Existing Registered Trademark – Trademark Registration in Tirupur

Existing registered trade mark –  Trademark Registration in Tirupur

This sub-section defines the expression “existing registered trademark” to mean a trademark registered under the Trade and Merchandise Marks Act 1958 immediately before the commencement of the new Act.

Definitions in the Rules

The Trade Marks Rules, 2017, which came into force on 6th March, 2017 have replaced the earlier Trade Marks Rules, 2002, are framed under the Trade Marks Act 1999 (47 of 1999). Rule 2(1) contains definitions of various expressions in clauses (a) to (x) thereof. It is made clear that all other words and expressions used, but not defined in the rules but defined in the Act or in the Geographical Indications of Goods (Registration and Protection) Act, 1999, the Copyright Act, 1957 shall have the meanings respectively assigned to them in those Acts. Some of the earlier definitions given in Trade Marks Rules, 2002 have been amplified.

One important provision made in the Act is to facilitate the filling of a single application for registration of the same trade mark in respect of goods or services falling in different classes. However, the law makes it possible to honor a request from the applicant for the division of the application in the course of examination or opposition procedure, by which the goods and services of the initial application are distributed among the divided applications, with the latter retaining the filing date of the initial application and also the benefit of the right of priority, if any. This is intended to allow registration procedure to go ahead for those goods or services that do not give rise to conflicts with national law or third party rights.

“Graphical representation” means the representation of a trademark for goods or services represented or capable of being represented in paper form and includes representation in digitized form Rule 2(1)(k) of the 2017 Rules. The purpose of graphic representation has been explained thus: “it is essential for traders to be able to identify with clarity what the registered trade mark is. The first question that arises when infringement is in issue is whether or not the alleged infringing mark is identical to the trade mark registered. If it is, and is used in relation to the same goods, the trade mark has an absolute monopoly. Where, however, the mark is not identical but merely similar, the monopoly is restricted to uses, which create the necessary likelihood of confusion on the part of the public.

This is the fundamental aspect of the law and it is for this reason that the graphical representation, being the means by which the trademark is defined, must be adequate to enable the public to determine precisely what the sign is that is the subject of registration.

The degree of precision with which the sign is represented must be sufficient to permit full and effective implementation of the provisions of the Act relating to absolute unregistrability (section 9 of TM Act, 1999), relative unregistrability (section 11), infringement (section 29) and public inspection of the Register (section 148). These provisions call for a fixed point of reference: a graphic representation in which the identity of the relevant sign is clearly and unambiguously recorded. There may be more than one way of representing a sign graphically with that degree of precision. It also seems clear that a sign (such as a sound or an aroma) can be taken to have been represented graphically with the required degree of precision when figuratively represented, even though interpretation or analysis may then be required in order to detect or demonstrate use of it. However, the scheme of rights and liabilities established by the Act cannot be implemented fully and effectively in relation to a graphic representation which fails to disclose the identity of the sign it purports to represent or to do so clearly and unambiguously. Such representations are, in my view, incapable of fulfilling the legal and administrative requirements of the Act and therefore cannot be accepted.

“Principal place of business in India” means the relevant place of business in India as specified in rule 3 – Rule 2(1)(p) of the 2017 Rules.  “Specification” means the designation of goods or services in respect of which a trade mark or a registered user of a trade mark is registered or proposed registered – Rule 2(1)(w) of the 2017 Rules.

Interpretation of Statute

The object of legislation must be ascertained from within the four corners of the Act. It is not open to the Court to speculate as to what the legislature probably meant and then do violence to the language of the enactment in order to give effect to the presumed intention. In construing an Act of Parliament, it is always open to court to consider what the object of the legislature is and if it finds that the object can only be effected by giving to some particular section or expression, a meaning other than that which the words literally bear, the court is justified in doing that amount of violence to the language in order to carry out the object of the legislature. The statute must be interpreted according to the ordinary meaning of the words used therein, subject of course to any words or phrases of technical import being given their technical meaning, If on one reading a construction involves absurdity or inconsistency, the court must consider the possibility of an alternate construction equally consistent with the technical meaning of the words, which will avoid such absurdity or inconsistency Dictionary can properly be referred to in order to ascertain not only the meaning of a word, but also the use to which the thing denoted by the word is commonly put.

