Contents

1. Introduction 2. Nature and scope of trademark a. Intellectual Property b. Trademark i. Registered Trademark ii. Unregistered Trademark c. Remedies i. Infringement ii. Passing off d. Relief granted by Courts in Suits for Infringement and Passing off e. Offences and Penalties 3. Precautions to be taken by foreign companies a. Registration by foreign companies b. Precautions 4. TRIPS Agreement

SUBHAN AHMAD ATIF HASAN ALTAMISH (ALIGARH MUSLIM UNIVERSITY) Interns @ Diwan Advocates New Delhi

1. Introduction
In India, the position related to the trade marks is governed by The Trade Marks Act, 1999 [hereafter referred to as The Act]. Following the requirements of the General Agreement on Trade and Tariff (GATT), India enacted the Act, replacing the Trade and Merchandise Marks Act, 1958. The Act came into effect only in 2003.

2. Nature and scope of trademark

a. Intellectual Property
Intellectual Property Rights are the legal rights that are granted to a person for any creative and artistic work, for any invention or discovery, or for any literary work or words, phrases and symbols or designs for a stipulated period of time. The owners of Intellectual Property are granted certain exclusive rights through which they use their property without any disturbance and can prevent the misuse of their property. Intellectual property is any innovation, commercial or artistic, or any unique name, symbol, logo or design used commercially. People who seek the protection of their intellectual property to avoid any interruption in the use of his property. The creators of any invention, or a mark or a literary or creative work spend money as well as time for creating the Intellectual Property, hence they should also be granted certain rights like exclusive use of their invention or claiming remedies for the infringement etc.

b. Trademark
A trade mark is a sign which can distinguish the goods and services of the trademark holder from those of the competitors. It can be for example words, logos or a combination of both. Registering a Trademark is not compulsory. It may be registered or unregistered.

i. Registered Trademark:
Registering a trade mark gives Trademark holder the exclusive right to use his mark for the goods and/or services. If the trademark is registered then the symbol is placed next to the trademark so as to warn others against using it. However, using this symbol for a trade mark that is not registered is an offence. A Registered Trade Mark may put people off
SUBHAN AHMAD ATIF HASAN ALTAMISH (ALIGARH MUSLIM UNIVERSITY) Interns @ Diwan Advocates New Delhi

using the trade mark without the permission of the holders, allows them to take legal action against anyone who uses their trade mark without their permission, allows Police to bring criminal charges against counterfeiters if they use their trade mark. A registered Trademark is their property, which means they can sell it, or let other people have a license that allows them to use it.

ii. Unregistered Trademark:

For the protection of unregistered trademark, if it is not registered, still the holder of an unregistered trademark will be able to take an action against anyone who uses it without his permission through the common law action of passing off. To be successful in a passing off action, one has to prove that the mark belongs to him, he must have built up a reputation in the mark and he has been harmed in some way by the other person's use of the mark. It can be very difficult and expensive to prove a passing off action. In case of a passing off action, the burden of proof, which is heavier as compared to proving infringement of an unregistered trademark, lies on the plaintiff. If a trade mark is registered, it is easier to take legal action against infringement of the mark, rather than having to rely on passing off.

c. Remedies
Under the Trade Marks Act, both civil and criminal remedies are simultaneously available against infringement and passing off.

i. Infringement of trademark is violation of the exclusive

rights granted to the registered proprietor of the trademark to use the same. A trademark is said to be infringed by a person, who, not being a permitted user, uses an identical/ similar/ deceptively similar mark to the registered trademark without the authorization of the registered proprietor of the trademark. However, it is relevant to note that the Indian trademark law protects the vested rights of a prior user against a registered proprietor which is based on common law principles.
SUBHAN AHMAD ATIF HASAN ALTAMISH (ALIGARH MUSLIM UNIVERSITY) Interns @ Diwan Advocates New Delhi

ii. Passing off is a common law tort used to enforce unregistered trademark rights. Passing off essentially occurs where the reputation in the trademark of party A is misappropriated by party B, such that party B misrepresents as being the owner of the trademark or having some affiliation/nexus with party A, thereby damaging the goodwill of party A. For an action of passing off, registration of a trademark is irrelevant. Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action against violation of trademarks in India. In India, a combined civil action for infringement of trademark and passing off can be initiated. Significantly, infringement of a trademark is a cognizable offence and criminal proceedings can be initiated against the infringers. Such enforcement mechanisms are expected to boost the protection of marks in India and reduce infringement and contravention of trademarks.

