How Indian Trade Mark Law Grew

The 1940 Act's registration ran for seven years. We know this from section 159(6) of the present Act, which deals with the date of expiration of a registration made before the commencement of the 1999 Act by reference to "the period of seven years for which it was registered or renewed".

The Trade and Merchandise Marks Act, 1958

Act 43 of 1958, and the Act most Indian trade mark case law was decided under. Its name records what it did: it consolidated the law of trade marks with the law of merchandise marks, that is the provisions about false trade descriptions that had previously stood apart.

Four features of it that a student needs, because the 1999 Act changed each.

• Registration was in Part A and Part B of the register, Part B being for marks with a lower degree of distinctiveness.
• Registration was for seven years, renewable.
• There was no registration for services. A bank, an airline or a hotel could not register its mark at all.
• There was provision for a defensive registration, which section 159(6) of the present Act refers to as "a defensive trade mark referred to in section 47 of the Trade and Merchandise Marks Act, 1958", and which the 1999 Act did not carry forward.

The Trade Marks Act, 1999

Act 47 of 1999, assented to on 30 December 1999, brought into force on 15 September 2003 by notification S.O. 1048(E) of that date, published in the Gazette of India Extraordinary, Part II, section 3(ii). Its long title is:

An Act to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks.

What it changed, in the Controller General's own list. The office of the Controller General of Patents, Designs and Trade Marks publishes a note headed "New Elements in Trade Marks Act, 1999", and it is the most reliable short statement of the changes there is. It records that the Act:

1. enlarged the definition of a trade mark, which now includes shape of goods, packaging and combination of colours;
2. provides for registration of a trade mark for services in addition to goods;
3. provides for a single Register with simplified procedures;
4. simplified the procedure for registration of a registered user;
5. provides for registration of collective marks owned by an association of persons;
6. provided for establishment of an Intellectual Property Appellate Board for speedy disposal of appeals from the Registrar;
7. transferred the final authority for registration of certification trade marks to the Registrar;
8. provides for enhanced punishment for trade mark offences, on a par with the Copyright Act, 1957, to prevent the sale of spurious goods;
9. prohibits use of someone else's trade mark as part of a corporate name or the name of a business concern;
10. provides for multi class filing, a single application for goods or services in more than one class;
11. increased the period of registration and renewal from seven years to ten;
12. made some trade mark offences cognizable;
13. amplified the powers of the court to grant ex parte injunctions in certain cases.

Every one of those thirteen is a chapter of this book, and reading the list now will tell you why the Act is arranged as it is.

What has happened to the 1999 Act since

Three amendments matter, and two of them change what a student may say about the printed syllabus.

The Trade Marks (Amendment) Act, 2010 (40 of 2010), assented to on 21 September 2010 and brought into force on 8 July 2013, inserted Chapter IVA, sections 36A to 36G, headed "Special provisions relating to protection of trade marks through international registration under the Madrid Protocol", and omitted Chapter X, sections 79 to 82, on textile goods. Chapter 160 works Chapter IVA and chapter 1010 works the repeal of the textile chapter.

The Tribunals Reforms Act, 2021 (33 of 2021), section 21, abolished the Intellectual Property Appellate Board with effect from 4 April 2021, omitting sections 83 to 90, 92, 93, 95, 96, 99 and 100, and substituting the High Court for the Appellate Board in the provisions that survive. So item 6 in the Controller General's list is no longer the law. Chapters 1410 to 1450 work this.

The Jan Vishwas (Amendment of Provisions) Act, 2023 (18 of 2023), section 2 and the Schedule, with effect from 1 August 2024, omitted sections 106, 108 and 109, converted the penalty in section 107 from imprisonment into a civil penalty, and inserted sections 112A and 112B creating an adjudicating officer and an appellate authority. So item 8 in that list has been reversed for three offences. Chapter 1340 works it.

The three Acts compared

Worked example

A firm has used a mark on hand tools continuously since 1935 and has never registered it. Ask what its position was at four dates.

