India Contributing firm Anand And Anand Advocates Authors Munish Mehra Associate Priyanka Kher Associate 157 India Anand And Anand Advocates 1. Legal framework • the district court’s jurisdiction to decide infringement and passing-off actions; and • stringent penalties for offences. National The Trademarks Act 1999 brought the Indian The act has also removed the provisions on statutory framework into line with worldwide defensive registration. trends and met India’s obligations under the Agreement on Trade-Related Aspects of International Intellectual Property Rights (TRIPs). Innovative India is a party to the following international interpretations of the Trademarks Act 1999 by the treaties and conventions: courts have expanded the scope of trademark • the Paris Convention for the Protection of rights and developed jurisprudence on Industrial Property; trademark law. • the TRIPs Agreement; • the Vienna Codification for Graphic Marks The Trademarks Act 1999 came into force in (although India is not a signatory); and 2003, repealing the Trade and Merchandise • the Nice Classification (Seventh Edition) for Marks Act 1958. It introduced sweeping Classification of Goods and Services changes to trademark law, including (although India is not a signatory). provisions for: • the registration of service marks and collective marks; 2. Unregistered marks • the filing of multi-class applications; • the recognition of shapes, goods, packaging and colour combinations as registrable Protection subject matter; In addition to statutory protection to registered • the abolishment of Part B of the register and trademarks, the act protects unregistered marks. of the need for disclaimers; This has its roots in the traditional common law • an increased term of registration and renewal system under the tort of passing off. In a suit for from seven to 10 years; passing off, the court may grant injunctions and • the recognition of the concept of well- either damages or account of profits, with or known marks; without an order for delivery of infringing labels • simplified registration criteria; and and marks for destruction or erasure. • the clarification of what constitutes an unregistrable mark. Although registration under the Trademarks Act is prima facie evidence of the validity of a The new act also provides for: trademark, registration cannot trump rights in a • a broader scope of infringement for prior mark. registered marks; • the assignment of unregistered trademarks Passing off is essentially an attempt to cause without goodwill; confusion in the minds of consumers by • non-registered licensing of a registered attempting to pass off one’s own goods as those trademark; of another, with a view to benefiting from the • the establishment of the Appellate goodwill and reputation enjoyed by that other Intellectual Property Board to hear appeals party. To succeed in a passing off action based on from the registrar; use of a given mark, the plaintiff should be able 158 www.worldtrademarkreport.com Anand And Anand Advocates India to show that the disputed mark has, through use It is immaterial whether the plaintiff and in India, become distinctive of its goods, so that defendant trade in the same field or the same Indian trade and consumers will assume that any or similar products. Injunctions have been goods bearing the mark are those of the plaintiff. granted in passing-off actions even where the plaintiff and defendant traded in entirely There are three essential elements to a passing- different products. For example, in Daimler off claim: Benz Aktiegesellschaft v Hybo Hindustan (AIR • misrepresentation; 1994 Del 239) the plaintiff owned the • damage; and MERCEDES BENZ trademark in relation to • goodwill. vehicles. The court granted an injunction restraining the defendant from using the In passing-off actions where there has been no trademark BENZ, as well as a “three-pointed direct misrepresentation, establishing a star in a ring”, in respect of undergarments. likelihood of deception or confusion generally requires the existence of two factual elements: Use requirements • that a name, mark or other distinctive feature The amount of use required to establish used by the plaintiff has acquired a unregistered rights is not quantified. The party reputation among the relevant class of that asserts the unregistered rights bears the purchasers; and burden of proving that its mark is well known in • that members of that class will mistakenly India or enjoys a reputation or goodwill that infer from the defendant’s use of an could have facilitated passing off or confusion identical or sufficiently similar name, mark and/or deception. or other feature that its goods or services are from the same source as or connected to the plaintiff’s. 3. Registered marks The seminal case on deceptive similarity in a passing-off action is Cadila Health Care v Cadila Ownership Pharmaceutical Ltd (2001 PTC (SC) 561), in Section 18(1) of the Trademarks Act provides that which the two marks for which similarity was any person that claims to be the owner of a alleged were FALCITAB and