What TRIPS Changed in India II: Trademarks and Geographical Indications

In one line

Two statutes of 1999, both in force on the same day in 2003, replaced a trademark law that knew nothing of services and created a geographical indications regime that had never existed.

In exam wording: TRIPS was implemented in India as to trademarks by the Trade Marks Act 1999, which replaced the Trade and Merchandise Marks Act 1958, and as to geographical indications by the Geographical Indications of Goods (Registration and Protection) Act 1999, both of which came into force on 15 September 2003.

Trademarks: what the 1958 Act lacked

Service marks were not registrable at all. The Trade and Merchandise Marks Act 1958 protected marks for goods, and a bank, an airline, a hotel or an advertising agency could protect its name only through a passing off action.

Well known marks had no statutory basis. Protection depended on the common law of passing off, which requires goodwill in India.

The definition of a mark was narrow, and the shape of goods, packaging and combinations of colours were doubtful subject matter.

And the term was seven years, renewable, which is the TRIPS minimum but below the international norm.

What the Trade Marks Act 1999 changed

Service marks, in Classes 35 to 45. This is the largest single change and it answers TRIPS Article 15.1, which requires that any sign capable of distinguishing the goods or services of one undertaking be registrable, and Article 16.2, which extends well known mark protection to services.

A broad definition in section 2(1)(m): mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof. Section 2(1)(zb) defines trade mark as a mark capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others, and may include the shape of goods, their packaging and combination of colours.

Well known marks, in sections 2(1)(zg) and 11(6) to 11(10). Section 2(1)(zg) defines a well known mark in relation to any goods or services as a mark which has become so to the substantial segment of the public which uses those goods or receives those services that its use in relation to other goods or services would be likely to be taken as indicating a connection. Section 11(6) lists the factors the Registrar must take into account, including the knowledge or recognition of the mark in the relevant section of the public including knowledge obtained as a result of promotion, which follows Article 16.2 word for word in substance. Section 11(9) provides what the Registrar shall not require, including that the mark has been used in India, that it has been registered in India, or that it is well known to the public at large in India.