After 13 years of the first edition published in year 2001 when the Trade mark Act, 1999 awaited commencement after enactment, till 15 Sept, 2003, the third edition of 2014 revised earlier in 2006 and 2009 is in your hands. The first edition of the book contained provisions of both the 1958 and 1999 Act to serve the period of transition; we have slowly given way to old cases and provisions under 1958 Act and now predominantly discuss 1999 Act. The book was result of an ambitious project to bring home to legal discipline, the importance of trade marks to serve as tools of economic development rather than only contested cases in courts. It also translated my learning of trade mark law and MNCs useful for a spread out audience, outside the Faculty of Law of Delhi University. We competed with patents considering selling as more important than production and that patents are dependent on trade marks for sales.
The first chapter explains all aspects of intellectual property (IP) in the contemporary world where IP has overshadowed all other disciplines of knowledge, power or intrinsic value. The new interpretations and impact of IP decisions in other countries, like that on law of dilution, shapes, trade dress, colour combination, honest practices, exhaustion and parallel imports or new test of educating the consumer for distinctiveness, aggrieved person, damages, reading down of transbor-der reputation, all make it necessary that the book need to be revised every five years. In India, classes of service marks have been increased in fourth schedule showing their future potential. It is felt that decisions of European Court of Justice shall be referred a lot more in India, which has been kept in view while updating the book.
The Third Edition covers a range of issues on trade mark law till November, 2013.1 trust the book would spread the knowledge of IP and trade mark law to deprived and ordinary business enterprises and answer economic aspirations of all. This book is practical but gives logical critique of the judgments and statute law balancing it with interest of stakeholders in India. In-depth research and comprehensive coverage of the Trade Marks Act, 1999 and relevant cases is inherent strength of the book. It is designed and conceptualised as a single-source expert guide for Indian trade mark law.+
India became 14th of the G-20 economies to accede to the Madrid Protocol for international registration of trade marks on July 8, 2013. The law of international registration introduced on July 8, 2013 has been dealt in sufficient detail in Chapter 32 with coverage wherever necessary in all chapters of the book. The text and Common Regulations necessary for practising international registration under Madrid System are provided in Appendix.
Now the trade mark offices and professionals within India can assist brand owners for protection of trade marks in all the markets, where they have commercial interest. Other similarly placed professionals overseas may assist clients in their countries for India; the book is useful for both having written with a view of international audience interested in India.
In this edition, the comprehensive text is targeted primarily at inquisitive, occupational or intellectual interests including professionals and practicing advocates seeking clear answers to the core trade mark issues and problems. It remains a useful tool for anyone who wishes to acquire a broad-based understanding of the fundamentals of trade marks system in India. It summarizes what is clear, identify what is unsettled, and comments on what is unsettling as a trend, particularly in the Indian context and offers concise views on how some open issues might be sensibly resolved. This all-new third edition is a fully integrated treatise on legal and business perspective. It lucidly manoeuvres you through the intricate and contemporary concepts of trade mark literature.
This book is sure to benefit the legal managers, legal practitioners, teachers, students of law and all those who are interested in trade mark literature. Some comments and submissions are addressed to higher judiciary and decision makers in the Government (Ministry of Industries). The IP law in general and trade mark law in particular are national and territorial in spite of wrong internationalization of the same by Indian judiciary, but refusal by other countries would compel Indian Judiciary to backtrack. The Indian economic interest based on the best practices of other countries has been recommended which could be taken further by Readers.
The Singapore Treaty on the Law of Trade Marks adopted in Singapore on March 27, 2006 entered into force on March 16, 2009 when it was ratified/ acceded by ten countries. As of July, 2013, there were 30 contracting parties to the treaty which establishes common standards for procedural aspects of trade mark registration and licensing. The treaty is an effort to update Trade Mark Law Treaty, 1994 which had 33 members. The treaty has not been commented upon in the book.
Preface to the First Edition Contents
Table of Cases
LAW OF TRADE MARKS IN INDIA
1 — INTELLECTUAL PROPERTY
2 — TRADE MARKS : FUNDAMENTALS & LEGAL CONCEPT
3 — ROLE AND FUNCTIONS OF TRADE MARKS
4 — RIGHTS IN TRADE MARKS AND NON-DISTINCTIVE PARTS
5 — AUTHORITIES UNDER THE ACT & THEIR JURISDICTION.
