The world in modern times is on a roll of economic development, as a result of globalization, privatisation and liberalisation, many businesses are being set up in India. Goods and services either produced or provided by an entity or a specific person become a trademark owned by that entity or person when any distinctive sign represents it. This crowded situation creates difficulty for new businesses to give a unique identity to their enterprise or service.

To give their entity a captivating identity, businesses often end up infringing the trademarks of other entities. To regulate such infringements of trademarks the Central Government of India has brought several legislations and amendments, the most effective laws regulating such trademarks in India have been discussed in this Article. This article mainly focuses on the evolution of the trademarks law in India, the current law governing trademarks in India, key provisions of the present law and the process for trademark registration in India.

Evolution Of Trademarks Law In India

Before acts and legislations trademarks were regulated by treaties and conventions globally. In 1266, during the reign of King Henry III, the parliament of England passed the very first legislation governing the Trademarks law in England. This legislation was passed to make it mandatory for every baker selling bread, to give a unique mark to his bread. [1]

A significant turning point in the field of laws governing Trademarks came in the 18th and 19th centuries through the Industrial Revolution. Due to the overgrowing trade and an urgency to legislate the Trademarks Law, The French Government in the year 1857, enacted the 'Manufacture and Good Mark Act'. Later in that century, the British Parliament passed the 'Merchandise Marks Act' in 1862 and the 'Trademarks Registration Act' in 1875.[2]

In India, before the 1940s there were no definite Legislations to govern the trademarks law. The Intellectual property laws in India were governed by the provisions given under section 54 of the Specific Relief Act, of 1877 and the proviso of the Indian Registration Act, of 1908. As a successor to the Trade Marks Act, passed in Britain in the year 1938, the Trade and Merchandise Act, was passed in the year 1940. It was the first law in India that dealt with the regulation of trademarks. A trademarks registry was also established as a result of this legislation.

This law was later replaced by the 'Trademark and Merchandise Act, of 1958', which came as a result of increasing demand for the protection of trademarks. This act was replaced by the Trademark Act, 1999 which was enacted as proof of compliance and adherence with the provisions of the Trade-related aspects of Intellectual Property Rights (TRIPS), 1994.

Definition Of Trademark

Section 2(zb), of the Trademarks Act,1999 defines the term "trade mark". According to this section a trademark is a mark that is capable of being graphically represented. This must also distinguish the goods and services of its owner from the goods and services of others. A trademark can be the shape, packaging or combination of colors of the goods.[3]

Process For Registration Of Trademark

A mark that can be represented graphically and which gives a uniqueness to any goods or services supplied by a business, can be registered as a trademark. Registration of a trademark is advantageous for a business as it provides legal protection and a unique character to that trademark.

Following are the steps for registration of Trademark in India:

• The foremost step for a person or business applying for registration of its trademark should make sure that it has found a unique trademark that is not earlier used or registered.
• An online or a physical application for the registration of this unique Trademark should now be filed to an appropriate Trademark office.
• Certain information including the logo (In case it is applicable) should also be filed with the application.
• An officer appointed by the Trademarks office after examining the application shall either accept or raise objections upon that mark or allow the inclusion of that mark trademark in the Trademark Journal.
• After the publication, the public is allowed to review and raise objections upon the registration of such a trademark within a period of 90 days.
• In case no objections are raised, then the mark gets registered and thus this registration grants a right to its owner to use it as a trademark.[4]

The Present Law:
At present, the law governing trademarks in India is the Act of 1999 i.e., The Trademark Act of 1999. This act was enacted in compliance with the obligations of World Trade Organisation's TRIPS.

This Act provided that those trademarks that are an imitation of any other well known trademark are not permitted. This act came into force on 15th September 2003.

Key Provisions:
Section 2 (z) defines the term 'service' as a service of any description that is provided to potential users. This also includes services provided to businesses in any industrial or commercial matters. These matters can be any of the following:

• Banking.
• Communication.
• Education.
• Financing.
• Insurance.
• Chit funds.
• Real estate.
• Transport.
• Storage.
• Material treatment.
• Processing.
• Supply of electrical or other energy.
• Boarding.
• Lodging.
• Entertainment.
• Amusement.
• Construction.
• Repair.
• Conveying of news or information.
• Advertising.

A major amendment to the trademark laws in India was brought by this Act, as it provided for the registration of trademarks to services along with goods. Chapter 2 deals with the provisions relating to The Register and Conditions for Registration.

Some of the key provisions of this chapter are:

• Section 3 states that the central government may provide a notification in the official gazette and appoint the registrar of Trademarks and his subordinate officers for the purpose of this section.
• Section 7 provides for the classification of goods and services by the registrar according to the International classification of goods and services.
   
• Section 9 provides the absolute grounds for refusal of registration of a mark as a trademark. Some of these grounds are:
  • If a mark is not able to provide a distinct identity to the goods and services of a person, then such a mark shall not be registered as a trademark.
  • A mark that indicates exclusively the characteristics of the goods and services such as kind, quantity or time of production etc. shall not be registered as a trademark.
  • Trademarks that are customary and indicates established practices shall not be registered.
  • Trademarks that can deceive the public or are confusing shall not be registered.
  • If a trademark is religiously susceptible then it shall not be registered.
  • Trademarks containing obscene matter shall not be registered.
     
