, a monogram, label, designs, house marks etc,
used or proposed to be used for the purpose of indicating or so as to
indicate a connection in the course of trade between the goods and the
proprietor of the mark. The proprietor need not necessarily be the
manufacturer of the goods. The identity of the proprietor need not be
disclosed in using a trade mark.
Statutory Definition:
Section 2(1) (v) - "Trade mark" means –
(i) in relation to chapter X (other than Section 81), a registered
trade mark or a mark used
in
relation
to
goods
for
the
purpose of indication or so as to indicate a connection in the
course of trade between the goods and some person having the right
as proprietor to use
the mark;
(ii) in relation to the other provisions of this Act, a mark used or
proposed to be used in
relation to goods for the purpose of
indicating or so as to indicate a connection in the
course
of
trade between the goods and some person having the right, either as
proprietor
or as registered user, to use the mark whether with
or without any indication of the identity of that person, and
includes a certification trade mark registered as such under the
provisions of chapter VIII;
* Advocate, Mohan Associates, Madras – 600 001
It is not mandatory under the Act to register a trade mark. A
proprietor can protect his mark and prevent a third party from using
.an identical or similar mark by virtue of the reputation and goodwill
enjoyed by his mark. This is what we call the right against passing off
- a common law right recognized in India. However, it is advisable to
register a trade mark as the registration confers statutory protection
of the mark. Section 31 of the Act provides that registration of a
trade mark shall be prima facie evidence of the validity thereof.
Section 28 of the Act provides that registration of a trade mark shall
give to the registered proprietor exclusive right to the use of the
mark in relation to the goods in respect of which it is registered.
3. Classification:
Before a person registers a trade mark he must determine the goods
for which the mark should be used. The goods are classified into
thirty-four
(34)
classes
in
accordance
with
the
International
Classification of goods. The Classification of goods is contained in
the Fourth Schedule of the Rules. Please note that services marks
cannot be registered in India.
Fourth Schedule of Trade Mark Rules setting out classification of
goods is enclosed marked as Annexure A.
4. Guidelines for Filing Trade Marks Applications:
a)
it should be easy to design
b)
it should be attractive in sound and appearance
c)
it should suggest the desirable qualities of the merchandise
d)
it should be possible to affix it to the goods with which it is
used
e)
it should he different from other trade marks of the same class
f)
it should be registerable and protect able.
g)
Invented Words: CRITERIA:
In NESTLE'S PRODUCTS (INDIA) Vs P. THANKARAJA (AIR 1978 Mad 337)
trade mark `lNSTEA' for tea was refused registration. The court
held that to be an invented word an expression must not only has
been newly coined, it must, standing by itself convey no sense or
meaning. It must not, in any case, give any inkling to the type of
goods to which the word relates, whether apparently or in a
disguised form. The two words lNSTANT and TEA out of which the word
is fashioned are duite ordinary words and their connotations, both
in the market as well as the kitchen, are unmistakable. They denote
the particular kind of ready-made tea that people can make out a
drink in a jiffy. "INSTEA" has the tendency to monopolise all
manufactured tea which goes by the generic description of `instant
tea or `instantaneous tea'
In Hindustan Development Corpn Ltd - Vs - Dy. Registrar of Trade
Marks (AIR 1955 CALS 19) the word `RASOI' for hydrogenated cooking
oil was refused registration as having direct reference to the
character and quality of the goods and is not eligible for
registration.
In SOLIO case Eastman Photographic Materials Co Ltd's Appen ( 1898)
15 RPC 476) Lord Halsbury observed `I can quite understand
suggesting other words - compound words or foreign words - as to
which it would be impossible to say that they were invented words,
although perhaps never seen before, or that they did not indicate
the character or quality of the goods, although as words of the
English tongue they had never been seen before. Suppose a person
were
to
attempt
to
register
as
a
single
English
Word
`CEIEAPANDGOOD' or even without taking so gross an example, using a
word so slightly differing from an ordinary and recognised word as
to be neither an invented word nor avoiding the prohibited choice
of a word, indicating character or quality . Of course, also words
which are merely misspelt but which are nevertheless in sound
ordinary English words and the use of which may tend to deceive
ought not to be remitted'.
Words such as "KODAK", "SAVONOL", "SOLIO STANWAL", "BEZET T ",
"WHISKEVR" have been held to be invented words. Words such as
"UNEEDA", "FORMALIN", "ORLWOOLA", "TRAKGRIP" (for tyres) were held
to be not invented words.
h)
Words having reference to the character or quality of goods: The
trade mark you choose
should not have a direct reference to the
character or quality of goods. A remote reference to the character
or quality is permissible. "FILERED BLUE" for boundary blue,
"HOTPOINT"
for
electrically
heated
irons,
"BIOSCOPE"
for
Cinematographic apparatus, "STANDARD" for was basins, "SHREDDED
WHEAT" for biscuits made from wheat, "AYURVEDA NIILAYAM" for
medicines, "RANGILA SABHU" for soaps were refused registration.
i)
Geographical names: Common geographical names are not registerable.
Words like
India, Bharat, Hindustan, England, America are not
registerable. The right to use in
connection with the goods the
name of the locality where they are manufactured or are
sold
is a general right to which every manufacturer is prime facie
entitled. In Imperial
Tobacco Co. of India Ltd - Vs - Registrar
of Trade Marks (AIR 1977 CAL 413) "SIMLA" was refused registration
as a geographical name.
j)
Surnames and personal names: Common surnames and personal names are
not registerable. Please note that the prohibition applies
to all common personal and surnames whether Indian or foreign.
For e.g. BLACK or SMITH may not be a common surname
in
India.
You may not find a single entry in DELHI, MADRAS, CALCUTTA
Telephone Directories. The words, however, are common surnames
appearing more than
200
times
in
the
London
Telephone
Directory. As the words are common English surnames, the Registrar
would refuse registration.
k)
Centralise all trade mark matters in one place. Your attorneys
should solely receive instructions from the executive in charge of
Trade Mark matters. Please instruct your
branch
managers
and
other departments not to finalise on the use of any word, brand or
device without the approval from the Trade Marks Executive.
5. Search:
All trade marks must be searched to determine their availability
before they are used. If a word, design or symbol is to be featured in
an advertising programme or on a label it should be searched even if
you plan to use it only for a relatively short time and do not plan to
claim any trade mark rights. The cost of a search can save your
advertising programme, considerable embarrassment and even damages in a
suit for injunction.
Channel all your search through the executive in charge of
trade marks.
A search report is not always complete. In India if you apply for
an official search in Form TM-54 it may take more then three months to
receive the search report from the Trade Marks Registry. You can
instruct your Trade Marks Attorneys to carry out an unofficial search
i.e., a report will be submitted by your attorney after going through
the records available at the Trade Marks Registry in respect of
registered trade marks and pending applications. Although under Section
125 of the Act it is mandatory for the branch offices to maintain
records the fact remains that the records in branch offices remain
incomplete, for example in the New Delhi branch registry records are
updated only up to 1973/74. Furthermore, searches encompass only
registered trade marks and pending applications. A person using an
unregistered trade mark for several years can try to prevent use or
registration of your mark.
You can minimise the risk involved by carrying out a proper search
through competent attorneys and also by carrying out a, market survey
through your field staff.
6. Filing of Applications:
If the search reports are favourable a decision can be made to
adopt the mark.
Requisites For Filing An Application:
i)
If you are registering a mark through your Trade Mark Attorneys an
authorization of Agent on Form TM-48 duly signed by a principal
officer of the applicant company should be sent to your attorneys.
Please note that Notarization or Legalization of an Authorization
of Agent is not required;
ii) Twenty five (25) representations of the trade mark in case of label
marks;
iii) The name, constitution (i.e. proprietorship, partnership, or
limited liability company) trade description (manufacturers and/or
merchants) and full address of the applicant;
iv) List of goods in respect of which the registration is sought; and
v)
If the mark has beer used in India, the date on which such use was
first made. A specimen Application as Form TM-1 is annexed marked
as Annexure `B'.
7. Prosecution of an Application:
After an application has been filed it is allotted a serial number
by the Registrar. The serial number so allotted becomes the
registration number once the mark is registered.
