Changing context of trade mark protection in India: a review of the trade marks act, 1999

Abstract

With liberalisation and globalisation of the Indian economy, it has become possible for anyone to get into production and services in most of the sectors. This has led to rampant misuse and appropriation of trade marks. In an insulated economy, with monopoly markets, law protecting trade marks had a limited role. In the changed context, however, trade mark law will be a field of much interest for academics and practitioners. Towards this, the paper explores the formation of trade mark law in India. India has made a new trade mark law, the Trade Marks Act, 1999, which has come into effect from September 2003. This replaces the Trade and Merchandise Marks Act, 1958. The Act of 1958 had provided for registration of a trade mark in relation to particular goods falling in a specific class. A registered owner could prevent unauthorized use of the trade mark. The new Act has taken note of changes in trade and business practices. For example, it has included service marks and collective marks for registration; expanded the definition of a mark; and expanded the scope of ‘infringement’ of trade marks. While the previous Act discouraged protection to foreign marks, the new one has reversed this by giving special protection to ‘Well known trade marks’. Further, foreign trade marks can be assigned and registered with very few restraints. In addition, the Act has strengthened civil and criminal liabilities for misusing trade marks.