Introduction

Prior to the statutory registration of trade marks, 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 marks each time an action is launched against inringer. This process was tedious, time consuming and outcome uncertain.

Hence a system of registration of trade marks was evolved which gave statutory recognition to ownership of trade marks and defined the rights conferred by registration and prescribed remedies in respect of infringement of those rights.

The statutory law of trade marks is now based on the new Trade Marks Act 1999 and the Trade Mark rules, 2017

The Trade Marks Registry was established in India in 1940 and presently

it administers the Trade Marks Act, 1999 and the rules made thereunder.

It acts as a resource and information Centre and is a facilitator in matters relating to trademarks in the country.

The main function of the Registry is to register trademarks which qualify

for registration as per provisions of the Trade Marks Act and Rules, and to maintain the Register of trademarks. The Head Office of the Trade Marks Registry is at Mumbai and branch offices are at Ahmedabad, Chennai, Delhi and Kolkata. 

The Objective of the Trade Marks Act, 1999

The objective of the Trade Marks Act, 1999 is to register trademarks applied for in the country and to provide for better protection of trademark for goods and services and also to prevent fraudulent use

of the mark.

The goal of a legal system for trade mark protection in India can be deduced from an examination of constitutional provisions to protect trade, statutory provisions and common law rights, and their judicial interpretation, as well as fulfilment of international obligations under various international treaties to which India is a signatory.

Based on Constitution’s provisions : Article 19 of the Indian Constitution lists freedom of trade and movement as one of the essential rights. In addition to this, several additional fundamental rights ensure the safety of the trade and profession of its residents as well as non-citizens including jural/legal people. As a result, one of the goals of the Trade Mark Act is to secure the preservation and fulfilment of these fundamental rights. 

The fundamental right to freely trade includes the freedom to establish, develop, and grow one’s own business by legal means.

As a tool for promoting one’s own business, a trade mark must be protected from illegal uses to safeguard the legitimate owner from dishonest and criminally motivated individuals.

Based on Act’s preamble :The Trade Marks Act, 1999’s preamble states that the Act’s purpose is to protect trade marks and prohibit fraudulent use of trade marks. Act also provides civil provisions and  penal provision for infringement

Based on Judicial Interpretation : The Supreme Court provided the following explanation of the purpose of the Trade Mark Act in 

Dau Dayal v. State of Uttar Pradesh (1959):

The goal of trade mark law is to defend the rights of individuals who produce and sell items bearing distinctive trade marks against infringement by third parties that misrepresent the origin of their products by using trade marks that are not their own.

Salient features of The Trade Marks Act 

The Trade Marks Act, of 1940 was India’s first trade mark law. Before then, trade mark protection was controlled by common law. The Trade Marks Act, 1999, as modified, is the current controlling legislation in India for trade marks. The 1999 Act was passed to comply with the TRIPS rules. The salient features brought about in Indian trade mark law by the Trade Marks Act, 1999, are as follows:

1. Including a service mark in the definition of a trade mark;
2. A new clause for collective marks’ registration;
3. Prohibition on registering some marks that are merely replicas or imitations of well-known marks;
4. Provision for filing a single registration application for several classes of products and/or services;
5. Increasing the term of registration of a trade mark from 7 to 10 years, including a six-month grace period for payment of renewal costs.
6. Expansion of conditions under which registration validity may be challenged;
7. Giving the Registrar ultimate power over applications for registration of Certification Trade Marks;
8. Aligning the punitive provisions of the Trade Marks Law with those of the Copyright Law;
9. Provision for the formation of an Appellate Board. 

What Are the Salient Attributes of a Trademark?

Before you choose and register your trademark, you should consider the following attributes of a good trademark: 

• The trademark you choose should be a mark that implies a label, signature, word, name, brand, a combination of colors, or an integration of these attributes
• The trademark chosen should seem easier to be spelled, spoken, and recognised. This is to ensure that the public can remember it and acknowledge it quickly
• The trademark must be a short one, as lengthy and perplexing trademarks can be forgotten easily
• It should not be too lengthy & perplexing to be forgotten easily. In short, the trademark has to be simple so that it can be remembered
• Most importantly, a good trademark should be unique. It should not be similar to any trademark that is already popular or registered
• A clear and concise mark ensures that the consumer is not left in a confused state, or in doubt, regarding the nature of the product or the service offered
• Most often the best trademarks are referred to be invented or coined words, or perhaps some distinctive geometrical designs
• The chosen trademark should not reflect the description of the product. One of the key attributes of a good trademark is that it should be suggestive of the quality
• If you so desire to register a good trademark, you should choose one that is excluded from the list of the prohibited class, as mentioned in the Trademark Act.

