Worldwide: Indian Trademark Law: Comparative Analysis With Europe And US

Last Updated: 5 August 2016
Article by Intepat Team

Every country has a different system for Trademark protection. In India, we have the Trademarks Act 1999. The Lanham (Trade Mark) Act, 1946 is a piece of legislation that contains the federal statute of trade mark law in the United States. The Trademark law in Europe comprises European Union (EU) legislation as well as the national laws of the 27 Member States of the Union on the protection of marks i.e. the Community Trademark Regulation (CTMR) of December 1993 & the Trademarks Directive 2008. Though all these legislations have the same goal i.e. to protect Trademark, there are certain procedural and conceptual differences in all these countries.

First to 'Use' system:

Indian trademark law is based on a "first to use" system. The first use may be anywhere in the world accompanied by a transborder reputation of the mark in India. This transborder reputation can be established through the mere availability of literature or advertising materials featuring the mark in question, which need not even be directed to Indian customers. Even the existence of materials relating to products that are banned in India and not directed towards the Indian public has been considered sufficient for proving reputation. For example, Playboy, whose own magazines are banned in India, relied on global advertisements to claim that the mark "Playboy" had goodwill and reputation in India. Whereas in EU, an established goodwill among actual customers of the relevant product or service in the respective country needs to be proved and in the United States, general use of the mark in commerce in the United States or in commerce between a foreign country and the United States is required to be proved to establish rights in the mark.

Registration:

Trademark rights in India can be acquired through registration. A trademark may be registered, even for a mark which has not yet come into use, i.e. on a "proposed to be used" basis. Moreover, rectification can occur only when there is an objection from a third party. Registered trademark owners are not required to periodically prove that their marks are in use in order to maintain their registrations. This is the same as in the EU but not in the US, registration can be obtained only when the mark has been used in U.S. interstate commerce or in commerce between a foreign country and the United States.

Third Party Action:

The position in the EU and India also differs in one important respect. In India, cancellation actions often fail, even before the assessment of the actual use of the challenged mark, on account of the lack of a bona fide intent of the third party bringing the action. In a 2008 judgement of Kanishk Gupta v. Liberty Footwear, the IPAB went on to rule that the blatant adoption by a third party of a mark that is deceptively similar to an invented mark on the register entitles that party to seek its removal. In other words, a mark consisting of an invented word cannot form the subject matter of a cancellation application, especially when the party seeking cancellation has adopted a similar mark with the intention to deceive.

Use:

The term "use" has been given a broad meaning by the Indian courts. In a 2003 judgment of Hardie Trading v. Addison Paints, the Supreme Court of India ruled that "use" may be "non-physical" but must be "material," that is, meaningful. Similarly in the EU, use must be "genuine" and not mere token use. There is no quantity threshold that needs to be met to establish the use of a registered mark in India. For example, in a case involving Toshiba Corporation, the Supreme Court of India held that, in case of a government ban on account of which goods could not be imported into India, a single instance of an advertisement by Toshiba in India, coupled with its global reputation, registrations for the TOSHIBA brand and marketing, gave the corporation's trademark immunity from cancellation.

Dilution:

In the United States, the owner of a famous and distinctive mark has a cause of action for dilution. In the EU, the trademark need not be "famous" but it must be known by a significant part of the public concerned with respect to the products or services covered by the mark. In India, the principle of dilution has traditionally been well recognized. Many proprietors of globally well-known trademarks, including APPLE, CARTIER, CATERPILLAR, DUNHILL, FORD, HONDA, HYUNDAI and MERCEDES-BENZ, have succeeded in passing-off actions in India against users of identical or similar marks in relation to dissimilar goods.

Opposition:

In India, opposition against a Trademark needs to be filed within 4 months from the date on which the mark is advertised or readvertised in the Trademark Journal. In the US, the time limit is 30 days from the date on which the mark is published in the Gazette (maximum 180 days). In EU, for Community Trademarks, the time limit is 3 months from the date of publication of the CTM application.

Enforcement:

The enforcement procedures are almost similar in all the 3 countries. Proceedings are conducted before the Registrar of Trademarks, and appeals are filed with the IPAB. The IPAB comprises a technical member and a judicial member. The procedure involved is the same as in a court of law, although timelines are shorter.

Apart from these, there are certain differences in the Indian Trademark law and the US Trademark law.

There are 2 types of registers in US- Principal Register and Supplemental Register. Whereas in India, trade mark registry is under the charge of the Registrar of Trade Marks who is also the Controller General of Patent, Designs and Trade Marks. He is assisted by officers designated as Joint-Registrar, Deputy Registrars, Assistant Registrars and Examiners of Trade Marks. Those officers discharge the functions of the Registrar under his superintendence and direction.

"Incontestability" under the Lanham Act is different from the Indian position. Section 33(a) of the Lanham Act states that once a trade mark has been registered for at least five years and certain formalities addressed by the Act completed by the registrant, the registration becomes conclusive evidence of the validity of the trade mark and the registrant has the exclusive right to use the mark on or in connection with the identified goods or services. Under the Indian trade mark system once the owner of a mark registers the mark it is sufficient for such registration to be prima facie evidence of validity.

Remedies for Infringement: In the US the plaintiffs shall be entitled to a wide range of remedies under federal law. In trade mark infringement suits, monetary relief may also be available including: (1) defendant's profits, (2) damages sustained by the plaintiff, and (3) the costs of the action. The Lanham Act does not provide for criminal remedies for trade mark infringement. Indian law, unlike the US, provides criminal remedies for trade mark infringement. Applying of false trade marks, trade description is punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than INR 50,000 but which may extend to INR 2 lakhs. The Act also provides that falsely representing a trade mark as registered shall be punishable with imprisonment for a term which may extend to three years or with fine or with both.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Intepat Team
Similar Articles
Relevancy Powered by MondaqAI
R. K. Dewan & Co
Vaish Associates Advocates
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
R. K. Dewan & Co
Vaish Associates Advocates
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions