FEATURES OF THE TRADEMARKS ACT
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REGISTRATION OF TRADEMARK FOR SERVICES It is mentioned in preamble and Section 2(1)(z) of the Trademarks Act, 1999. As set out in the preamble, the new law provides features for registration of trademarks for services, in addition to goods, the need for which was greatly felt with the growth of the service sector in this country. Further, it is obligatory on India to provide facility for protection of trademarks in respect of services under the Paris Convention [Article 1(2), read with Article 6] and for registration under the TRIPS agreement [Article 15(4) of which India has since become a member. Consequently, the law contains a comprehensive definition of the expression “services� and provides for registration of trademarks for services in addition to goods.
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TRADEMARK REGISTRATION
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ENLARGEMENT OF DEFINITION OF TRADEMARKS The definition of Trademarks has been enlarged, so as to bring the law in conformity with the current trend all over the world. Being an inclusive definition, it is only illustrative features and it follows that even something not falling into one of these categories may be regarded as a trademark for the purpose of the Act.
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REGISTRABILITY OF TRADEMARKS SIMPLIFIED For registrability, the mark will have to be capable of distinguishing the goods or services of the applicant from those of the others. Thus the test of registrability of trademarks under the new act will generally be similar to what was necessary to secure a registration in Part B of the register under the old Act. Any mark which is revealed to be distinctive in fact by usability will eligible for registration under the law, since it does not considered being necessary as under the old law that the mark must also be changed to differentiate a concept eliminated in the current law.
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ENHANCED PROTECTION FOR WELLKNOWN TRADEMARKS With a view to significantly enhance protection to wellknown trademarks, the Act incorporates a definition of the expression “well-known trademark� (in section 2(1)(zg). Further, the law seeks features to prevent registration of trademark, which are imitations of well-known marks, by enlarging the grounds for refusal of registration under Sections 9 and 11 of the Act. The proprietor of well-known mark will be entitle to prevent use of identical or similar trademark in connection with goods or services, though not similar to those for which the mark is registered, where such use is without due cause, would take unfair advantage of or to be detrimental to the distinctive character or reputation of the wellknown trademark.
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TRADEMARK REGISTRATION
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DEFENSIVE REGISTRATION SYSTEM IN 1958 ACT OMITTED Now that the law provides enhanced protection to wellknown trademarks, the system of defensive registration as under the 1958 Act, which was in any case limited only to “invented words” became redundant. The present Act, therefore omits the provision relating to “defensive registration”, while amplifying the features to be considered for determining a well-known mark. Section 159 enacts that a defensive registration effected under section 47 of the Trade and Merchandise Marks Act, 1958 will cease to have effect on the date suddenly after the expiry of five years of the commencement of the new Act or after the expiry of the period for which it was registered or renewed, whichever have priority.
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PART A AND PART B REGISTRATION SYSTEM ABOLISHED Under the 1958 Act, the law provided for Trademark registration in Part A or Part B. In Part A were registered marks which were distinctive, namely, those which were considered to be “adapted to distinguish” and Part B Consisted of marks which were considered as “capable of distinguishing” the goods. The new Act has terminated the system of carrying the two-part registration of trademarks in Part A and Part b within the various different legal rights, and to give only a single register with brief procedure for registration of marks and with equal rights. With the merger of Part A and Part B of the register into a single register, the provision for presumption of conclusive validity of a trademark after 7 years as contained in former section 32 has been omitted, as being redundant.
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PERIOD OF RENEWAL MODIFIED Under the 1958 Act, trademark registration was required to be renewed for successive periods of 7 years for its maintenance. Under the Trademarks Act, 1999, the registration is for a period of 10 years and so the renewal of registration is also provided accordingly
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TRADEMARK REGISTRATION
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FILING MULTI CLASS APPLICATIONS PERMITTED Unlike under the earlier law, which required that an application to register a trademark must be in respect of goods falling only one class of the 34 classes of goods, the new legislation enables an applicant to file a single application for registration of the same mark in respect of goods or services falling in more than one class. Now goods and services are classified in 45 classes. In other words, the law facilities and features for registration of the same mark in several classes by means of a single application. However, the fee payable will be in respect of each class of goods or service.
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LAW CONCERNING REGISTRATION OF REGISTERED USERS SIMPLIFIED The definition of permitted user has been substantially changed to cover use of the mark both by registered user and unregistered common law licensee, who is in any case entitled to use the mark by virtue of the agreement with the registered proprietor. Consequently, the procedure for registration of registered user has been greatly simplified to encourage and facilitate such registration. Since the official scrutiny of such applications will be confined only to matters directly related to such registration and not extended to extraneous considerations, such as “development of industry. Trade or commerce” as under the 1958 Act, the authority to register such licensing agreement is transferred from “Central Government” to the legitimate authority, viz the Registrar of Trademarks.
