The Evolution of Trademark Laws in India

A trademark can refer to any word, name, mark or symbol that is distinctive in nature, which is generally, used in commerce to indicate/authenticate the source of the good/product to the consumers. This article briefly explores the evolutionary process that the trademark laws have gone through over the years.

The purpose of having a trademark on a product being sold in the market is to protect the consumer from confusing the said product with another similar one available in the market.

Under Section 2(1)(m) of the Indian Trademarks Act of 1999, a Trademark has been defined 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.

Function and Types

There can be said to be four primary functions of trademarks. They are:

1. To identify the seller’s goods and distinguish it from the other goods
2. To indicate that the goods being sold under the one mark are controlled by one source
3. To signify that all the goods share the same quality
4. For the advertising of the products.

The purpose is thus for establishing a connection between the product and a person/entity having the absolute right as the owner or registered user for the usage of that mark in the course of trade and commerce.

Under Indian Law, there are four types of marks that can be registered:

• Product Trademarks: For the identification of goods.
• Service Trademarks: For identification of services rendered by an entity primarily for advertising.
• Certification Trademarks: Goods/services in the course of trade and which are certified by the proprietor with regards to the mode of manufacture, quality of the product and other salient features pertaining to the product.
• Collective Trademarks: Marks registered in the name of organizations, associations or group of members for commercial activities.

Evolution of Trademark Law

The origin of the Indian Trade Marks Act dates back to UK’s Trademarks Act of 1875. The drafted Bill was introduced and passed in 1940 after its introduction in the Central Legislative Assembly.

Before that trademarks were governed by common laws i.e. under Section 54 of the Specific Relief Act of 1877.

Registration could be obtained under the Indian Registration Act of 1908. The Act of 1999 replaced the Trade and Merchandise Act of 1958 owing to fast-paced globalization and flow in trade and commerce and incorporated in it the requirements laid down by the TRIPs Agreement.

India is a signatory to this agreement owing to which it is obligatory for it to conform to the guidelines laid down by the TRIPs.

Some of the features of the Trademark Act are as follows:

• This Act includes the various combinations of colours under the ambit of definition of a “mark” which is integral to a mark in some cases wherein the colours form a distinctive character. In such a case, the mark without its distinctive combination of colours would be unable to distinguish itself.
• Further, the 1999 Act has broadened the scope of “permitted use” by now bringing within its ambit the usage of the registered trademark by a third party by obtaining the consent of the original owner in written form without having to record it with the Trademark Registry.
• Registration of service marks is permitted.
• A single application for filing under different class of goods.
• Imitation of well-known trademarks cannot be registered.  
• Punishment for infringement has been enhanced. The police can arrest an offender in cases of infringement.
• The period of registration and renewal has also been increased from 7 years to 10 years.

The Act along with the Trademark Rules of 2002 governs Trademark laws in India. The Trade Marks (Amendment) Act of 2010 will bring in the Madrid Protocol. This will transform the trademark registration and make it a less cumbersome process by helping applicants submit a single application only once with WIPO granting them protection in a number of countries around the world after the first step of basic registration in the national country is completed. 

Under the Act of 1999, Indian and foreign nationals are unable to register Trade Marks in various countries. The new amendment will do away with the process of filing separately and individually in each country.