Article by Vijay Pal Dalmia, Advocate Partner & Headof Intellectual Property Laws Division, Vaish Associates Advocates,New Delhi IndiaIndia's obligations under the TRIPS Agreement for protectionof trademarks, inter alia, include protection to distinguishingmarks, recognition of service marks, indefinite periodical renewalof registration, abolition of compulsory licensing of trademarks,etc.With the globalization of trade, brand names, trade names,marks, etc. Have attained an immense value that require uniformminimum standards of protection and efficient procedures forenforcement as were recognised under the TRIPS. In view of thesame, extensive review and consequential amendment of the oldIndian Trade and Merchandise Marks Act, 1958 was carried out andthe new Trade Marks Act, 1999 was enacted. The said Act of 1999,with subsequent amendments, conforms to the TRIPS and is inaccordance with the international systems and practices.The Trade Marks Act provides, inter alia, for registration ofservice marks, filing of multiclass applications, increasing theterm of registration of a trademark to ten years as well asrecognition of the concept of well-known marks, etc.
The Indianjudiciary has been proactive in the protection of trademarks, andit has extended the protection under the trademarks law to DomainNames as demonstrated in landmark cases of Tata Sons Ltd. ManuKosuri & Ors, 90 (2001) DLT 659 and Yahoo Inc. Akash Arora1999 PTC 201.India, being a common law country, follows not only the codifiedlaw, but also common law principles, and as such provides forinfringement as well as passing off actions against violation oftrademarks. Section 135 of the Trade Marks Act recognises bothinfringement as well as passing off actions.
Well-known Trademark and Trans Border ReputationIndia recognises the concept of the 'Well-knownTrademark' and the 'Principle of Trans BorderReputation'. A well-known Trademark in relation to any goodsor services means a mark that has become so to the substantialsegment of the public, which uses such goods or receives suchservices such that the use of such a mark in relation to othergoods and services is likely to be taken as indicating a connectionbetween the two marks.Trans Border Reputation concept was recognised and discussed bythe Apex Indian Court in the landmark case of N. Dongre v.Whirlpool (1996) 5SCC 714. The Trademark 'WHIRLPOOL' washeld to have acquired reputation and goodwill in India. The Mark'WHIRLPOOL' was also held to have become associated inthe minds of the public with Whirlpool Corporation on account ofcirculation of the advertisements in the magazines despite noevidence of actual sale. Hence, the trademark WHIRLPOOL was held tohave acquired trans-border reputation which enjoys protection inIndia, irrespective of its actual user or registration inIndia.
Trademark Registration India
Legal Remedies against Infringement and/or PassingoffUnder the Trade Marks Act, both civil and criminal remedies aresimultaneously available against infringement and passing off.Infringement of trademark is violation of theexclusive rights granted to the registered proprietor of thetrademark to use the same. A trademark is said to be infringed by aperson, who, not being a permitted user, uses an identical/similar/ deceptively similar mark to the registered trademarkwithout the authorization of the registered proprietor of thetrademark. However, it is pertinent to note that the Indiantrademark law protects the vested rights of a prior user against aregistered proprietor which is based on common law principles.Passing off is a common law tort used toenforce unregistered trademark rights.
Passing off essentiallyoccurs where the reputation in the trademark of party A ismisappropriated by party B, such that party B misrepresents asbeing the owner of the trademark or having some affiliation/nexuswith party A, thereby damaging the goodwill of party A. For anaction of passing off, registration of a trademark isirrelevant.Registration of a trademark is not a pre-requisite in order tosustain a civil or criminal action against violation of trademarksin India.
Features Of Trademark Law In India
In India, a combined civil action for infringement oftrademark and passing off can be initiated.Significantly, infringement of a trademark is a cognizableoffence and criminal proceedings can be initiated against theinfringers. Such enforcement mechanisms are expected to boost theprotection of marks in India and reduce infringement andcontravention of trademarks.
Relief granted by Courts in Suits for Infringement andPassing offThe relief which a court may usually grant in a suit forinfringement or passing off includes permanent and interiminjunction, damages or account of profits, delivery of theinfringing goods for destruction and cost of the legalproceedings.The order of interim injunction may be passed ex parte or afternotice.