In India, the trademark law was governed by the common law doctrines followed in England and later by the Registration Act of 1875. The first statute enacted in India was Trademarks Act, 1940 which is in pari materia with the English Trade Marks Act, 1938. Later, the Trade and Merchandise Marks Act, 1958 consolidated the whole subject scattered in different Indian statutes. After the emergence of globalization in the Indian economy, there existed a strong urge to revamp the entire trademark legislation. As a result, Trademarks Act of 1999 was initiated which came into force on September 15, 2003.
The fundamental aim of the Act was to provide registration of marks to enhance its protection for the goods and services and also to control the fraudulent exploitation of the marks. The Act provides for the appointment of Controller General of Patents, Designs and Trademarks who shall act as the Registrar of Trademarks to carry out the provisions of the Act. The Central Government shall entrust certain officers to fulfill certain responsibilities under the control and superintendence of the Registrar.
The Act further provides for the constitution of Trademarks Registry to accomplish the duties specified by the Central Government. A register shall be maintained in Registry containing the name, address, description of the Article and such other details of the registered trademark as provided by the legislation. The goods and services are to be differentiated according to the International Classification by the registrar. Where the trademark is of unique nature or has been familiar trademark, the registrar shall grant registration.
The registrar shall not register a trademark where it misleads the public or create confusion; the mark contains anything likely to hurt the susceptibility of any religious community; the mark consists of any obscene or outrageous subject and the use of the mark is forbidden by the Emblems and Names (Prevention of Improper Use) Act, 1950. The trademark shall not allow registration of trademark where the shape of the article is the outcome of the nature of the article itself, the shape of the article is essential to acquire a technical effect and the shape of the article provides a considerable value to the article.
A trademark shall be refused for registration where it is identical with an already existing trademark and the similarity of the articles are covered by such mark and the trademark is probable to be related with previously existing mark. To determine whether the trademark is a well known trademark many features are to be considered like the location and duration of the registration of trademark, influence of trademark on the public etc.
The person who desires to register the trademark shall file an application in the prescribed manner to the registrar of the Trademarks registry. The registrar shall either accept or reject the application. Where the application is accepted, the registrar shall specify the conditions or restrictions and thereafter advertise the mark in the manner prescribed under the Act. After completion of the formalities, the registrar shall compulsorily register the trademark following the procedures of registration. The holder of the trademark shall obtain registration for a term of ten years and subsequently he can renew the trademark in the specified method. The act bars the authority of a person to institute any proceedings against the infringement of a mark which is not registered but shall institute actions against passing off.
On registration, the holder of the trademark shall obtain restricted rights to use the mark with respect to the articles or services and to get legal protection for the infringement of the registered mark. The Act explains the situations where the infringement of trademark ensues and provides penalty for such infringement. The Act under Chapter VIII and IX provides special provision for ‘collective marks’ and ‘certification trade marks’ respectively. The Central Government is empowered under the Act to constitute Appellate Board and the Board shall be directed by the principles of natural justice in settling disputes.
The Trademarks Act was amended recently by the Trademarks (Amendment) Act, 2010 where the amending Act extended the period for filing opposition for registration of a mark to four months. The Act also inserted eighteen months time for registration of a mark after the application has been filed. To be in compliance with international standards, the 2010 Act included a new chapter dealing with provisions for the protection of marks by way of international registration as provided under the Madrid Protocol. Hence, the Trademarks law in India has developed parallel to the national and international needs providing elaborate instruments for registration of marks and avoidance of employing fraudulent marks.