The Trade Marks Act, 1999

Introduction
With the globalisation of commerce, brand names, trade names, marks, and so
on have become extremely valuable, necessitating consistent minimum
standards of protection and effective enforcement mechanisms, as recognised
by the Trade-Related Aspects of Intellectual Property Rights,1994 (TRIPS). In
light of this, the previous Indian Trade and Merchandise Marks Act,
1958 (repealed), was thoroughly reviewed and amended, and the new Trade
Marks Act, 1999, was adopted. The aforementioned Act of 1999, adheres to
TRIPS and is in compliance with international systems and practices.

The Trade Marks Act, among other things, allows for the registration of service
marks, the filing of multiclass applications, the extension of the period of
registration of a trade mark to ten years, and the recognition of the idea of well-
known marks. India observes not only codified law but also common law
principles, and as such allows for infringement and passing off lawsuits against
trade mark infringement.

The author will analyse The Trade Mark Act, 1999 in this article by discussing
its genesis or history, as well as the necessity for and aspects of the Act. The
author will also go over the subject of trade mark registration in depth in the
article.

What is a trademark
Trade Marks are significant corporate assets, and while registration is not
required by law, it is recommended since unregistered trademarks receive little
protection. If another firm tries to use the same or a similar mark after
registration, there will be a suitable legal procedure to block it. A trademarked
name distinguishes all of the proprietor’s products and services from those of
others, and it also protects the proprietor’s reputation from damage due to
counterfeit items.

A trademark is valid for ten years and can be renewed indefinitely if further
payments are paid from time to time in the manner prescribed by the country’s
laws. Trade Mark rights are private property rights that are enforced by judicial
orders. Because India is a party to the Paris Convention and the TRIPS
agreement, the Act complies with its principles.
To comprehend the legal definition of a trademark in India, we must first
comprehend ‘The Trade Mark Act, of 1999’. (Hereinafter the Act). A Trade
Mark must be a ‘mark’ in addition to possessing other basic features and being
free of prohibited characteristics. As a result, the legal definition of the mark as
provided in Section 2(1)(m) of the Act is critical, which states that a mark
comprises a device, brand, heading, label, ticket, name, signature, word, letter,
numerical, form of products, packaging, or combinations of colours or any
combination thereof.

As a result, the definition is inclusive rather than exhaustive. So, everything that
can be represented graphically in single-dimensional, two-dimensional, or
three-dimensional space may be regarded as a mark. A company’s emblem is a
mark, as is a graphical depiction of a certain combination of characters, style,
or combination of multiple colours on a product or in the company’s name.

Similarly, the definition of the term “trade mark” is defined under Section
2(1)(zb) of the Act. It can be stated as follows:

1. The trade mark must be a mark. That is, nothing else than a mark as
defined in Section 2 (1)(m) of the Act is capable of being designated as
a trade mark if additional conditions are met.
2. That such a mark is capable of being represented graphically. That is to
say, if a mark cannot be represented visually, it cannot be accorded trade
mark registration.
3. Such a mark must be capable of identifying one person’s goods or
services from those of others. It implies that the mark must have certain
distinguishing qualities, either phonetically, structurally, or aesthetically,
to allow consumers to associate a product bearing that mark with a
certain proprietor or authorised user without much misunderstanding.
Such differentiation can be innate, as in coined and created terms, or
learned.
To sum up, a trade mark must be a mark that can be graphically represented and
has specific distinguishing qualities that allow a customer of ordinary
intelligence and faulty recall to associate it with the proprietor or user without
generating confusion.

A growing number of nations also permit the registration of non-traditional

trade marks such as single colours, three-dimensional signs like product
packaging shapes, audio signals or sounds, or olfactory indicators like smell,
etc. A trade mark is always a brand, but a brand is not necessarily a trade mark.
This is mentioned because there is sometimes confusion between trade marks
and brands; a brand is just a name, logo, or symbol, but a trade mark is a unique
sign or signal of some type in a commercial organisation; as a result, trade marks
have a broader connotation than brands.

A trade mark may also serve to represent or ensure the quality of the items
bearing the brand. People are frequently persuaded to purchase a certain product
because of its distinguishing trade mark, which symbolises quality. Trade
Marks represent the value or goodwill connected with the goods, which may
be measured by the extent to which the public perceives their quality and
specific source. In general, trade marks are placed in any fashion on the items,
their containers, and displays, as well as on tags or labels linked to the goods or
services. The great economic value of a successful trade mark is the key reason
for legal protection.

Trade mark owners generate brand loyalty and product uniqueness through
compelling advertising campaigns in conjunction with licensees. This results in
the establishment of enviable goodwill and market strength, thus preventing
new enterprises from entering that specific sphere of operation.

Legal history of Trade Marks Law in India

Until 1940, there was no statute law governing trade marks in India, and the
relevant law was based on common law, which was essentially the same as that
in England prior to the passage of the first Registration Act in 1908. The Trade
Marks Act of 1940 (repealed) established for the first time in India the
machinery for the registration and legislative protection of trade marks. This
Act was repealed in 1958 by the Trade and Merchandise Act of 1958. This Act
was likewise abolished by the Trade Marks Act of 1999, which took effect in
2003. The law governing trade marks has undergone significant revisions since
the Trade Marks Act of 1999. Some legal principles relating to unregistered
trade marks are codified, while others are still dependent on common law,
necessitating the use of court rulings.

