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I.INTRODUCTION

I.1. INTRODUCTION

This research work on the subject “Law relating to Trademarks in India –

A study with Special reference to Passing Off and Infringement of Trademarks” is

of immense importance in view of the several infirmities and draw backs in

implementation of the existing laws. Out of all the Intellectual Property Rights,

the trade mark is the only property which can be retained permanently as long as it

is renewed. World is constantly changing, apart from the physical phenomenon

this change is attributed to various inventions and developments in trade and

commerce. These inventions, advertising materials, books etc., are part of the

human minds backed by the intellectual labour. The products of the great minds

are protected throughout the world by legislations.

The necessity and amendments to the existing Trade Mark Act has arisen

due to globalization and in order to curtail the unfair trade practices. Companies

spent enormous amount of money for the promotion of their goods and when the

particular products and brand names become famous, the undersized businessmen

and general public try to imitate the same to encash the goodwill and reputation

established by the reputed companies. Therefore, the brand name becomes famous

and more often the product itself becomes synonym for the brand name.

For instance “XEROX” which has become synonym for the photocopy and

also some of the similar Indian names and famous brands like “DALDA” have

become synonyms for the similar range of products. As India is the signatory to

TRIPs agreement, it is bound to incorporate the international law and its

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covenants into the local laws. In view of that the Trade and Merchandise Act,

1958 is transformed to a new act named as the Trademarks Act, 1999. The

question of passing off and infringement arises when someone is imitating the

brand name of the true owner in order to encash the goodwill and reputation of the

said brand name.

Historically speaking, the Trademarks Registration Act of 1875 (UK) has

created a legal register of marks and the first Trademarks Registry in the world,

which opened in London in 1876. The Trademark law was consolidated in 1883

and the Trademarks Act of 1905 gave the first statutory definition of a

‘trademark’. In 1938 it saw further legal changes, which had major effect on trade

mark registration.

As regards to India, the Parliament has enacted the Trademarks Act 1999

by substituting the existing Trade and Merchandise Act 1958 and the Government

has framed the Trademarks Rules 2002 (with effect from September 15, 2003) to

ensure adequate protection for domestic and international brand owners, in

compliance with the TRIPs agreement.

I.2. SIGNIFICANCE OF THE STUDY

The Trademark is an intangible asset and its impact on the market is

immense. Once brand/Trademark becomes famous or well known it creates

revenue to the trader. The Trademark/Service mark can be assigned and licensed

to the prospective user for good consideration. The quality of the product and

brand value plays vital role in the promotion of goods and the business. The

valuation of the brand significantly creates the status to the trader in the market.

Not only the financial standing but it creates the social status in the market. In the

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recent past the value of the brand of APPLE (mobile phone) is stated as 100

billion dollars. Any imitation or copying of the well known trademarks by way of

passing off and infringement results in costly litigation. A well chosen and well

publicized trademark often has value far beyond the physical assets of a company.

I.3. SCOPE OF THE STUDY

Intellectual property right is like any other tangible property. Accordingly

the trade mark is a matter of asset like any other Intellectual Property Rights

which can be possessed, enjoyed and transferred like any other property. The

marking of goods for various purposes, including identifying them from those of

other traders, dates back to ancient times. In the same way, the existence of rules

governing the use of such marks goes back to the medieval craft guilds. In 19th

century the people began to think of marks, which had become distinctive of

trader’s goods and so attracted goodwill as a type of property. The fruits of the

same have sustained the intellectual labour of inventors and have created wealth

directly or indirectly among the nations for the purpose of creating further wealth

in India. We have codified and enacted laws on all Intellectual Property Rights

including trademarks. On par with international laws and conventions and in view

of the TRIPS Agreement domestic & international brand owners are protected.

Even if trade mark is not registered in India, a foreign trade mark owner can

initiate a passing off action against the protection of infringer. The Trademarks

Act provides statutory protection to all the trademarks including the well known

trademarks, which were protected under the common law.

In view of the said developments there is much litigation that is pending

before the civil courts and High courts apart from oppositions to the trademarks

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before the Trade Mark Registry. The question arises whether adjudicatory and

quasi-judiciary bodies have geared up to deal with the cases related to trade mark.

It is a common phenomenon that law has to follow the technological

developments in the society. In that direction there should be updating about the

new developments and orientation among the adjudicatory mechanism and the

need has arisen to awake the general public with regard to the value and

importance of Intellectual Property Rights. Since the subject proposed to study is

related to Intellectual Property Rights and more particularly to Trademarks, the

scope of the study will be restricted to the remedial measures to be taken in case

of infringement and passing off actions. The rest of the discussion will be

incidental to the above area.

I.4. REVIEW OF LITERATURE

The researcher has extensively used the books available on intellectual

property law especially books concerning the law and practise of trademark law.

To analyse the doctrinal aspects of the trademarks Halsburys Laws of India and

Halsburys Laws of England are used. To understand the jurisprudence behind the

current trademark law, international conventions and agreements such as the

Trademark Law Treaty, Agreement on Trade Related Aspects of Intellectual

Property rights etc; have been referred.