d. Relief granted by Courts in Suits for Infringement and Passing off

The relief which a court may usually grant in a suit for infringement or passing off includes permanent and interim injunction, damages or account of profits, delivery of the infringing goods for destruction and cost of the legal proceedings. The order of interim injunction may be passed ex parte or after notice. The Interim reliefs in the suit may also include order for: (a) Appointment of a local commissioner, which is akin to an Anton Pillar Order, for search, seizure and preservation of infringing goods, account books and preparation of inventory, etc. (b) Restraining the infringer from disposing of or dealing with the assets in a manner which may adversely affect plaintiffs ability to recover damages, costs or other pecuniary remedies which may be finally awarded to the plaintiff.
SUBHAN AHMAD ATIF HASAN ALTAMISH (ALIGARH MUSLIM UNIVERSITY) Interns @ Diwan Advocates New Delhi

e. Offences and Penalties

In case of a criminal action for infringement or passing off, the offence is punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and fine which shall not be less than INR 50,000 but may extend to INR 200,000.

3. Precautions to be taken by foreign companies Registration by foreign companies

Trade mark registration is territorial in nature. Separate application must be filed in countries where one wishes to register its trademark. India has declared certain countries as convention countries, which afford to citizens of India similar privileges as granted to its own citizens. A person or company from a convention country, may, within six months of making an application in the home country, apply for registration of the trademark in India. If such a trademark is accepted for registration, such foreign national will be deemed to have registered his or her trademark in India.

Precautions
It is not uncommon for Indian companies to appropriate the trademarks of international trademarks that have not been used in India. Judicial decisions have held that a foreign company with an established international reputation can sue to protect that reputation in India even if they have no business here. However, the burden of proof in these cases is very high. Thus, certain precautions must be taken by them in order to protect themselves from any kind of disappointment. The pre-requisite of filing the application by a foreign company being, that they must provide the Registry with an address for service in India or they must appoint a local registered agent or representative. Some of the precautions that must be taken by them may be as follows: Trademark searches in the Indian Trade Marks Registry. Common law searches, such as market surveys, yellow pages, etc. Seeking local counsels opinion regarding the class interest.
SUBHAN AHMAD ATIF HASAN ALTAMISH (ALIGARH MUSLIM UNIVERSITY) Interns @ Diwan Advocates New Delhi

 Should consider hiring a watching service to monitor the trademark journals. Once registered, they should make press releases, publish cautionary notices, etc. to ensure that the relevant section of the public is aware that they are entering the market. Immediate steps must be taken by them in case any infringement is expected or actually occurs, to protect their trademark.

4. TRIPS AGREEMENT
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) is an international agreement between the member nations of World Trade Organization (WTO). TRIPS Agreement is aimed at harmonizing the Intellectual Property (IP) related laws and regulations worldwide. The TRIPS Agreement accomplishes this motive by setting minimum standards for protection of various forms of IP. The nations that are signatory to the TRIPS Agreement have to abide by these minimum standards in their national laws related to IP. The TRIPS Agreement generally sets out the minimum standards regarding the grant of rights to the owner of IP, enforcement requirements in the national laws, and settlement of disputes and remedies to those whose IP rights get infringed. The objective of the TRIPS Agreement is to ensure the protection and enforcement of Intellectual Property Rights (IPR) to contribute to the promotion of technological innovation, transfer and dissemination of technology, mutual advantage of producers and users of technological knowledge in a manner that is conducive to social and economic welfare, and balance of rights and obligations, worldwide.

The TRIPS Agreement is the first agreement under WTO under which the member nations are required to establish relatively detailed norms
SUBHAN AHMAD ATIF HASAN ALTAMISH (ALIGARH MUSLIM UNIVERSITY) Interns @ Diwan Advocates New Delhi

within their national legal systems, as well as to establish enforcement measures and procedures meeting minimum standards. The three important features of the Agreement are: Standards Enforcement Dispute Settlement

SUBHAN AHMAD ATIF HASAN ALTAMISH (ALIGARH MUSLIM UNIVERSITY) Interns @ Diwan Advocates New Delhi