School of legal studies department of law

COURSE TITLE: PUBLIC INTERNATIONAL

LAW

COURSE CODE: IL-C-504

ASSIGNMENT ON: NATURE AND OBJECTS OF

TRADEMARK ACT, 1999

SUBMITTED BY:

NAME : MOHD FAIZ AHMED

ENROLL NO.: 2007CUKMR16

SEMESETER: 5th

COURSE : BALLB (5YEARS)

EMAIL ID : FAIZGTA1@GMAIL.COM

SUBMITTED WITH REGARDS ,

TO,

DR. IMRAN AHAD

DEPARTMENT OF LAW SCHOOL OF LEGAL STUDIES, CENTRAL UNIVERSITY OF

KASHMIR.
 Table of Contents

Introduction ......................................................................................................................................... 1

Intellectual Property System in India...........................................................................................1-2

Historical Perspective………………...……………….................................................................... 2

Objects of Trademark Law.………………............................................................................... 2-3

Important Definitions In The Trade Marks Act, 1999………………………………………… 4

Refrences .............................................................................................................................................. 5
Introduction
Intellectual property (IP) refers to the creations of the human mind like inventions, literary and
artistic works, and symbols, names, images and designs used in commerce. Intellectual property
is divided into two categories: Industrial property, which includes inventions (patents), trademarks,
industrial designs, and geographic indications of source; and Copyright, which includes literary
and artistic works such as novels, poems and plays, films, musical works, artistic works such as
drawings, paintings, photographs and sculptures, and architectural designs. Rights related to
copyright include those of performing artists in their performances, producers of phonograms in
their recordings, and those of broadcasters in their radio and television programs. Intellectual
property rights protect the interests of creators by giving them property rights over their creations.
The most noticeable difference between intellectual property and other forms of property,
however, is that intellectual property is intangible, that is, it cannot be defined or identified by its
own physical parameters. It must be expressed in some discernible way to be protectable.
Generally, it encompasses four separate and distinct types of intangible property namely —
patents, trademarks, copyrights, and trade secrets, which collectively are referred to as “intellectual
property.” However, the scope and definition of intellectual property is constantly evolving with
the inclusion of newer forms under the gambit of intellectual property. In recent times,
geographical indications, protection of plant varieties, protection for semi-conductors and
integrated circuits, and undisclosed information have been brought under the umbrella of
intellectual property.
Intellectual Property System in India
Historically the first system of protection of intellectual property came in the form of (Venetian
Ordinance) in 1485. This was followed by Statute of Monopolies in England in 1623, which
extended patent rights for Technology Inventions. In the United States, patent laws were
introduced in 1760. Most European countries developed their Patent Laws between 1880 to 1889.
In India Patent Act was introduced in the year 1856 which remained in force for over 50 years,
which was subsequently modified and amended and was called "The Indian Patents and Designs
Act, 1911". After Independence a comprehensive bill on patent rights was enacted in the year 1970
and was called "The Patents Act, 1970".
Specific statutes protected only certain type of Intellectual output, till recently only four forms
were protected. The protection was in the form of grant of copyrights, patents, designs and
trademarks. In India, copyrights were regulated under the Copyright Act, 1957; patents under
Patents Act, 1970; trade marks under Trade and Merchandise Marks Act 1958; and designs under
Designs Act, 1911.
With the establishment of WTO and India being signatory to the Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPS), several new legislations were passed for the
protection of intellectual property rights to meet the international obligations. These included:
Trade Marks, called the Trade Mark Act, 1999; Designs Act, 1911 was replaced by the Designs

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Act, 2000; the Copyright Act, 1957 amended a number of times, the latest is called Copyright
(Amendment) Act, 2012; and the latest amendments made to the Patents Act, 1970 in 2005.
Besides, new legislations on geographical indications and plant varieties were also enacted. These
are called Geographical Indications of Goods (Registration and Protection) Act, 1999, and
Protection of Plant Varieties and Farmers’ Rights Act, 2001 respectively.
Historical Perspective
The Indian Trade Marks Act, 1940 was the first statute law on trade marks in India. Prior to that
protection of trade marks was governed by Common Law. Cases concerning trade marks were
decided in the light of Section 54 of Specific Relief Act, 1877, while registration was secured by
obtaining a declaration as to ownership under the Indian Registration Act, 1908. Some of the
provisions of the first Trade Marks Act, 1940 came into force on 11.3.1940 and the rest became
effective on 1.6.1942 (Gazette of India Extraordinary, 1942. p.684)
The said enactment was amended by the Trade Marks (Amendment) Act, 1941 and later by two
other amendments. By the Trade Marks (Amendment) Act, 1943, the Trade Marks Registry, which
was formerly a part of the Patent Office, Kolkata was separated from the Patent Office to constitute
a separate Trade Marks Registry under a Registrar of Trade Marks at Bombay. Thereafter, the Act
was amended by the Trade Marks (Amendment) Act, 1946, to give effect to the reciprocal
arrangement relating to trade marks between the Government of India and the then Indian States
and further amendments introduced by Part B States Laws Act, 1951.
The Trade Marks Enquiry Committee, which was constituted by the Government of India in
November 1953, recommended some changes, but since the report showed some divergence of
opinion among the members, Mr. Justice Rajagopala Ayyangar (then a Judge of the Madras High
Court, who later served and retired as a judge of the Supreme Court) was appointed by the
Government of India to examine the Trade Marks Act, 1940, with reference to the report of the
Trade Marks Enquiry Committee and to recommend as to what changes in the then law were
necessary. On the basis of the report of Mr. Justice Ayyangar, the Trade Marks Act, 1940 was
replaced by the Trade & Merchandise Marks Act, 1958. The Trade & Merchandise Marks Act,
1958 consolidated the provisions of the Trade Marks Act, 1940, the Indian Merchandise Marks
Act, 1889 (which was in force since 1.4.1889) and the provisions relating to trade marks in the
Indian Penal Code. The Trade & Merchandise Marks Act, 1958 was brought into force on 25th
November 1959. Certain minor amendments were carried out by the Repealing & Amending Act,
1960 and the Patents Act, 1970. Thus, the history of legal protection to trade marks in India is
more than a century old.
Objects Of Trademark Law
A trade mark provides protection to the owner of the mark by ensuring the exclusive right to use
it, or to authorize another to use the same in return for payment. The period of protection varies,
but a trademark can be renewed indefinitely beyond the time limit on payment of additional fees.