The Registrar on an examination of an application raises objections
such as:
(i) The mark is not distinctive on the ground that it is a surname,
personal name, geographical name, directly descriptive of the
character and quality of the goods and
(ii) The mark is identical or deceptively similar to a trade mark
already registered or pending registration in the name of a third
party.
Standard objections raised by the Registrar are:
a)
Mark is descriptive of goods such as "MOTOR" for motor cars;
b)
Mark lacks distinctiveness - 2 letter and 3 letter marks are not
registerable except upon producing evidence of use;
c) Mark is a laudatory epithet - words such as GOOD, BEST etc are not
registerable mark is a geographical name - India, Bharat,
Hindustan, London etc are not registerable whatever be the period
of user claimed
d)
Mark is a surname or personal name - if the mark is not a common
personal name or surnames it would be registered on the basis of
evidence of use
There are certain categories of names prohibited from registration
such as BALAJI, CHATRAPATI SHIVAJL.
In respect of drugs single ingredient drugs the Registrar does not
allow registration of a mark in respect of the following:
Registration of brand names for single ingredient drugs:- In
pursuance of the decision of the Government of India that all single
ingredient dosage forms of the following drugs shall be marketed only
under generic names, the central Government, in exercise of the powers
conferred upon it by sub-section (1) of section 23 of the Trade and
Merchandise Marks Act 1958, has directed that no trade mark shall be
registered in respect of the following drugs:
Analgin
Aspirin
Cholopromacine
Ferrous Sulphate
Piperazine and its salts such as adipatc, citrate, and phosphate
New single ingredient drug first introduced in India. The above
directions will not apply to drugs, which are for export only.
Once the objections have been answered to the satisfaction of the
Registrar the mark proceeds to advertisement in the Trade Marks Journal
(issued fortnightly). From the date of publication in the Journal a
period of four (4) months is available to any person to oppose the
registration by filing an opposition. If no opposition is filed within
the prescribed period (or if the opposition filed is dismissed by the
Registrar) then the mark proceeds to registration.
The Act and Rules do not make any discrimination against foreign
applicants. Foreigners and nationals not living in India may apply for
registration of trade marks but they must provide the Registry with an
address for service in India.
8. Duration and Renewal:
A trade mark is registered with effect from the date of filing of
an application and is valid for a period of seven (7) years. Thereafter
it can be renewed every seven years by payment of renewal fee.
Section 25. Duration, renewal and restoration of registration
(1) The registration of a trade mark shall be for a period of seven
years, but may be renewed from time to time in accordance with the
provisions of this section.
(2)
The Registrar shall, on application made by the registered
proprietor of a trade mark in the prescribed manner and within the
prescribed period and subject to payment of the prescribed fee,
renew the registration of the trade mark for a period of seven
years from the date of expiration of the original registration or
of the last renewal of registration, as the case may be (which date
is in this section referred to as the expiration of the last
registration.
(3)
At the prescribed time before the expiration of the last
registration of a trade mark, the Registrar shall send notice in
the prescribed manner to the registered proprietor of the date of
expiration and the conditions as to payment of fees and otherwise
upon which a renewal of registration. may be obtained, and if, at
the expiration of the time prescribed in that behalf those
conditions have not been duly complied with, the Registrar may
remove the trade mark from the register.
(4) Where a trade mark has been removed from the register of nonpayment of the prescribed fee, the registrar may, within one year
from the expiration of the last registration of the trade mark, on
receipt of an application in the prescribed from, if satisfied that
it is just so to do, restore the trade mark to the register and
renew the registration of the trade mark to the register and renew
the registration of the trade mark either generally or subject to
such condition or limitation as he thinks fit to impose, for a
period of seven years from the expiration of the last registration.
9. Oppositions:
Upon advertisement of a trademark in the Trade Marks Journal it can
be opposed by any person within a period of four (4) months from the
date of advertisement. Oppositions are normally filed on the ground
that the mark advertised is contlicting with any of your marks,
registered or not. In some cases, like drug industry, oppositions are
filed on the ground that the mark applied for is public juries and the
applicant should not be granted any monopoly. For e.g. Imperial
Chemical Industries Plc UK have successfully resisted registration of
ATENOLOL or any word closely similar thereto as ATENOLOL is a W.H.O
prescribed generic name of a drug.
