Protection of Trademarks – Trademark Registration in Tirupur

Protection of Trademarks – Trademark Registration in Tirupur

Comments.-The Trade and Merchandise Marks Act, 1958, when enacted, combined the civil and criminal law relating to trademarks and trade descriptions, by amending the relevant sections in Chapter 18 of the Indian Penal Code, the Code of Civil Procedure, 1898, the Sea Customs Act, 1878 and the Specific Relief Act, 1877. The Trade Marks Act, 1999, which has repealed the Trade & Merchandise Marks Act, 1958, retains the amalgam of the civil and criminal law relating to trademarks effected in the predecessor enactment. The new legislation is designed to provide for registration of trademarks used in relation to services, in addition to goods and thus better protection to trade marks in general, by simplifying the law and procedure for registration of trademarks and giving more effective protection against infringement, by widening the scope of infringement and strengthening the criminal law. Common law rights are explicitly recognized, vide section 27 of the Act and brought within the scope of criminal law (other than section 107). Thus rights acquired by use of a trade mark, not registered under the Act, are protected by an action for passing off and or by criminal action against the infringer for an offence under section 103 of the Act. However, as compared to the common law remedy, where the proprietor of the mark has to adduce evidence of user of the trademark to establish his title to the mark, registration of the mark affords an easy means of establishing title to the mark. Accordingly, trademark registration under the Act provides better protection to trade marks. The law and processing method for trademark registration is also simplified.

In Registrar of Trade Marks versus J.B. Williams, the Calcutta High Court observed: “It is settled law that while it is permissible to look at the preamble for understanding the import of the various clauses contained in a Bill, full effect should be given to the express provisions of the Bill even though they appear to be beyond the terms of the preamble. Where the language of an Act is clear, the preamble must be disregarded. Where the object or meaning of an enactment is not clear the preamble may be resorted to explain it. Again where very general language is used in an enactment, which, it is clear, must be intended to have a limited application, the preamble may be used to indicate to what particular instances the enactment is intended to apply. The courts cannot, therefore, start with the preamble for construing the provisions of the Act, though they would be justified in resorting to it, nay they will be required to do so, if they find that the language used by Parliament is ambiguous or is too general though in point of fact Parliament intended that it should have a limited application. (Vide the observations of the Supreme Court in Burrakur Coal Co., Ltd. versus Union of India, paragraph 5, approving the advisory opinion of the Supreme Court in Kerala Education Bill, 1957. We may also refer to similar observations in paragraph 6 of the decision of the Supreme Court in Tribhuban Parkash Nayyar versus Union of India.

“For registration and better protection of trademarks“

The main object of the legislation is to provide “for registration” and thereby afford “better protection to trademarks“. Before the establishment of a system of statutory registration of trademarks, the only manner in which rights in a trade mark could be acquired was by public user of the mark in relation to the goods or service. In seeking the aid of the Court to protect an unregistered trade mark, the difficulties of the plaintiff in an action for passing off under common law were: (1) to establish his title to the mark by adducing evidence of prior use; (2) to show public use by him of his trade mark for such time and in such manner that his goods had become known in the market by such mark; and (3) to prove that the use by the defendant of the mark is likely to enable him to pass off his goods as those of the plaintiff.

In an action for passing off, the Court determines questions simply inter parties and not against all persons, and the owner of the mark, therefore, will have to prove de novo the contentions in every action against a new infringing defendant. Naturally, the litigation process is tedious, entailing delay and high cost.

Advantages of Trademark Registration

Registration of trademark mitigates these difficulties. The advantages of registration are:

• A distinctive trade mark which is proposed to be used may be registered (Section 18). Registration provides an additional method of acquiring trademarks rights.
• The proprietor of a registered trade mark has exclusive right to the use of the trade mark in relation to the goods/service covered by registration (Section 28).
• Subject to the provisions of the Act (section 30, 34, 35, 36), registered proprietor is entitled to bring an action for infringement as provided in the Act (Section 29). In such action the plaintiff may rely solely on registration and need not plead user.
• The scope of infringement in section 29 is very wide and its application is not limited merely to the prevention of practices which would result in confusion or deception as under common law. The law gives to the proprietor of a registered trademark a right which is not available to proprietor of an unregistered trademark and prohibits for his benefit a form of trading which had been previously considered unobjectionable.
• In all legal proceedings relating to a registered trade mark, the fact that a person is registered as proprietor thereof is prima facie evidence of validity of the original registration (Section 31).
• Subject to certain exceptions mentioned in section 36, the registration of a trademark is not to be deemed to have become invalid by reason only of any use after the date of the registration of any word which the trade mark contains or of which it consists as the name or description of an article or substance or service. Extensive advertisements by the proprietor of the trademark in some cases may result in the mark losing its distinctiveness so far as the public are concerned and becoming the popular name of the article. In such cases, whereas the loss of distinctiveness of the mark may become adverse to the success of an action for passing off, if the mark is already registered, the statutory rights would not be affected except to the extent stated in section 36.
• The Act makes special provisions for registration of “Collective marks” in Chapter VIII – sections 61 to 68; and “Certification trademark” in Chapter 9- sections 69 to78).
• The necessity of proving distinctiveness in each case as a step in the proof of the false representation relied on was one of the evils sought to be remedied by the statute, which conferred a right of property on the owner of a registered mark.
• In an infringement action, once a mark is used as indicating origin, no amount of added matter intended to show the true origin of the goods can affect the question. In the case of passing off, on the other hand, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
• The Act provides for maintenance of a Register of Trade Marks containing all particulars of a registered trademark (Section 6) and which is open to public inspection and for obtaining certified copies of any entry in the Register (Section 148). It seeks to serve one of the important objects of registration, namely to inform the public as to what trademarks have been registered and therefore cannot be adopted by other persons in relation to those goods/service.
• India is a signatory to the Paris Convention for Protection of Industrial Property and accordingly, the right of priority and privileges are available to Indian applicants for securing registration and protection of their trade marks in various countries who are signatories to the convention.
• Under the provisions of the Trade Marks (Amendment) Act, 2010, when India accedes to the Madrid Protocol, it will be possible for Indian applicants to secure international registration by means of a single international application made in one language and payment of one fee and obtain protection to their trade marks in such other member countries as may be designated by them in the application.

