On 15 September 2003 the Trademarks Act 1999 and the Geographical Indications of Goods (Registration & Protection) Act 1999 came into force, amending the old Trade & Merchandise Marks Act for 1958. Thus making the Indian Trademark Law fully compatible with the International Standards laid down in the TRIPS Agreement.
The most significant features brought by this trademark act are:
Registration of Service Marks:
It is now possible for entities or individuals providing services of any description in connection with commercial, business or industrial matters to register their marks.
In an effort to simplify the registration procedures, it is now possible to file a single application to cover multiple classes of goods and services.
Protection & Renewal Terms:
The protection and renewal periods have been amended from 7 to 10 years.
An Appellate Board has been established with headquaters in Chennai, however, it also has sittings in Kolkata, Mumbai, Delhi and Ahmedabad depending on the work demand. This board will facilitate speedy disposals of appeals, which were previously handled by the High Court. It is worth mentioning that it will not be bound by the Civil Code, nevertheless, it shall be guided by the principles of natural justice.
Well Known Trademarks:
This provision was adopted to accommodate the requirement of Article 16 of the TRIPS Agreement. By it, well known marks now enjoy protection even if neither registered nor used in India.
The registration system in Part A and B has been replaced by a single register, thereby eliminating any discrimination between applicants and granting them equal rights and opportunities.
Registration of collective marks:
Under the new law “Associations” can obtain registration of collective marks (whether they are trade or service marks) for use by their members.
Associated Goods & Services:
The new act grants registered proprietors of trademarks preemptive rights over associated services and vice versa.
Use of Trademark as Corporate Name:
The protection of a trademark is extended to prevent any “corporate” or “business concern” from using a third party’s mark as its trade name or name of its business concern in respect of goods or services covered by the registered mark.
Punishment of Offences:
Sale of imitated goods or falsification of trademarks is punishable by a minimum of 6 months imprisonment which can be extended to 3 years and a fine of 50.000 rupees to 3 lakhs.
Jurisdiction of Courts:
The courts have been empowered to grant injunctions and other interlocutory orders relating to seizure of infringing goods and other evidence and restraining offenders from disposing of evidence in a manner which may adversely affect the plaintiff’s ability to recover damages or remedies.
Assignment of Unregistered Marks:
It is now permitted to assign unregistered marks without the goodwill.
With the advent of the concept of well-known trademarks and the inherent right to secure registration for associated goods or services, the need for registering a trademark in other classes as a defensive mechanism is no longer required.