By Ghanavi Umesh
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According to the Trademarks Act of 1999, a trademark is any mark or symbol capable of being represented graphically and capable of distinguishing the goods and services of one person or organization from the goods and services of those of others and may include shape of goods, their packaging and colour combination. One can easily spot a trademark if any brand name or logo has TM or an encircled R in superscript (TM or ®). The former stands for an unregistered trademark, while the latter stands for a registered one. However, it is to be noted that trademarks need not necessarily have either of these symbols in superscript.
Trademark law finds
its origins in English common law. It was a well-established principle that no
one could unlawfully acquire another’s property. Similarly, it was derived from
this principle that no one must be allowed to appropriate another’s goodwill.
English courts went on to uphold this principle in several cases. The British
Trade Marks Act was first enacted in 1875 and was substituted by newer laws
thrice later. India’s first law on the Trade Marks Act was enacted in 1940
modelled after The British act of 1938, which provided for registration and
protection from infringement of trademarks. The current operative law in India
is the Trade Marks Act 1999.
This act allows for
trademarks in both goods and services. There are 34 classes of goods and 7
classes of services. There is also the provision of collective marks which is
given to associations distinguishing the goods and services of its members and
certification marks given to persons or firms competent to certify good or
services about their origin, quality, etc. The difference between all the above
categories can be understood better with examples. Trademarks like Amul,
Mercedes Benz and Whirlpool are applicable to goods. Trademarks like those of
Facebook, Air India come under services. Associations like the Lions Club or
ICSI have collective marks and ISI or BIS are certification marks.
A trademark in India
has to be capable of graphical representation – this includes the logo, a
symbol, the colour combination of the product, and the packaging or the shape
of the goods themselves – anything which sets the product or service apart from
other goods or services of a similar kind. In some countries other trademarks
such as sounds (like ad jingles) and fragrances can also be registered as
trademarks. In India, the ownership of a trademark is on a first-to-use basis
unlike patents which have a first-to-file basis. This means that unregistered
trademarks are entitled to legal protection as well.
Possessing a
trademark gives its owner a monopoly right over that name or symbol. Only the
owner has an exclusive right of using the trademark or can authorize another
person or firm to use the trademark. If a person or an organization uses
another’s trademark without authorization by the owner, it results in a
trademark infringement. However, infringing on a trademark is not limited to
this. A trademark right is infringed upon when it is used in a similar good but
in a different class as the trademark has been registered. Further, for a
trademark infringement, the person appropriating the mark need not use the
exact mark of the well-known brand. For example, if a person starts selling beverages
or mineral water under the name Pedsi styled in the same way as the Pepsi logo,
it will amount to a trademark infringement. Even though Pepsi does not sell
mineral water under that name, it still counts as an infringement since water
and beverages are similar goods.
Using a trademark
unlawfully for a dissimilar good or service amounts to a dilution of the
trademark and hence results in an infringement. This is because such an act
might lead to confusion regarding the original brand among the consumers. Using
a trademark in the packaging material or advertisement without authorization is
also unlawful.
An important feature
of trademark law in India is that it prevents persons from using the trademarks
of foreign origin even if such a trademark is not in use in India. A mere
exposure of the consumers in India to such trademarks through advertisements or
other media is enough to prevent such usage. This is to prevent firms from
appropriating the goodwill of such foreign firms and deceive the consumers in
India. For instance, if a person starts selling ice-cream under the name of Ben
& Jerry’s which doesn’t sell its products in India at present but is
nevertheless known to people due to its popularity can be held liable for
trademark infringement. Further, a trademark need not be registered to attract
an infringement. An unregistered trademark which is well-known is still
protected under the law against unauthorised use by other parties.
A person who has
committed the infringement of a trademark is liable to be imprisoned for a
period of at least six months and not more than 3 years along with a fine of at
least fifty thousand rupees to a maximum of two lakh rupees. However, if a
person shows that he or she took all measure to ensure that the trademark was
not infringed or his or her act was an honest mistake, then such person can be
absolved from punishment. Further, if any person wrongly represents an
unregistered trademark as registered, then he or she can be imprisoned for a
period of up to 3 years, or be fined or both. Filing a civil suit along with a
criminal one for trademark infringement ensures that the offender does not sell
the counterfeit good when the matter is sub
judice and allows for claiming compensation for the same.
Part 2 of this article will explain the
procedural and practical aspects of Trademark law in India.
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Ghanavi Umesh is a 2nd year student at National Law University Delhi. She has a keen interest in Constitutional law, Environmental law and Intellectual Property law. She is also interested in Economics and Philosophy. One can either find her reading something or bingeing on a TV show in her leisure time. She also loves painting occasionally.
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