Notice of opposition setting out your essential pleas such as
details of your mark/exclusive we would be jeopardised by the mark
advertised, the details of use, nature of goods involved and in case
there is any pending or past litigations between the parties in respect
of the marks involved and details thereof. In reply to the notice of
settings out his defence.
NOTE: Counter-statement ought to be filed within two months from
the date of service of the notice of opposition by the Trade Marks
Registry. It is not possible to obtain any extension of time in this
respect. If the counter-statement is not filed within the prescribed
time the application would be deemed to have been abandoned under
Section 21(2) of the Act.
Thereafter evidence is led by way of affidavits by both parties. In
exceptional cases with the leave of the Registrar, examination of
witnesses is allowed. Examination of witnesses is a rarity and in the
history of Trade Marks Registry so far there have been hardly one or
two instances of examination. Reputation and goodwill enjoyed by your
marks is normally proved by filing copies of invoices, order letters,
advertisement
clippings,
brochures
etc.,
as
annexures
to
your
affidavits.
NOTE: The `relevant date' in respect of an opposition is the date
of filing of the impugned application to be advertised in the Trade
Marks Journal. For. e.g. you would find the marks advertised in the
Trade Marks Journal dated l6th January 1991 are in respect of
applications filed in the year 1987. By the time your turn to file your
evidence arises it may be Jan/Feb 1992. Your attorney would ask you to
provide documents proving sale and advertisement of your products
bearing the mark/s concerned for a period of few years prior to 1987
(the date of filing of the impugned application) in the year 1992.
Please do not get annoyed and reply that your corporate policy does not
permit you to maintain records except for the last 2 or 3 years. The
way out of this predicament would be maintain a few invoices, order
letters and advertisements (say about 10 to 20 ) for every year in a
separate Trade Mark Folder in order to successfully prosecute any
opposition proceeding. The documentation would help you a lot in.
prosecution of infringement and passing off suits against misusers as
well as to successfully defend any rectification petition that may be
filed for the removal of your marks.
After completion of evidence by both parties, a hearing would be
appointed for final disposal of the opposition on merits. Both parties
would be given an opportunity to appear themselves or through their
attorneys before the Registrar of Trade Marks and present their case.
An appeal to the High Court can be filed against the order of the
Registrar, within three months from the date of the order.
10. Associated Trade Marks:
Section 16:
1)
Where a trade mark which is registered, or is the subject of an
application for registration, in respect of any goods is identical
with another trade mark which is registered, or is the subject of
an application for registration, in the name of the same proprietor
in respect of the same goods or description of goods or so nearly
resembles it as to be likely to deceive or cause confusion if used
by a person other than the proprietor, the Registrar may, at any
time, require that the trade marks shall be entered on the register
as associated trade marks.
2)
Where a trade mark and any part thereof are, in accordance with the
provisions of subsection (1) of section 15, registered as separate
trade marks in the name of the same proprietor, they shall be
deemed to be, and shall be registered as, associated trade marks.
3)
All trade marks registered in accordance with the provisions of
sub-section (3) of Section 15 as a series in one registration shall
be deemed to be, and shall be registered as, associated trade
marks.
4)
On application made in the prescribed manner by the registered
proprietor of two or more trade marks registered as associated
trade marks, the Registrar may dissolve the association as respects
any of them if he is satisfied that were would be no likelihood of
deception or confusion being caused if that trade mark were used by
any other person in relation to any of the goods in respect of
which it is registered, and may amend the register accordingly.
Marks which are closely similar to each other or labels which
incorporate an earlier registered trade mark are normally registered as
associated trade marks. For e.g. `BROOKE BOND' the `House Mark of
Brooke Bond India Ltd appears in all the label marks applied for by the
Company. All the label marks in view of the common feature `BROOKE
BOND' become inter associated.
