Trademark infringement

This article was written by Pranjalina Chakraborty and further has been updated by Charu Kohli. This is an exhaustive article which discusses what a trademark is, the history of trademark law, and the reason for there being trademark law in society. The 2017 Amendment sought to further streamline trademark registration and this article takes after that. At the end, the entire piece sums up with case laws for your better understanding of the topic. 

Table of Contents

Introduction

So I have a few questions for you before we jump into the topic. So, have you ever looked at Tiffany & Co.’s blue colour and wondered why the colour in itself is named as Tiffany Blue and not just any other blue? Or have you ever seen the tickmark on the shoes and your mind has wandered back to the Nike shoe that you want to buy? Have you ever seen a bitten apple design and instantly linked it with the iphone that your friend has? 

Morsoever have you ever seen a jumping jaguar and found a resemblance of it to Puma’s logo? If the answer to all these questions is yes, then you would be amazed to know that all these are trademarks. To learn more about the Trademark Rules, 2017 governing the trademarks law in India, read the article below and understand the history, features, procedure and amendments in the new rules. 

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Meaning of trademark

Now the main question is what is a trademark? A ‘Trademark’ [™- symbol for ‘trademark] is defined under Section 2(zb) of the Trade Marks Act, 1999 as a mark that has the capability of being represented graphically. Now see that it has the ability to distinguish the goods or services. In case a good is produced by one person then with the help of a trademark you can easily distinguish it from those of others in the very same marketplace.

So what can we conclude from this? Yes you are absolutely right, this means that trademark is designed to protect the goods and services by ensuring that there is distinctiveness present. The law regarding the trademarks help forge an association between the originator and the manufacturer, with the help of invented words. 

These words are usually carrying with themselves the robe of uniqueness which helps establish the identity. This would serve to assure quality and promote products. Moreover this helps in distinguishing products according to their manufacturing businesses by associating the manufacturer’s name with the product. 

They can include devices, brands, headings, labels, names, signatures, words, letters, numerals, shapes, packaging, or colours. Even nonphysical trademarks have also emerged as a new category. Now let us look at the rules of trademark in India and the recent amendments related to it. Before going on to understand the Amendments by the 2017 Rules it is important to understand the history. 

The history talks about how the world and most importantly India recognised the need for trademark laws. This will help create a clear understanding as to why we need the trademark law in the first place. 

Evolution of trademark rules

In the infancy of civilization, the conceptions of rights were limited to purely material premises. However, with the advancement of time and innovation and the birth of ideas, there sprang forth an insistent demand. This demand was due to the concerns which were being raised about intellectual property rights, In our day and time these are commonly referred to as trademarks and trade names related issues. These rights have been known in the past as common law marks as they have developed to become a very important part of world civilization. 

Let us begin with the ancient Europe. Interesting for you to note here that the trademarks found in this time and place were markings of animals. These markings were found to be painted in the caves of Lascaux. Interesting isn’t it? 

Now let’s jump to the mediaeval Europe and see what can we find reagrding the trademarks in this time. So here the merchants were the ones who were employed in personalised marks. But what did these marks carry? These marks of the merchants were used for announcing their names and ensuring the product quality to the buyers. 

Southern vs. How which is one of the earliest known cases on the use and recognition of trademarks dates back to 1617 which was a long time ago. Can you see how old the use of trademarks has been. But when was it structured? The answer dated back to the year 1883,  when the Paris Convention for the Protection of Industrial Property was held. This was the first convention on trademarks worlwide. Also it is important to note that while Averill Paints was the first company in the United States to register a trademark, the journey got worldwide recognition with Coca-Cola becoming more adventurous in its registration.

Down the years, the instrument of trademark has passed through several evolutionary bases, which led to the eventual making of Trademark Rules 2017.

Evolution of Trade Marks Rules 2017

India had introduced the Trade Marks Act of 1940 to cater to the increasing need for better trademark laws. But since India was not an independent country at that time, this Act had its influence coming from the British Trademark Act of 1938. 

When we talk about independent India act then we will fall back onto the Trade and Merchandise Marks Act of 1958. Do you know that this act was enacted by the Government in order to bring about a boost in both the growth rates as well as the field of commerce. Further, let us look at the objective of the act which stated that it is enacted to ensure exclusivity when it comes to the use of trademarks. 

So in the year 1999, we saw major changes being made in the trademarks act. Now, it was an act wich was elaborate in nature and dealt with trademark infringement issues also. With this came the rules also and these majorly dealt with licensing of the trademark. Let us look at a major advancement in the history. So, after India’s accession to the TRIPS Agreement, we came up with the 2003 Trade Marks Act and Rules. 

Furthermore, it was with the coming up of the Trademark Rules of 2017 which were issued by the Government in 2015, that the Trademark Rules of 2002 were subsequently superseded. But why the sudden supersition? It is because the 2017 rules were the ones which were now based on a review to resolve ministry concerns. It is worth noting by the avid readers that the Trademark Rules of India are the statute containing the parent act. The parent act contains the Trademarks Act of 1999, a compilation of all the various laws related to trademarks. 

It was amended and now it provides for registration as well as better protection of trade marks for goods and services. It is another important legislation intended to penalise the fraudulent use of marks by others. Important to note that these laws were first passed by the legislature and only after receiving the assent of the President of our motherland are they in picture today.

Note- The Trademark Rules 2017 are working as secondary guidelines which helps in governing the arena of trademarks in India.