In addition to safeguarding the purchasing public from imposition and fraud by

infringers of genuine trade marks, it has been determined that the statutory rights
granted by the registration of a trade mark are so broad and complex that it is
necessary to protect the legitimate interests of other traders from litigation and
harassment by registered owners of trade marks. As a result, the Act has evolved
into a complex body of legislation with long Sections, numerous cross-
references, and several provisions and exclusions.

The more essential elements have been clarified through judicial interpretation,
while several portions have yet to be subjected to judicial inspection and study.
Apart from streamlining the legislation, the current Act of 1999 has added
several additional rules that benefit both trade mark owners and consumers of
goods. For historical reasons, both Indian common law and statutory trade mark
law have largely followed the pattern of English law.

Apart from significant changes to the previous law, this Act unified the
Merchandise Marks Act, of 1889, and various regulations about trade marks
found in the India Penal Code,1860 the Criminal Procedure Code,1973 and the
Sea Customs Act,1878 into a single piece of legislation.

Need for trade marks

A trade mark safeguards your brand and gives you the means to stop someone
from profiting off of your brand. The shape of the items, their packaging, and a
colour combination are all examples of trade marks that may set one person’s
goods or services apart from those of another. They enable clients to pinpoint a
company as the provider of a good or service. Let us know more reasons for the
need for Trade Mark Registration in India.

Important assets

For your business, a registered trade mark might prove to be a significant asset.
These assets continue to increase in value over time. Over time, as your firm
expands, the value of your trade marks increases naturally. As a result, the value
of your trade mark increases as your business does.

Safeguarding your brand

A trade mark registration establishes ownership of a brand, name, or logo. It

safeguards your brand against unlawful third-party use. The registered trade
mark establishes that the product is entirely yours, and you have the exclusive
right to use, sell, and change the brand or items in any way you see fit. Aside
from that, having a trademark fosters a trusting relationship with clients,
allowing a firm to build a loyal customer base and boost its reputation.

Bringing individuality to a brand

Every firm requires a distinctive brand or logo that sets it apart from the
competition, hence, such a brand must be registered. As a result, a registered
trade mark provides your brand with a distinct identity. It also helps to avoid
customer confusion by indicating the source of the items as well as a constant
degree of quality.

Tool for simple communication

Trade Marks may prove to be useful and simple communication tools. They are
self-explanatory. With a registered trade mark, the brand to which your goods
belong may be determined. For instance, you can tell that a gadget is an Apple
when you see a half-bitten apple in silver on it, whether it’s a laptop or a phone.

Customers can easily locate you

A registered trade mark makes it easier for buyers to locate the goods since it
attracts the consumer’s attention and makes the product stand out. It is also an
effective instrument with a distinct identity; registered trade marks are easily
traceable, and buyers can quickly find your goods.

A trade mark lasts forever

Once registered, a trade mark can remain in effect in perpetuity. Any company’s
registered trade mark is theirs forever, and thus a trade mark registration must
be renewed every ten years as it will maintain the brand’s identity and go on in
perpetuity.

Objectives of The Trade Marks Act

The goal of a legal system for trade mark protection in India can be deduced
from an examination of constitutional provisions to protect trade, statutory
provisions and common law rights, and their judicial interpretation, as well as
fulfilment of international obligations under various international treaties to
which India is a signatory.

Based on Constitution’s provisions

Article 19 of the Indian Constitution lists freedom of trade and movement as
one of the essential rights. In addition to this, several additional fundamental
rights ensure the safety of the trade and profession of its residents as well as
non-citizens including jural/legal people. As a result, one of the goals of the
Trade Mark Act is to secure the preservation and fulfilment of these
fundamental rights.

Based on statutory provisions and common law rights

The granting of specific civil rights in each civilised society to protect its people,
trading partners, and others from any harm, whether criminal or civil, is
essential to the civilization’s survival and progress. The fundamental right to
freely trade includes the freedom to establish, develop, and grow one’s own
business by legal means.

As a tool for promoting one’s own business, a trade mark must be protected
from illegal uses to safeguard the legitimate owner from dishonest and
criminally motivated individuals. Additionally, safeguarding the standard of
goods and services is the only way to advance the greater good of the public.
The availability of identical items on the market results in the duplication of
well-known and well-liked products and services by unlicensed users, as well
as the original proprietor’s incapacity to maintain the quality owing to losses in
terms of revenue, reputation, and public confidence. As a result, the Trade
Marks Act was created to safeguard people’s basic, constitutional, and civil
rights, as well as to serve the public interest.

Based on Act’s preamble

The Trade Marks Act, 1999’s preamble states that the Act’s purpose is to protect
trade marks and prohibit fraudulent use of trade marks. Similarly, one goal of
the Indian Penal Code involves the preservation of people’s civill rights,
including the right to grow one’s own business through the creation of a brand
through the use of certain trade marks and the advancement of public interest.
As a result, both Acts allow for the penalty of any unauthorised person who uses
a trade mark fraudulently.

Based on Judicial Interpretation

The Supreme Court provided the following explanation of the purpose of the
Trade Mark Act in Dau Dayal v. State of Uttar Pradesh (1959):

The goal of trade mark law is to defend the rights of individuals who produce
and sell items bearing distinctive trade marks against infringement by third
parties that misrepresent the origin of their products by using trade marks that
are not their own.

In light of India’s duties to other countries

India is required to consolidate its municipal law by such treaties and

conventions because it is a signatory to numerous significant international
treaties, such as the Trade-Related Aspects of Intellectual Property Rights
(TRIPS), and because it is a part of various conventions and agreements under
these conventions, such as the Paris Convention and Madrid Agreement.
Additionally, it must safeguard the commercial interests of local traders from
unwarranted harm brought on by unfair competition from outside. With these
goals in mind, India has modernised and strengthened its legal framework for
trade marks.

Salient features of The Trade Marks Act

The Trade Marks Act, of 1940 was India’s first trade mark law. Before then,
trade mark protection was controlled by common law. The Trade Marks Act,
1999, as modified, is the current controlling legislation in India for trade marks.
The 1999 Act was passed to comply with the TRIPS rules. The salient features
brought about in Indian trade mark law by the Trade Marks Act, 1999, are as
follows:

1. Including a service mark in the definition of a trade mark;

2. A new clause for collective marks’ registration;
3. Prohibition on registering some marks that are merely replicas or
imitations of well-known marks;
4. Provision for filing a single registration application for several classes of
products and/or services;
5. Increasing the term of registration of a trade mark from 7 to 10 years,
including a six-month grace period for payment of renewal costs.
 6. Expansion of conditions under which registration validity may be
challenged;
7. Giving the Registrar ultimate power over applications for registration of
Certification Trade Marks;
8. Aligning the punitive provisions of the Trade Marks Law with those of
the Copyright Law;
9. Provision for the formation of an Appellate Board.

Registration of Trade Marks under the Act

Anyone claiming to be the trade mark’s owner or who intends to use the trade
mark in the future may submit an application in writing to the relevant Registrar
by the established procedures. The application must include the name of the
goods, mark, and services, as well as the class of goods and services it belongs
to, the applicant’s name and address, and the amount of time the mark has been
in use. Here, the term “person” refers to a group of businesses, a partnership, a
corporation, a trust, a state government, or the federal government.

Application for registration

Section 18 of the Act outlines the process for registering a trade mark. Thus, in
order to apply for registration, the applicant must meet the requirements
outlined in the Act.

Subsection 1 states that any person claiming the trade mark may submit an
application in writing to the Registrar in the appropriate way. A single
registration application can be submitted for many classifications of products or
services. However, as stated in Section 2 of the Act, various fees will apply to
each kind of product or service. If the applicant or joint applicants desire to
apply, they must do so within the geographical limitations of their primary place
of business. If they do not conduct any business, the application must be lodged
inside the geographical limits of the site for services.

Subsection 4 specifies that the Registrar has the authority to accept, reject, or
make certain adjustments and revisions subject to specific restrictions or limits.
If the Registrar refuses or imposes restrictions, he must explain why and what
materials were utilised.

Registration requirements
The central government appoints a person to be known as the controller general
of patents, designs, and trade marks, who will be the Registrar of the trade mark,
by stating it in the official gazette. The central government may designate
additional officials if they believe they are appropriate for discharging, and the
Registrar may permit them to discharge under the supervision and control of the
Registrar.

The Registrar has the authority to transfer or remove cases by a written request
with justification. It is covered under Section 6 of the Act on how to keep a
registered trade mark active. Except for the trust notice, all specified details,
including those of registered trade marks, must be recorded at the main office.
Each branch office is required to maintain a copy of the register. It permits the
preservation of documents on diskettes, computers, or in any other electronic
format.

Absolute grounds for registration denial

Section 9 of the Act defines absolute grounds for registration refusal. Any trade
mark that falls under one of the reasons specified in this Section cannot be
registered. The following are the absolute grounds for denying registration:

1. Trade Marks that do not have any distinguishing characteristics.

Distinctive character refers to trade marks that are capable of
differentiating one person’s goods or services from those of another.
2. Trade Marks that consist only of markings or indications used in
commerce to designate the kind, quality, amount, intended purpose,
values, or geographical origin of products or services delivered.
3. Trade Marks that only comprise markings or indications that have
become usual in the present language or established trade practices.
4. Trade Marks that deceive or confuse the public.
5. Trade Marks that contain anything likely to offend the religious
sensibilities of any class or section of Indian people.
6. Trade Marks containing or including scandalous or indecent material.
7. If the trade mark’s use is forbidden under the Emblems and Names
(Prevention of Improper Use) Act of 1950.
8. Marks are derived from the form of the items themselves and are used as
trade marks.
 9. Trade Marks consist of markings on items whose shapes are required to
achieve a technological outcome.
10. Trade Marks are made up of symbols resembling the form that provides
products with their significant value.
The Act makes an exemption for the first three points, namely where the trade
marks lack uniqueness, comprise exclusive marks used in the trade to indicate
sort, quality, etc., or contain marks that have become usual in trade practices.

