Trademark Laws: Lessons from Legal Provisions to  Landmark Judgments under the Trademarks Act, 1999

 

Introduction

The Trademarks Act, 1999 is an important legislation in India that governs the registration, protection, and enforcement of trademarks. It provides legal provisions for the registration of trademarks, their use, protection of rights, and remedies for infringement. Here are some of the key sections, provisions, and case laws/studies under the Trademarks Act, 1999.

Analysis On Legal Provision

Section 2(1)(zb) - Definition of Trademark: This section defines a trademark as a mark capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others.

 

Section 9 - Absolute Grounds for Refusal of Trademark Registration: This section lists down the absolute grounds on which a trademark can be refused registration, such as if it lacks distinctiveness, is descriptive of the goods or services, is against public policy, etc.

 

Section 11 - Relative Grounds for Refusal of Trademark Registration: This section lays down the relative grounds on which a trademark can be refused registration, such as if it is identical or similar to an earlier trademark, has a likelihood of confusion, etc.

 

Section 18 - Rights Conferred by Registration: This section outlines the rights conferred upon the owner of a registered trademark, including the exclusive right to use the trademark in relation to the goods or services for which it is registered.

 

Section 29 - Infringement of Trademark: This section deals with the infringement of trademark rights and provides remedies for the same, including civil and criminal remedies such as injunctions, damages, and penalties.

 

Section 31 - Registration Validity and Renewal: This section provides for the validity and renewal of a registered trademark, which is initially valid for 10 years from the date of registration and can be renewed indefinitely for subsequent periods of 10 years.

 

Section 34 - Well-Known Trademarks: This section recognizes the concept of well-known trademarks and provides for their enhanced protection, even if they are not registered in India, based on their reputation and goodwill.

 

Section 35 - Removal of Trademark for Non-Use: This section allows for the removal of a registered trademark from the register if it has not been used for a continuous period of five years and there are no valid reasons for non-use.

 

Section 107 - Appellate Board: This section establishes the Intellectual Property Appellate Board (IPAB), which is the appellate authority for hearing appeals against decisions of the Registrar of Trademarks, and other related matters.

 

Some Well Known Facts Of Trademark Act, 1999

The Trademarks Act, 1999 is a comprehensive legislation that governs the registration, protection, and enforcement of trademarks in India. Here are some well-known facts about the provisions of the Trademarks Act, 1999:

Trademark Registration: Section 18 of the Trademarks Act, 1999 provides for the registration of trademarks in India, subject to the fulfillment of certain requirements and payment of the prescribed fees.

 

Types of Trademarks: Section 2(1)(zb) of the Act defines various types of trademarks, including word marks (letters, words, or numerals), device marks (logos or graphical representations), composite marks (combination of words and devices), and service marks (marks used for services instead of goods). Section 3 of the Act elaborates on the types of marks that can be registered.

 

Absolute Grounds for Refusal: Section 9 of the Act specifies certain absolute grounds for refusal of trademark registration, such as marks that are devoid of distinctive character (Section 9(1)(a)), descriptive marks (Section 9(1)(b)), marks that are common to the trade (Section 9(1)(c)), marks that are likely to deceive or cause confusion (Section 9(1)(d)), and marks that are against public order or morality (Section 9(2)).

 

Relative Grounds for Refusal: Section 11 of the Act provides for relative grounds for refusal, which includes refusal of registration if a mark is identical or similar to an earlier mark that is already registered or pending for registration for similar or identical goods/services.

 

Well-Known Trademarks: Section 11(6) of the Act recognizes the concept of well-known trademarks, which are marks that have a high reputation and are known to a substantial segment of the public. Well-known trademarks are provided with enhanced protection, even for goods/services not covered by the registration, and can be enforced against third-party use.

 

Infringement and Passing Off: Section 29 of the Act provides for both civil and criminal remedies against trademark infringement, including injunctions, damages, and even imprisonment in cases of willful trademark infringement. It also recognizes the common law principle of passing off, which allows the owner of an unregistered trademark to take legal action against any unauthorized use that causes confusion among consumers.

 

Renewal and Assignment: Section 25 of the Act provides for the renewal of trademark registrations for every ten years, subject to payment of renewal fees. Section 38 and Section 39 of the Act deal with the assignment and transmission of trademark registrations, as well as the recording of changes in the ownership or address of the registered owner.