Need for 2017 Amendment 

Now the question in your mind would by how, when and why did the need for the amendment arise? So, the new Trademark Rules came into force on 6 March 2017. That Amendment was made by the Department of Industrial Policy and Promotion of India. This was done so that the trademark application procedures in the country could both be streamlined and simplified in order to give way to the ease of the proceedings. As such, this Amendment by the legislation has simplified the whole process as well as created it to be a hassle-free experience.

Since the world is now in the new technology age and everything is being digitised, the Government of India felt the very need for such digitisation of the entire administrative system of trademarks in India. This has been done by providing the ambit of e-filing as well as adding the email ID as a part of the application and a means of communication. 

Amendments as per the Trade Marks Rules 2017

Now, since we have already understood the need for this amendment, we need to take a look at the essential changes made in law. These are in order to achieve the objective of simplifying and digitalizing the process of trademark registration. Let us go through the following changes that have been made by the 2017 amendment:

Changes in fees

Let us start by looking at the change in application fee filing. Interestingly there is a 50% increase in fees for registering ‘A Trademark’ based on the First Schedule under the new Trademark Rule in 2002. We can see the amount increased in Government official fees for registration of a trademark in terms of both the forms fees and application fees under the Trademark Act.

  • Physical filing-Rs.10000
  • E-filing-Rs.9000

To justify technological advancement and encourage the digitization of trademarks, many reduced this online filing fee by 10% compared to the physical filing fee. The concession has thus normally been given to e-filing in respect of all parties filling an application or a form during registration.

Also, it is important to note that the overall fees have been rationalised by reducing the entries to 23 in the first schedule.

Incorporation of small enterprises and startups

Now let us have a look at the additions by 2017 Rules. It is very important to note that under the ambit of Rule 2 of the Trademark Rules, 2017 the filing fees has been lowered. But remember that this lowering of fees by a margin of 50% can only be seen in the cases of individuals/startups/small enterprises and small companies.

On top of which, small enterprise and startup concepts are defined further under the new rules. Thus, these rules class all the applicants into the following four categories:-

  • Individual, 
  • Startup,
  • Small enterprise, 
  • All applicants who are not covered under the aforesaid three types.

This Small Enterprise is defined in Section 7 sub-section(1) of the Micro, Small and Medium Enterprises Development Act, 2006. Let us take a look at the definition together. The definition states small enterprise is any enterprise which is involved in the manufacturing, production or even provision of goods and service. Here, the limit on investment on machinery and that on equipment is set by the legal provisions. If the limits are exceed by an enterprise then it will not longer act as a small enterprise. 

But now the next question in front of us is what are start ups? So let us understand it in layman terms. Startup is nothing but an entity which is recognized by competent authority. But here are two conditions to be followed by the owner. First, it should be situated in India as it’s homebase and second states that recognition should be under the initiative by Indian Government called Startup India Initiative. 

Now the question is what if the entity is foreign? So if the entity which is not Indian in such a case submist a declaration and fulfills the criteria then it can be registered. Here, important to note is that the criteria of both turnover and incorporation period needs to be fulfilled. 

Furthermore, the Department for Promotion of Industry and Internal Trade, a central government department in India under the Ministry of Commerce and Industry has also defined startup for us. The definition is as-:

A startup has to be an entity. It will be identified as a startup only in the following circumstances under the Startup India Scheme are followed by the owner:

  • Company which wishes to be placed under the startup category has existed for less than ten years. The years will be counted from the date of registration of that particular company, remember this avid readers.
  • Such a company must be registered as one of the following to stand a chance  to be notified as a startup by the Government of India-
    • a Private Limited Company or 
    • Limited Liability Company or 
    • under the Registered Partnership Act. Hence.
  • Now remember that the annual turnover of such a company must be at least Rupees hundred crores. This turnover can be in any preceding financial year after it has been incorporated.
  • Moreover, the company should not have come into existence through either of the following-
    • Splitting, or
    • reconstruction 

of an already established business. Rather it must be an entirely new incorporation by the Government.

  • Interestingly, the last condition is that the company shall be working on the development or improvement of a product, process or service. Also, the company must have a scalable business model that too with a good potential for creation of wealth as well as employment for nation at large. 

Expediting trademark registration

Since, we read above that the process has been turned over to make it more speedy. But how? So in order to ensure that the process is speedy, the law allows physical filing of the relevant forms. The payment of fees as per Rule 34 and the First Schedule, is as follows: 

  • Rs.20000 by individuals, startups and small enterprises.
  • Rs.40000 by others.

Previously processing was permitted to go only as far as examination stage, but registration itself is now available for expedited processing.

Extra characters in the specification

The Trade Mark Rules 2002 provide the limitation of not more than 500 characters long for the specification of goods or services per class. However, with the coming up of the 2017 rules this restriction for the specification has been invalidated and removed from the legislation itself. Now for the characters that are additional no extra space fee has to be paid by the applicant.

Fee of association

The 2017 Rules do not stipulate any fee for the association’s services. Since the fees for the association have not been specified in the rules, it can be concluded that now the association is not required to submit any fees at the Indian trademarks registry.

Reduction in the number of forms

As read above by us, the process has been simplified. This is done so as to attract more players to get their trademarks registered. It’s time we take a look at the ways in which the process has been made simplier. The number of forms has been reduced and simplified from  75 forms down to 8 forms. Both single-class, multi-class categories and even collective marks all now use one application form since they start with the same application process. 

The new rules no longer provide for so many forms, thus ensuring that there is no confusion in the registration process and are named TM – A, TM – B, etc. Under this heading, it is proposed that registration will be a uniform process henceforth, thus more easy to be followed.

