Trademark refers to a name , word or sign that differentiates goods and services of one enterprise from other. It could be a word, design slogan or combination of these. Trademark is a branch of Intellectual property rights. This provides ownership rights of any innovative goods or services invented by people. They provide them exclusive rights of such product to only that specific person, no other person can use it. Through Trademark, the owner can prevent the use of his mark or sign by another competitor. Trademark is used as a marketing tool as it provides brand recognition of goods/products and services. Some examples are Coco-cola ®, Nike® logo with swoosh is combination of word and design, MC Donald’s I am lovin' it” is an example of slogan for trademark.
Trademark law in India:
Trademark law in India is a statutory law. There was no specific trademark laws in India prior to 1940, so all the problems relating to registered and unregistered trademark were solved by principles based on of common law followed in England, and under Section 54 of Specific Relief Act, 1867 and Indian Registration Act, 1908. Therefore Trade Marks Act, 1940 was enacted in 1940, it was the first statutory law relating to trademark which was passed in India, it was passed to govern trademarks. Later it was replaced by Trade and Merchandise Marks Act, 1958, which was enacted by including trademark related provisions from other statutes like, Indian Penal Code, Criminal Procedure Code and the Sea Customs Act. This act provided the provisions for registration of trade marks, which provided protection to the owner and prevented misuse of his goods and services. This law was followed until 1999, later it was repealed and was replaced by Trade Mark Act, 1999. This Act was enacted in obligation with World Trade Organization. It was complying to the provisions of TRIPS (Trade- Related aspects of Intellectual Property Rights). The main aim of this Act was Protection to the owners of Trademark and to prevent the fraudulent activities relating to it. It also provided remedies for the enactment of Trademark rights. It also provided provisions for registration of services.
Trademark is defined under Section 2 (zb) of the Trade Marks Act,1999 as, “trade mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.”
Recent Developments in Trademark law in India:
1) Simplifying the filing process:
There has been reduction in the number of forms used for filing various applications. Filing process in trademark is very complex and requires a lot of forms to be submitted. After changes in the trademark laws in India, by Trademark Rules, 2017, the process for filing applications have become easy as the number of forms reduced from 74 to 8 forms. This is made to simplify the filing process.
2) Use of Electronic method:
Indian trademark laws have become more electronic centric, the laws are modified in such a way to encourage electronic methods in the process of registration and other services.
· The new provisions in trademark laws provide 10 % less cost on online filing of trademark. For instance, the charge for renewal of registration of Trademark in one class is Rs.9,000 in case of E-filing and Rs.10,000 in case of physical filing etc.
· Trademark rules also provides electronic services for all documents. The Registry now can easily communicate with a simple mail, and it will amount to such service of documents on application, opponent etc.
3) Registration of sound mark:
Recently in India, the rules relating to sound mark is been clearly defined. Earlier it was very difficult to register sound mark , as it was based on graphical representation of the sound or by spelling out the tune. It made it very difficult to registering the sound marks. Recently, the laws have become more easy and specific. At present, one can file an application for registering sound mark by submitting the sound file in MP-3 format of thirty seconds. Along with that the graphical representation of its notation would also required to be submitted with application form. It becomes more easy and protects the rights of the owners of the sound.
4) Sensory Trademarks:
Sensory trademark is a “non traditional” trademarks, this has gained a lot of prominence in recent times. Companies nowadays offer its customers experience through senses such as sight, sound, taste, smell and touch to distinguish their goods/ services from its competitors. Such experiences offered by the companies can also be applied for trademarks. Indian Courts have recognised such sensory Trademarks and has acknowledged it in various judgements. In case of Deere and Co and It’s v S Harcharan Singh and Ors, the Delhi High court granted temporary injunction against the defendant who was using the Colour combination of yellow and green for tractor, which combination was registered by John Deere , the plaintiff.
In the case Ferrero SPA v MAA Distribution, the court recognised the shape mark as trademark and provided protection for the plaintiff, and refrained the defendant from selling or marketing the chocolates whose shape and wrapping was similar to that of Plaintiff’s Ferrero Rocher mark.
5) Well-known Trademark:
Well known Trademarks was already there in Indian Trademark laws, but it has gained lot of prominence and scope in recent years. As the result the courts have also recognised it and directed the registrar of trademarks to provide the option of filing petition for obtaining the well- known trademark for their products/ services. As the result, the Trademark Rules, 2017 provide provisions relating to this and it provided discretionary powers to the registrar of the trademark to decide the criteria or including a mark as well-known trademark. He also has power to review an application and include the mark in well-known Trademark. The rules also empowered the registrar to remove any mark from the list if he finds that it has been incorrectly listed in the list.
6) Trademark rules promoting and protecting small enterprises/start-ups:
The new trademark laws have classified the applicants in two categories Individual/start-up/Small enterprises and others. The small enterprises are provided with lot of benefits under the new law, the cost for application of these classification is reduced by 50% compared to the other. The terms ‘Start-up' and ‘Small enterprises’ are defined under the definition clauses. This classification is mainly done for protection and promotion of such small enterprises and help them grow, by Government.
7) Intermediary responsibility:
The intermediary responsibility was addressed in a case Christian Louboutin SAS v Nakul Bajaj and Ors, in this case the plaintiff complained that the defendant is selling goods which are impaired of his brand. The defendant was also using Christian Louboutin’s image in his website. Here the defendant was selling directly to the seller using an e-commerce platform. The High court analysed in this case the intermediary responsibility/ liability of such e-commerce platform which actively aid and induce such unlawful acts taking the advantage of the safe harbour provisions. The judgement has led to profiling of such platforms.
Trademark laws are becoming very prominent in recent years as there is large growth in business and commerce and there is need for intellectual property rights, to govern them. India from 1940 has been providing the laws relating to this. As the business fields are dynamic there is a constant need of changing and improving the trademark laws accordingly. Current India is following ‘Trade Marks Law, 1999’, but it is been amended time to time in order to develop these laws. The above mentioned are some developments of trademark laws in India, along with it there are many other changes such as changes in opposition processing, provisions relating to statement of user in applications, changes in renewal time period from 6 months to one year etc. All these changes are done with the expectation of developing these trademark laws in future in order to protect the rights of the owner from being exploited unlawfully.
This article is written by Sahana S of Kristu Jayanti College Of Law.