In Parker Knoll Ltd v. Knoll International Ltd, Lord HERSCHELL said: “I do not think we should roam over the previous authorities so as to find out what the law is now.. The proper course is clear. It is to examine the language of the statute and ask what is its natural meaning, uninfluenced by any consideration derived from the previous state of law”.

In this connection it is worthwhile to reproduce the comments of Justice G.P. SINGH in his work Principles of Statutory Interpretation, 9th Edn 2004, where the learned author says: “When a word is defined to mean’ such and such, the definition is prima facie restrictive and exhaustive; whereas, where the word defined is declared to ‘include’ such and such, the definition is prima facie extensive. When by an amending Act, the word ‘includes was substituted for the word means’ in a definition section, it was held that the intention was to make it more extensive. Further, a definition may, be in the form of ‘means and includes’, where again the definition is exhaustive:’ on the other hand, if a word is defined ‘to apply to and include’, the definition is understood as extensive.

While interpreting a provision, the Court only interprets the law and cannot legislate it. If a provision of law is misused and subjected to the abuse of process of law, it is for the Legislature to amend, or repeal it, if deemed necessary. The legislative cases omissus cannot be supplied by judicial interpretative process. The rules of interpretation would come into play only if there is any doubt with regard to the express language used. Where the words are unequivocal, there is no scope for importing any rule of interpretation. It is a well-known principle of interpretation of statutes that a construction should not be put upon a statutory provision which would lead to manifest absurdity or futility, palpable injustice, or absurd inconvenience or anomaly.

Scope of Proviso

JUSTICE G. P. SINGH İn his above work comments as follows: “The general rule has been stated by HIDAYATULLAH, J, in the following words: “As a general rule, a proviso is added to an enactment to qualify or create an exception to what is in the enactment, and ordinarily, a proviso is not interpreted as stating a general rule” . And in the words of KAPUR, J: “The proper function of a proviso is that it qualifies the generality of the main enactment by providing an exception and taking out as it were, from the main enactment, a portion which, but for the proviso would fall within the main enactment. Ordinarily it is foreign to the proper function of proviso to read it as providing something by way of an addendum or dealing with a subject which is foreign to the main enactment.” Further, a proviso is not normally construed as nullifying the enactment or as taking away completely a right conferred by the enactment.”

“It is a fundamental rule of construction that proviso must be considered in relation to the principal matter to which it stands as a proviso”. It is a cardinal rule of interpretation that a proviso to a particular provision of a statute only embraces the field which is covered by the main provision. It carves out an exception to the main provision to which it has been enacted as a proviso and to no other. Referring to these observations in the case of Ram Narain & Sons Ltd versus Assistant Commissioner of Sales Tax, the Supreme Court clarified that “these observations must be limited in their application to a case of a proviso properly so called and there is no justification for extending to them to a case. Where the legislature has, when it could well do so if that were its intention, not chosen to enact it as a proviso”. Reference in this context may be made to the opening words of section 11(1) of the Trade Marks Act, 1999, which starts with the phrase “Save as provided in section 12”.

International Treaties

As stated in the Statement of Objects and Reasons, one of the important objectives of the current Trade Marks Act, 1999, is the simplification and harmonization of the law in an era of increasing globalization. The need for harmonization was duly recognized even in early times, as was held in Shredded Wheat Co. Ltd. v. Kellog Co. G.B. Ltd,. “It is of the highest importance that in such an important branch of commercial law as that relating to trademarks, there should be uniformity as far as possible in all countries administering the same system of law. In this context, the relevant international treaties are important and particularly those of which India are a signatory. India is a signatory to the Paris Convention for the Protection of Industrial Property, Berne Convention for Protection of Copyright, and the TRIPS Agreement. With the modernization and harmonization of Indian Trade Marks law with the TRIPS Agreement and Paris Convention, India may also be expected soon to accede to The Trade Marks Law Treaty and the Madrid Agreement and Protocol concerning International registration of marks. Therefore, the administration of the Indian law has to be in harmony with the international trend and has to be construed accordingly.