Within this form, an application has the following details that must pitch in:  

  • Nature of application
  • Name of the applicant
  • Details of the applicant’s address
  • Details of the trademark to be registered
  • Language of the trademark being registered through the application
  • The conditions of usage, 
  • Class/description of goods/services as per the trade class of India which follows the NICE classification by the World Intellectual Property Organization (WIPO), 
  • Statement of use/proposed use, 
  • priority claim, 
  • verification and signature.

Let us together take a look at some examples of the forms to get better understanding. These forms are as follows – 

  • Form TM-C: Application for search and certificate under Section 45(1) of the Copyright Act, 1957
  • Form TM-G: Trade Marks agent registration/ renewal/ restoration/ alteration
  • Form TM-M: Application/ request for any miscellaneous function in respect of a trademark Application/ opposition/ rectification under the Trade Marks Act
  • Form TM-O: Within two months from receipt of the opposition notice, a counter statement or reply must be filed. Counter statements will have facts, paragraph wise counter of grounds people will verify from the opponent or any authorised agent and it should be served within two months. One of the major amendments under Trademark Rules 2017 has made opposition proceedings faster, in that counter statements can now be based on notice of opposition uploaded on the website of the trademark registry.
  • Form TM-P: Application for post-registration changes in the trademarks
  • Form TM-R: Renewal / restoration of registration of a trademark or for payment of surcharge towards renewal. A trademark application must be renewed every 10 years, and if it is not done, the trademark will be vulnerable to cancellation from the national trademarks registry.
  • Form TM-U: Application for registration of registered user/ variation of registered user/ cancellation of registered users and notice of intention to intervene in proceeding in cancellation/variation

E-services use in trademark office

Since, the world today is getting technologically advanced, the Government is bringing the trademarks process also digitally. Now, the question in the minds of the avid readers would be, but why? So the incorporation of electronic means in the process of registration of a trademark means using processes such as e-filing. 

Remember that this not only presents an opportunity to promote digitalisation within the Indian jurisdiction but also renders an impetus for the economy towards achieving paperless status. Let us take a brief look at all the other ways in which the process is turning into a digital process. 

Email-id use

Let us begin with the email’s as a means of digitalizing the process. The registry introduces an e-mail ID among its channels. The rules now formulate email also to belatedly recognize an address of the applicant, and digitisation of the process. For the purpose of Rule 18 any service by email of a document shall be treated as having been delivered to the applicant. 

It means that if the trademark office has sent a communication to the person by email then it will be deemed to be communicated and there will be no need to serve the documents we post as well.This process of registration is provided by way of the service documents electronically. It shows how quick and trustworthy this e-service information is now. Delivery could only be by hand or post under the old 2002 laws. 

Nevertheless, the new rules make it clear that applications can now be delivered to the registrar electronically. Further in cases where there is no payment of fees to be done then through email also delivery can be done. These new and technologically advanced gateways showcase the growth of India in the technology aspect as well.

Address for service

The address for service comprises the postal address, email address as well as a phone number of the trademark agent. If the applicant fails to provide service, within 2 months from withdrawal or revocation of an initiation application, then it shall be deemed that the proceeding has been abandoned.

Online hearing

Further, it is interesting to note that hearing could also be done through video conferencing or by any other suitable Audio-Visual means. This is present under Rule 115. This would have quickened the hearings in cases and adjournments. This rule for a hearing by electronic means through audio and video communication systems allows saving time of the litigants as well as their process too quickly and smoothly.

Online counter-statement

The counter-statement as per Rule 44 is another way. This counter statement is filed in response to the notice of opposition does not need to be physically served upon the party if it is already available online in the official online records. This would bring more transparency.

Application request

Furthermore, in cases when the applicant requests registration then it is mandatory for him or her to file the request online and pay mandatory fees. Chapter VI talks in detail about the registered user and the application by him/her. This is also to be done in the case of examination hearings and registration of more charges.

Proceedings of oppositions

The applicant has to counter check time by finding out when did they file evidence because as per 2017 Amendment, once the date of filing is gone you cannot place any document after that in front of the Court. It also issued these strict directions to fix the period for completion of the action so that either party may not stay away from warding off ways. Thus, if any applicant does not submit the evidence on time, in such a case their application will be treated as abandoned by them. 

The procedural requirements are provided in Rule 42 and Rule 43 of the Trademark Rules, 2017. A period of 2 months is allowed for the evidence in support of the opposition to be filed once a copy has been served on you. Therefore the applicant needs to do the same within the prescribed time period. Also in case the applicant fails to contest the opposition when the opposition has provided for the same then a penalty of rupees 10,000 will be levied on the applicants. 

Well known trademarks

Let us together take a look at the ambit of well known trademarks. We will begin by understanding the meaning of the same. As the name suggests a well-known trademark means a trademark which is both distinguishable in nature and popularly known by the masses. 

It basically means a trademark, widely known because of various factors like use for a long period, brand reputation, popularity in the international market or even in cases when there has been extensive advertising by the company. 

As per Rule 124, the registrar has the power to determine a well-known trademark when the person who requests the determination pays the requisite fee along with the following documents: 

  • form in order to get trademark registered as the well-known trademark in the prescribed list,
  • fee of rupees 1,00,000 (1 lakh rupees), 
  • statement of the case,
  • evidence supporting the well-known trademark claim, and
  • documents.