FALCIGO, and trademark that it uses or proposes to use may where the Supreme Court identified the apply to the registrar in the prescribed manner following criteria: for registration of the mark. This provision • the nature of the marks (ie, whether they are essentially has three elements: word, label or composite marks); • ‘any person’, which would include • the degree of resemblance between the marks; partnership firms, associations, companies – • the nature of the goods for which they are whether incorporated or not – and public used as trademarks; and private trusts; • similarities in the nature, character and • a claim to ownership; and performance of goods of rival traders; • use or intention to use. • the class of purchasers who are likely to buy goods bearing the marks; Section 24(2) of the act also provides for joint • the method of purchasing the goods or ownership of a trademark. The trademark placing orders; and applicant must have a legitimate claim of • other circumstances that may be relevant. ownership over the mark. This may be based on: www.worldtrademarkreport.com 159 India Anand And Anand Advocates • use of the mark in relation to particular A trademark is registrable if it satisfies the goods by the applicant itself or its following conditions: predecessors in rights, interest and • It is capable of being represented graphically; title; or • It is capable of distinguishing the goods • its intention to make use of the mark. or services of one person from those of others; and A person may become the owner of a trademark • It is used in relation to goods or services either by virtue of use or by registration of the for the purpose of indicating a connection mark. Where use of the mark is merely proposed, in the course of trade between the goods or the applicant cannot claim proprietary rights services and the owner or authorized user until such time as it initiates use or becomes a of the mark. registered owner. In establishing the second criterion above – The term ‘trademark’ includes collective marks distinctiveness – descriptive marks are usually and certification marks. weakest, with the degree of distinctiveness becoming increasingly strong for suggestive, As a signatory to the Paris Convention, India arbitrary, fanciful and invented marks observes the national treatment principle, respectively. However, even descriptive words which requires that the law make no may acquire a sufficiently high degree of discrimination as to nationality. The national distinctiveness through use. The nature of the treatment rule also extends to nationals of goods or services for which the mark is used countries that are not signatories to the Paris affects how distinctive it is. Convention, provided that they are domiciled or have an industrial or commercial The advantage of this regime is that anything establishment in a convention country. that is not prohibited from registration is registrable if it satisfies these requirements. This Scope of protection has significantly increased the scope of Protected: Under Indian trademark law, the registrable marks. definition of a ‘trademark’ for the purpose of registration is sufficiently wide to cover any of Not protected: Section 9 of the Trademarks Act the following elements: sets out absolute grounds for refusal, which are • any name, including personal names and based on objections inherent in the mark itself surnames, and signatures; that make it unregistrable. • any invented word or arbitrary word that is not directly descriptive of the character or The existing act incorporates the registration quality of the goods or services; requirements in the definition of a ‘trademark’. • letters, numerals or any combination thereof; In addition, a clear distinction is made between • devices, including fancy devices or symbols; Sections 9 and 11, which enumerate absolute and • monograms; relative grounds for refusal of registration • colour combinations or even a single colour respectively. The main difference between in combination with a word or device; absolute and relative grounds is that registration • shapes of goods or their packaging; of a trademark may be refused on absolute • three-dimensional marks; and grounds due to a defect or deficiency inherent to • sound marks when represented in the mark itself, while registration may be refused conventional notation or described in words. on relative grounds due to a defect or deficiency 160 www.worldtrademarkreport.com Anand And Anand Advocates India in the mark in relation to an existing mark. Examination Section 11 is thus a complementary section that Where a trademark application is filed in the lays down grounds for refusal that include prescribed format, it will first be allocated an identity or similarity with: application number. The mark is then examined to • an earlier mark registered for identical or see whether it satisfies the registration similar goods or services; or requirements. The act has streamlined the • an earlier well-known trademark used for registration procedure and an examination report is dissimilar goods or services.