6 — ABSOLUTE GROUNDS FOR REGISTRATION: DISTINCTIVE CHARACTER
7 — ABSOLUTE GROUNDS FOR REFUSAL IN SECTION 9(2): DECEPTION
OR CONFUSION AMONG OTHERS
8 — ABSOLUTE GROUNDS FOR REFUSAL IN SECTION 9(3): SHAPE TRADE MARKS
9 — RELATIVE GROUNDS OF REGISTRATION AND DECEPTIVE SIMILARITY
10 — WELL-KNOWN TRADE MARKS
11 — REGISTRATION PROCEDURE RENEWAL AND PROHIBITIONS
12 — VESTED PRIOR RIGHTS AND CONCURRENT REGISTRATION.
13 — RECTIFICATION OF & REMOVAL FROM REGISTER.
14 — ASSIGNMENT AND TRANSMISSION OF TRADE MARKS
15 — LAW OF LICENSING OF TRADE MARKS
16 — LICENCE AGREEMENT AND ITS SUPREMACY
17 — TRADE MARK LICENSING STRATEGIES AND RESTRICTIVE PRACTICES
18 — PARALLEL GOODS, EXHAUSTION PRINCIPLE ENFORCEMENT AT
BORDERS AND MARKETS ALLOCATION
19 — FOREIGN TRADE MARKS AND IMPORTER' s MARK IN INDIA .
20 — PROTECTION OF TRADE MARKS BY REGISTRATION OR LEGAL ENVIRONMENT
21 — PROTECTION OF TRADE MARKS BY COPYRIGHT LAW
22— INFRINGEMENT AND PASSING OFF
23 — INFRINGEMENT AND PASSING OFF TRANSBORDER REPUTATION,
DISSIMILAR GOODS/ SERVICES TRADE NAMES
24 — TRADE MARKS LAW IN ADVERTISING AND TITLES
25 — PROTECTION OF DOMAIN NAMES
26 — JURISDICTION, INJUNCTIONS, STAY OF PROCEEDINGS & OTHER RELIEFS
27— OFFENCES AND PENALTIES
28 —COLLECTIVE MARKS, CERTIFICATION MARKS, TEXTILE MARKS & RELATED PROVISIONS
29 —CERTAIN IMPORTANT PROVISIONS
30 —INTERFACE WITH THE PARIS CONVENTION
31 — WTO-TRADE RELATED INTELLECTUAL PROPERTY RIGHTS AND
INDIAN TRADE MARK LAW
32 — INTERNATIONAL REGISTRATION OF MARKS UNDER MADRID
PROTOCOL AND EUROPEAN COMMUNITY TRADE MARK
Notifications by Central Government
App.1 — The Trade Marks Act, 1999
App.2 — The Geographical Indications of Goods (Registration and Protection) Act, 1999
App.3 — Trade and Merchandise Marks Act, 1958 .
App.4 — Indication of origin of goods
App.5 — Instructions for the limits of variation in respect of trade descriptions
App.6 — The Emblems and Names (Prevention of Improper Use) Act, 1950
App.7 — Marks Not Registrable: Directions of Central Government
App.8 — The Indecent Representation of Women (Prohibition) Act, 1986
& Indecent Representation of Women (Prohibition) Rules, 1987
App. 9 — Certain Provisions of the Geneva Conventions Act, 1960
App.10 — The Drugs and Cosmetics Act, 1940
App.11 — The Drugs and Magic Remedies (Objectionable Advertisements) Act, 1954
App.12 — Agreement on Trade-Related Aspects of Intellectual Property Rights
App.13 — Trade Mark Law Treaty
App.14 — Paris Convention for the Protection of Industrial Property
App.15 — Ratification of Paris Convention
App.16 — Madrid Agreement Concerning the International Registration of Marks
App.17 — Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
App.18 — Common Regulations under the Madrid Agreement Concerning the International
Registration of Marks and the Protocol Relating to that Agreement
App.19 — Nice Agreement Concerning the International Classification of
Goods and Services for the Purposes of the Registration of Marks
App.20 — Trade Mark Rules, 2002
App.21 — Trade Marks (Applications and Appeals to the Intellectual
Property Appellate Board) Rules, 2003
App.22 — Intellectual Property Appellate Board (Procedure) Rules, 2003
App.23 — The Trade Mark Act, 1994 (UK Statute).
App.24 — Federal Trade Mark Act of 1946 of USA (Known As LanhamAct, 1946)