A simple meaning for this provision is that the owner of a trademark has the chance to approach the registrar and have trademark status as “well-known.” For here, the owner can have word marks as well as logos recognized, although for a few, separate applications will have to be made. Before making its decision, the registrar will invite objections from the public in general. Once the trademark is declared as a well-known trademark, it will be published in the journal.

Applicant’s affidavit for claiming use

Now, we will take a look at what happens when a person has to prove that the trademark was being used by them and that even though it is registered or not, they are the ones having claim over the trademark. Here an applicant has to file an affidavit together with the necessary evidence and documents in proof of the “use” of a mark. This means that if the applicant claims to have used an unregistered mark for a certain period of time, then there should be supporting documentation available showing such use.

 Further, it is important to note that there needs to be a declaration containing the date of use in the [DD/MM/YYYY] format by the user. This declaration must only be filed before the registrar and it is mandatory so do remember to get it filed. Moreover, remember that this should be backed by an affidavit. Also, along with both the affidavit and the declaration you have to place accurate supporting proof. 

Under the Rules of 2002, it was left to the discretion of the registrar ear to file an affidavit in proof of use by the applicant. With the introduction of Rule 25 in the 2017 Amendment the user must file an affidavit establishing prior use of the trademark as proof of his/her claim over it. 

Sound marks made easier to register

Have you ever heard the famous four note jingle and associated it with Britannica? This is what we refer to as a sound mark. This sound is different from others and when we listn to it, we directly associate it with the brand. Now let us have a look at their registration. Sound marks can also be registered under the revised rules and the process has become easier. The applicant shall submit an MP3 format sound mark not exceeding 30 seconds in its duration. 

Further, this audio file also needs to be supported with the graphical representation of the sound notations for registration of the trademark. Rule 26 of the Amendment, 2017 provides that sound marks are within the scope of any sound mark representation requirement. Earlier the application had to have a graphically represented sound mark and this was to be done through notes or by spelling out the tune however now the FORM TM- A has made it easier.

Three-dimensional marks are made registrable

The application for 3-D marks when filed shall specifically state that the mark is a 3-D mark. 3D or the term three-dimensional means that an object has three spatial dimensions that are with height as well as depth to them. Two-dimensional graphic reproduction of the trademark has to be furnished in three different views. 

It is when both the shape and packing of the goods to be trademarked are incorporated that such marks would then be made registrable. Now Rule 23(1)(c) describes a requirement to be included in the form as well as in the signing of an application, to place it under consideration as a three-dimensional trademark, while moving such application of their compasses. 

In making an application for registration, the applicant should file with the registrar the two-dimensional graphic or the two-two-dimensional views of the proprietary study in part reproduction of his trademark. Further, the registrar may consider that the reproduction of the 3D mark is not sufficient and he may ask for additional representation from 5 different views of that trademark along with its description written in words that need to be presented in such a case as to get an approval from the registrar. 

Wherever the registrar finds that there is no three-dimensional property for the applicant, it then calls the applicant for supplying up to 5 different views of that trademark. Further, a description of it in words, and, where applicable, a specimen of the trademark for purposes of further description is also required.

Expedited application process

Let us look at how the application process has turned into a speedier one. As per the TM-M form, through the process of expedited application, the applications, after payment of the prescribed fee, shall be examined within a period of 3 months from the date of filing of the application. Thus, time has not only been reduced but also modified in so far as the process itself would be faster and smoother. This will now be a feature of the Rules by virtue of Rule 34 of the Amendment of 2017.

Reduction and limitation in the number of adjournments

Rule 50 provides that during the hearing of an opposition, the party does not have the right to ask for more than two adjournments. This provision has been put into force in order to ensure timely disposal of matters and that parties do not waste the valuable time and energies of authorities.

Also, it should be borne in mind that in applying for an adjournment, the concerned party who seeks the adjournment should make an application at least three days prior to the date of hearing along with the prescribed fee. Moreover, the adjournment sought by the applicant should not exceed 30 days.

Search certificate for artistic work

In cases when an artistic work that is used on goods or services is in the process of being registered in those cases the applicant may file for a search certificate under Rule 22. The search certificate means that as and when the certificate has come into effect then no other applicant can file for a trademark that is either identical or descriptively similar to the work of the applicant who had filed for a search certificate. 

This search certificate is put into place to ensure that no one copies the work of another applicant while the registration process is going on. This further helps in ensuring that there is no duplicity nor additional cases filed in the court regarding the use of a particular mark by the companies.

In order to attain a search certificate a request can be made to the registrar by paying a fee of Rs 30000. This payment is for the request of an expedited search certificate and the same will be issued within the next 7 working days. 

Withdrawal of application

The expression withdrawal means the legal act by which a trademark application or the actual trademark registration is annulled. Now the applicants have the opportunity of filing for a notice of withdrawal in writing. This withdrawal of the trademark application for registration should be sent within one month from the Examination Report.

This will ensure that the applicant gets the fees repaid to him or her and that the trademark does not get registered in his or her name. The Rule 35 of the Trademark Rules, 2017 talks about notice of withdrawal of application for registration whereas Rule 38 talks about the acceptance of withdrawal by the Registrar. 

Trademark’s re-advertisement 

Re-advertisement as an act by the trademark holder means the act of advertising something again. It can take place in a lot of cases like when the trademark registered still possesses some sort of errors in it. As per the 2017 Rules when there are major errors only then the re-advertisement of a trademark takes place. The importance of re-advertisement is mentioned under the ambit of Rule 42. 