With regard to assignment and transmission under Section 42 of the
Act, associated trade marks shall be assignable or transmissible only
as a whole and not separately. In other words in case you decide to
assign your trade mark which is associated with another mark, you have
to assign both the associated marks.
The advantage in associated marks is that under Section 54( 1 )
where the use of a registered trade mark is required to be proved for
any purpose, the Tribunal, may accept the use of a registered
associated mark.
11. Disclaimer:
Section 17:
If a trade mark
a)
b)
contains any part
i)
which is not the subject of a separate application by the
proprietor for registration as a trade mark; or
ii)
which is not separately registered by the proprietor as a
trade mark; or
contains any matter which is common to the trade or is otherwise of
a non-distinctive character.
The tribunal, in deciding whether the trade mark shall be entered
or shall remain on the register, may require, as a condition of its
being on the register, that the proprietor shall either disclaim any
right to the exclusive use of such part or of all or any portion of
such matter, as the case may be, to the exclusive use of which the
tribunal may consider necessary for the purpose of defining the rights
of the proprietor under the registration.
Provided that no disclaimer shall effect any rights of the
proprietor for a trade mark except such as arise out of the
registration of the trade mark in respect of which the disclaimer is
made.
Normally the elements which are of non-distinctive character or
common to the trade have to be disclaimed in a mark. For e.g. the
`device of arrow `is claimed to be the property of the Govt. of India
to denote its property marks. In case your mark contains the device of
an arrow, the registrar would call for a disclaimer of the device.
Registrar of Trade Marks Vs Ashok Chandra Rakhit Ltd ( AIR 1955 SC
558) sets out the criteria for disclaimer. In this case the work
`SHREE' was held to have numerous meanings that it would be impossible
for any trader to contend that he had an exclusive right to the use of
such a word. The Registrar imposed a disclaimer of the word `SHREE'
under Section 13 of the Act of 1940 (Sec.l7 of the 1958 Act). The order
of the registrar was set aside by the High Court. The Supreme Court
held that considering all the circumstances, the Registrar had not gone
wrong as have been made out by the High Court, and the Registrar's
order imposing the disclaimer was restored.
12. Defensive Trade Marks:
Section 47
1)
Where a trade mark consisting of any invented word has become so
well known as respects any goods in relation to which it is
registered and has been, used, that the use thereof in relation to
other goods would be likely to be taken as indicating a connection
in the course of trade between those goods and a person entitled to
use the trade mark in relation to the first mentioned goods, then
not withstanding that the proprietor registered in respect of the
first-mentioned goods does not use or propose to use the trade mark
in relation to those other goods and not withstanding anything in
Section 46, the trade mark may, on application in the prescribed
manner by such proprietor, be registered in his name in respect of
those other goods as a defensive trade mark, and while so
registered, shall not be liable to be taken off the register in
respect of those goods under the said section.
2)
The registered proprietor of the trade mark may apply for the
registration thereof in respect of any goods as a defensive trade
mark notwithstanding that it is already registered in his name in
respect of those goods otherwise than as a defensive trade mark, or
may apply for the registration there of in respect of any goods
otherwise than as a
defensive trade mark notwithstanding that
it is already registered in his name in respect of those goods as a
defensive trade mark, in lieu in each case of the existing
registration.
3)
A trade mark registered as a defensive trade mark and that trade
mark as otherwise registered in the name of the same proprietor
shall, notwithstanding that the respective registrations
are
in
respect of different goods, be deemed to be and shall be registered
as
associated trade marks.
4)
On application made in the prescribed manner to a High Court or to
the registrar by any
person aggrieved, the registration of a
trade mark as a defensive trade mark may be
cancelled on the
ground that the requirement of sub-section (1) are no longer
satisfied in respect of any goods in relation to which the trade
mark is registered in the name of the same proprietor otherwise
than as a defensive trade mark or may be cancelled as respects any
goods in relation to which it is registered as a defensive trade
mark on the ground that there is no longer any likelihood that the
use of the trade mark in relation to those goods would be taken as
giving the indication mentioned in sub-section (i).
5)
The Registrar may at any time cancel the registration as a
defensive trade mark of a trade mark of which there is no longer
any registration in the name of the same proprietor otherwise than
as a defensive trade mark.
