FEATURES OF THE

TRADEMARKS ACT

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 REGISTRATION OF TRADEMARK FOR
SERVICES
It is mentioned in preamble and Section 2(1)(z) of the Trademarks Act,
1999. As set out in the preamble, the new law provides features for
registration of trademarks for services, in addition to goods, the need
for which was greatly felt with the growth of the service sector in this
country. Further, it is obligatory on India to provide facility for
protection of trademarks in respect of services under the Paris
Convention [Article 1(2), read with Article 6] and for registration
under the TRIPS agreement [Article 15(4) of which India has since
become a member. Consequently, the law contains a comprehensive
definition of the expression “services” and provides for registration
of trademarks for services in addition to goods.

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TRADEMARK REGISTRATION

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 ENLARGEMENT OF DEFINITION OF
TRADEMARKS
The definition of Trademarks has been enlarged, so
as to bring the law in conformity with the current
trend all over the world. Being an inclusive
definition, it is only illustrative features and it
follows that even something not falling into one of
these categories may be regarded as
a trademark for the purpose of the Act.

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 REGISTRABILITY OF TRADEMARKS
SIMPLIFIED
For registrability, the mark will have to be capable of
distinguishing the goods or services of the applicant from
those of the others. Thus the test of registrability
of trademarks under the new act will generally be similar to
what was necessary to secure a registration in Part B of the
register under the old Act. Any mark which is revealed to be
distinctive in fact by usability will eligible for registration
under the law, since it does not considered being necessary as
under the old law that the mark must also be changed to
differentiate a concept eliminated in the current law.

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 ENHANCED PROTECTION FOR WELL-
KNOWN TRADEMARKS
With a view to significantly enhance protection to well-
known trademarks, the Act incorporates a definition of the
expression “well-known trademark” (in section 2(1)(zg). Further,
the law seeks features to prevent registration of trademark, which
are imitations of well-known marks, by enlarging the grounds for
refusal of registration under Sections 9 and 11 of the Act. The
proprietor of well-known mark will be entitle to prevent use of
identical or similar trademark in connection with goods or services,
though not similar to those for which the mark is registered, where
such use is without due cause, would take unfair advantage of or to
be detrimental to the distinctive character or reputation of the well-
known trademark.

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TRADEMARK REGISTRATION

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 DEFENSIVE REGISTRATION SYSTEM IN
1958 ACT OMITTED
Now that the law provides enhanced protection to well-
known trademarks, the system of defensive registration as under
the 1958 Act, which was in any case limited only to “invented
words” became redundant. The present Act, therefore omits the
provision relating to “defensive registration”, while amplifying the
features to be considered for determining a well-known mark.
Section 159 enacts that a defensive registration effected under
section 47 of the Trade and Merchandise Marks Act, 1958 will
cease to have effect on the date suddenly after the expiry of five
years of the commencement of the new Act or after the expiry of
the period for which it was registered or renewed, whichever have
priority.

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 PART A AND PART B REGISTRATION
SYSTEM ABOLISHED
Under the 1958 Act, the law provided for Trademark registration in
Part A or Part B. In Part A were registered marks which were
distinctive, namely, those which were considered to be “adapted to
distinguish” and Part B Consisted of marks which were considered
as “capable of distinguishing” the goods. The new Act has
terminated the system of carrying the two-part registration
of trademarks in Part A and Part b within the various different legal
rights, and to give only a single register with brief procedure for
registration of marks and with equal rights. With the merger of Part
A and Part B of the register into a single register, the provision for
presumption of conclusive validity of a trademark after 7 years as
contained in former section 32 has been omitted, as being
redundant.

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 PERIOD OF RENEWAL MODIFIED

Under the 1958 Act, trademark registration was

required to be renewed for successive periods of 7
years for its maintenance. Under the Trademarks
Act, 1999, the registration is for a period of 10 years
and so the renewal of registration is also provided
accordingly

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TRADEMARK REGISTRATION

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 FILING MULTI CLASS APPLICATIONS
PERMITTED
Unlike under the earlier law, which required that an application to
register a trademark must be in respect of goods falling only one
class of the 34 classes of goods, the new legislation enables an
applicant to file a single application for registration of the same mark
in respect of goods or services falling in more than one class. Now
goods and services are classified in 45 classes. In other words, the
law facilities and features for registration of the same mark in several
classes by means of a single application. However, the fee payable
will be in respect of each class of goods or service.

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 LAW CONCERNING REGISTRATION OF
REGISTERED USERS SIMPLIFIED
The definition of permitted user has been substantially changed to
cover use of the mark both by registered user and unregistered
common law licensee, who is in any case entitled to use the mark by
virtue of the agreement with the registered proprietor. Consequently,
the procedure for registration of registered user has been greatly
simplified to encourage and facilitate such registration. Since the
official scrutiny of such applications will be confined only to matters
directly related to such registration and not extended to extraneous
considerations, such as “development of industry. Trade or
commerce” as under the 1958 Act, the authority to register such
licensing agreement is transferred from “Central Government” to the
legitimate authority, viz the Registrar of Trademarks.

