Avanit R.

Arya

Roll no. 48

Title: Indian trade mark law and compliance with TRIPS

Introduction :
Under the trade mark Act, the term “mark” is comprehensively defined in sec-2(m) to
include a device, Brand, Heading, Label, Ticket, Name, Signature, word, letter, numeral,
shape of goods, packaging or combination of colours or any combination thereof. If we talk
about the trade mark, A trade mark is visual symbol in the form of the word, a device or label
applied to the articles of commerce with a view to indicate to purchasing public that they are
the good manufactured or otherwise dealt in by the other person. A Person who sells his good
under a particular trade mark acquire a short of limited exclusive right to the use of the mark
in relation to those goods, such a right acquired by use is recognised as form of property in
the trade mark, and protected under the common law.

The mark must be capable of being represented graphically.

The mark must be capable of distinguishing the goods or services of one person from those of
others.

It may include shape of goods, their packaging and combination of colours.

It must be used or proposed to be used in relation to good or services.

Evolution of Trade mark law:

the concept of identifying the source of manufacture by a mark is an ancient one. But its
importance in commerce and trade was recognised only after the industrial revolution which
enabled large scale production and distribution of goods and publicity through the printing
media. Trade mark is essentially product of competitive economy where more than one
person competed for the manufacture of the same product which necessitated the marking of
each manufactures’ goods by a symbol which distinguished similar goods made by others.
The original concept of trade mark indicating the source of manufacture was extended to
include any connection in the course of trade.

By virtue of extensive use and advertisement a trade mark began to acquire goodwill and

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reputation among t e customers of the goods.

Prior to the statutory registration of trade mark, the only way in which copying of a trade
mark could be prevented was by bringing an action for passing off which required proof of
use and reputation of the trade mark each time an action in launched against an infringer.
Hence a system of registration of trade mark was evolved which gave statutory recognition t
ownership of trade marks.

Function of Trade mark law:

The function of the trade mark is to give an indication to the purchaser or possible purchaser
as to the manufacture or quality of the goods, to give an indication to his eye of trade source
from which the goods come, or the trade hands through which they pass on their way to the
market. It tells the person who is about to buy that what is presented to him is either what he
has known before under the similar name as coming from a source with which he is
acquainted, or that it is what he has heard of before as coming from the similar source.it is on
faith on mark being genuine and representing a equality equal to that which he has previously
found a similar mark to indicate that the purchaser makes his purchase. A trade mark may be
used to indicate not only that the goods are of a particular maker but are goods of that maker
of a Particular kind of quality. Thus a trader may indicate his best quality by one trade mark,
his second quality by another trade mark and so on.

Indian Trademark law pre-trips era:

The establishment of IPR in India commenced in1856 with the enactment of an Act of
Protection of inventions, based on the British Patent Law of 1852 when certain privileges
were granted to the inventor for new methods of manufacture. Subsequent changes were by
way of the Patents and Designs Protection Act 1872 and the Protection Inventions Act
introduced in 1883 that

was further consolidated as the Invention and Designs Act in 1888. The 1872 Designs Act
extended protection to textiles, linen, cotton, calicoes and muslin; this included patterns/prints
and modelling, casting, embossment embossment of ornaments or articles of manufacture.
The next 37
development was the Indian Patent and Designs Act in1911 with amendments in 1978 with
the rules amended in 1985. After Indian independence in 1947, a new Patents Bill was tabled
in Parliament in 1965, which after considerable debate was reintroduced in 1967, resulting in

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the Patents Act of 1970, which, with its subsidiary legislation came into force on 20 April
1972 as the Indian Patents Act 1970
Legislation to protect trademarks came into force on 6 June 1942 and was based on the
principles of English Common Law. The Act of 1940 was further amended to the Indian
Trade and Merchandise Marks Act 1958, which came into force on 25 November 1959. A
Copyright Act was passed for the first time in India in 1914. The Copyright Act 1957 adopted
several principles of the British Copyright Act 1956 to cope with the emerging problems
created by technological advances in communication,
broadcasting, microfilming, movies, etc. The Copyright Act 1957 was amended in 1983,
1984, 1992 1994 to keep it in tune with the changing needs and technological progress,
including the challenges posed by the rapid growth of information technology.