Further in such cases, the earlier advertisement would be deemed cancelled. Some of the major mistakes that can happen in respect of advertisements with respect to a trademark are as follows:

  • when there are mistakes in the advertisement of the registered trademark,
  • where the goods or services are misdescribed in the advertisement,
  • where a material mistake occurs in the description of the goods or services,
  • where that advertisement has major mistakes in its specification of goods or services,
  • when the statement of use of a trademark has mistakes in it, or
  • when there are significant spelling errors in the registered trademark. 

Ambit of opposition has been expanded 

Till the enactment of Act 2002, opposition was only incorporated for the purpose of opposing the registration of a trademark, or trademark certification, whichever the case may be. Such a definition has since broadened in scope to, and now means:

  • opposition to registration of a trademark
  • objection against collective trademark
  • opposition against trademark certification
  • opposing protection to international registration designation India, or
  • opposition to alteration of registered trademark.

Therefore, opposition has a vast area and wide jurisdiction as defined in Rule 2 on opposition.

Existing registration reclassification

A registered proprietor having a trademark may apply for re-classification of it in order to amend the same. This is mentioned under Rule 20 of the new rules. Moreover, remember that the 2017 Amendment has led to a complete restructure in the internal classification of goods and services. Furthermore, Indian classification of goods and services follows the NICE classification. 

So to bring in some ease in classifying the goods and services into different categories, major changes have been made in this specification. Therefore, the presently existing proprietors can send for an application with the registrar in order to amend the specification of goods and services. Once agreed upon, the classification is to be advertised in the journal.

Registration renewal process

No application for renewal of registration of a trademark under this section shall be made earlier than one year before the expiration of the last registration. Chapter III talks about renewal for registration and restoration of trademarks in detail. This time period has been extended from 6 months in the 2002 Rules to a period of 12 months in the 2017 Amendment. 

Further for the registration’s renewal the applicant has to file FORM TM- R with a prescribed fee for the same. The extension applies for the renewal within that period, enabling renewal to take place any time after completion of 9 years from registration.

Process of registration of trademarks in India

The present process of trademark application under the Trademark Rules 2017 is completely through an electronic processing system, however, the filing of the application is allowed in hybrid mode.This is an electronic process and ensures that the applications received in an offline mode get digitised in the process. 

Chapter II of the Trademark Rules,2017 from Rule 23 to Rule 56 deals in detail with the procedure for registration of trademarks application in India. Let us together go through the process. 

  • Pre-examination process- The application for trademark registration can be filed in both offline and online modes. All applications should ideally suggest qualification in that the mark should possess figurative elements and would also qualify to be new.
  • Application examination- The examination of the application is done by the automated system and it is done in two stages. Firstly it is done by the examiner and then the report is forwarded to the examination controller for approval and it is reverted back. The applicant must give a reply within thirty days of receiving the examination report. If adopted, the formality will be published in the journal of trademarks.
  • Post-examination process- After receiving the report the applicant has to reply within one month otherwise it will be deemed that he has abandoned the application. So once you have filed the reply and the same has been submitted then it will taken up before the authorities. However, this must be done in the prescribed time period only. 

Now there comes two situations. One that there are no more objections. Then the officer will accept reply and the publishment of trademark in journal will take place. However, the other situation that can arise is that objections still persist. Then the officer will follow principles of natural justice and hear them. 

Since fair heading is a mandate in law, the parties will have to come up and present their case. Moreover, a show cause notice will be issued for this hearing to the parties.

  • Post-advertisement process-  The ned goal in both the situations will be changes if any and then acceptance. Once the mark getsaccepted, then trademark journal will have it published in it. If after this, for the next four months, there comes no opposition then mark will be registration eligible. 

This certificate will get automatically issued if no opposition is filed and it will be valid for a period of 10 years. So after every 10 years, it will have to be renewed by paying the prescribed fee on the forms. 

  • Opposition- However in the case when it is opposed by a third party after the publication then the same will be disposed of. However, the disposal of the trademark will only be after giving a proper hearing opportunity to both the parties present. If the opposition is dismissed then the trademark will proceed for registration and the certificate will be issued. 

But in the case where the opposition is allowed then the application of the registration will get refused. Moreover, the procedure for the disposal of the proceeding when the applicant goes for rectification will be similar to the process of opposition mentioned above.

  • Post-registration process- The possibility still remains alive that the trademark could be altered after registration. The changes can be related to the name of the proprietor, the address of the proprietor, the address of service, the assignment of the registered users, etc. In cases where the changes are to be made then the registered proprietor should file a request for the same. 

Also, the registry gives a one-month notice to previously registered proprietors in cases where any kind of change in the proprietorship is filed by the applicant. Point to be remembered here by you is that in such cases, the request will only be processed after the expiry of the months period and not before that. 

Protection of trademarks under the Trade Marks Rules 2017

Till now we have together established that a trademark is like an armour for the brand. It protects the identity of a brand by their catchy word, phrase or logo. This also helps in establishing the distinctiveness of the brand and assurance of quality. Moreover, we have already came across the fact that companies have a right to use their trademarks but remember it is only till the time they have the registration and ownership of the mark. So what happens in cases when someone uses other’s trademark? 

In case if a person misuses the trademark of another then it will bring about confusion in the mind of the customers. These are the cases where the actual owner is entitled to get damages from the other party. If the use is of similar names then the party can also knock on the doors of the court and file injuction. 