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 FEATURES FOR REGISTRATION OF
COLLECTIVE MARKS
The new Act has introduced a set of provisions and
features for registration of “collective mark” which
belongs to a group or association of persons, whose
use is reserved for members of the group or
association of persons. Collective marks would
serve to distinguish characteristic features of the
products or services offered by those enterprises.

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TRADEMARK REGISTRATION

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 APPEALS FROM REGISTRAR TO LIE TO
APPELLATE BOARD, INSTEAD OF HIGH
COURT
Appeals from orders or decisions of Registrar which had to be filed
before the high Court having the jurisdiction as defined under the old
Act, would no longer lie to such High Courts, but would lie before
the Intellectual Property Appellate Board, constituted by
Trademarks Act, 1999. The Act explicitly bars any court or authority
from exercising jurisdiction, powers or authority in relation to
appeals [vide section 93]. Further, in terms of section 100, all the cases
of appeals and rectification proceedings pending before any High
Court will be transferred to the Appellate Board from such date as
may be notified in the Official Gazette.

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 SCOPE OF INFRINGEMENT OF
TRADEMARKS WIDENED
Pursuant to the enlarged grounds for refusal of registration on
“relative grounds”, the scope of the law governing infringement
of trademarks has been enlarged to include where the infringing use
is likely to cause confusion or is likely to be taken to have an
association with an registered trademark. In keeping with the
legislative intent to protect well-known marks, the law enacts that the
use of an identical or similar mark on goods or services which are not
similar will constitute infringement, where the registered trademark
has a reputation in India and the use without due cause will take
unfair advantage or features of or is detrimental to the distinctive
character or repute of the registered mark. Further the law, as
contained in section 29, specifies the circumstances and types of uses
which constitute infringement of a registered trademark.

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 ENHANCED PUNISHMENT FOR
TRADEMARK OFFENCES
With a view to provide deterrent punishment to discourage
sale of spurious goods, penalty for applying false
trademark, trade description, etc., and for selling goods or
providing services to which false trademark or false trade
description is applied, has been enhanced, removing the
distinction between offences in relation to “drugs” or
“food”, on the one hand, and other categories of goods, on
the other. Further, the law provides for further enhanced
punishment of second and subsequent convictions. The
offences are explicitly declared as “cognizable”.

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TRADEMARK REGISTRATION

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FORUM FOR INSTITUTION OF INFRINGEMENT
PROCEEDINGS

Suit for infringement will have to be filed before a court not

inferior to that of a District Court, as under the old law. But a
significant change in the new law is that the term “District
Court having jurisdiction” will include a district court within
the local limits of whose jurisdiction, the plaintiff actually or
voluntarily resides or carries on business or personally works
for gain. The amendment features the law of trademark in
this respect in conformity with the Copyright Act, as very
often an artistic work in as trademark label is also registered
under the optional provision concerning registration of
copyright.

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 REMOVAL OF MARK ON GROUND OF
NON-USE
The period of 5 years within which a mark must be used under the old Act, was
determined from the date of trademark registration, which related back to the date of
application for all purposes. Since there is considerable time lag between date of
application and date of registration, such a law was causing hardship to registrants.
The new Act, therefore, explicitly provides that the period of 5 years non-use will be
reckoned from the date of actual registration and not from the application date.
Further, use by not only a registered user, but also an unregistered permitted user, will
accrue to the benefit of the registered proprietor for any purpose for which “use” is
material under the Act. Another change is that any use started during the period of
three months before the filing of an application for removal for non-use will be
disregarded, as against a period of one month stipulated in the old law. The “Special
circumstances” which would excuse non-use, would henceforth include restrictions
imposed by any law or regulation on the use of trademark in India.

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 ASSIGNMENT OF UNREGISTERED
TRADEMARKS
Under the ole law, an unregistered trademark was
not assignable or transmissible except along with
the goodwill of the business concerned, except in
certain specified circumstances. This has been
abolished. It will be thus permissible under the new
law to assign an unregistered trademark with or
without the goodwill of the business concerned.

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TRADEMARK REGISTRATION

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 AMENDMENT OF COMPANIES ACT

With a view to prohibit the use of someone

else’s trademark as part of corporate name or name of
a business concern, the Companies Act was amended
suitably as indicated in the Schedule under the
features of section 158 of the Trademarks Act, 1999. It
may be noted in the companies act, 1956 has been
replaced by the Companies Act, 2013. In this
connection, see section 16 of the new companies Act,
2013 which is similar to section 22 of the companies
Act, 1956.

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