What Are the Changes in Trademark Act 1999 Over Trademark and Merchandise Act 1958?
In India the first Trademark legislation was Indian Merchandise Act, 1889 where the disputes or problems relating to the infringement of Trademark or passing off were decided under of s. 54 of the Specific Relief Act 1887 and registration problem was tackled under the Registration Act 1908. This act was repealed in the year 1940 and was followed by the enactment of Trademark Act 1940. In the year 1958, The Trade and Merchandise Marks Act was adopted which repealed the Indian Merchandise Act, 1889 and Trademark Act 1940 and was provided with s.129 for the registration of Trademarks.
Further, in the year 1999, Trademark Act was adopted which came into force on 15th September, 2003 which repealed The Trade and Merchandise Marks Act, 1958.
Salient Features of the Trade and Merchandise Act, 1958
• The Trade and Merchandise Marks Act, 1958 provides for the creation of a Trade mark Registrar where an individual or firm could register their Trade mark in the office of Mumbai, Delhi, Chennai, Kolkata and Ahmedabad. The Act provided with the ground of registration and refusal to register trademark
• The trademark Act, along with rules, creates 34 classes. A class covered similar and related goods.
• A trademark could be registered only if it met certain criteria. It could not be registered in the following situations.
1. Different Laws may prohibit or restrict use of certain names and marks.
2. Descriptive or laudatory words cannot be registered.
3. It should not ‘deceive or cause confusion’
• A trademark could be registered only if it was established that it had become distinctive of the goods of the trader.
• Discouraged foreign trade names and encouraged Indian marks of domestic firms.
• Common law remedy of passing off was available.
The Act of 1958 was ‘nationalist’ reducing the presence of foreign trade marks and guarding marks of domestic firms, the new law, understandably, has reversed to give
Overwhelming protection to foreign trade marks.
Provisions in the new law, the Trade marks Act, 1999:
• Service Marks were included which have made seven classes of services. A mark associated with a service could be registered under the Act.
• The duration for which a trademark would be valid has been increased from 7 years to 10 years.
• In the earlier law, a separate application had to be made for registration of the same trade mark in different classes. In the new law, a single application can be made for registration in more than one class.
• The definition of Trademark has been expanded to include shape of goods, their packaging, and combination of colors, so long as the mark is capable of distinguishing the goods and services of one, from the goods and services of another.
• The new Act has introduced the category of collective mark. An association could get a mark, distinguishing the goods and services of its members, registered as a collective mark.
• Certification Mark is another introduction for a person who is competent to certify goods or services for their origin, material, mode of production, quality, accuracy etc.
• An Appellate Board to be known as the Intellectual Property Appellate Board to exercise the jurisdiction, powers and authority conferred on it is established under this Act.
• In the earlier Act, a trade mark was infringed by use of identical or similar mark ‘in relation to any goods in respect of which the trade mark is registered’. Thus, the benefit of registration was confined strictly to the goods in relation to which the mark was registered. The new Act has vastly expanded the extent of protection to a trade mark.
The scope of the new law is discussed under the following two heads:
1. Similar goods in different classes an identical or similar mark in relation to identical or similar goods, and such use is likely to cause confusion or likely to have an association with a registered trademark, it would be a case of trade mark infringement
2. Dissimilar goods: Trademark infringement has been made available even in the cases of unconnected goods.
• The new Act states that a trade mark is infringed not only by attaching it to goods but also by printing it on packaging material and using it in advertisement. Foreign companies to find protection for their trade marks
• Under the Act, a well-known trade mark is a mark used over particular goods or services that has gained sufficient recognition among the consumers. A mark can be a well known trademark even if there are no goods in the Indian market.
• The new Act has broadened the concept of criminality in trade marks and enhanced penalty and punishments. Falsifying, that is, using identical or deceptively similar mark, has been made into a cognizable offense. A Police officer has been given the power to search and seize without warrant. The punishment has been fixed at 6 months to 3 years and fine at Rs. 50, 000 to 2 lakhs.