Trademark Laws & Regulation
History of Trademark Legislation in India
- The Trade Marks Act, 1940 (5 of 1940) was the first statute law on trade marks in India. Prior to that protection of trade marks was left to the governed by Common Law. Cases concerning trade marks were decided in the light of section 54 of Specific Relief Act, 1877, while registration was secured by obtaining a declaration as to ownership under the Indian Registration Act, 1908.
- Some of the provisions of the first Trade Marks Act, 1940 came into force on 11.3.1940 and the rest became effective on 1.6.1942. The said enactment was amended by the Trade Marks Amendment Act, 1941 (27 of 1941) and later by two other amendments. By the Trade Marks Amendment Act, 1943, the Trade Marks Registry, which was formerly a part of the Patent Office, Calcutta was separated from the Patent Office to constitute a separate Trade Marks Registry under a Registrar of Trade Marks at Bombay (now Mumbai). Thereafter, the Act was amended by the Trade Marks Amendment Act, of 1946, to give effect to the reciprocal arrangements relating to trade marks between the Government of India and the then Indian States and further amendments introduced by Part B States Laws Act, 1951.
- The Trade Marks Enquiry Committee, which was constituted by the Government of India in November 1953, recommended some changes but since the report showed some divergence of opinion among the members , Mr. Justice Rajagopala Ayyangar, (then a Judge of the Madras High Court, who later served and retired as a judge of the Supreme Court) was appointed by the Government of India to examine the Trade Marks Act, 1940, with reference to the report of the Trade Marks Enquiry Committee and to recommend as to what changes in the then existing law were necessary. On the basis of the report of Mr. Justice Ayyangar the Trade Marks Act, 1940 was replaced by the Trade & Merchandise Marks Act, 1958.
- The 1958 Act consolidated the provisions of the Trade Marks Act, 1940, the Indian Merchandise Marks Act, 1889(which was in force since 1.4.1889) and the provisions relating to trade marks in the Indian Penal Code. The Trade & Merchandise Marks Act, 1958 (Act 43 of 1958) was brought into force on 25th November 1959. Certain minor amendments were carried out by the Repealing & Amending Act, 1960 (58 of 1960) and the Patents Act, 1970 (39 of 1970).
- The Trade & Merchandise Mark Act, 1958 has been revised and replaced by the Trade Mark Act, 1999. The process started as it was felt that a comprehensive review of the 1958 Act be made in view of new developments in trading and commercial practices, increasing globalization of trade and industry, the need to encourage investment flows and transfer of technology, need for simplification and harmonization of trade mark management system in the country. The Trade Marks Bill, 1993 was introduced in the Lok Sabha on 19.5.1993, which was passed by the Lok Sabha on the lines recommended by the Standing Committee. However, as the Bill failed to get through the Rajya Sabha, it lapsed on the dissolution of the Lok Sabha. A new Bill titled as Trade Marks Bill, 1999 (Bill No.33 of 1999) was introduced in Rajya Sabha and eventually passed by both the Houses of Parliament. The Bill received the assent of the President on 30.12.1999 and became an Act.
- The current law of trade marks contained in the Trade Marks Act, 1999 is in harmony with two major international treaties on the subject, namely The Paris Convention for Protection of Industrial Property and TRIPS Agreement to both of which India is a signatory.
Sailent Features of Trademark Act 1999
The salient features of this Act briefly are as set out in the Statement of Objects and Reasons annexed to the Trade Marks Bill:
- providing for registration of trade mark for services, in addition to goods;
- registration of trade marks, which are imitation of well known trade marks, not to be permitted, besides enlarging the grounds for refusal of registration mentioned in clauses 9 and 11. Consequently, the provisions of defensive registration of trade marks are proposed to be omitted;
- amplifications of factors to be considered for defining a well known mark;
- doing away with the system of maintaining registration of trade marks in Part A and Part B with different legal rights, and to provide only a single register with simplified procedure for registration and with equal rights;
- Simplifying the procedure for registration of registered user and enlarging the scope of permitted use;
- Providing enhanced punishment for the offences relating to trade marks on par with the Copyright Act, 1957 to prevent the sale of spurious goods;
- Providing an Appellate Board for speedy disposal of appeals and rectification applications which at present lie before High Courts;
- Transferring the final authority relating to registration of certification trade marks to the Registrar instead of the Central Government;
- Providing enhanced punishment for the offences relating to trade marks on par with the present Copyright Act, 1957, to prevent the sale of spurious goods;
- Prohibiting use of someone else’s trade marks as part of corporate names, or name of business concern;
- Extension of application of convention country to include countries which are members of Group or union of countries and Inter-Governmental Organisations;
- Incorporating other provisions, like amending the definition of “trade marks;, provisions for filing a single application for registration in more than one class, increasing the period of registration and renewal from 7 to 10 years; making trade mark offences 9 cognizable, enlarging the jurisdiction of Courts to bring the law in this respect on par with the copyright law, amplifying the powers of the Court to grant ex parte injunction in certain cases and other related amendments to simplify and streamline the trade mark law and procedure.
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Trademark Act 1999
Trademark Rules 1999