The Trade Marks Act, 1999

What it does

The Act (Act No. 47 of 1999) provides for the registration of trade marks for goods and services and for the protection of the registered mark. A trade mark is a mark capable of being represented graphically and of distinguishing the goods or services of one person from those of others, and it may include the shape of goods, their packaging and a combination of colours. The Act also provides for collective marks and certification marks.

Registration is made by application to the Registrar of Trade Marks, who examines it against the grounds on which registration must or may be refused. Absolute grounds go to the mark itself, as when it is devoid of distinctive character or is descriptive. Relative grounds go to conflict with an earlier mark, so that a mark identical or similar to an earlier one, for identical or similar goods or services, may be refused where there is a likelihood of confusion. A registered mark is protected initially for ten years and may be renewed for further periods of ten years.

The Act gives the registered owner the exclusive right to use the mark and the right to sue for infringement. Infringement includes use of an identical or similar mark in relation to the goods or services of the registration, and in some circumstances use in relation to other goods or services where the registered mark has a reputation. The Act expressly saves the common law action for passing off, which protects an unregistered mark that has acquired goodwill.

Who it binds

Anyone who uses a mark in the course of trade, whether or not registered. The registered owner and the licensee have rights and obligations under the Act, and infringers are liable in civil and criminal proceedings. The Registrar and the courts decide registration and rectification. The Act applies to foreign applicants as well, including those using the international system, since India joined the Madrid Protocol and the Act was amended to give effect to it.

What has changed, and when

• The Act came into force on 30 September 2003 and replaced the Trade and Merchandise Marks Act, 1958.
• It was amended in 2010 to provide for the filing of international applications under the Madrid Protocol.
• The Trade Marks Rules, 2017 replaced the earlier Rules of 2002 and changed the forms and fees.
• The Intellectual Property Appellate Board, which once heard appeals from the Registrar, was abolished in 2021 by the Tribunals Reforms legislation, and appeals now go to the High Courts.

What turns on it in practice

The first matter is clearance. A business that adopts a mark without a search risks opposition, refusal, or a suit by an earlier owner. A search of the register and of the market before launch is the cheapest step available, and the choice between a registered mark and one that has to rely on passing off decides how strong the position is.

The second is the scope of the registration. The classes and the specification of goods and services decide what the owner can stop. A mark registered for one class does not by that fact protect it in another, and a filing that is too narrow leaves a gap that a later user may enter.

The third is use and licensing. A mark that is not used may be removed on application for non-use, and a licence has to be structured so that the owner keeps control of the quality of the goods or services, since use by a licensee in the manner the Act allows is treated as use by the owner. Enforcement is by suit for an injunction, damages or an account of profits, and for some conduct by criminal complaint. The Act sits in the intellectual property and licensing work of this practice, which includes the protection, licensing and enforcement of trade marks.