Thus, registration under the Act confers various statutory advantages, in addition to common law rights as are explicitly provided- Section 27. The registered proprietor may choose to combine an action for infringement and passing off, where his rights are violated. Registration is in the nature of a collateral security furnishing the trader with a cheaper and more direct remedy against infringers. Cancel the registration, and he has still the right enforceable at common law, to restrain the piracy of his trade mark, provided of course he can prove that such piracy amounts to an imposition upon the public. Protection of trademarks is not only in the interest of owners but also in public interest. A trade mark is much more than just a name or symbol of identity that a trader adopts in relation to his goods or services. It is the repository of his business hard earned goodwill and reputation in the market. A huge amount of business capital is invested in the promotion and marketing of trademarks which have presently come to be identified with a myriad of roles from creating brands out of goods and services to defining the market trend, from endorsing business ideologies to even espousing social causes. The huge stake involved in trademarks has made them susceptible to economic vices such as infringement and passing off. Registration of trademark thus affords better protection to trade marks.

Protection of the use of fraudulent marks

The Act makes provisions setting out circumstances when a person is deemed to falsifying and falsely applying trademarks (section 102) and the penalty for such offences (section 103) and penalty for selling goods or providing services to which false trade mark or false trade description is applied (section 104). The law also prescribes enhanced penalty on second and subsequent conviction under section 105. These offences are cognizable.

Short Title, Extent and commencement

Title of the new enactment.-The title of the present enactment is Trade Marks Act, 1999. Omission of reference to Merchandise Marks, which formed part of the title of the predecessor enactment, does not mean that the present enactment does not deal with marks used on merchandise. Indeed, the definition of “mark” is quite comprehensive. It will include all markings in relation to goods or services. The provisions in respect of criminal offences for use of false trademarks, false trade descriptions and false markings in respect of or in relation to goods (or services) which were contained in the old repealed Merchandise Marks Act, 1889, the Indian Penal Code, 1860 and the Sea Customs Act, 1878, which were incorporated in the Trade & Merchandise Marks Act, 1958, have all been continued in the current enactment. As the preamble enacts, it is an Act “to amend and consolidate the law relating to trademarks, to provide for registration and better protection of trademarks for goods and services and for the prevention of the use of fraudulent marks”. It is not an amending law, but a replacement legislation. The statute law of trademarks in India is more than 70 years old. The statement of objects & reasons appended to the Bill, as presented to Parliament, declares the objectives of this legislation, as indicated above.

The Act extends to the whole of India and shall come into force on such date as the Central Government may appoint, by notification, in the Official Gazette. Proviso to sub-section (3) empowers the Central Government to appoint different dates for bringing into force different provisions of the Act. Therefore, any reference in such provision to the commencement of the Act shall be construed as a reference to the coming into force of that provision. As clarified in the Notes on Clauses appended to the Bill, some of the provisions in the enactment such as “extending the registration of trademark to services, and setting up of Appellate Board are new and necessary mechanism will have to be provided and therefore adequate steps will have to be taken for administering these provisions.” Sub- section (3) provides for this contingency. However, by Notification No. S.O. 1048(E), dated 15-9-2003, the Central Government appointed 15-9-2003, as the date on which all the provisions of the Trade Marks Act, 1999 (47 of 1999) shall come into force.

Pursuant to section 157 of the Trade Marks Act, 1999, draft of the Trade Marks Rules, were published in the Gazette of India,2 and thereafter, after taking into account the objections and suggestions received from the public, in exercise of the powers conferred by sub-section (1) and (2) of section 157, the Central Government has published the final Rules, called the Trade Marks Rules, 2002.These Rules came into force well established from 15-9-2003.

Important Features of Trade Marks Rules, 2017

The Trade Marks Rules, 2002 have been repealed, without prejudice to anything done under such rules, and a new set of rules called the Trade Marks Rules, 2017 have come into force from the date of its publication in the official gazette, on 6th March, 2017. The 2002 Rules had 185 rules, 6 schedules and 75+ forms. The number of rules has been marginally reduced to 158. Though the number of forms appears to have been cut down, in many cases, the same forms have been redesigned for use for multiple purposes. There is substantial increase in fees in respect of almost all proceedings under the Act and Rules, obviously to mobilize resources to meet increasing administrative costs. The fee payable is kept at a higher level for physical filing as against e-filing, wherever allowed. For more details about Trademark Registration in Tirupur, kindly visit our site and feel free to contact us.. We are here to help you.. Thanks for reading!!!!