Moreover, the owner also has the right to file a suit against trademark piracy. Let us understand the meaning of this term before moving forward. Trademark piracy means the use of the trademark in an unauthorised or illegal manner. This type of usage by a person takes away the right of the Actual owner over the trademark and creates duplicity which is not legal as per law. In addition to which it is worth noting that in the case of registered trademarks, the protection provided by law to them is more than that for unregistered trademarks.

Avid readers remember that it is the Act of 1999 and the Rules of 2017 together which grant protection to the users of trademarks and also ensure protection via remedies against infringements. Let us take a minute to understand trademark infringement. Trademark infringement as the name in itself suggests, it occurs when a mark that is similar to the trademark is utilised without the permission of the owner of the trademark. This often leads to confused consumers who are unsure about the source of goods or services.

Trademark infringement can be of two types mainly direct or indirect. As the name in itself suggests direct infringement occurs when an unauthorised person uses a mark identical or deceptively similar to the registered trademark. Whereas indirect infringement occurs when a trademark violates universal law principles.

The registering entity must obtain the registration for the trademark in order to commence an action for damages. Also here the defendant must have done either of the following or a combination of them-

  • used a mark that is sufficiently similar to the plaintiff’s mark, 
  • making it likely to be confused with it, and 
  • the use must not be accidental,
  • the use of the registered trademark in connection with goods or services similar to those registered to the trademark.

Where the court finds that infringement has taken place, it may order remedies such as:

  • Injunction: This is an order restraining the infringer from using the trademark again.
  • Damages: The damages are awarded as a way to compensate for loss of goodwill or injury to the plaintiff’s reputation due to infringement of trademark.
  • Account of profits: This is a step which sometimes is undertaken by the Court of law. Herein the infringing party is the one that is required to disclose and surrender all profits earned from using the trademark to the plaintiff.
  • Destruction of infringing labels: As the name suggests, it is destruction of infringing labels so as to avoid their future use by the infringer.
  • Appointment of a local commissioner: This step by the Hon’ble Court allows the commissioner to not only search for and seize the infringing goods, but to also check the books of accounts, and prepare an inventory.
  • Restraint upon the infringer during the period when the preparation of the recovery takes place: This basically restrains the infringer from disposal of property in a manner that could bar the recovery of damages by the plaintiff.

Pros and cons of Trade Marks Rules 2017 

The Rules for 2017 have been described above to make sure that the registered owner could protect identity in relation to his goods and services. But as each coin has two sides, let us understand the two sides of the 2017 Rules in detail. 

Pros of Trade Marks Rules 2017

  • Protection of law- One of the most important reasons individuals or companies go to register their trademarks under Indian law is to gain legal protection. The registered trademark offers protection from infringement of any kind. Further, the owner has the right to enforce giving her such right over the mark since the mark is the identity of the good. So if someone tries to copy their mark or pass it off as his/her own mark then legal guidelines ensure that they are protected.
  • Exclusivity- The registered owner of a trademark means he who has filed an application in his or her name and who has got approval. The owner therefore enjoys an exclusive right over the trademark. Thus he can exercise exclusive right with respect to its use of other products as well.
  • Uniqueness- A trademark is a unique and distinguishable mark that serves as a representation of not only the product but the producer himself who manufactures it. In all this, it is a guarantee to the client and other stakeholders that there will not be any free competition. 
  • Inexpensive- The trademark is a kind of protection that is not only cost-efficient but it also ensures full protection of the goods by providing them with an identity that is different from all the other products of a similar nature. The quite reduced rate for a trademark application with online registration simply requires to pay the required renewal fees after every 10 years.
  • Online procedure- With the coming up of 2017 Rules the procedure of registering a trademark has turned into an easier procedure. This procedure is online and therefore hassle-free. 
  • Global protection- The registration of a trademark provides not only domestic but global protection also to the products.It provides a way for their businesses to protect their brand identities in different countries all at once. Their mark confirms that players can venture into new markets without apprehension about similar identifications on other merchandise while also ensuring uniformity of brand across the globe.
  • Asset- If a trademark is registered according to rules and regulations of legislation, it becomes an asset. It is an intellectual property right which may be sold, assigned, leased, or franchised for the purpose of getting royalties. 

Cons of Trade Marks Rules 2017

  • Increased fees- Many economists and policy thinkers have assumed that increased fee structure for filing applications to register a trademark is really a downside. They believe that this increase in the fee structure may hamper the increasing growth and reliability of the trademark.
  • Degree of similarity- Owning a registered trademark does not mean that the person owns the internet sites named after them. Therefore there is a possibility of a degree of similarities between one’s registered trademark and the internet site of a similar nature.
  • Protection is weak- It is always opined that the trademark is the weakest of intellectual property rights among patents and copyrights. The trademark protects not so much the product itself as it does the marketing concepts surrounding that product. This is why trademarks are not the strongest rights held by a person and, for trademark owners, this is disadvantageous.
  • Renewal of trademark- Renewal of the trademark shall be done every ten years. This is a disadvantage since every ten years the person has to pay requisite fees. A failure to pay this prescribed renewal fee after ten years would mean that the trademark would be removed from the registrar for the trademark office and then this will allow anyone to get that trademark registered in their own name. 

Case laws related to the Trade Marks Rules 2017 

Tata Sia Airlines Limited vs. Union Of India (2023)

Facts of the case

In the case at hand, the subject matter was such that Vistara Airlines was the plaintiff and Tata Singapore Airlines (TATA SIA), which had secured an order for its mark Vistara as a well-known mark by the court of law. Further, they had gone to the registrar to get this mark of Vistara listed in the well-known trademarks category. However, the registrar insisted that they had to file the requisite form (FORM TM – M) and also pay the requisite fee to get their trademark listed as a well-known trademark.

