Making way for foreign trade marks: the new trade mark law in India

Abstract

Following the requirements of the General Agreement on Trade and Tariff (GATT), India enacted the Trade Marks Act, 1999, replacing the Trade and Merchandise Marks Act of 1958. The new law has come into effect only from September 2003. The Act of 1958, in the context of India’s thrust to create an isolated economy to protect and promote Indian industries, discouraged foreign trade marks. The new Act has reversed this and given special protection to foreign trade marks. The paper reviews the changes which have been brought about towards strengthening rights of foreign trade marks. A trade mark could not be registered unless it had goods bearing the mark in the Indian market. Due to import restrictions, the goods of foreign firms could not be in the Indian market and, thus, the marks could not be registered. The new Act has taken away this constraint for ‘well known trade mark’. Trade marks which are well known in any part of the world, can be registered even if there are no goods in the Indian market. Further, no Indian mark can be registered if it detracts in any manner from the value of a ‘well known trade mark’. A registered trade mark, not used for five years, could be removed from the register. This provision has been diluted in favour of foreign trade marks. Only the Central government, considering interests of domestic industries and prevention of trafficking in trade marks, could permit licensing of foreign trade marks. The new Act has removed these constraints.