 

Opposition and Rectification: Section 21 of the Act allows for the opposition of trademark applications during the examination process, as well as for rectification of the register to remove or amend registered trademarks in case of non-use or other grounds.

 

Customs Protection: Section 53 of the Act provides for customs protection, allowing the registered trademark owners to request the customs authorities to detain and seize goods that infringe their trademark rights at the Indian borders.

 

Online Trademark Filing: The Act has provisions for online filing of trademark applications, as well as online management of trademark registrations, under the rules and regulations framed by the Trademarks Registry.

Some relevant case laws/studies under the Trademarks Act, 1999:

Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.: In this case, the Supreme Court of India clarified the distinction between descriptive marks and suggestive marks, and the level of distinctiveness required for trademark registration.

 

Parle Products Pvt. Ltd. v. J.P. and Co.: This case dealt with the issue of trademark dilution, where the Supreme Court held that a well-known trademark is entitled to protection against dilution, even if there is no likelihood of confusion.

 

Bata India Ltd. v. Pyare Lal Sharma: In this case, the Delhi High Court emphasized the importance of honest concurrent use of a trademark as a defense against infringement, and the need for due diligence in conducting trademark searches.

 

Yahoo Inc. v. Akash Arora: This case highlighted the importance of domain names as trademarks, and the protection of trademark rights in the online environment

Here are some Indian case studies that highlight important aspects of trademark laws under the Trademarks Act, 1999

Daimler AG v. Hybo Hindustan: In this case, the Delhi High Court ruled that the use of the mark "HYBO" by the defendant for auto parts was deceptively similar to the well-known mark "HYUNDAI" of the plaintiff, and amounted to trademark infringement. The court held that the defendant's use of the mark was likely to cause confusion and deception among consumers, and therefore, ordered an injunction against the defendant's use of the mark.

 

Rolex SA v. Alex Jewellery Pvt. Ltd.: In this case, the Bombay High Court held that the defendant's use of the mark "ROLLAX" for watches was deceptively similar to the plaintiff's well-known mark "ROLEX" and amounted to trademark infringement. The court noted that the defendant's mark was phonetically and visually similar to the plaintiff's mark, and was likely to cause confusion among consumers. The court granted an injunction and awarded damages in favor of the plaintiff.

 

Procter & Gamble Company v. Anchor Health & Beauty Care Pvt. Ltd.: In this case, the Delhi High Court held that the defendant's use of the mark "MAGICOLOR" for soaps was deceptively similar to the plaintiff's registered mark "PANTENE PRO-V" and amounted to trademark infringement. The court noted that the defendant's mark was visually and phonetically similar to the plaintiff's mark, and was likely to create confusion among consumers. The court granted an injunction and awarded damages in favor of the plaintiff.

 

Coca-Cola Company v. Bisleri International Pvt. Ltd.: In this case, the Delhi High Court held that the defendant's use of the mark "BISLERI SODA" for carbonated beverages was deceptively similar to the plaintiff's well-known mark "COCA-COLA" and amounted to trademark infringement. The court held that the defendant's mark was likely to create confusion and deception among consumers, and granted an injunction in favor of the plaintiff.

 

Hindustan Unilever Limited v. Gujarat Cooperative Milk Marketing Federation Ltd. (GCMMF): In this case, the Bombay High Court held that the defendant's use of the mark "AMUL" for soaps was deceptively similar to the plaintiff's well-known mark "LUX" and amounted to trademark infringement. The court held that the defendant's use of the mark was likely to cause confusion among consumers and tarnish the plaintiff's reputation. The court granted an injunction and awarded damages in favor of the plaintiff.

 

Article Compiled by:-

Mayank Garg

(LegalMantra.net Team)

+91 9582627751

Disclaimer: Every effort has been made to avoid errors or omissions in this material in spite of this, errors may creep in. Any mistake, error or discrepancy noted may be brought to our notice which shall be taken care of in the next edition In no event the author shall be liable for any direct indirect, special or incidental damage resulting from or arising out of or in connection with the use of this information Many sources have been considered including newspapers, Journals, Bare Acts, Case Material. Charted Secretary etc.

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