written by | January 11, 2023

A Brief Overview and Analysis on the Trademark Act,1999

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Table of Content


A trademark is a type of intellectual property that may be in the form of a word or a design, phrase, logo, or even a symbol that represents a product or service. Trademarks are used to secure the identity of products and services. These trademarks help customers recognise and differentiate between products. Registered trademarks are entitled to certain legal protections that can help to prevent others from using the same or a similar mark.

In today's fast-paced, competitive world, where inventions occur on a daily basis, it is critical to understand Intellectual Property Rights and their growing importance. A trademark's primary goal is to legally protect and safeguard the interests of both the owners and the consumers. Trademarks are intangible assets that enable business owners to build trust and understanding by keeping consumers informed, aware, and diligent while acting as a deterrent to all types of fraud and deception.

Did you know? As trademark registration is not required by law, the owner of an unregistered trademark can add the letters "TM" as a superscript to the mark to indicate to the public that it is an unregistered trademark. 

What is the Trademark Act?

A trademark is a distinguishing sign or indicator used by an individual, business organisation, or other legal entity to identify to consumers that the services or products associated with the trademark are from a specific source, as well as to differentiate its products or services from those of other entities. 

As a result, the Trademark Act is an act that amends and consolidates trademark law. This Act is used to enact new provisions, improve existing systems, streamline processes, and combat trademark infringement. It establishes legal remedies for trademark infringement. It protects trademark owners from legal liability. 

The Trademark Act of 1999

The Trademark Act of 1999 is a law in India that provides for the registration and protection of trademarks in the country. The Act replaces the earlier Trade and Merchandise Marks Act of 1958, and harmonises Indian trademark law with international standards. The Trademark Act of 1999 is administered by the Controller General of Patents, Designs, and Trademarks, who is responsible for examining and approving trademark applications.

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Provision of Trademark Act

The Act replaces the earlier Trade and Merchandise Marks Act of 1958, and harmonizes Indian trademark law with international standards.

The main provisions of the Trademark Act of 1999 include:

  1. Definition of a trademark: 

A trademark is defined as a mark that is capable of being represented graphically and that is capable of distinguishing the goods or services of one person from those of others.

  1. Registration of trademarks: 

The Act provides for the registration of trademarks, which confers exclusive rights to the owner to use the trademark in relation to the goods or services for which it is registered.

  1. Prohibited trademarks: 

The Act prohibits the registration of certain types of trademarks, such as those that are deceptive, scandalous, or contrary to public order.

  1. Duration of trademark registration: 

A trademark registration is valid for a period of 10 years and can be renewed for successive periods of 10 years.

  1. Infringement of trademarks: 

The Act provides for the protection of registered trademarks and allows the owner to take legal action against any person who infringes upon their rights.

The Trademark Act of 1999 is administered by the Controller General of Patents, Designs, and Trademarks, who is responsible for examining and approving trademark applications.

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Features of Trademark Act

The Trademark Act is a law that provides for the registration and protection of trademarks in a particular jurisdiction. The specific features of a trademark act can vary depending on the country or region in which it is enacted, but there are some common features that are typically included in trademark acts:

1. Infringement of trademarks: 

A trademark act may provide for the protection of registered trademarks and allow the owner to take legal action against any person who infringes upon their rights.

2. Classification of goods and services: 

A trademark act may include a classification system for goods and services, which is used to determine the categories in which a trademark may be registered.

3. Inclusion of Service Mark 

The new Act's most significant addition is a provision for including services. This is due to the expansion of the trademark concept. Businesses and individuals providing any type of service can now register their marks as a result of this change. Thus, the New Act allows anyone who provides services of any kind in connection with business, industrial, or commercial matters to register their service marks.  

4. Fair use of trademarks

 The Trademark Act allows for the fair use of trademarks, which means that others may use trademarks in certain circumstances without infringing on the trademark owner's rights. For example, trademarks may be used for the purpose of criticism, commentary, news reporting, teaching, scholarship, or research.

5. Collective Marks

This is a new concept added to the Act that states that any organisation can register and obtain its own trademark. A collective mark is a trademark or service mark that members of an association use or intend to use to indicate their membership in that association. The Association owns the trademark, and its members are authorised to use it. For example, a club may have its own trademark, which members may wear on their clothing or place on their cars for easy identification. 

7. Well Known Trademark

The well-known trademark is a mark used over particular goods or services that are already well recognised amongst consumers. The identification and standing of this trademark shall be given recognition and any misutilization of this trademark for its name of popularity will be dealt with strictly. e.g., Frisbee, which is a type of flying disc, Xerox, a photocopying machine.

8. Single Registration

To simplify the process of registration only a single register will be maintained, leaving no room for discrimination between applicants, as was previously done. All applicants now have the same rights and opportunities. Also, a single application will be used for good as well as services.