6)
Except otherwise expressly provided in this section, the provision
of this Act shall apply in respect of the registration of trade
marks as defensive trade marks and of trade marks
so
registered as they apply in other case. A mark which is an invented
word and is very
well known that the use of the mark in respect
of any product (whether dealt with by the proprietor concerned or
not by a third party is likely to cause confusion or deception, it
can be registered as a defensive trade mark in all classes. The
applicant should produce sufficient
evidence
to
prove
the
reputation of his mark and that the trade and public exclusively
identify the mark with its goods:
The effect of defensive registration is : (a) the mark cannot be
removed on the ground of non-use under Section 46 of the Act: (b) the
mark cannot be licensed to a registered user under section 48 of the
Act. Defensive registration entitles you to take infringement action
under Section 29 of the Act as well as to rely on Section 12(1)of the
Act to oppose any identical or similar mark that may be applied for by
a third party.
13. Certification Trade Marks:
The purpose of a certification trade mark is to indicate that the
goods on which it is impressed have been certified by some competent
person in respect of some characteristic of the goods like origin,
composition, make of, manufacture or quality. The proprietor of a
certification mark does not himself sell or deal in the goods.
Manufacturers or dealers in the goods get them certified by the
proprietor of the mark and affix the mark thereon to indicate to the
public that the goods have been so certified. The regulations regarding
certification are approved by the Central Govt. Sections 60 to 70 of
the Act and Rules 126 and 133 deal with Certification Trade Marks.
14. Assignments
The proprietor of a mark, registered or not, has the power to
assign the mark to a third person for a consideration . A registered
trade mark can be assigned whether with or without goodwill of the
business concerned and in respect of either all the goods covered by
the registration or in respect of some of the goods. In case of an
assignment without goodwill, the assignee should apply to the Registrar
within nine months from the date of Deed of Assignment (including
extension of three months time) for directions with respect to
advertisement of the assignment and advertise in such form and within
such period as the Registrar prescribes.
In respect of unregistered trade marks, the assignment shall be
only with the goodwill of the business concerned unless the
unregistered mark is assigned along with a registered mark used in the
same business.
Assignment should not create multiple exclusive rights. In other
words, you cannot assign a mark to different persons conferring
exclusive right to each party to use the mark. It is, however, possible
to assign a mark with territorial limitations such as assignment to
company A for use within India and to company B for exports only.
Sections 36 to 44 of the Act and Rules 71 to 81 deal with assignment of
trade marks.
The concept which is under much discussion nowadays is ‘Conditional
Assignment
i.e.,
assignment
subject
to
certain
conditions
and
limitations. This concept has become relevant in view of the
Goverment’s stringent policy on use of foreign brand names in respect
of domestic sales. It is not uncommon to come across a foreign company
assigning its trade mark to its Indian affiliate, subject to certain
conditions say the mark shall be reassigned by the Indian Company, to
the foreign company in case the equity holding of the foreign company
in the Indian company is reduced to less than 40%. The other context
wherein conditional assignment has become relevant is in the
pharmaceutical field wherein due to Drug Price Control Order, certain
formulations can be manufactured only by Small Scale Industry unit
(SSIU), otherwise it is not commercially viable to market the drug.
Normally, the drug companies assign the mark of SSIUs with conditions.
The Act does not deal with conditional assignments. The Trade Marks
Registry is rather cautious on allowing conditional assignments. As
trade mark is property the conditions in the deed should not be
contrary to the Transfer of Property Act. For example, it would be
contrary to Section 12 of the Transfer Of Property Act to impose a
condition that the Mark shall revert back to the assignor in case of
insolvency or liquidation of the assignee. Of the conditions in the
deed are not contrary to the Transfer of Property Act, Foreign Exchange
Regulation Act and the Contract Act, the Registrar should in normal
circumstances record the assignment, subject to the conditions
involved.
15. Licencing of Trade Mark
The registered proprietor can license another person to use a trade
mark. An application to record the license agreement can be made to the
Central Government. In case the Central Government allows the
application, the licensee becomes the Registered User (RU). The
advantage in this route is that by virtue of legal fiction created
under Section 4S (2) of the Act, the use of a mark by a RU is deemed to
be made by the proprietor.