In 1935. No register existed in India. Its only protection was the passing off action and the criminal provisions of the Indian Merchandise Marks Act 1889.

In 1941. The Trade Marks Act 1940 has created a register. The firm may now apply, and its five years of use are evidence of distinctiveness. If it does not apply, section 20(2) of that Act preserves its passing off action, which is the ancestor of section 27(2) of the present Act.

In 1960. The Trade and Merchandise Marks Act 1958 is in force. The register is one register, the term is seven years, and services cannot be registered at all. The firm's tools are goods, so it may register; a firm supplying repair services could not.

In 2010. The Trade Marks Act 1999 has been in force since 15 September 2003. The term is ten years, services are registrable, shape, packaging and combinations of colours are within the definition of a mark, and a single application may cover several classes. The firm's old seven year registration, if it had one, ran out its term under section 159(6) and was renewed for ten thereafter.

And its unregistered use throughout. Section 34 protects it: continuous use from a date earlier than a later proprietor's first use or registration, whichever is the earlier. The firm's 1935 use beats almost anything, and that is the practical reason the history matters.

What it does NOT mean

The 1999 Act did not abolish passing off. Section 27(2) preserves it in terms, and Module III is largely about it.

The 1958 Act is not simply the 1999 Act with different numbers. Part A and Part B, the seven year term, the absence of service marks and the defensive registration are real differences, and a student who quotes a 1958 Act case for a proposition about, say, Part B registration must say so.

And "consolidate" in the long title does not mean nothing changed. An Act to amend and consolidate does both: it restates the existing law in one place and alters it.

Quick revision

Three Acts: 5 of 1940, 43 of 1958, 47 of 1999. The 1999 Act was assented 30 December 1999, in force 15 September 2003 vide S.O. 1048(E), and repealed the 1958 Act by s.159(1).

Long title: to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services, and for the prevention of the use of fraudulent marks.

What 1999 added: shape, packaging and colour combinations in the definition; service marks; a single register; collective marks; multi class filing; a ten year term; enhanced punishment; a bar on use of a mark as a corporate name; cognizable offences; wider ex parte injunction powers; and the Appellate Board.

Since: 2010 Act inserted Chapter IVA and omitted Chapter X, in force 8 July 2013. Tribunals Reforms Act 2021 abolished the Appellate Board, 4 April 2021. Jan Vishwas Act 2023 decriminalised ss.106 to 109 and inserted ss.112A and 112B, 1 August 2024.

Test yourself

1. Which Act does the present Act repeal, and by which provision? The Trade and Merchandise Marks Act, 1958 (43 of 1958), repealed by section 159(1) of the Trade Marks Act, 1999.

2. When did the 1999 Act come into force, and how do you know? 15 September 2003, by notification S.O. 1048(E) dated 15 September 2003, published in the Gazette of India Extraordinary, Part II, section 3(ii). The date is carried in India Code's own record of the Act and is repeated in the Controller General's note on the new elements of the Act.

3. Name four things the 1999 Act introduced that the 1958 Act did not have. Any four of: registration of service marks; collective marks; a single register in place of Part A and Part B; multi class filing; a ten year term of registration; the Intellectual Property Appellate Board; a bar on use of another's mark as a corporate name; and shape, packaging and combination of colours in the definition of a trade mark.

4. Under which Act were Amritdhara and Durga Dutt decided? The Trade Marks Act, 1940. The reports themselves record it: Amritdhara under sections 8 and 10, Durga Dutt under the proviso to section 6.

5. Which of the changes the Controller General's note lists are no longer accurate, and why? Two. The Intellectual Property Appellate Board was abolished by section 21 of the Tribunals Reforms Act, 2021 with effect from 4 April 2021, so appeals go to the High Court. And the enhanced punishment claim is now partly wrong, because the Jan Vishwas (Amendment of Provisions) Act, 2023 omitted sections 106, 108 and 109 and made section 107 a civil penalty with effect from 1 August 2024.