GENERAL INTRODUCTION TO TRADEMARK

by Prajaktha Jade

Abstract:

Intellectual Properties are treated as Intangible Properties which are protected under special Laws. Intellectual property rights bestow on people with ownership rights over their innovations or creation. Intellectual property rights are subject to the principle of territoriality, their protection is limited within the territorial jurisdiction of the National granting authority. With ever increasing commercialisation and cross border trades the laws regulating it have not fulfilled the cause that was bore in mind while enacting them.

Introduction:

Trademark law confers an exclusive right on the owner to use his mark to distinguish his goods or services from competing products. It grants the owner of protection from circulation similar or deceptively similar goods bearing his trademark. Trademark owner draws his protection from the provisions of trademark law, which protection, however cannot reach further than the territorial boundaries inside which this law is enforceable [1].

The conflict between the requirements of a global economy and territorial nature of intellectual property rights is characteristic of the pressure that globalisation exerts on traditional notions of territorially delimited jurisdictions, an issue by no means limited to or a specialty of intellectual property law. Harmonisation or unification of law, regional or world-wide, is one solution [2].

As Goods are made where the business decisions of globally operating enterprises expect pecuniary advantages, efficiency and quality they are by nature territorially limited.

The challenge in Private International Law is determination of extent of conflicting principles of law governing physical property, it should be held equally applicable to intangible property rights. It is obvious that the classic rule of lexreisitae cannot have unqualified application where the ‘res’ involved is an intangible concept like business good will. With regard to trademarks, both domestic and international, the problem is further complicated by the uncertainty which prevails concerning the true legal basis for protection of these symbols of good will [3].

History:

India did not have Trademark law before 1940. Section 54 of Specific Relief Act, 1877 dealt with infringement suit of registered and unregistered marks and Indian Registration Act,1908 adjudicated registration. In 1940 Trademark Act was enforced, as a result of growing trade and commerce there was an increase in demand of registration and protection.

In 1999 Trademarks Act was enacted complying with the Trade Related aspects of Intellectual Property Rights (TRIPS). In 1994 TRIPS was brought under WTO considering the number of trades taking place and lack of uniform laws among the countries involving in trade which had its repercussions. All signatory countries of World Trade Organisation WTO were bound by the principles of TRIPS.

Trademark

The Trade Marks Act, 1999 is to apply throughout the length and breadth of Indian. Trademark is defined as a mark being represented graphically, and capable of being distinguished. These are assigned for marks or designs of a brand as its recognition and it includes

Goods
Services
Mark
Trade Mark
Collective Mark

It further includes possible

Shape of goods
Their packaging
Combination of colours

Paris convention gave a blanket protection with uniform rules to all seeking to register and protection against infringement. There were 3 major rules which were to be followed by all the signatory countries.

Right to Priority
National treatment
Minimum Standards

Registration and Designation of a Trade Mark

The Central Government has appointed the Controller General of Patents, Designs and Trademarks, to be the registrar of the Trademark. The registration of trademarks are simplified and the registrar is conferred with authority from the government under the Act.

There is no mandate as to the registration of a mark as in cases of a Patent to be able to sue. A registered trademark can sue for Infringement under the enactment while an unregistered one can only seek passing-off. There is no mandate that a brand must be registered in every country to be able to sue an infringer of that domicile. TM owners can sue as National treatment is a uniform rule as per the Paris Convention.

There is protection to certain brands under Well-known marks, they would have gained a reputation on the quality or quantity of their products or services.

For instance, Tesla is not registered in India. Though not registered in India they can bring a suit for infringement as they have a good will. Such well-known marks need not necessarily prove date of registration as they would have gained a ‘good will’ over the years. So is the case with NIKE, PUMA, ADIDAS, etc.

Designation of trademark is to recognise their status. The marks having suffices denote as follows:

TM: cis used to represent an unregistered Trademark.
SM: is used to represent an unregistered Service mark.
A circled R: is used to denote a registered Trademark.

Territorial Jurisdiction

A Civil or Criminal Suit can be filed in respect of IP’s. However there are certain limitations to it like patents and designs cannot be sought under criminal suit. Type of proceedings can be chosen depending on objective, circumstances, time and financial ability to institute a matter.

When a Civil suit is to be instituted for Intellectual Properties it shall be instituted in a Court not lower than a District Court or in the High Court. District Courts have original and unlimited pecuniary jurisdiction. All IP relating suits are admissible as Civil Suits. Reliefs granted in a Civil Suit are Injunction and Costs or damages available High Courts also have first instance jurisdiction in IP cases exceeding certain pecuniary limits. Writ Jurisdiction is also available against decisions of IP registers, Patent offices, Trademark registry, etc. in cases of violation of Principles of Natural Justice. Appeals may also lie against the orders of Intellectual Property Appellate Board (IPAB).

Section 20 of the Civil Procedure Code,1802 lays down provisions of Jurisdiction; where Defendant/s reside, carry on business or personally work for gain; or Where the Cause of Action (CoA) or any part thereof, arises.

