Trademarks can be said to be anything in the form of words, symbols, designs, phrases which denote the origin of a product and where it comes thereby distinguishing the same from that of others. It can include in itself anything which is capable of being represented graphically like a combination of colours, signatures, numerals, etc.

The Trademarks Act of 1999 deals with the definition of a trademark in its Section 2(1) (zb). This brings along a lot of goodwill and loyalty attached to the product and the brand. Trademark protection thus becomes imperative in this time of ever-growing industrialization to prevent exploitation of flourishing businesses, thereby paving the way for the development of Trademark laws.

Trademarks in India are statutorily protected under the Trademarks Act, 1999, against infringement and under the Doctrine of Passing off which is a common law concept. This concept can be said to be regulated broadly by the Ministry of Commerce and Industry under which it is particularly overlooked by the Controller General of Patents, Designs and Trademarks.

The main object of Trademark laws remains to provide a simple, easy, and speedy course of action for registering trademarks and tradenames. It therefore also talks about rights available to the Trademark owner in case of its infringement, and thereby also enforces liability and penalties upon the infringer. It must be noted that India is a "first to use "country rather than a "first to apply" one. They are based on the principle of "distinctiveness".

Evolution Of Trademark Laws In India

Before 1940 there was no law in place which could as such adjudicate matters relating to Trademarks, its infringements, the law of passing off, etc. in India. In such a case of absence of Trademark laws Section 54 of the Specific Relief Act, 1877 was applied along with obtaining registration under the India Registration Act, 1908.

This made the nation realize the need for having full-fledged Trademark laws that could adjudicate such matters. The immediate consequence of this was the formulation of Indian Trademarks Act, 1940 mapped in such a way that it was in conformity with the English Trademarks Act.

With the increasing growth in Trade and Commerce, there arose a need for easy registration and protection of Trademarks so as to avert fraudulent practices. In order to fulfil these objectives, the above-mentioned Act was now replaced by the Trademark and Merchandise Act, 1958. The law also aims at providing the right to use the Trademark exclusively to the owner.

The aforesaid Act was then repealed upon the recommendations of the World Trade Organisation, and the Trademarks Act, 1999 paved its way so as to the Trademark laws of India being in conformity with the TRIPS (Trade-Related Aspects of Intellectual Property Rights) Agreement.

Trade Marks Act, 1999

It was for the very first time by the virtue of this Act, that Service marks and Collective Marks were provided for by the law. When a mark is procured for conducting business by rendering services and that the mark is used for differentiating the services from that of the competitors is a service mark. While collective marks are those marks which are used by an organisation as a whole, to indicate material, geographical origin, manufacturing method or such other common characteristics of that association, while significantly distinguishing themselves from other enterprises.

The Act also spoke about the special rights of well-known marks in contrast to normal Trademarks. Moreover, it explicitly mentioned the power of the police to arrest in Trademark infringement cases.

In contrast to the earlier Act, the new one provides for concrete definitions of frequently used terms, greater punishments for infringers, and primarily non-traditional marks are now qualified for registration. There is no more the need to file separate applications for trademarks , a single application can now be filled for registering of trademarks under different classes.

A mark now remains unchanged even when an application is made for an amendment in it and can now be assigned for further use. A procedure for mark cancellation can now be initiated against those entities who have a similar mark registered. An appellate board is set up under the same to render to speedy adjudication of matters.

It also provides for maintenance of a single register instead of having two parts to it. The mark stands cancelled if not used for a continuous period of 5 years and 3 months and stands valid for a tenure of 10 years. It can further be renewed for another 10 years.

It establishes a Trademarks registry with its headquarters being at Mumbai and branches at Calcutta, Delhi, Madras, and Ahmedabad.

Grounds For Refusal Of Trademark Registration

The Trade Marks Act of 1999 enlists various situations where the registration of the Trademarks can be refused by the registry or the Trademark office. Section 9 of the Act enumerates the various Absolute Grounds upon which Trademark protection can be refused.

These grounds include such Trademarks which are devoid of distinctive characteristics or are of such nature that represent in itself the kind, quality, intended purpose, values, geographical origin or in fact the time at which those goods were produced or in such a case where those goods have become conventional in respect to the use of current language or in the practices of trade, previously so established.

Marks which may likely seed deception or confusion to the public or contain matter which may hurt religious sentiments of people or embraces scandalous or obscene matter may also be denied registration under the section. A mark shall also be shall also be refused registration if it is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

A mark that contains in itself the shape of certain goods which are a resultant of the nature of the goods or depicts a material which is a pre-requisite to obtain a particular technical result or that it attributes substantial value to the goods are also liable to be refused registration on absolute grounds of refusal as mentioned under Section 9 of the Trade Marks Act, 1999.

In the case of East End Hosiery Mills Private v. Agarwal Textiles Mills[1], the Calcutta High Court ruled out that there is no particular period in time in which distinctiveness of a mark can be obtained. Some entities might take more time to establish their distinctive character while others may take lesser amount of time for the same.

Moreover, the Act also specifies relative grounds on which a business entity can be denied registration for its mark. In case of a mark's association with an already established mark, which is likely to cause confusion amongst the public, the mark in such a case can be refused registration.