The Policy of the Central govt. is to allow RU applications where
the parties involved are Indian companies and there is no foreign
exchange out flow, under Sec. 49 of the Act, the Govt. having regard to
all the circumstances of the case and to the interests of the general
public and development of any industry trade or commerce in India may
refuse the application or accept it either absolutely or subject to
conditions. The Govt. policy or use of Foreign Brand names (FBN) is
rather strict. FBN is not defined in either the Act or the Govt.
policy. The Govt. allows use of FBN in the Fields of heavy capital
equipment, sophisticated technology, life saving drugs, pesticides and
the like. Normally the Govt. does not allow RUs in respect of FBN used
on consumer products for sale within India. In the case of new joint
ventures/collaborations in India, the approval letters contain the
standard prohibition clause that FBN shall not be used for domestic
sales. The Govt. is not averse to allowing use of FBN in respect of
exports. The rationale behind this policy being that use of
internationally well known trade marks on consumer goods distorts the
consumer preferences against other indigenous manufacturers. The Govt.
has further held the view that use of foreign trade marks hampers
growth and development of indigenous industry.
In view of the policy of the Govt. and fact that recordal of RU is
not compulsory, many companies resort to ‘common law licences’ - a
licence agreement between the parties concerned without the licence
being recorded as a RU. If the licence agreement provides for quality
control and the proprietor exercises adequate control over the quality
of the products manufactured under the licence, the distinetiveness of
the mark will not be normally diluted. The use of a mark by a common
law licence does not ensure the benefit of the proprietor.
In the case of Foreign Collaboration Approval letter consisting the
standard prohibition regarding use of FBN the preferred route is to use
the FBN in conjunction with a brand name owned by the Indian
partner/joint venture Co. Some of the leading examples of such are
“MARUTI SUZUKI, MODI XEROX, BPL SANYO, HERO HONDA, LML VESPA”
The govt has given specific approval for use of FBN in conjunction
with a brand name owned by the Indian Partner/ Joint venture company in
three cases.
1.
7 O’CLOCK EJTEK (7' O’CLOCK is the trade mark of Gillette U.K. Ltd.
and EJTEK is the trade mark of joint venture Co) in respect of
safety razors and razor blades;
2.
LEHAR PEPSI (LEHAR is the trade mark of the joint venture Co and
PEPSI is the trade mark Pepsico Inc.) in respect of soft drinks,
beverages and snack foods:
3.
TATA TIMKEN (TATA is the trade mark of the Indian Partner and
TIMKEN is the trade mark of the Timek Co. USA. in respect of
bearings.
The Govt. now seems to be more favorable to the use of Indian brand
names as prefix or the initial portion of the dual name and the FBN or
the initial portion of the dual name and the FBN forms suffix or the
latter portion. Although most of the companies in India using dual
brand names have not obtained specific written approval of the Govt. of
India except in the three specific cases mentioned above, the Govt. has
not taken any penal action against such use of dual brand names. The
statements made in the Parliament demonstrate that the Govt. would not
view such dual names’ use as being in violation of Standard Foreign
Collaboration approval clause. The Govt. has however, not yet announced
clear-cut policy on use of FBN.
16. Rectifications:
A mark can be renewed from the Registrar on the following grounds:
a)
The original registration was obtained by fraud;
b)
The registration was in contravention of the provisions of Sec. 11
of the Act - the mark is likely to cause confusion and deception
amongst the trade and public.
c)
The mark lacks distinctiveness;
d)
The mark was registered without any bonafide intention to use and
in fact there was no use by proprietor for the time being up to a
date of one month prior to the date of the application for
rectification;
e)
Continuous non-use for a period
application for rectification;
of
61
months
prior
to
the
f) The registration wrongly remains on the Register or is made without
sufficient cause;
g)
The proprietor has failed to observe a condition entered on the
Register
An application for rectification can be made only by an ‘aggrieved
person’. The expression ‘aggrieved person’ has been given a wide
interpretation to include any person involved in the same business as
the goods covered by the impugned registration or who has intention to
enter the business relating to the goods involved or who has applied
for registration of a trade mark and the impugned registration is
likely to be a hindrance to his application being accepted. In case you
issue a notice to the misuser or file a suit for infringement the
issuer becomes an aggrieved person entitled to file a rectification
petition.