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FEATURES FOR REGISTRATION OF COLLECTIVE MARKS The new Act has introduced a set of provisions and features for registration of “collective mark” which belongs to a group or association of persons, whose use is reserved for members of the group or association of persons. Collective marks would serve to distinguish characteristic features of the products or services offered by those enterprises.
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TRADEMARK REGISTRATION
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APPEALS FROM REGISTRAR TO LIE TO APPELLATE BOARD, INSTEAD OF HIGH COURT Appeals from orders or decisions of Registrar which had to be filed before the high Court having the jurisdiction as defined under the old Act, would no longer lie to such High Courts, but would lie before the Intellectual Property Appellate Board, constituted by Trademarks Act, 1999. The Act explicitly bars any court or authority from exercising jurisdiction, powers or authority in relation to appeals [vide section 93]. Further, in terms of section 100, all the cases of appeals and rectification proceedings pending before any High Court will be transferred to the Appellate Board from such date as may be notified in the Official Gazette.
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SCOPE OF INFRINGEMENT OF TRADEMARKS WIDENED Pursuant to the enlarged grounds for refusal of registration on “relative grounds�, the scope of the law governing infringement of trademarks has been enlarged to include where the infringing use is likely to cause confusion or is likely to be taken to have an association with an registered trademark. In keeping with the legislative intent to protect well-known marks, the law enacts that the use of an identical or similar mark on goods or services which are not similar will constitute infringement, where the registered trademark has a reputation in India and the use without due cause will take unfair advantage or features of or is detrimental to the distinctive character or repute of the registered mark. Further the law, as contained in section 29, specifies the circumstances and types of uses which constitute infringement of a registered trademark.
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ENHANCED PUNISHMENT FOR TRADEMARK OFFENCES With a view to provide deterrent punishment to discourage sale of spurious goods, penalty for applying false trademark, trade description, etc., and for selling goods or providing services to which false trademark or false trade description is applied, has been enhanced, removing the distinction between offences in relation to “drugs” or “food”, on the one hand, and other categories of goods, on the other. Further, the law provides for further enhanced punishment of second and subsequent convictions. The offences are explicitly declared as “cognizable”.
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TRADEMARK REGISTRATION
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FORUM FOR INSTITUTION OF INFRINGEMENT PROCEEDINGS Suit for infringement will have to be filed before a court not inferior to that of a District Court, as under the old law. But a significant change in the new law is that the term “District Court having jurisdiction� will include a district court within the local limits of whose jurisdiction, the plaintiff actually or voluntarily resides or carries on business or personally works for gain. The amendment features the law of trademark in this respect in conformity with the Copyright Act, as very often an artistic work in as trademark label is also registered under the optional provision concerning registration of copyright.
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REMOVAL OF MARK ON GROUND OF NON-USE The period of 5 years within which a mark must be used under the old Act, was determined from the date of trademark registration, which related back to the date of application for all purposes. Since there is considerable time lag between date of application and date of registration, such a law was causing hardship to registrants. The new Act, therefore, explicitly provides that the period of 5 years non-use will be reckoned from the date of actual registration and not from the application date. Further, use by not only a registered user, but also an unregistered permitted user, will accrue to the benefit of the registered proprietor for any purpose for which “use” is material under the Act. Another change is that any use started during the period of three months before the filing of an application for removal for non-use will be disregarded, as against a period of one month stipulated in the old law. The “Special circumstances” which would excuse non-use, would henceforth include restrictions imposed by any law or regulation on the use of trademark in India.
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ASSIGNMENT OF UNREGISTERED TRADEMARKS Under the ole law, an unregistered trademark was not assignable or transmissible except along with the goodwill of the business concerned, except in certain specified circumstances. This has been abolished. It will be thus permissible under the new law to assign an unregistered trademark with or without the goodwill of the business concerned.
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TRADEMARK REGISTRATION
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AMENDMENT OF COMPANIES ACT With a view to prohibit the use of someone else’s trademark as part of corporate name or name of a business concern, the Companies Act was amended suitably as indicated in the Schedule under the features of section 158 of the Trademarks Act, 1999. It may be noted in the companies act, 1956 has been replaced by the Companies Act, 2013. In this connection, see section 16 of the new companies Act, 2013 which is similar to section 22 of the companies Act, 1956.
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