Anybody looking for commercial
viability cannot ignore the facet of having a mark that speaks
for itself. Infringement suits take place day in and day out to
beat the vicious rival. Splits, buy-outs, mergers and
acquisitions are also often dwelling in the trademark ownership
conflict. The reputation, recognition and relation that a
trademark builds for a product is primarily what keeps products
The protection of trademarks in
India, vests in the principle of protection of goodwill and
repute. The Indian law very clearly states that the right to
use a mark vests with the owner. Ownership may be acquired
through a process of application, examination, publication,
opposition (if any) and registration. Section 28 of the
Trademarks Act, 1999 confers an exclusive right to use the mark
upon the trademark owner. The section also prescribes that the
exclusive right to use the mark subject to the limitations that
are imposed upon the registration, (S. 28 (2)). Further, the
exclusive rights conferred by registration shall not be
operational against other registered proprietors of identical
or similar marks (S. 28(3)) or honest concurrent use of the
same or similar mark (S. 12).
However, the owner of a
trademark may not essentially be the "holder" of the
trademark. The Indian trademark edicts provide for
transmission, assignment and licensing of trademarks. The terms
though may sound synonymous, have quite a stark degree of
difference. S. 2(1)(ac) of the Trademarks Act, 1999 clearly
distinguishes between "transmission" and assignment
means transmission by operation of law, devolution on personal
representative of a deceased person and any other mode of
transfer, not being assignment."
Transmission of unregistered
marks may take place with or without goodwill of the business
concerned. This is referred to as "assignment in
gross". The Indian law demands that assignment be
necessarily in writing, with the consent of the Registrar (S.
43). However, while taking note of such assignment, the
Registrar is not bound to go behind the terms of the
assignment, so as to witness if the assignment would lead to
destruction of the mark, by acting in a deceptively similar
Licensing of a registered
trademark does not confer any proprietary rights upon the
licensee, but is merely a permission to use the marks. This
prevents the licensor from being accused of infringement while
conferring rights and duties upon both the licensor and the
licensee. Prior to the Trademarks Act, 1999 coming into force,
the concept of "licensing" was absent in the Indian
jurisdiction. However, the concept of "permitted to
use" did find a place therein .
The differences between
licensing and assignment are vital. Assignment is a form of
permanent transfer, while a license is a temporary transfer.
Assignment may be with or without goodwill. Further more
licenses are revocable in nature while assignments are not.
The disputes of trademark
ownership find themselves in troubled waters where established
brand owners decide to split. Goodwill and repute being the
primary concern of brand establishment, often witness parties
to the split vouching hard for their right to use the mark. The
Mirchandani family, the proprietors of the famous electronics
brand "ONIDA" is faced with the issue of rightful
usage of the mark. While the stakes in the company have split,
the mark still lies under contention, owing to the value that
it attaches to its use.
Commercial exploitation of
brands and products increasingly perceives these processes in
play. Indian cities are experiencing an influx of corporations
in the retail sector. The largest of corporations are taking
franchising to the highest possible level with a range of
products on display arraying from groceries to garments, from
electronics to equipment. While brands are infusing the public
with their impact and influence, it is time for companies to
take stock of their mark management, to steer clear of
conceivable conflicts in the future.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
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