Similarity test

In conclusion, if one mark appears to be deceptively similar to another, the

essential features of both must be considered. They should not be placed side
by side to determine whether there are any differences in the design and, if so,
to prevent one design from being mistaken for the other. It would suffice if the
disputed mark is so similar to the registered mark that a person normally dealing
with one would be duped into accepting the other if it were offered to him.

In addition to structural, visual, and phonetic similarity or dissimilarity, it is also

important to consider the average human intelligence and imperfect data
collection. Thirdly, the question of his impressions is raised because it is viewed
as a whole.

In the case of Mohd. Iqbal v. Mohd. Wasim (2001), it was said that it is common
knowledge that ‘bidis’ are being used by persons belonging to the poorer and
illiterate or semi-literate class. They don’t have a lot of knowledge. They cannot
be expected to comprehend and understand the subtle distinctions between the
two labels, which can often be seen when comparing the two labels. Thus, it
was held that the two labels seemed to be misleadingly similar in light of the
aforementioned.

Relative grounds for registration refusal

Section 11 of the Act provides related reasons for denying trade mark
registration. A trade mark cannot be registered if there is a likelihood of
confusion due to its identity with an earlier brand and resemblance of products
or services, or its likeness to an earlier trade mark and similarity of goods.

It also states that a trade mark that is identical or similar to an earlier brand
cannot be registered. Also, if or to the extent that the previous trade mark is well
recognized in India, which is to be registered for products and services that are
not identical to those for which the earlier trade mark is registered in the name
of a different proprietor. It further states that a trade mark cannot be registered
if or to the extent that its use in India is likely to be prohibited by law.

Proceedings in opposition

Section 21 of the Trade Marks Act, 1999, addresses opposition to registration

and should be read in connection with the Trade Marks Rules, 2002.

Rule 42 talks of notice of opposition, it states that within four months of the date
of publication of the trade mark journal in which the application for registration
of the trade mark was advertised or re-advertised, a notice of opposition to the
registration of a trade mark under the sub-section (1) of Section 21, with the
particulars specified in Rule 43, shall be filed as prescribed.

Rule 43 mentions the requirements of a notice of opposition, it states that a

notice of objection must include the grounds for the opposition in the case of an
application, an earlier trade mark or earlier right on which the opposition is
based, or in the case of the opposing party.

Rule 44 states that the counter statement required by subsection (2) of Section
21 must be submitted within two months of the applicant receiving a copy of
the notice of opposition from the Registrar. It must include a list of any facts the
applicant has admitted that were alleged in the notice of opposition. The
Registrar must typically serve a copy of the counterstatement to the opponent
within two months of the date of receipt.

Rule 45 talks of evidence in favour of the opposition, it states that:

1. The opponent must either leave with the Registrar any affidavit-based
evidence he may wish to present in support of his opposition within two
months of the service of a copy of the counterstatement, or;
2. He must notify the Registrar and the applicant in writing that he does not
wish to present any evidence in support of his opposition but intends to
rely solely on the information provided in the notice of opposition.
By this sub-rule, he must give copies of any evidence, including any exhibits,
to the applicant and notify the Registrar in writing of the delivery. An opponent
is assumed to have given up on his opposition if he does not take any action
under sub-rule (1) within the time frame specified therein.
Rule 46 talks about supporting documentation for application purposes.

It states that within two months of the applicant receiving copies of affidavits in
opposition or notice that the opposition’s opponent does not wish to provide any
evidence in opposition, the applicant must leave with the Registrar any
affidavit-based evidence he wishes to present in support of his application and
deliver copies to the opposing party.

Alternatively, the applicant may inform both the Registrar and the opposing
party that he does not wish to present any evidence and instead intends to rely
on the facts outlined in the opposing party’s counterstatement and/or on any
evidence previously left by him in connection with the application at hand. If
the applicant provides additional information or relies on material previously
provided by him in connection with the application,

He shall give copies of the same to the opponent, including any evidence, and
shall notify the Registrar in writing of such delivery. If an applicant does not
take action under sub-rule (1) within the period specified, he is presumed to
have abandoned his application.

Rule 47 talks of the opponent’s evidence in reply.

The opponent may provide the Registrar with evidence by affidavit in reply
within one month of receiving copies of the applicant’s affidavit from the
applicant and shall give copies of the same to the applicant, along with any
exhibits, and shall notify the Registrar in writing of such delivery. Following
the conclusion of the evidence, the Registrar is required to notify the parties on
the first day of the hearing.

Rule 50 mentions the provision for hearing and decision.

The hearing must take place at least one month following the initial notice date.
A hearing between the two parties may be requested by the Registrar. He will
then make a decision based on the arguments made by the two sides. If he grants
the applicant’s request, the trade mark will be registered. The trade mark will
be taken down from the Journal and the registration request will be denied if he
rules in favour of the opposing party.

Procedure and registration period

Section 25 states the procedure and registration period of a trade mark, and
subsection 1 provides that the Registrar after receiving an application from the
trade mark owner in the required format, within the allotted time frame, and
with the required payment of costs, may register a trade mark for a term of ten
years, and it may also be renewed for a further ten years after the initial
registration or the most recent renewal of registration has expired.

Before the final registration expires, the Registrar must give the registered
proprietor a notification in the manner specified. If the criteria have not been
properly met by the period specified in the notice, the Registrar may withdraw
the trade mark from the register. The notification specifies the date of
expiration, the payment of fees, and the circumstances under which a renewal
of registration may be acquired. However, if the implication is made in the
prescribed manner and the prescribed fee is paid within six months of the trade
mark’s final registration expiring, the Registrar shall not remove the trade mark
from the register and shall instead renew the registration of the trade mark for
ten years.

If a trade mark is withdrawn from the register due to non-payment of the

specified fee, the Registrar must renew the registration within six months and
one year of the expiration of the last registration of the trade mark as mentioned
in subsection 3 of the Act.

In addition, upon receipt of an implication in the specified form and payment of

the prescribed fee, the Registrar restores the trade mark to the register and
renews the registration of the trade mark for ten years from the expiration of the
previous registration, as mentioned in the subsection 4 of the Act.

No action for an unregistered trade mark

This is defined under Section 27 of the Act, which states that no infringement
will lie concerning an unregistered trade mark but recognises the common law
rights of the trade mark owner to take action against any person for passing off
goods as the goods of another person or as the services of another person or the
remedies thereof.

Trade mark infringement

Infringement of trade marks occurs when someone other than the registered
proprietor uses the same mark or one that is confusingly similar in the course of
business in relation to the same products or services for which the trade mark is
registered. In general, trade mark infringement suits entail the problems of the
likelihood of confusion, counterfeit marks, and mark dilution. The likelihood of
misunderstanding occurs when customers are likely to be confused or misled
regarding two parties’ usage of marks.

The plaintiff must demonstrate that many customers are likely to be confused
or misled regarding the origins of the items bearing these marks as a result of
the identical markings. Dilution is a trade mark law term that prohibits the use
of a well-known trade mark in a way that diminishes its distinctiveness. Most
incidents of trade mark dilution involve the unlawful use of another’s trade mark
on items that do not compete with and have little in common with, the trade
mark owners.

Section 29 talks about the infringement of registered trade marks under the Act.
Infringement refers to the violation of someone’s rights. As a result, trade mark
infringement implies a breach of trade mark rights. Infringement of a trade mark
occurs when an unauthorised use of a trade mark or a substantially similar mark
on goods or services of a comparable type occurs. In such a scenario, the court
will consider whether the use of the trade mark would lead to consumer
confusion about the genuine brand they are purchasing. Thus, the following
elements must be completed to categorise trade mark infringement as provided
under Section 29 of the Act:

1. If the trade mark is a copy of an existing trade mark with minor

modifications or changes.
2. If the infringing trade mark is printed or utilised in advertising.
3. If the infringing mark is employed in commerce
4. If the mark utilised is sufficiently similar to a registered mark a customer
is likely to be confused or misled when picking a product category.
Apart from this, Section 103 of the Act talks of the provisions for penalties for
applying false trade marks, trade descriptions, etc. According to this Section, a
person is deemed to be filing for a trade mark incorrectly under the following
circumstances:

1. If a trade mark fabrication has occurred;

2. If a trade mark has been wrongfully applied to products or services;
3. Makes, acquires or disposes of any device with the intent to falsify a
trade mark;
 4. Falsely represents the name of the nation or location where the items
were manufactured, as well as the name or address of the person
responsible for their production.
5. Tampers with the origin indication that is applied or needed to be applied
to a product.
Infringement of trade marks as a consequence of falsification shall result in a
penalty of not less than six months, but not less than three years, and a fine of
not less than fifty thousand rupees, but not less than two lakh rupees. Provided,
however, that the accused offender did not perpetrate such deception on the
following grounds:

1. All reasonable efforts were taken to avoid the commission of such

fabrication, and there was no legitimate reason to doubt the legitimacy
of the trade mark at the time of the alleged violation.
2. That he had done lawfully.
3. On the prosecutor’s request, such relevant documentation about the way
and person from whom the products were received.

Concept of Passing Off

The term “passing-off” is not defined in the Trade Marks Act, 1999. Section 27
of the Trade Marks Act, 1999 acknowledges the trade mark owner’s common
law rights to pursue legal action against anybody who misrepresents his goods
or services as those of a third party or seeks to exploit such rights. In Cadila
Healthcare Ltd v. Cadila Pharmaceuticals Ltd, (2001) the Supreme Court of
India defined “passing-off” as a type of unfair commercial competition or
actionable unfair dealing in which one person, by deceit, seeks to get an
economic benefit from the reputation earned by the other in a particular trade or
company.

A few key elements must be proven for a passing off action, as maintained by
courts in a series of judgements, which are listed below:

1. Misrepresentation,
2. The defendant must do the conduct in the course of his or her business.
3. The plaintiff’s goods and services have been misrepresented to
prospective or final clients.
4. Such deception is intended to harm the plaintiff’s company or reputation,
and
 5. Such conduct creates genuine harm to the plaintiff’s company or
reputation.
The defendant’s motive is irrelevant in a passing-off suit. Once the plaintiff has
created a reputation, no additional proof of the defendant’s fraudulent intent is
necessary to be proven or established.