Carrying on Business: Under Section 20, Defendant Corporation is deemed to carry on Business:

As its Sole or Principal Office; or
As its Subordinate Office where the Cause of Action has arisen.

In Bristol-Myers Squibb Company and another v. VC Bhutada and other [4], the Delhi High Court held that to determine that a defendant ‘carries on business’, the plaintiff has to prima facie show through facts enumerated in the plaint that there is an apprehension of ‘offer to sale’, which gives rise to a cause of action. The veracity of the apprehension cannot be challenged at the preliminary stage and would have to be determined at trial.

The cases where validity of registration of an IP is in question, Indian Courts shall have jurisdiction only if it is registered in India. However, it is possible for a foreign entity to challenge the validity of registration of an IP granted in India.

The Supreme Court emphasised in the case of Dodha House v. S K Maingi[5],

Carrying on business at a place through an ‘Agent’- Plaintiff has control/ voice/ say in operation;
Agent must ‘exclusively’ attend to business of Principal under the principal’s name; and
‘Essential part of the businesses must take place at that place.

Section 62(2) of the Copyrights Act, 1957 and Section 134(2) of the Trade Marks Act, 1999, Long-arm Jurisdiction was provided in these Sections so the Plaintiffs are not debarred from institutions of Suits.

In the case of Exphar SA v. Eupharma Laboratories [6], the Apex Court held that ‘Additional grounds’ are over and above ‘Normal grounds’ as in Section 20 of CPC.

Overlap of Cause of Action and Plaintiff’s place of business:

When there is an overlap between the CoA and the place of business of Plaintiff the suit is to be instituted in that jurisdiction.

The Apex Court in 2015 in the case of IPRS v. Sanjay Dalia [7], insinuated Right of Plaintiff to sue at an additional place is subject to restrictions- deeming provisions of Explanations to Sec. 20 CPC as regards “carrying on Business”.

In the case of Patel Roadways Ltd. v. Prasad Trading Company [8], the Court laid rules as to bringing a correct Jurisdiction. Where Corporation carries on business at a place where presence of its Office (principal/ subordinate) overlaps with the CoA. Only in absence of such overlap is it the place of Principal office.

Trademarks are inclusive of designs, logos, labels which qualify as Copyrights, a criminal suit can be initiated on the basis of copyrights. As neither of its registration is mandatory in law, redressal of it is better under criminal law.

IP disputes are now considered as commercial disputes under Commercial Courts Act, 2015. The Act modified the procedural law to expedite and manage timeline, these are heard by special Court benches.

Reliefs granted

Injunctions

Could be temporary or permanent injunctions maybe granted as the case may be. Recently the Delhi High Court granted Dynamic injunctions considering the role of internet in a business.

Anton pillar orders

Search and seizure orders in cases of apprehension or anticipation of an infringement.

John Doe order

For obtaining evidence of infringement, where name of the infringer is not identifiable but there is a reasonable belief of place of infringement, popularly known as Ashok Kumar orders. A Court Commissioner is appointed, he is an extended arm and agent of the Court.

Disclosures

To disclose places where infringing materials are made or stocked up.

Accounts of profits and damages
Deterrents

Costs may be awarded, damages maybe made good. There are cases which lead to imprisonment depending on the nature of the case, Contempt of Court like disobedience of orders of the Court.

Alternate Dispute Resolution System (ADRS)

Private International Law related to quick redressal of issues as the territory would be an issue for institution of suit and cause inconvenience to parties to attend the adjudication. When matters are international alternate resolution systems or Intellectual Property Appellate Board (IPAB) are preferred as the forum for suit institution. Orders passed are called Awards and are non-appealable. Arbitration, Conciliation, Mediation and Negotiation are the modes of ADRS, they are functional within the limits of India as well as between Foreign Countries.

Conclusion:

The advent of globalization is one of the reasons for increase in rate of infringement seeking unlawful gain between traders and countries. IPs should be provided protection over territorial boundaries, while its registration and course of trade must be closely regulated to facilitate easy dispute resolution if any arose.

Endnotes:

The principle of territoriality in the Trademark law of the Common Market Countries, H W Wertheimer (June. 22, 2021, 2:45 PM),

https://www.jstor.org/stable/757436

Territorial Intellectual Property Rights in a Global Economy – Transit and other ‘Free Zones’, Alexander von Muhlendahl and Dieter Stauder (June. 22, 2021, 3:10 PM),

https://link.springer.com/chapter/10.1007/978-3-540-88743-0_46

Territorial Scope and Situs of Trademarks and Good Will, Walter J Derenberg (June. 22, 2021, 2:50 PM),

https://www.jstor.org/stable/1071060

Bristol-Myers Squibb Company and another v. VC Bhutada and other, CS (OS) No:2801 of 2012
Dodha House v. S K Maingi, CA No: 6248 of 1997
Exphar SA v. Eupharma Laboratories, CA No: 1189-1190 of 2004
IPRS v. Sanjay Dalia, CA No: 4912/2015
Patel Roadways Ltd. v. Prasad Trading Company, 1992 AIR 1514
Picture: Simandsam