In general a manufacturer of goods is free to adopt any mark to distinguish his goods. There are few exception to this as mentioned in Emblems and Names (Prevention of Improper Use) Act, 1950

(Some examples :The name, emblem or official seal of the United Nations Organization. 2.The name, emblem or official seal of the World Health Organization. 3.The Indian National Flag. Also, The name, emblem or official seal of the President, Governor. .The names “Ashoka Chakra”)

What is Trademark Registry under Trademark Act?

Section 5 & 6 deals with The Trade Marks Registry. It was established in India in 1940 and presently it administers the Trade Marks Act, 1999 and the rules made thereunder. It acts as a resource and information Centre and is a facilitator in matters relating to trademarks in the country.

The objective of the Trade Marks Act, 1999 is to register trademarks applied for in the country and to provide for better protection of trademark for goods and services and also to prevent fraudulent use of the mark.

The main function of the Registry is to register trademarks which qualify for registration as per provisions of the Trade Marks Act and Rules, and to maintain the Register of trademarks.

The Head Office of the Trade Marks Registry is at Mumbai and branch offices are at Ahmedabad, Chennai, Delhi and Kolkata. For the purposes functions related to international applications and registrations under the Madrid Protocol, an International Registration wing is set up in the Head Office of the Trade Marks Registry at Mumbai.

For the purposes of this Act, a record called the Register of Trade Mark shall be kept at the head office of the Trade Marks Registry, wherein shall be entered all registered trade mark with the names, addresses and description of the proprietors, notifications of assignment and transmissions, the name, addresses and description of registered users, conditions, limitations and such other matters relating to registered trade mark as may be prescribed.

Huge powers are vested in the hands of a registrar of trademark, such powers are with respect to the application, to allow the application of CPC 1908 to review, the power to review his own decisions, power of adjourning the subject matter, power regarding the proceedings of the subject matter. A registrar plays an essential role in the smooth functioning of the registry of the trade mark.

Following documents are open to public inspection on payment of fees :

(a) the register and any document upon which any entry in the register is based.

(b) every notice of opposition to the registration of a trade mark application for rectification before the Registrar, counter-statement thereto, and any affidavit or document filed by the parties in any proceedings before the Register.

(c) all regulations deposited relating to certification trade marks

(d) all indexes kept in the Registry

(e) copies of application for registration pf trade marks.

Certified copies of entries in the register of certain documents open to public inspection may be obtained by any person.

What is trade mark journal ?

Technically, the trademark journal is a weekly update about the registered trademarks that are published by the trademark registry. Trademark journal serves as a vital tool that facilitates details about the recently accepted trademarks that may be infringing upon the rights vested with prevailing trademarks.

A trade journal is a publication written for people who work in a specific trade or industry. Trade journals provide current industry news and articles about new products and trends, including regulatory developments which may affect an industry.

Rights of a Registered Trademark Owner

It is not mandatory to register your trademark. However, registering it provides broader rights as compared to the rights of an unregistered trademark. It is a cumbersome process. But once registered, it leaves with the owner certain valuable rights. Let us list them out.

1. The Right to Exclusive Use

The exclusive right to use the trademark concerning the products and goods for which it was registered, under some conditions. If there are more than one proprietors in whose name the trademark is registered, each of them will have the same right as other unregistered users.

2. The Right to Statutory Remedy for Any Infringement.

As the owner has exclusive rights over the registered trademark, he/she can seek legal solutions to any sort of infringement of their registered trademark, in a manner prescribed by law. 

3. Right to Assign

A registered trademark owner has the right to transfer ownership by the way of license or assignment. They can provide effectual receipts for such assignments.

4. Right to Register Correction

The Owner of a Registered Trademark can apply for correction of the register with regards to the name, address, or description of the registered proprietor. He has the right to even cancel out any entry of trademark on the register, or strike out any class of goods and services from the register.