Issue at hand

Thus, in the case cited as Tata Sia Airlines Limited vs Union Of India (2019), the main bone of contention was whether the Rule 124(1) to (4) had to be adhered to for including a trademark in the list of well-known trademarks when the court already recommended the trademark to be well-known.

Contentions of the registrar

Registrar in his affidavit stated that even though the petitioner, in this case, has obtained the order of the court which declares that Vistara is the well-known mark, the airlines would still have to submit the prescribed form as well as pay the requisite fees. In the opinion of the registrar this had to be done by the airlines. The notion behind this was that these steps are in order to get the trademark published in the trademarks journal. 

Interestingly, the registrar in his contentions stated that he does not want to adjudicate on the matter as to whether the mark is well known or not. But since it is his duty to process 

Contentions of Vistara

Vistara stated that the well known status has been conferred upon them. Therefore, they were of the view that they did not have to file for any separate requests and nor pay additional fees for the same. They vehemently were of the notion and contented that the registrar’s declaration was nothing but only a formality. Moreover, here since they had received the status of well known mark by court order, they prayed before the court to grant them suo moto inclusion in the list. 

Judgement by Delhi High Court

The Hon’ble Delhi High Court while delivering it’s judgement stated that the question of well known trademark status to be granted or not is something which both the court as well as the registrar can deal with. Moreover, the court was also of the opinion that registrar here has the duty to include the trademark and not determine since they have court ordered status. But when it came to the airlines, the court stated that they have to pay the requisite fees in such regards. 

Sun Pharma Laboratories Ltd vs. Dabur India Ltd and Anr. (2024) 

Facts of the case

Now we will together look at the case of Sun Pharma Laboratories Ltd vs. Dabur India Ltd and Anr. (2024). This case was filed before the Delhi High Court where Sun Pharma had preferred an appeal. Therein the registrar had kept Dabur away despite there being only one-day delay in service of evidence to Dabur, evidence of which had been filed by Sun Pharma in the registry on a two-month period.

Dabur stated that this was time-barred evidence and hence it would be deemed abandoned. 

Issues of the case

The main question before the court was whether the opposition time allowed under the Act was mandatory or directory.

Legal principle involved in the case

It is important to remember that under both the Trade Marks Act, 1999 and the Trade and Merchandise Marks Act 1958 evidence to be adduced in such manner on the date envisaged as it is laid down in the law. The Trade Marks Rules of 2017 have replaced the 2002 Rules and added 2 months time to file opposition. 

Judgement in the case

Here, while delivering judgement in this case, the court was of the view that the discretionary powers of the registrar are only limited to granting time extensions in cases where such a thing is not mentioned. The phrase “unless the registrar otherwise directs” was understood by court as a directive to the provision. But this phrase has been removed from the 2017 Rules, This the court apprehended as suggesting that the registrar’s authority to extend the deadline has been taken away by the legilature.

Therefore, it was held by the court of law that the two months period begins only after the applicant’s counter statement is received by the opponent party. So, if the opposition does not file evidences within the next two months then it will be deemed that the opposition has abandoned the same. Here the registrar will have no discretion anymore and he/she will not be able to extend the time limit in such cases.

Adidas Ag vs. Keshav H Tulsiani and Ors. (2024)

Facts of the case

Let us take a moment to look at the famous recent case of Adidas Ag vs. Keshav H Tulsiani and Ors. (2024). This was presented in the Delhi High Court. Point to remember here is that this case deals with the aspect of infringement of a trademark related to Adidas, a manufacturer of sports products. When two industrialists adopted the same name the case came into light.

Issue at hand in the case

The issues framed are as follows:

i) Whether the court has the territorial jurisdiction to try and entertain the present suit? 

ii) The suit of the plaintiff is barred by delay, acquiescence, and category of laches.

iii) Does the plaintiff’s mark, namely “ADIDAS”, have trans-border reputation in India prior to 1987?

iv) Whether the usage of the mark “ADIDAS” in respect of textile goods by defendants carries a scope of infringement/passing off?

v) Are the defendants the prior users of the mark “ADIDAS” in India, and to what extent?

vi) Relief.

Arguments of the industrialist

The industrialist claimed the term ‘ADIDAS’ was actually in homage to his sister and his business was of textile. He stated that this was in affection to his elder sister. The term adidas as per the industrialist meant the devotee (das) of the elder sister in the Sindhi language. He also stated that he was in ‘prior use’ of the mark as an unregistered common law mark since 1992. 

Advocate Ranjan Narula contended that his use of the term ADIDAS is in all capital cases whereas the sportswear producer uses it in all lower case. 

Arguments of Adolf Dassler

“Adidas”is a well known giant sportswear producer in the country producing readymade garments. The party claims, as stated, that when the term “adidas” was coined by Adolf Dassler aka Adi, he coined it on the basis of his name. The name was clubbed from his pet name and the first three letters of his surname.

Judgement of the case

The bench in this case comprised of Justice Sanjeev Narula. While delivering his judgement he stated that burden of proof lies on the shoulders of the defendant in such cases. The defendant is the one here who will be liable to show that the mark even though is identical in structure but still was taken up only on honest as well as bonafide motives. 

He was of the notion that in this case which we have discussed above, the ‘devotee of elder sister’ is not a credible or justifiable reasoning to name a brand as adidas. Rather, he was of the view that this use is of dishonest intentions and his not being able to prove the use since 1992 adds to the false narrative only. 