The comparison between an infringement action and passing off is portrayed

Infringement Action Passing Off Action

It is a legal remedy. It is a remedy under common law.

The defendant must use the infringing Defendant’s products do not have to
mark on the same items as the be identical; they might be related or
plaintiff’s registered mark. even distinct.

The sole requirement to prove trade In a passing-off lawsuit, it is not

mark infringement in relation to a enough to simply show that the
registered trade mark is that the markings are the same or confusingly
infringing mark is identical to or similar. The mark’s usage must be
misleadingly similar to the registered liable to mislead or create
mark. misunderstanding.

It must be demonstrated that the

There is no requirement that the
defendant’s use of the trade mark is
defendant’s use of the mark harms the
likely to harm or impair the plaintiff’s
plaintiff in any way.
goodwill.

below:

Appeals to the Appellate board

Section 91 of the Trade Marks Act of 1999 addresses appeals to the appellate
board.

Earlier, the applicant’s ultimate recourse, once the registration is rejected, is to

file an appeal with the Intellectual Property Appellate Board (hereinafter
referred to as the “IPAB”) within three months after the day the Registrar issued
the rejection decision. But recently, the Tribunals Reforms (Rationalisation and
Conditions of Service) Act, 2021, was proclaimed, dissolving the Intellectual
Property Appellate Board by revising the Trade Marks Act, 1999. Some of the
most recent modifications to the Trade Marks Act, 1999, are detailed below:

1. The IPAB has been abolished.

2. Any procedures for cancellation of a mark based on non-use
under Section 47 of the Act will henceforth be heard exclusively by the
Registrar or the High Court.
3. In addition to the Registrar of Trade Marks, any procedures for
correction of a mark under Section 57 of the Act can now be brought
before the relevant High Court possessing jurisdiction.
4. All appeals under Section 91 of the Act will be heard by the High Court
rather than the IPAB.
5. A claim for trade mark infringement is delayed under Section 124 of the
Act if the defendant pleads invalidity of the mark or raises a defence
under Section 30(2)(e) of the Act and if rectification procedures against
the defendant’s mark are underway before the Registrar or the High
Court prior to the initiation of suit, the plaintiff pleads invalidity.
6. If rectification proceedings are not ongoing and the court determines that
the invalidity of the mark claim is plausible at first glance, it will raise
the matter and postpone the case for three months so that the party in
question can apply to the High Court for rectification of the mark. It will
also raise the issue if the rectification application is made within three
months, at which point the court may permit the trial of the claim.
7. Appeals from the Registrar of Trade Marks orders will henceforth be
heard by the relevant High Court depending on the jurisdiction of the
Registrar making the orders and must be submitted within three months
of the date the order was informed to the appellant. In such cases, the
phrase “prescribed” has been enlarged to cover regulations imposed by
the High Court as well as rules made under the Trade Marks Act.

Relief in lawsuits for passing off or infringement

According to Section 134 of the Trade Marks Act, 1999, a lawsuit for trade
mark infringement may be filed before a District Court or High Court if the
person filing the lawsuit, or if multiple people are filing the lawsuit, any of them,
actually and voluntarily resides, conducts business, or engages in gainful
employment within the local limits of the court’s jurisdiction at the time of filing
the lawsuit or other proceeding. A person, according to the Act, includes both
the registered proprietor and the registered user. Section 20 of the Code of Civil
Procedure, 1908, governs an action for passing off. Section 20 of the Code
grants jurisdiction to courts within the geographical borders of where the
defendant resides, conducts business, or personally works for gain, or where the
cause of action has arisen entirely or partly.

According to Section 135(1), the following are typical reliefs that a judge may
issue in a complaint for infringement or passing off:

1. Permanent and temporary injunctions preventing further trade mark

usage.
2. Compensation or profit account.
3. The requirement to transmit the infringing labels and destruction or
erasure of markings.
An order seeking any of the following may be among the interim reliefs sought
in the lawsuit:

1. A local commissioner is appointed to conduct searches, seize illegally

obtained commodities, preserve them, prepare inventories, and more.
2. Restricting the infringement from disposing of or dealing with the assets
in a way that may jeopardise the plaintiff’s capacity to recover damages,
costs, or other monetary remedies that may be awarded to the plaintiff in
the end.
A criminal complaint can also be brought in the event of trade mark
infringement or passing off. The limitation period for commencing an action for
trade mark infringement/passing off is three years from the date of
infringement/passing off. When the infringement/passing is ongoing, a fresh
course of action is required each time an infringement occurs.

Acquired distinctiveness
Each trade mark designates the products sold under it as coming from a certain
source. With time, it becomes stronger, and a specific trade mark is either
registered or becomes conceptually connected with the product and its source
in the minds of the consumers. Some trade marks receive legal protection right
once after being used as a trade mark because of their distinctive characteristics,
while other marks do so because of a secondary meaning they gradually come
to have. Thus, there is a connection between a trade mark’s strength and
secondary meaning.
In essence, this suggests that some words, even while they are primarily used to
describe the personality and calibre of products or services, may lose their
descriptive connotations and come to have distinctive meanings as a result of
usage. A mark that is not fundamentally unique but, by prolonged and
meaningful usage over time, persuades consumers to associate the mark with a
product or service that is said to have ‘acquired distinctiveness’ or ‘secondary
meaning.’

Sections 9(1) and 32 of the Trade Marks Act of 1999 deal with “acquired
distinctiveness” or ‘secondary meaning’ in a roundabout way. It specifies that
even if a trade mark has acquired a secondary meaning or importance, it will
not be refused registration if it falls into one of the categories stated in Section
9 of the Act.

It is a well-known rule that no merchant may trade mark common language

terms, descriptive words, or common words and names until such trade names
have created such a strong reputation and goodwill in the market that the
common language word has acquired secondary significance. The secondary
meaning here is that other traders in that line of business realise that such
common phrases have evolved to designate things unique to that trade. Section
9(1)(b) of the Act prohibits the registration of descriptive trade marks. However,
a provision to Section 9(1) states that a trade mark should not be rejected for
registration if it has developed a distinctive character as a consequence of usage
before the date of application for registration or is a well-known trade mark.

Section 32 also states that where a trade mark is registered in contravention of

sub-section (1) of Section 9, it shall not be declared invalid if, as a result of the
use which has been made of it, it has acquired a distinctive character about the
goods or services for which it is registered after registration and before the
commencement of any legal proceedings challenging the validity of such
registration.

The Act is notably silent on the considerations to be examined for determining

whether a mark has ‘acquired distinctiveness’ or ‘acquired secondary
meaning,’ in contrast to the US and other countries that have defined standards
to deal with these issues of law. In India, the Court and the Intellectual Property
Appellate Board have played critical roles in establishing standards for
determining whether a mark has acquired uniqueness or not. The mere usage of
a mark does not constitute it unique, and increased use does not either. The
usage and expanded use of any substance should be done separately. It is both
allowed and required to ascertain the meaning and significance of a sign on a
certain day. The usage in question extends not only to the customers or end users
of the items, but also to others involved in the trade, such as producers,
distributors, and retailers.

In Godfrey Phillips India Ltd v. Girnar Foods and Beverages Ltd (1997), it was
determined that a descriptive trade mark may be protected if it has acquired a
secondary meaning that identifies it with a certain product or as coming from a
specific source. Developing uniqueness is a time-consuming and arduous
process. Nonetheless, no time limit has been set for a trade mark to become
unique, unlike the British Act of 1919, which stated that two years of bona fide
usage was sufficient. There may be instances where a trade mark becomes
unique in a very short period of time for various reasons, or where a brand never
gains distinctiveness. As a result, there is no clear and fast rule governing the
period necessary to achieve uniqueness.

It was ruled in Ishi Khosla v. Anil Aggarwal (2007), that a product does not have
to be on the market for years to gain secondary meaning; if a new idea is exciting
and appealing to the public, it may become a hit immediately. Although it has
been demonstrated in various determined decisions that a common descriptive
word can acquire a secondary distinctive meaning by being used about the
products. However, establishing that such a term has become unique in actuality
and has acquired a secondary meaning separate from its original meaning can
be exceedingly difficult. When the mark is not just descriptive but also
incorporates the name of the product, such as Diabolo for top or shredded wheat,
the complexity increases. This challenge can be addressed if the putative trade
mark includes a description of products, but the public recognizes it as a fancy
term rather than a descriptive word.

The petitioner must demonstrate that the term, which is largely descriptive of
the quality of products, has become descriptive. The applicant must discharge
the onus with respect to each piece for which the trade mark is registered, not
simply one of the numerous products for which the mark is used. When a case
is on the borderline, the Registrar will normally decline to issue the registration;
nevertheless, he will not investigate the grounds for the refusal. However, the
merchant should be given a fair chance to demonstrate his entitlement to
statutory protection.

The competent authority must undertake an overall evaluation of the evidence

that the mark has come to identify the goods in question as coming from a
certain source when deciding whether a mark has developed a unique character
as a result of long and continuous use. The following factors should be
considered when analysing the unique character of a mark for which registration
has been applied:
 1. The mark’s share of the market.
2. The extent to which the mark has been used intensively, geographically,
widely, and for a long time.
3. The amount expended by the company in the market promotion.
4. The proportion of the relevant class of people who identify the items as
emanating from a certain enterprise.
5. Statements from numerous business and trade organisations.
6. If based on these characteristics, the competent authority determines that
a considerable number of people recognize the products as coming from
a certain source because of the trade mark, it must conclude that the
condition for registration of the mark has been met.

Judicial pronouncements

Yahoo!, Inc. v. Akash Arora and Anr,1999

For the first time ever in India, the Delhi High Court ruled in the case of Yahoo!,
Inc. v. Akash Arora and Anr (1999), that a domain name serves the same
purpose as a trade mark and is entitled to the same level of protection. The
accused’s domain name was “Yahoo India!” This was the same as the plaintiff’s
trade mark “Yahoo!” and was phonically comparable. According to the court,
internet users would be misled and duped into thinking that both domain names
originated from the same source. The argument used by the defendant was that
a disclaimer had been posted on its website.

