History and Development of Trademarks in India

Introduction

The creative genius of human beings creates intellectual properties, which in turn generate wealth, if properly exploited. Since it is essentially a creation of the mind, it is therefore called intellectual property. Inventions, industrial designs, literary and artistic works, symbols used to promote commerce are some commonly known forms of intellectual property.[1]

There exist 4 main types of Intellectual Properties:

1. Trademark
2. Copyright
3. Patent
4. Trade Secret

What is a trademark?

A trademark in general definition, is a symbol, form, letter or device a vendor or manufacturer assumes or utilizes to distinguish the goods that he manufactures or sells from goods that another sells or manufactures to the extent that he attains sole proprietorship; and therefore ensure the security of profits that result from his goods having stood for superior skill, industry or enterprise.

“Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof. [2]

“Trademark” means a mark capable of graphical representation; and which is capable of distinguishing the goods or services of one person from those of others. It may include shape of goods, their packaging and combination of colors: and

 (i) in relation to Chapter XII (other than section 107), a registered trademark or a mark used in relation to goods or services to indicate or to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark: and

(ii) in relation to other provision of this Act, the use or proposition of using a mark in relation to goods or services to indicate or so to indicate a connection in the course of trade between the goods or services as the case may be; and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trademark or collective mark.[3]

A trademark is divisible into these distinct categories:

1. Collective Mark (e.g., the “T” of Tata Sons)
2. Certification Mark (e.g., the ISI mark)
3. Pattern Mark (e.g., the famous Burberry Check pattern)
4. Product Mark (e.g., the Nestle logo)
5. Service Mark (e.g., the Apple logo of  Apple)
6. Shape Mark (e.g., the shape of a Kit-Kat chocolate)
7. Sound Mark (e.g., MGM’s roar of a lion)

History and Evolution of Trade Mark Laws in India

Before the introduction of legislation governing the law of trademark in India, common law and equity principles protected the rights which trademark now provides. The owner of the trademark had to seek common law remedy of passing off against infringement of his mark. A large number of Indian legislations are the subsequent results of enactment of English laws for the Indian subcontinent before independence. The passing of The English Act in England in 1875 prompted the introduction of analogous legislation in India.

Thereafter, Bombay Chamber of Commerce made requests for introducing a Bill in the legislative council similar to the English Act, 1875. Subsequently, the government considered the matter and introduced the Trademark Bill in 1879. Unfortunately ,the bill did not receive much support or success; and hence there was no further procession. 

However, in the 19th century there arose a need for legislation exclusively for trademark practice and laws in India again. This need materialized into the Trademark Act of 1940. This piece of legislation emulated the provisions of the UK Trademark Act, 1938. Before the implementation of this legislation, the governing of trademark dispute occurred in light of Section 54 of the Specific Relief Act of 1877.

To bridge the gap in the Trademark Act, 1940, the birth of Trade and Merchandise Marks Act of 1958 took place . The provisions regarding trademarks in IPC and Cr.PC were also amalgamated in the Trade and Merchandise Marks Act, 1958.

Further, the Trade and Merchandise Marks Act of 1958 was replaced by the Trademarks Act of 1999. The latter currently governs the trademark practice in India in harmony with the Trademark Rules, 2002. The intention behind the enactment of the 1999 Act was to address the lacuna that arose upon globalization and rapid technological developments. The Indian Trademark practice is now wholly compatible with the TRIPS agreement owing to the 2002 Amendment.

Conclusion

The evolution of trademark laws in India was necessary to ensure the protection of individual businesses and avoid fraudulent transactions and the deception of consumers and clients. The unique feature of the trademark which distinguishes it from other categories of IPR is that trademarks are given legal protection, not for a fixed term but an indefinite term, provided other legal conditions as renewal are fulfilled.  

In Laxmikant V. Patel vs. Chetanbhai Shah[4], the Supreme Court has explained the objective of trademark law in these words: 

“The law does not permit anyone to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith.  There are two reasons, firstly, honesty, and fair play are and ought to be the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else, it results in confusion and has the probability of diverting the customers and clients of someone else to himself and thereby resulting in injury.”

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References:

[1] Law Relating to Intellectual Property Rights, 5^th Edition, M. K. Bhandari

[2] Section 2(1)(m) of Trade Marks Act, 1999

[3] Section 2 (1) (zb) of Trade Marks Act, 1999

[4] AIR 2002 SC 275