Indian Trademark law post-trips era:

The Trade and Merchandise Marks Act 1958 has been replaced by a TRIPS compliant Trade
Marks Act 1999. The subsidiary legislation has been advertised for comments from the public
and is yet to be endorsed. In view of this unfinished legislative process, the Act of 1958 is
still operative. New features of the Trade Marks Act 1999 are the inclusion on service Marks
Act 1999 provision for the registration of Collective Marks for the first time in India,
prohibition of registration of certain marks which are mere reproductions of or imitations of
‘‘well known’’ marks, provisions for filing a single application for registration in more than
one class of goods and/or services, increasing the term of registration of trade marks from 7
to 10 years and providing a grace period of six months for payment of renewal fees,
amplification of circumstances in which validity of registration can be contested, vesting the
final authority in the Registrar for disposing of applications for registration of Certification
Trade Marks, harmonizing penal provisions of the Trade Marks law with Copyright Law, and
the provision for establishment of an Appellate Board.1

TRIPS Agreement: the TRIPS agreement is to promote minimum standards of intellectual

property protection and to ensure that intellectual property rights in themselves do not
become barriers to trade. as noted above neither Paris convention nor Berne convention
provide sanctions against member countries that fail to comply with the terms of each
convention. the weakness have been overcome by incorporating the two conventions into the
TRIPS agreement which does provide for the enforcement of sanctions against countries in
1
Article in press- Indian path towards trips compliance

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default through the aegis of the WTO.2

The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS),

negotiated during the Uruguay Round, introduced intellectual property rules for the first time
into the multilateral trading system. The Agreement, while recognizing that intellectual
property rights (IPRs) are private rights, establishes minimum standards of protection that
each government has to give to the intellectual property right in each of the WTO Member
countries. The Member countries are; however, free to provide higher standards of
intellectual property rights protection3.

The Agreement is based on and supplements, with additional obligations, the Paris, Berne,
Rome and Washington conventions in their respective fields. Thus, the Agreement does not
constitute a fully independent convention, but rather an integrative instrument which provides
“Convention–plus” protection for IPRs.

The TRIPS agreement is based on the basic principles of the other WTO Agreements, like
non-discrimination clauses National Treatment and Most Favoured Nation Treatment, and is
intended to promote “technological innovation” and “transfer and dissemination” of
technology. It also recognizes the special needs of the least-developed country Members in
respect of providing maximum flexibility in the domestic implementation of laws and
regulations.

Part II Section 2 (Article 15 to Article 21) of the TRIPS agreement contains the provisions for
minimum standards in respect of Trademarks.

Relevant provisions of TRIPS-Agreement:

Article-15: The basic rule contained in Article 15 is that any sign, or any combination of
signs, capable of distinguishing the goods and services of one undertaking from those of
other undertakings, must be eligible for registration as a trademark, provided that it is visually
perceptible. Such signs, in particular words including personal names, letters, numerals,
figurative elements and combinations of colours as well as any combination of such signs,
must be eligible for registration as trademarks4.

2
Rodney D Ryder, Brands, Trademarks and Advertising, Lexis Nexis Butterworths India 2003.
3
http://commerce.nic.in/TRIPS_matter_amended.pdf accessed on 21 February 2013

4
http://www.wto.org/english/tratop_e/trips_e/t_agm0_e.htm accessed on 21 March 2013

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Article 16.1: The owner of a registered trademark must be granted the exclusive right to
prevent all third parties not having the owner's consent from using in the course of trade
identical or similar signs for goods or services which are identical or similar to those in
respect of which the trademark is registered where such use would result in a likelihood of
confusion. In case of the use of an identical sign for identical goods or services, a likelihood
of confusion must be presumed (Article 16.1).