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 In a larger sense, trade marks promote initiative and enterprise worldwide by rewarding the
owners of trademarks with recognition and financial profit. Trade mark protection also hinders the
efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market
inferior or different products or services. The system enables people with skill and enterprise to
produce and market goods and services in the fairest possible conditions, thereby facilitating
international trade.
With the advent of WTO, the law of trade marks is now modernized under the Trade Marks Act
of 1999 and is in harmony with two major international treaties on the subject, namely, The Paris
Convention for Protection of Industrial Property and TRIPS Agreement.
The object of trade mark law has been explained by the Supreme Court in Dau Dayal v. State of
Utttar Pradesh AIR 1959 SC 433, in the following words:
“The object of trade mark law is to protect the rights of persons who manufacture and sell goods
with distinct trade marks against invasion by other persons passing off their goods fraudulently
and with counterfeit trade marks as those of the manufacturers. Normally, the remedy for such
infringement will be by action in Civil Courts.
But in view of the delay which is incidental to civil proceedings and the great injustice which
might result if the rights of manufacturers are not promptly protected, the law gives them the right
to take the matter before the Criminal Courts, and prosecute the offenders, so as to enable them to
effectively and speedily vindicate their rights”.
The distinction between a trade mark and a property mark has been stated by the Supreme Court
in the case of Sumat Prasad Jain v. Sheojanam Prasad and Ors., AIR 1972 SC 413. The Apex
Court held:
“…Thus, the distinction between a trade mark and a property mark is that whereas the former
denotes the manufacture or quality of the goods to which it is attached, the latter denotes the
ownership in them. In other words, a trade mark concerns the goods themselves, while a property
mark concerns the proprietor. A property mark attached to the movable property of a person
remains even if part of such property goes out of his hands and ceases to be his.”
The trade mark law in India is a ‘first-to-file’ system that requires no evidence of prior use of the
mark. A trade mark application can be filed on a ‘proposed to be used or intent-to-use’ basis or
based on use of the mark. The term ‘use’ under the Trade Marks Act, 1999 has acquired a broad
meaning and does not necessarily mean the physical presence of the goods in India. Presence of
the trade mark on the Internet and publication in international magazines and journals having
circulation in India are also considered as use in India. One of the first landmark judgments in this
regard is the “Whirlpool case” [N. R. Dongre v. Whirlpool Corporation, 1996 (16) PTC 583]
in which the Court held that a rights holder can maintain a passing off action against an infringer
on the basis of the trans-border reputation of its trade marks and that the actual presence of the
goods or the actual use of the mark in India is not mandatory. It would suffice if the rights holder
has attained reputation and goodwill in respect of the mark in India through advertisements or
other means.
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Important Definitions In The Trade Marks Act, 1999
A trade mark is a word, phrase, symbol or design, or combination of words, phrases, symbols or
designs used in the course of trade which identifies and distinguishes the source of the goods or
services of one enterprise from those of others.
As stated above, the definition of "trade mark" under Section 2(1)(zb) has been enlarged to mean
a mark capable of being represented graphically and which is capable of distinguishing the goods
or services of one person from others and may include shape of goods, their packaging and
combination of colors and covers both goods and services.
“Mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral,
shape of goods, packaging or combination of colors or any combination thereof”. [Section
2(1)(m)].
Being an inclusive definition it will thus include any mark within the definition of trade mark so
long as the mark is –
— capable of being represented graphically; and
— capable of distinguishing the goods or services of one person from those of others.
Service
The new definition of 'service' has been included for the benefit of service-oriented establishments
such as banking, communication, education, finance, insurance, chit funds, real estates, transport,
storage, material treatment, processing, supply of electrical or other energy, boarding, lodging,
entertainment, amusement, construction, repair, conveying of news or information and advertising.
A service mark is the same as a trade mark except that it identifies and distinguishes the source
of a service rather than a product. Normally, a mark for goods appears on the product or on its
packaging, while a service mark appears in advertising for the services.
The definition of “registered trade mark” under Section 2(1)(w) has been modified to mean a
trade mark which is actually on the Register and remaining in force. The renewal of registration
of a trade mark should be made for every ten years instead of seven years under the present Act.

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References
Dr. V K AHUJA , LAW RELATING TO INTELLECTUAL PROPERTY RIGHTS, 3RD EDITION

CLASS LECTURES

YOUTUBE

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