To analyse the procedural aspects of registration of trademarks and of

related issues Draft Manual of Trademarks Practice and Procedure published by

the Controller General of Patents Designs and Trademarks has been used. To

understand the concept of infringement and passing off, the books used by

researcher interalia include The Trade And Merchandise Marks Act 1958 by K S

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Shavaksha, Law Of Trademarks And Geographical Indications by K.C.Kailasam

and Ramu Vedaraman, Law Of Trademarks And Tradenames by Kerly,

Intellectual Property Rights by Dr. J.K.Das, Law of Trademarks and Passing off

by P.Narayanan, Intellectual Property Rights in India by V.K.Ahuja.

The researcher has extensively referred to the online publications of World

Intellectual Property Organisation. Mechanisms and procedures of Alternate

dispute resolution including online dispute resolution are understood by referring

to the publications made by WIPO and ICANN.

To understand current approach of judiciary towards various aspects of

trademarks case law reporters such as All India Reporter, Supreme Court Cases,

Patents and Trademarks cases have been used. The researcher has also considered

views put forth by various scholars in their articles. Such articles are appropriately

cited at various places.

I.5. OBJECTIVES OF THE STUDY

The present study is aimed to understand the practical implications in

deciding the matters by the courts in passing off and infringement of Trademarks

as judicial precedents are still to follow. The products of great minds are protected

throughout the world by legislations as in the case of real estates which are taken

to be property in the common parlance. As the trademarks are an intangible

property having all the parameters of tangible property, it has to be protected by

proper legislation. It is the fact that the creating the brand name is one aspect and

protection of the said brand name/trade mark from the imitators who falsify the

goods as that of the original owners is an another aspect. Even though legislature

has taken all the precautions to incorporate the international implications in the

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municipal law by repealing the Trade & Merchandise Act, 1958, and thus the

Trademarks Act, 1999 is framed and it has come into force from 15-09-2003. But

there are lot of loopholes and lacunae in the new act. The true owner and

proprietor of the trade mark has got three remedies to protect the Intellectual

Property Rights;

1) By opposing of the trademark at the concerned Trade Mark Registry,

when the trade mark is published in Trade Mark Journal,

2) By Filing of suit for injunction for passing off/infringement of trade

mark and also by way of claiming of damages before the civil court;

and

3) By prosecuting the violators of for infringing the rights over the

registered Trademark under Trade Mark law for award of

punishment.

Since the present trend shows that the maximum of IPR litigation in terms

of quantity is relating to trademarks; and more particularly to the passing-off and

infringement actions. The present topic for the doctoral study is carried out.

1) To trace the origin of trade mark law in the world with special

reference to India.

2) To analyze the Trade Mark legislation in India from the British days

till the latest law of 1999.

3) To compare and contrast the Indian legislation with that of other

countries, for the purpose of assessing the pros and cons of Indian law.

4) To make an in-depth study of the concepts of passing-off and

infringement of Trademarks.

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5) To assess the advantages and disadvantages of both the actions from

the view-point of the owners and users of Trademarks.

6) To analyze the global trends and developments relating to the passing-

off and infringement actions, particularly in the light of the initiatives

taken by WIPO and other bodies.

7) To analyze the effect of Madrid protocol

8) To analyze the latest judicial trends relating to the above; and

9) To find and suggest practical solutions to curb the theft of Intellectual

Property in Trade Mark s to the advantage of the owners and users of

Trademarks.

I.6. HYPOTHESES

Adoption of TRIPS agreement and consequent scrupulous obedience to the

treaty by enacting Trademarks act 1999 has enlarged the umbrella of protection

accorded to trademarks. However, experience has shown that it is not devoid of

challenges. For the purpose of the present research study the following hypotheses

have been formulated and tested keeping in view objectives of the study:

1) The passing-off and infringement of trademarks are global

phenomenon and most domestic jurisdictions have been experiencing

the consequences thereof.

2) The passing-off and infringement of trademarks result not only in

causing loss to the affected trade mark owner/user but they also result

in causing immeasurable loss to the consumers.

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3) The laws relating to protection of trademarks in India have been

proved to be inadequate in effectively preventing the large scale theft

of Trademarks by unscrupulous elements.

4) The enforcement of rights relating to well known trademarks has

implications on the domestic market and some multinational

companies are indulging in litigation in India to harass the domestic

companies under the pretext of infringement of well-known

trademarks.

I.7. METHODOLOGY ADOPTED

This research work is carried out with the following objectives.

Analysis of the provisions of law and its abuse and to expound principles

of law regarding the validity of the Act.

Comparative study between the old and new Act and its implications.

Keeping the above hypothesis and objectives, the scholar has adopted the both

doctrinal method and the secondary survey.

Historical method is followed to trace the origin, history and evolution of

Trade Mark law in India and elsewhere.

Similarly, the changes as said in the local system and traditions of the

countries particularly where there has been change in the nature and

character of business methods is studied by following historical and

analytical methods of research.