However, it was revealed that a mere disclaimer was insufficient since the
internet is structured in such a way that the use of a similar domain name cannot
be corrected by a disclaimer, regardless of whether ‘yahoo’ is a dictionary term.
The appellation has gained distinctiveness and originality, and it is strongly
associated with the plaintiff.

Milmet Oftho Industries et al. v. Allergan Inc., 2004

A well-known international brand was given trade mark protection by the

Supreme Court in the case of Milmet Oftho Industries et al. v. Allergan Inc.
(2004). The court barred an Indian firm from using the OCUFLOX trade mark.
The decision was made despite the fact that the mark has never been used or
registered in India. According to the court, the respondent was the first to enter
the market and use the mark. If the respondent is the first to join the global
market, it makes no difference that they have not utilised the mark in India. In
the realm of healthcare, it is critical to eliminate any possibility of deceit or
confusion, while also ensuring that the public interest is not threatened.

Sony Corporation v. K. Selvamurthy, 2021

In the case of Sony Corporation v. K. Selvamurthy (2021), Sony Corporation

filed a lawsuit for trade mark infringement against a sole owner operating a
tours and travel company under the name Sony Tours and Travels, alleging
dilution of its well-known ‘SONY’ trade mark. The District Court concluded
after considering the available evidence that Defendant had not unfairly
exploited or damaged Plaintiff’s SONY mark’s unique character or reputation.
The Court reached this determination because Sony Corporation’s business is
restricted to electronics and media, which may be distinguished from the
defendant’s tours and trips business.

The Court further recognised that there was no misunderstanding among

consumers as a result of Defendant’s usage of the phrase “Sony.” Additionally,
it noted the plaintiff’s excessive delay in contacting the court and awarded the
defendants Rs. 25, 000 as costs.

ITC Limited v. Maurya Hotel (Madra) Pvt Ltd, 2021

The Madras High Court in ITC Limited v. Maurya Hotel (Madra) Pvt Ltd
(2021), allowed the plaintiff to add a remedy for trade mark infringement to a
passing off complaint based on the plaintiff’s later registration of the trade mark.
The Court in the case stated that adding a remedy is permissible and aids in
avoiding several litigations. It further said that the conclusion may change if the
application was for the conversion of the plaintiff from passing off relief to an
infringement remedy.

Sun Pharmaceutical Industries Limited v. Cipla Limited, 2021

In this case of Sun Pharmaceutical Industries Limited v. Cipla Limited (2021),

the respondent/plaintiff filed a perpetual injunction suit against the
applicant/defendant before the Madras High Court for violation of its copyright
and trade mark. In this case, the Court awarded an interim injunction in favour
of the respondent/plaintiff. Following that, the applicant/defendant filed three
petitions, each with a request to dismiss the temporary relief granted on the
grounds of urgency. The appeal was predicated on the fact that the medications
were in large quantities, had a one-year expiration date, and were in high
demand because of the ongoing epidemic since they helped relieve Covid-19
symptoms. The balance of convenience remained in favour of the
respondent/plaintiff, thus the court determined that they had shown a prima
facie case for the continuation of the interim injunction.

Despite the nation dealing with an unprecedented medical emergency, the Court
noted that they could not let a party violate another person’s intellectual
property rights when ruling. The interim injunction was maintained by the court,
and it was decided that it would remain in effect pending the outcome of the
case.

Conclusion
The whole of the Trade Marks Act, 1999, does away with the cumbersome
requirements of the previous Act, and it has undoubtedly greatly bolstered the
rights of business owners and other service providers. This Trade Marks Act
functions as a warning to those who infringe. Positively, this Act takes into
account changes in business and commercial practices, the growing
globalisation of trade and industry, the need to promote investment flows and
technology transfers, the need for trade mark management systems to be
simplified and harmonised, and it also gives effect to pertinent judicial
decisions. The legal and corporate communities both eagerly awaited this law.
The long-standing ambition has now been satisfied.

Frequently Asked Questions (FAQs)

Is it required to register a trade mark?

No, it is not required to register a trade mark. However, the registration is the
initial proof of ownership of the trade mark covered by the registration. It should
be emphasised, nonetheless, that no legal action may be taken for the
infringement of unregistered trade marks. Any individual can be sued for
passing off products or services as the property of another person or as services
rendered by another person for unregistered marks.
Is it possible to change a registered trade mark later?

Yes, the submitted mark may be modified with Section 22 of the Trade Marks
Act, which permits such amendments as long as they do not result in a material
alteration of the mark’s distinctiveness. Any surface-level or unimportant aspect
of the mentioned mark may be changed with the submission of a request in the
required format.

Can a trade mark be registered for sound or smell? In what way are these

markings defined?

Yes, odours and sounds can be registered as trade marks. However, they must
be recognisable and able to be graphically replicated. For sound marks, a
recording of the same that is no more than thirty seconds in duration must be
supplied in MP3 format, coupled with a graphic showing its notations. Along
with the sample, the scent can be expressed as a chemical formula.