International Treaty versus National law

Quoting the above in the case of Gramophone Co. of India Ltd. v. Birendra Bahadur Pande,S the Supreme Court held that the doctrine of incorporation also recognizes the position that the rules of international law are incorporated into national laws and considered to be part of the national law, unless they are in conflict with an Act of Parliament. Comity of nations or no, Municipal law must prevail in case of conflict. National Courts cannot say “yes” if Parliament has said “no” to a principle of international law. National Courts will endorse international law, but not if it conflicts with national law. ..But the Courts are under an obligation within legitimate limits, to so interpret the Municipal statute as to avoid confrontation with the comity of Nations or the well-established principles of International law. But, if conflict is inevitable, the latter must yield.”

In Vishaka versus State of Rajasthan, it has been observed by the Apex Court that when the specific provisions of law are silent, then that gap can be filled by international conventions. Being a signatory to the International Convention for Protection of Industrial Property (Paris Convention) and the TRIPS Agreement, the Indian law on Trade Marks is fully compatible with the provisions of these international agreements. The Parliament has clearly expressed its intention to “harmonize” the law in a global economy. The administration of the new law will thus have to be in consonance with this development.

Earlier case laws

The Court of Appeal, in Procter & Gamble Ltd., ‘s TM Application, with reference to the U.K. law, held thus: “The statutory law as to registration of trademarks goes back to 1875 but it is common ground that the Trade Marks Act, 1994 marks an important departure. Authorities decided by reference to earlier statutes in particular the Trade Marks Act, 1905 (the 1905 Act) and the Trade Marks Act, 1938 (the 1938 Act)-may no longer be apposite. The 1994 Act is not a consolidating Act. It was passed in order to give effect to the Trade Marks Directive of the Council of what was then the European Economic Community. It must be construed in a manner consistent with its community origins and purposes.” While one must obviously be careful of construing a new Act by reference to authorities or a predecessor statute, and it may be said that: “.all that old law has been swept away. But it does not follow that the sort of concepts and safeguards provided for in the old laws…has no place under the new law. On the contrary one is bound to bump up against the same sort of problems under the new law as under other laws. For some matters are basic to any rational law of trademarks“. The Trade Marks Act, 1999 is largely based on the policy outlined in the White Paper on Trade Marks Law Reform presented by British Government to its Parliament in September, 1990. The Indian law, which also makes an important departure from the earlier law, thus conforms to a great extent to the U.K Trade Marks Act, 1994 and also the Community Directive, despite differences in the phraseology and the formulations of some sections. As held by the Court of Appeal, the authorities decided by reference to earlier statutes may no longer be apposite and will have limited application. As has been put by KERLY in Law of Trade Marks, 13th Edition 2001, “it should not be forgotten at any point that the system is fundamentally different and frequently demands a fresh look”.

Value of English decisions

As was held by the Supreme Court: “In the absence of any binding authority of an Indian Court on a particular point of law, English decisions in which judgments are delivered by judges held in high repute can be referred to as they are decisions of Courts of a country from which Indian jurisprudence and a large part of our law is derived, for they are authorities of high persuasive value to which the court may legitimately turn for assistance, but whether the rule laid down in any of these cases can be applied by Courts must, however, be judged in the context of our own laws and legal procedure and the practical realities of litigation in our country”. There is a substantial change in the law relating to the registration of trade mark under the Trade Marks Act, 1999. The decisions under the U.K. Trade Marks Act, 1938 which were followed in India under the 1958 Act cannot wholly be applied under the new law. In the context of the U.K. Trade Marks Act, 1994, in Nestle’s SA’s Trade Mark Application, it was observed that “it would be wrong, when interpreting and applying the 1994 Act, simply to follow decisions of the English courts on the earlier legislation.” For more details about trademark registration in tirupur, kindly visit our website and feel free to contact us.. We are here to help you.. Thanks for Reading….