9. Single registration application for multiple classes of goods

 It is now possible to file a single application for registration of a mark in different classes of goods or services, rather than filing separate applications, as one way to simplify and streamline the registration procedure. This is expected to speed up the search for similar marks during registration.  

10. Protection for a longer period of time and renewal

The most important changes concern the term of trademark protection. The tenure for holding a trademark has been extended from seven to ten years. Renewal is possible before the end of the ten-year period.  

11. Appellate Board for Intellectual Property

A Trademark Appellate Board has been established, with its national headquarters in Chennai, India. Depending on work demands, this Board meets on a regular basis in Kolkata, Mumbai, Delhi, and Ahmedabad. It hears Registrar decisions on appeal and issues rectification orders. It also reduces the existing burden on the High Court, which previously heard appeals under the old Act. 

12. Related goods and services

The new Act grants a registered proprietor of a trademark over goods first-mover advantage over related services, and vice versa. As a result, any other business may not use the mark on "similar" goods or services. It thus is distinct from the previous Act, which only provided protection against "same" goods imitation, effectively enhancing a mark's protection. 

13. The use of a trademark as a corporate name is prohibited. 

A trademark's protection is extended to prohibit any "corporate" or "business concern" from using another's mark as its trade name or the name of its "business concern" when attempting to deal in goods and services for which the mark is registered. 

14. Enhancing penalties for offences

To prevent the sale of counterfeit goods and trademark falsification, enhanced penalties are included. The penalty will be a minimum of six months in prison and a maximum of three years in prison, as well as a fine ranging from ₹50,000 to three lakh rupees. This is intended to serve as a deterrent to infringers. Furthermore, the New Act makes these offences cognizable in nature, allowing law enforcement agencies, such as police, to arrest violators without a warrant. 

15. Remedies for trademark infringement

 The Trademark Act provides for various remedies in cases of trademark infringement, including injunctions, damages, and attorney's fees.

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What is Trademark infringement?

Infringement refers to the violation of someone's rights. As a result, trademark infringement implies a violation of trademark rights. Infringement of a trademark occurs when an unauthorised use of a trademark or a substantially similar mark on goods or services of a similar nature occurs. In such a case, the court will consider whether the use of the trademark will lead to consumer confusion about the actual brand they are purchasing. Any fraudulent practice on use of Trademark will come under the purview of Infringement. This implies a penalty on the person or organisation responsible for the infringement. 

Conclusion

The complete Trademarks Act of 1999 repealed the previous Act's inconvenient and obsolete provisions. It has significantly improved merchants' and other service providers' rights. The New Act is a response to changes in business and commercial practices, the increasing globalisation of trade and industry, the need for a trademark monitoring system, as well as its simplification and harmonisation. It also works to ensure that important judicial decisions that serve as a deterrent to infringers are implemented. 

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FAQs

Q: What is the punishment given for infringement of trademark?

Ans:

The minimum penalty for infringement is a sentence for 6 months, which can be extended to 3 years and a fine ranging from ₹50000 to ₹3 lakhs. The new act has made these offences cognizable in nature, which means that law enforcement agencies, such as the police, can arrest violators without a warrant as soon as they become aware of such activities, as these are considered serious offences.

Q: How do I register a trademark?

Ans:

To register a trademark, you must file an application with the United States Patent and Trademark Office (USPTO). The application must include the trademark you wish to register, a description of the goods or services that the trademark will be used on, and a fee.

Q: What is the most well-protected trademark?

Ans:

A fanciful mark is your best bet for obtaining trademark protection. These are trademarks that were created solely for the purpose of serving as a trademark, and they are the most powerful. They have no other meaning besides their function as a mark.

Q: What is covered under services in the Trademark Act of 1999?

Ans:

Service refers to any type of facility that is made available to potential users, including the provision of services in connection with any industrial or commercial matters. These can be banking, communication, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, and the supply of electrical or other energy.

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Disclaimer :
The information, product and services provided on this website are provided on an “as is” and “as available” basis without any warranty or representation, express or implied. Khatabook Blogs are meant purely for educational discussion of financial products and services. Khatabook does not make a guarantee that the service will meet your requirements, or that it will be uninterrupted, timely and secure, and that errors, if any, will be corrected. The material and information contained herein is for general information purposes only. Consult a professional before relying on the information to make any legal, financial or business decisions. Use this information strictly at your own risk. Khatabook will not be liable for any false, inaccurate or incomplete information present on the website. Although every effort is made to ensure that the information contained in this website is updated, relevant and accurate, Khatabook makes no guarantees about the completeness, reliability, accuracy, suitability or availability with respect to the website or the information, product, services or related graphics contained on the website for any purpose. Khatabook will not be liable for the website being temporarily unavailable, due to any technical issues or otherwise, beyond its control and for any loss or damage suffered as a result of the use of or access to, or inability to use or access to this website whatsoever.