Friday, January 20, 2012

Intro to Trade Mark Registration

A trademark is a sign or combination of signs that distinguish goods or services of one person or enterprise from those of another[1]. Its origin dates back to ancient times, when craftsmen reproduced their signatures, or "marks" on their artistic or utilitarian products.

The first trademark law in India was passed in the year 1940 and was known as the Trade Marks Act, 1940. This law was subsequently replaced by the Trade and Merchandise Act, 1958. Thereafter the Government of India amended this Act in order to bring the Indian trademark law in compliance with its TRIPS obligations. The new Act that was passed was the Trade Marks Act, 1999. This Act came into force in the year 2003. The Trade Marks Act, 1999 and the Trade Marks Rules, 2002, presently govern the trademark law in India.

The trademark law in India is a ‘first-to-file’ system that requires no evidence of prior use of the mark in commerce. A trademark application can be filed on a ‘proposed to be used or intent-to-use’ basis or based on use of the mark in commerce. The term ‘use’ under The Trade Marks Act, 1999 has acquired a broad meaning and does not necessarily mean the physical presence of the goods in India. Presence of the trademark on the Internet and publication in international magazines and journals having circulation in India are also considered as use in India. One of the first landmark judgments in this regard is the “Whirlpool case” [N. R. Dongre v. Whirlpool Corporation 1996 (16) PTC 583] in which the Court held that a rights holder can maintain a passing off action against an infringer on the basis of the trans-border reputation of its trademarks and that the actual presence of the goods or the actual use of the mark in India is not mandatory. It would suffice if the rights holder has attained reputation and goodwill in respect of the mark in India through advertisements or other means. Another judgment in this regard by the Supreme Court of India is of Milmet Oftho Industries & Ors. v. Allergan, Inc. (2006 (32) PTC 495), in which the court confirmed an order of interlocutory injunction restraining an Indian company from using the trademark Ocuflox and stating that “the mere fact that the Respondents have not been using the mark in India is irrelevant if they were first in the world market”. The interim injunction was therefore not vacated by the Court despite the fact that Allergan, Inc. neither made any use of the mark Ocuflox in India nor was their trademark registered in India. Subsequently, the Calcutta High Court decreed the suit in favor of Allergan, Inc. and against Milmet Oftho Industries who was restrained from using the trademark Ocuflox.

A trademark registration in India gives exclusive proprietary rights to the rights holder for protection of their trademark in India. However as the Indian legal system is based on the common law system, even an unregistered trademark is entitled to protection and the rights holder of the unregistered trademark can initiate action against a third party under the law of passing off.

Daniel & Boaz
Chennai Trademark Law firm
Trademark registration for Tamilnadu, Andhra Pradesh, Kerala, Karnataka, Pondicherry & Lakshadeep is done in the Chennai Trade Mark Registry. We offers free trademark search.
TEL:- 9840787702

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