• Section 11 provides the relative grounds for refusal of registration of a mark as a trademark. Some of these grounds are:
  • Any mark that is identical or similar to any earlier trademark representing goods or services, such a mark shall not be registered as a trademark.
  • If a mark is identical or similar to any other trademark that is well known in India, then such a mark shall not be registered as a trademark.
  • If the use of any trademark is liable to be prevented by the virtue of any law in India, then it shall not be registered.

Chapter 3 deals with the provisions related to the Procedure for and Duration of registration. Where:

• Section 18 talks about the application for registration which shall be made in writing to the registrar by any person who desires to register a trademark.
• This application shall be withdrawn if the person applying desires following the provisions of Section 19.
• Subject to the provisions of Section 19, the trademark shall be registered as per the provisions of Section 23.
• Section 25 deals with the duration, renewal, removal or restoration of a trademark, where the duration of registration is for ten years and can be renewed from time to time.

A major amendment to this Act came in the year 2010 known as The Trade Marks (Amendment) Act, 2010.

The major changes brought by this amendment were:

1. Amendment of Sections 11, 21, 23, 150, and 157.
2. Insertion of new Chapter IV A (defining "Special Provisions Relating To Protection Of Trade Marks Through International Registration Under The Madrid Protocol".
3. Substitution of Section 45 shall now define, 'Registration of assignments and transmissions'.
4. Chapter X is omitted.
5. The Central Government has been empowered to remove difficulties coming in way of enforcing the provisions of the act.

This Act was further amended in the 2016 and rules were introduced in the years 2002, 2013 and 2017.

Judicial Precedents:
In Raymond Ltd V. Raymond Pharmaceuticals, A suit was brought about against Raymond Pharma, a company engaged in the business of marketing and manufacturing, by the plaintiff, Raymond Ltd. There was an objection from the side of the plaintiff regarding the use of their trademark 'Raymond' as a domain name by the defendant. Since the domain name used by the plaintiff is for a different field, the action brought by the plaintiff could not succeed.[5]

In Atlas Cycles (Haryana) Ltd. V. Atlas Products Pvt. Ltd., a suit was filed by the plaintiff holding the trademark 'Atlas', demanding a permanent injunction on the use of the trademark 'House of Atlas' by the defendant. Since the plaintiff filed the suit after 7 years of the incorporation of the defendant company, the court refused to grant an injunction. [6]

In Mankind Pharma Ltd V. Chandra Mani Tiwari & Anr, the plaintiff MANKIND was a well-known pharmaceutical company, the defendant 'Mercykind Pharmaceutical Private Limited' indulged in the business under the trademark- 'MERCYMOX', 'MERCYCOUGH', and 'MERCYCOPE'. A suit for permanent injunction was instituted by the plaintiff against the defendant.

The plaintiff contended that the defendant infringed their trademark 'MANKIND' or their series of marks, 'KIND', as a suffix or prefix. The court, however, gave its judgement in favour of the stating that the use of the mark 'MERCYKIND' does not sufficiently amount to the infringement of the Trademark 'MANKIND' by the defendant within the scope of section 29. [7][8]

Recent Updates:

• The Draft Trade Marks (1st Amendment) Rules, 2024, are recently introduced by the Ministry of Commerce and Industry through its Department for Promotion of Industry and Internal Trade, this came as a modification to the Trade Marks Rules, 2017. [9]
   
• A convenient portal is created by 'VIRTUAL ADVO', which provides an easy way to apply for a Trademark application within 5 minutes, and the acknowledgment for this application can be received within 24 to 48 hours.[10]

Conclusion:
Intellectual Property Law in India is currently the most hyped field of commercial litigation. Regulating different Intellectual Property Instruments (Such as Patents, Copyrights and Trademarks) the Central Government from time to time brings new laws. This article mainly focused on Trademarks and the current Laws in India regulating them. These laws evolved until the final legislation i.e., the Trademark Act, 1999.

Under the provisions of this Act, registration of a trademark is beneficial for any entity as it provides strong protection and a unique identity to the trademark within the territorial boundaries of India. This territorial limitation along with the time-consuming nature of the national trademark registration in India are among the major drawbacks of the present Trademark Law in India. [11]

End-Notes:

• Wilson Gunn, 'History of Trade Marks' https://www.wilso‌ngunn.com/history/h‌istory_trade_marks.h‌tml accessed 27 December 2023.
• The Trademarks Act, 1999 (Act No. 47 of 1999), s. 2 (1) (zb)
• https://www.indiafilings.com/learn/trademark-registration-in-india-a-comprehensive-guide/
• Raymond Ltd. v. Raymond Pharmaceutical Pvt. Ltd.,2016
• Atlas Cycles (Haryana) Ltd. v. Atlas Products Pvt. Ltd., 146(2008)DLT274
• The Trademarks Act, 1999 (Act No. 47 of 1999), s. 29
• Mankind Pharma Ltd v. Chandra Mani Tiwari, AIRONLINE 2018 DEL 689
• https://conventuslaw.com/report/india-summary-of-the-draft-trade-marks-1st-amendment-rules-2024/
• https://www.barandbench.com/news/corporate/trademark-emerge-legal-new-venture-virtual-advo
• https://www.worldtrademarkreview.com/guide/india-managing-the-ip-lifecycle/2024/article/advantages-and-drawbacks-of-trademark-and-design-protection-in-india