Moreover, the uper case lower case debate was not accepted by the Hon’ble court rather the similarilty in goods placed the defendant in a negative position. Here, the court talked about trademark protection and stated that they are to prevent confusion and protect investemnet and identity of the owner. 

In stating that the use of ADIDAS by the textile manufacturers was in infringement of the trademark rights of the owner, the court also stated that the trade channels were overlapping. Due to the overlap, there persists a chance of consumer confusion which the court willed to remove and therefore, the company ADIDAS was prevented from using the trademark again. 

A quick summary

A trademark is a mode of intellectual property that protects not only the product but also human intellect. Protection of the capital of a manufacturer is ensured, so that the identity mark of something ensures that nobody could imitate the product. This ensures that the product could keep its identity. The registered trademark of a product or a service is evidence of the identity of the good. 

A trademark is not a mere word or slogan but it compasses within itself colours, symbols, and designs that are used in order to identify the source of goods and services. Further these help in distinguishing goods of a similar kind from one another in the marketplace. The owners of the registered trademark who are also known as registered proprietors of the trademark will no longer have to wait for a long time in order to get their trademarks registered.

Also as per the new 2017 Rules, a trademark owner may request the registrar to declare a trademark as a well-known mark and the process of registration of trademarks has been further digitised. It shows the thrust of the Government of India on its initiative “Digital India”. These are positive changes which will help us in bringing trademark registration of India at par with those of other nations.

Conclusion

Since you and me have now understand the meaning of trademark and even read in detail about the 2017 rules, let us conclude the topic. So, the rules will help the system work better and efficiently in the long run. These rules are not only progressive, efficient but also very user friendly. Moreover, these changes will help entice foreign players to register trademarks in India. Remember trademark in todays time and space is one of the most pivotal factor that give brands their identity and help them maintain good will in the market. Moreover, because of the 2017 rules only the criminalization of trademark infringement is possible. 

Frequently Asked Questions (FAQs)

How is India related to the World Intellectual Property Organization (WIPO)?

The work of administering the treaties and documents which make up the framework of international trademarks is in the hands of the World Intellectual Property Organisation (WIPO). India as a member joined the organisation in the year 1975 and since then it has been a follower of the principles laid down. The organisation provides numerous services and products including patent, trademark, industrial design for utility models, and technical guidance to ensure that the nation’s regulations are consistent with the International norms.

What was the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement by the World Trade Organization (WTO)?

TRIPS is a multilateral treaty of 1995. Important to note here for us is that it is among the most broad-ranging trade agreements on intellectual property rights worldwide. Moreover, it is this agreement which protects the members states against global trade disputes. Further, it speaks of intellectual property rights transfer amidst nations flexibly. Interestingly, while following the objectives of the World Trade Organization it helps to stimulate the global economy at large. 

Let us see what this agreement talks about. So this agreement clearly states that the owner of a registered trademark is the one who will have the exclusive right over the identity mark. Remember that this is important as it will help prevent any kind of infringement by a third person. Moreover, it will ensure that goods of a similar nature are distinguished from one another globally. Point to be noted here is that the agreement not only protects the literary work but also provides protection to the computer programs and artistic works. Therefore this agreement creates a balanced intellectual property system in the world market.

What was the Paris Convention for the Protection of Industrial Property, 1883? 

Tracing the origins of the conceptualization and exchange of ideas can be ascribed to the Paris Convention for the Protection of Industrial Properties, which was signed in Frances on 20 March 1883. Since this was the first treaty related to intellectual property rights, it had allowed the establishment of a union. This union was created in order to render industrial property protection across the globe. 

This convention has been of great significance as it handled issues of international filing and was also able to resolve other significant international filing issues. India became the Paris Union which means a member of the International Union for the Protection of Industrial Property on 7 December 1998 and since then it has been guiding the IPR law in the nation.

What is the NICE classification (NCL)? Mention it’s relation to India. 

Since the year 1959 India has been following the NICE classification. It is an international classification system that is used to register trademarks related to goods and services. It can be simply said to be a system of classifying the goods and services for European Union (EU) trade mark applications primarily and consists of 45 classes.

Important to note is that in India, the classification of goods and services is known as trademark classification. Now, trademark classification is a document which in detail talks about the description of the services for the goods being provided in the contry. Therefore, in this case the classification is the one which is proposed to determine the precise nature of goods or services. These are the goods and services for which a trademark is intended to be made by the owner. 

Therefore, the Nice Classification is the one which serves as a guiding framework with the alphabetized catalogue. This catalogue contains both sources and explanation notes occupied in the international system. This is done so that the other nations can look for a well-coordinated system.

What are the different types of trademarks in India?

There are various types of trademarks currently present in India:

  • Product Mark: Products having innovative bearings as their identity. Example: Samsung created distinctive product personalities.
  • Service Mark: The mark here help distinguish servicest. An example is that of Urban company’s service.
  • Collective Mark: As the name suggests, it is used among the members of an association or group as identity. Example: CII for Confederation of Indian Industry.
  • Certification Mark: Certification assures the quality by confirming that the product or service meets standard requirements. Example: FSSAI mark assures food safety standards.
  • Shape Mark: Use of shapes to be distinct. Example: Nike is identified by the tick symbol.
  • Pattern Mark: Exceptional designs and patters to give identity. Example: Tiffany and Co.’s multi-motif Olympic pattern.
  • Sound Mark: An auditory signal as the identity. Example: Netflix’s ta-dum sound mark, which has come to be used as the hallmark of the entertainment industry.

References

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