The research is carried out with the object of expounding the principles of

law and tracing the origin and development of the rules.

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The researcher referred both the primary and secondary data. The

amendment to the existing Act, judicial precedents by the courts are

considered as primary data. The information gather from the books by

different authors is taken as secondary data. Various articles from websites

which deals with Trademark laws have also been referred.

I.8. SCHEME OF CHAPTERISATION

The present research work is divided in to 9 chapters. The first chapter

contains the significance of the study, scope of the study, objectives of the study,

hypotheses, methodology adopted and scheme of chapterisation.

The second chapter contains the scope of the study in view of the

development across globe due to liberalization and globalization and its impact on

the trade describes the aim attributes for the reasons why research is conducted on

passing off and infringement of trade mark. It also describes the hypothesis of

research work undertaken, the aims and objectives of the research and the method

adopted for the purpose. Trademark law in different countries is discussed.

Economic importance and functions of trademark are discussed elaborately.

The third chapter deals with international treaties concerning trademarks.

India being a signatory of TRIPS Agreement has an obligation to incorporate the

international laws and conventions into local laws. In view of that Trade &

Merchandise Act, 1958 is transformed to Trademarks Act, 1999. Now the

registration and protection of the trademarks across the globe has to be made as

per the rules and regulations of each country It is also discussed whether all

Intellectual Property Laws of India are in parity with international laws,

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conventions and those of other countries. Different conventions including the

Madrid protocol is discussed.

The fourth chapter deals with protection of trademarks. The rights over the

trade mark were protected in India under Trade & Merchandize Act, 1958. In

view of the developments internationally and because of conventions to compete

at par with world members countries, the law is changed to Trademarks Act,

1999. This chapter deals with the analysis of the Trade Mark law in India. In view

of the several additions like service marks, penal provisions, powers to Registrar

and well known trademarks etc., the comparative study and its implications and

Comparative study of Trade and Merchandise Act 1958 and Trademarks Act 1999

is discussed. New concept of Domain name, Sound marks and smell marks are

discussed.

The fifith chapter deals with the registration process of trademarks, powers

to the registrar, functioning of the registry, delegation of powers as per the

jurisdiction, zone wise establishment of trade mark registry, establishment of

appellate tribunal for adjudication of grievances on the orders passed by the

Registrar of Trademarks. The trademarks which cannot be registered are also

discussed.

The sixth chapter deals with infringement and passing off of trademarks.

By falsification of the goods and selling the same in the market by creating an

impression that the mark is similar to that of true owner is the action of passing

off and the similar activity constitutes infringement if the trade mark is registered.

Under the civil remedy an injunction can be sought, damages can be claimed and

rendition of accounts can be sought from the court. Under criminal remedy by the

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order of court the search and seizure of the infringing material and award of

punishments can be sought. More importantly getting the information with regard

to the infringement and passing off has become the order of the day. Piracy can

be traced out by the own marketing network of the companies and by an

engagement of detective agencies. Concept, legal remedies and differences

between passing off and infringement are discussed in this chapter. Jurisdiction

for filing of the cases and elements of passing off action are discussed elaborately.

The seventh chapter is included keeping in view the development of new

mechanisms to resolve intellectual property disputes. Alternate dispute resolution

is gradually emerging as the best means to resolve complex intellectual property

disputes. WIPO is also actively 11lobalization the owners of intellectual property

of the advantages of resolving disputes through non conventional means of

arbitration, mediation etc. Internet revolution and rampant connectivity are

facilitating people to adopt online dispute resolution mechanisms.

The eighth chapter deals with lacunae in current trademark law and

discusses the possible recourses to rectify them. In India the judicial process is

time consuming process due to the pendency of the litigations in the courts and to

understand the concept, the awareness among the general public and police

authorities for execution of the orders is very much essential for effective

implementation of the legal provisions under the trade mark act. It is necessary to

know the judiciary in India before we go in depth. Indian Judicial system is a

creation of the constitution of India and absolutely independent from executive

and legislation. All central & state governments and their functionaries are duty

bound to obey and implement the orders of the courts in India and any non

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compliance of the orders of the courts are taken very seriously which may result

in the contempt of the court leading to fine and or imprisonment.

With that concept the practical approach to the litigations, lacunae in the law

and suggestions are discussed. The discretionary powers of the registrar to decide

the similarity between the trademarks and also to decide the factor of well known

trade mark apart from the powers conferred under section 9 and 11 of Trade Mark

Act, 1999 will lead to the pandemonium if the powers are not properly utilized.

Means and execution of the court orders is an important factor to give the effect of

court orders. Entire Government machinery including police is under an

obligation to follow and implement the orders of the court. Apart from the regular

injunction orders from the courts means of execution are by way of appointment

of local commissioner and receivers etc., are discussed. The non supply of

documents under Rule 54 and its implications and delay in justice, Abuse of

Section 134 of Trademarks Act 1999, concept of filing of an application with

proposed user status are discussed and the suggestions are given.

In the ninth chapter findings, solutions and necessary suggestions with

regard to passing off and infringement of trademarks is discussed.