In respect of a rectification petition on the ground of non-use
special circumstances prevailing in the trade preventing use of his
mark is a defense import restriction have been held to be special
circumstances preventing use of u mark. Refer Plaza chemicals vs.
Kohinoor chemicals (AIR 1973 Born 191) and Phillip Morris Belgium SA
vs. Golden Tobacco Co. Ltd. (AIR 1986 DEL 145).
Export to restricted channels such as duty free shops and bonded
warehouses have been held to be ‘use’ of the mark by the Calcutta High
Court
in
Lowenbreu
Munchen
vs.
Mohan
Meakin
Breweries
Ltd.
(unreported). The Supreme Court held in Madras Marine and Co. vs. State
of Madras (AlR 1986 SC 1760), ‘sale’ within the territory of State of
Tamil Nadu includes sale by bonded warehouses to ocean going foreign
vessels and diplomats for the purpose of Sales Tax Act. Following the
above precedents Mrs. Justice Protiba Bannerjea of Calcutta High Court
held in Express Bottlers Services Pvt. Ltd. vs. Pepsico Inc. that
exports to bonded warehouses and duty free shops amounts to ‘use’
within the meaning of the Act. An application for removal of the trade
marks PEPSI, PEPSI-COLA and PEPSICO owned by Pepsico Inc. of USA by
Express Bottlers Services Pvt. Ltd. was dismissed by the Calcutta High
Court on proof of such restricted use.
Sections 32, 46 and 56 deal with rectifications. A rectification
petition can be filed either in the Registry or High Court.
17. POWERS OF THE CENTRAL GOVT:
Under Section 23(1) of the Act the Central Govt. has the power to
direct that a mark shall not be accepted for registration. In exercise
of its power under 5.23(1) the Central Govt. has issued notification
from time to time prohibiting registration of certain terms and
expressions.
Section 49(3) provides that the Central Govt. having regard to all
circumstances of the case and to the interests of the General public
and the development of any industry, trade or commerce in India direct
the Registrar to refuse a registered user application or accept it
either absolutely or subject to conditions, restrictions or limitations
which the Govt. may deem fit and proper. The Govt. in exercise of its
powers under Section 49 refuses to allow registered user applications
in respect of use of foreign brand names of domestic sales. A
discussion on this issue is in items 15 above.
Under 5.63 of the Act the Central Govt. considers an application
for a certification trade mark in respect of competency of the
applicant, the regulations involved and whether application would be to
public advantage.
Under Section 4 of the Act the Central Govt. appoints the
controller - General of Patents, Designs and Trade Marks and also
appoints other officers. The location of head office and branch offices
of Trade Marks Registry is determined by the Central Govt. under
Section 5 of the Act.
18. OFFICES OF THE TRADE MARKS REGISTRY AND THEIR 1
JURISDICTION:
Head of the Trade marks Registry is at Bombay. Beanches are located
at Madras, Calcutta, Delhi and Ahmedabad. The territorial jurisdiction
of the offices is as follows’:
Bombay
The States of Maharashtra,
Territory of Goa.
Madhya
Pradesh
and
the
Union
Ahmedabad The States of Gujarat, Rajasthan and the Union Territory of
Daman & Diu.
Calcutta
The States of West Bengal, Orissa, Bihar, Assam and North
Eastern States, Union Territory of Andaman and Nicobar.
Delhi
The States of Punjab, Haryana, J & K, Himachal Pradesh, UP
and the Union Ten-itories of Delhi and Chandigarh.
Madras
The States of Tam.il Nadu, Kerala, Kamataka, Andhra Pradesh
and the Union Territories of Pondicherry, Laccadive, Minicoy
and Aminidive Islands.
High Court having jurisdiction under the Act shall be the High
Court within the limits of whose Appellate Jurisdiction the Trade marks
Registry referred to in each case is situate.