A mark can also be denied registration if a mark is identical to a well- known Indian trademark, which can in turn prove to be injure the image, goodwill or the reputation well-known trademark or in a case where the mark is entitled to be protected under the copyrights law or Passing Off.

Section 11 of the aforementioned Act talks about various relative grounds for refusal of a trademark application. It also provides that identical marks can be registered if they deal in products of two different or unrelated markets/industry and shall not be refused registration as long as they do not cause confusion amongst the public.

Trademark Infringement

Where the Trade Marks Act, 1999 protects trademarks in India, it provides for remedies against infringement. Infringement is the unauthorised use of a registered trademark, which is deceptively similar or identical in its look. Deceptively similar here means that when a customer on an average, looks at the product, it is likely that he will be confused as to the origin of the product.

Infringement may either be direct or indirect. Above stated was an example of direct infringement by an unauthorised user. Furthermore, direct infringement of trademarks is dealt under Section 29 of the said Act. For direct infringement to take place, the product with which the mark is being used fraudulently must be of the same class as that of the registered mark.

In case of indirect infringement, there are no specific provisions mentioned in the Act which specifically deal with indirect infringement of trademarks. However, adding to this are the globally accepted principles of contributory infringement and vicarious liability which apply here. Section 114 of the Act also prescribes that if a company commits an offence under this Act, the company as single legal entity shall be liable for the offence until and unless the act is committed in good faith or without knowledge.

Penalties For Trademark Infringement

Trademark infringement in India is also a cognizable offence.
Hereunder stated are the various kinds of civil penalties that the court has jurisdiction to award in such cases of infringement;

• Permanent injunctions,
• Temporary injunctions,
• Damages,
• Cost of legal proceedings,
• Destruction caused to goods by the infringing mark,
• Accounts of profits in terms of damages awarded in lieu of the profits gained by the infringing mark.

When a criminal proceeding is initiated, punishments of the following nature are be awarded;

• Imprisonment that may amount to a time period of a minimum of 6 months and for a maximum period of 3 years,
• A penalty /fine which does not amount to more than Rs.2 lacs but amounts to a minimum of Rs.50, 000.

Infringement Not Amounting To Offence

Section 30 of the Act talks about the various situations when trademark infringement does not constitute an offence .These are resorted to as a good defence by infringers.

The conditions are enumerated as follows:

• Trademarks used in honest intentions for commercial purposes,
• When the trademark is not used to confer upon itself any undue advantage,
• When the use of mark falls outside the ambit of registration,
• In a case where the infringed mark indicates or represents certain kind , quality, amount, evolution, objective, purpose etc
• When there is implied consent,
• When the trademark is used in relation to associated parts and accessories,
• When trademarks used are similar or identical.

Doctrine Of Passing Off

When an unregistered mark is misused or infringed upon, it is the law of passing off that extends shelter to it thereby protecting it. Section 27 of the Trade Marks Act, 1999 deals with this common law Doctrine of Passing Off and the protection so provided by it to unregistered marks.

Thus, an unregistered trademark owner can also sue another for its infringement and for deceiving the public by using a mark that is attached to his product/ service, thereby affecting the business's goodwill and reputation in the market. He, as a result can also oppose a trademark application as per the grounds mentioned in Section 11 of the Act.

All that the Petitioner in such cases is supposed to prove is that his business had prior usage of the mark and this use of mark has attributed a certain degree of goodwill to the company and the business.

In the case of Reckitt & Colman Products Ltd. v. Borden Inc.[2] the House of Lords held that in order to prove a Passing off case, following must be proved;

• The proprietor owned goodwill in the market,
• There was misrepresentation done by the defendant and
• There was a loss of proprietor's goodwill due to this misrepresentation.

The main aim of this concept remains to protect all business interest's and that no business can deceit and function itself upon another's goodwill.

The Passing Off Test

• In the case of Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.[3] , the Supreme Court of India in this case ruled out the test of passing off based upon the postulate that nobody can sell someone else's goods as his or her own.
• In another case of Erwen Warnink BV v. J.Townend & Sons[4] , the 5 components of the passing off law were state, which are mentioned as follows:
  
  1. There must be misrepresentation,
  2. This misrepresentation must be made by a business entity while conducting business,
  3. This must be towards the potential or the ultimate consumers of the products,
  4. This must be done to harm the already established mark's goodwill, and which is reasonably foreseeable,
  5. This must all cause actual loss of identity/ image/ goodwill to the proprietor of the already established mark.

It was also held that delay in bringing the case to the court shall not be a basis to reject or defeat the petitioner's case.

Distinction Between Passing Off And Passing Off Trademark Infringement

The distinction between an action for trademark infringement and a passing off action was clearly made out in the case of Cadbury India Limited and Ors. v. Neeraj Food Products[5].