Articles 16.2 and 3: The TRIPS Agreement contains certain provisions on well-known
marks, which obliges Members to refuse or to cancel the registration, and to prohibit the use
of a mark conflicting with a mark which is well known. Furthermore, the protection of
registered well-known marks must extend to goods or services which are not similar to those
in respect of which the trademark has been registered, provided that its use would indicate a
connection between those goods or services and the owner of the registered trademark, and
the interests of the owner are likely to be damaged by such use (Articles 16.2 and 3).

Article 17: Members may provide limited exceptions to the rights conferred by a trademark,
such as fair use of descriptive terms, provided that such exceptions take account of the
legitimate interests of the owner of the trademark and of third parties (Article 17).

Article 18: Initial registration and each renewal of registration, of a trademark shall be for a
term of no less than seven years. The registration of a trademark shall be renewable
indefinitely (Article 18).

Article 19: Cancellation of a mark on the grounds of non-use cannot take place before three
years of uninterrupted non-use has elapsed unless valid reasons based on the existence of
obstacles to such use are shown by the trademark owner. Circumstances arising
independently of the will of the owner of the trademark, such as import restrictions or other
government restrictions, shall be recognized as valid reasons of non-use. (Article 19).

Article 20: It is further required that use of the trademark in the course of trade shall not be
unjustifiably encumbered by special requirements, such as use with another trademark, use in
a special form, or use in a manner detrimental to its capability to distinguish the goods or
services (Article 20).

Harmonization with International norms and standards:

The current law of trademarks contained in the Trade Marks Act, 1999 is in harmony with

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two major international treaties on the subject, namely, Paris Convention for Protection of
Industrial Property and TRIPS Agreement, both of which India is a signatory.

Conclusion: Intellectual Property reflects the idea that its subject matter is the product of the
mind or the intellect. As it’s the product of a creative and artistic mind it is bound to changes.
It can be sold, bought, bequeathed and owned. As all this can be done there are bound to be
issues related that have to be dealt. Trademark is a very important aspect of Intellectual
Property. Trademark Protection has become important in present day competitive world
because, every producer of a good or service will want his mark to be unique, eye catching as
well as it should be easily distinguishable from others. Intellectual Property Protection is very
important and there should be a movement towards Global Intellectual Property Order, if
there is no IPR protection, it can be argued that inventive activity will cease.“The rationale
for Intellectual Property protection is that it can stimulate creativity and innovation and
encourage the exploitation of inventions for the good of the society.

Many treaties and conventions have taken place in the field of Intellectual Property
particularly Trade Marks. If India’s international affiliations’ are to be talked about India is
an active member of the International body WIPO (World Intellectual Property
Organisation).It is also part of two treaties namely Paris Convention where Industrial
Property is protected and Berne Convention where Literary and Artistic Works are protected.
India adheres to TRIPS and by following its international obligation has modified its
Trademark laws to conform according to it. The purpose of all this is to protect individuality
of the manufacture, prevent infringement and improper usage of signs.

Bibliography:

BOOKS REFERED:-

 Intellectual Property Rights in The WTO and Developing Countries by Jayashree

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 Watal (Oxford University Press New Delhi 2001)
 Holyoak and Torremans Intellectual Property Law 5th edn. Oxford University Press
2008.
 Brands, Trademarks and advertising by Rodney D Ryder (Lexis Nexis Butterworths
New Delhi 2003)
 Cornish and Llewelyn Intellectual property: Patents, Copyright, Trademarks and
Allied rights ( 6th edn Sweet and Maxwell Limited, 2007)

E-SOURCES:-

 http://trade.ec.europa.eu/doclib/docs/2004/june/tradoc_117771.pdf 20 February 2013

 http://www.altacit.com/pdf/evolutionoftrademarklawsin_india.pdf 20 February 2013

 http://www.sristi.org/mdpipr2004/otherreadings/OR%2025.pdf 11 February 2013

 http://commerce.nic.in/TRIPS_matter_amended.pdf 21 February 2013