The key points that were observed in the case are follows:

• A trademark infringement is primarily a statutory remedy, whereas the passing of action is a common law remedy.
• Use of the registered trademark by the defendant is a prerequisite for trademark infringement, which is not necessarily the case in case of passing off.
• In case of infringement , the owner of the registered trademark claims to have exclusive rights over the mark in context of those goods, whereas the action of passing off arises in case of deceit , that is when one tries to portray his/her goods as that of another.
• Where the defendant adopts the essential features of the plaintiff's trademark, however in some way or the other through get up, writing or packaging reveals that the origin is different from that of the proprietors goods, is not going to constitute a good defence. The liability in such cases is absolute. However, in case of passing off, the defendant may be able to escape from liability if he manages to prove that the material so published upon the articles offered for sale, are enough to prove the distinction as to the proprietor's and his products and their origin thereof.

In the famous case of S. Syed Mohideen v. P. Sulochana Bai[6], the Supreme Court held that the remedy of passing off is broader in comparison to trademark infringement. The reason for this being that no person can represent his business as that of the other.The passing off action is maintainable for various reason in contrast to infringement of registered mark which are merely the rights conferred under the Act.

Trade Marks Rules, 2017

The Act is accompanied by a set of rules, commonly referred to as the Trade Marks Rules. They were first introduced in the year 2002 and were implemented in September 2003 along with the Act. They were further amended and implemented in the year 2017. In order to simplify and quicken the application process, they brought along major changes. Primarily the forms were reduced to 8+1 (miscellaneous) from almost 75 as of earlier.

The major change that came along was that sound and 3-D marks could now be registered. They promoted online filing, trials could now be done via video conferencing. It also provided for different fees structure for different kinds of enterprises, start-ups, and individuals.

Convention Countries

The Central Government apprises certain nations to be Convention Countries. These are those nations that grant to Indian Citizens similar rights as that of citizens in their own home countries for fulfilling duties set out under any convention, treaty, or any such obligation which both the countries are a part of or have ratified the same.

A claim of the priority date of an application in the Convention Countries in case of a Trademark registration application can be made in respect of applications in India. This can be done only when an application is filled here within a period of 6 months of filling it in their respective convention countries.

India has also affirmed and enlarged this prerogative of priority to the nations who approve of the Paris Convention on Protection of Industrial Property and rigorously work upon achieving the duties and obligations set out by it.

Madrid Protocol

The Parliament of India introduced and passed the Trade Marks (Amendment) Bill, 2009 in order to enact the Madrid Protocol which proposed to deal with international registrations of Trademarks and their protection thereof.

The Trade Marks (Amendment) Act, 2010 passed on the 21st of September, 2010 on notification brought into force within the Indian Territory the Madrid Protocol in order to simplify and smoothen the process of applying and registering Trademarks and Trade names internationally. Applicants who want to apply for a trademark internationally will now be able to do the same through one single application.

This thus enables one to apply in several countries following the protocol with a single application for registration of their mark and thereby entitles them to protection and trademark rights thereof. This would help in avoiding the technical, procedural, and cost ineffectiveness in international applications of trademarks as of before.

Earlier business proprietors had to file separate applications in the different countries they had to file and register their trademark. A separate fee for each application was also applied, as a result. This made the procedure very lengthy, haphazard, and costly.

The protocol covers almost 122 countries. For registering a trademark in any of these Madrid Protocol approved nations only a single application is to be filed accompanied by a single set of prescribed fees. It is thus a cost-effective, time-saving, and procedurally viable method that is more centralized in nature.

Nice Classification

For the purposes of classification of goods and services, India adheres to the Nice Classification for registering trademarks. It sets out international standards for the categorization of goods and services in various categories and was issued by the WIPO (World Intellectual Property Organisation) for the same.

The classification came into force by the Nice Agreement, 1957, and sets out the international standards for the classification of goods and services for trademark registrations. It was signed in Nice, France based on the above mentioned multilateral treaty. Initially, every 5 years, an updated version of the classification was published, however following 2013, the same is being published annually. It also addresses the registration on service marks. Official documents of registered trademarks, service marks, or their respective applications must always contain the class in which they are already registered or wishes to be registered.

Vienna Agreement

International standards as to the classification of constituents related to figures in marks are governed by this agreement. The agreement can be implemented by any signatory to the Paris Convention. The ratification or accession tools must be held by the WIPO. There is frequent review/ renewal of the application. Official documents of registered trademarks, service marks, or their respective applications must always contain the numbers, categories, and sections so attributed to them.

Conclusion
Trademarks are an integral part of intellectual property. In this time of increasing competition in the market, trademarks become crucial for the determination of the uniqueness and distinctiveness of a producer's goods/services. They can be related to the profile or the persona of product/service. In such a case of infringement of trademarks, loss of goodwill is a direct consequence.

The above-mentioned Laws, Treaties, and Conventions can, therefore, be said to be formulated for aiding this process and ensuring the welfare of all by protecting the originality of the product and preventing it from improper usage. It can be said that India has the best of Trademark laws, however, there is always a scope of improvement. The incorporation of odour as marks is yet an unexplored zone.

End-Notes:

1. AIR 1971 Cal 3
2. [1990] 1 All E.R. 873
3. 2001 PTC 541 (SC)
4. [1979] AC 731
5. 2007 (35) PTC 95 Del
6. 2016 (66) PTC 1