New
Intellectual Property legislations come into force.
The
Government of India has notified September 15, 2003 as the date for bringing
into force the Trade Marks Act, 1999 (TM Act) and the Geographical
Indications of Goods (Registration and Protection) Act, 1999 (GI Act)
along with the setting up of the Intellectual Property Appellate Board
in Chennai with benches at Ahmedabad, Delhi, Mumbai and Kolkata. With
the bringing into force of the two new legislations, Indian law of Trade
Marks, as well as Geographical Indications of Goods is fully compatible
with the Agreement on Trade Related Aspects of Intellectual Property Rights
(TRIPS). While the TM Act replaces earlier legislation, namely,
The Trade and Merchandise Marks Act, 1958, the GI Act is a new legislation
granting statutory protection to the Geographical Indications of Goods.
The Appellate Board would hear the appeals from the decisions of Registrar
of Trade Marks and Geographical Indications. The trade marks appeals,
which are at present pending before various High Courts stand transferred
to the Appellate Board.
TM
Act
Following are the
some of the salient features of the TM Act:
- The definition
of the term 'trade mark' has been enlarged to include shape
of goods, packaging and combination of colours.
- Registration
of service marks has been introduced granting statutory protection
to such marks. Under the 1958 legislation service marks were not registrable.
Therefore, the protection available for service marks was by an action
for "passing off". The classes of services are listed in entry
35 to 42 in the Fourth
Schedule of the Trademark Rules, 2002. The classification
is in line with the Nice Classification of Goods and Services.
- Registration
of Collective Marks has been introduced. Collective marks will
be owned by an association. The members of such associations
will be allowed to use them to identify themselves with a level of
quality and other requirements set by the association. Examples of
such associations would be those representing accountants, engineers,
or architects.
- Filing of multi-class
applications has been allowed.
- The term
of registration and renewal has been increased from seven years to
ten years.
- The concept of
"well-known trade mark" has been recognised. This would prohibit
registration of a mark which is merely reproduction or imitation of
a well-known mark - even in respect of different goods or services.
- Offences relating
to falsification of trade marks and application of false trade descriptions
has been made cognizable, i.e. Police can take cognizance of
the complaint without obtaining order from the magistrate. Police
are empowered to search and seize goods or other instruments involved
in committing an offence. However, it will be mandatory for the
police to obtain the opinion of the Registrar on facts involved in
the offence relating to the trade mark. This requirement, however,
is likely to delay the search and seizure procedure.
- The scope of
definition of the term infringement has been widened. For instance,
use of a registered trade mark as a part of a corporate name
or use of a mark in comparative advertising if such advertisement
is contrary to honest practices or is detrimental to its distinctive
character, amounts to infringement.
- The provision
of "disclaimer" has been done away with.
- The application
fees in the Trademarks Rules, 2002 have been increased considerably.
For example, the registration fee has been increased from Rs. 300/-
to Rs. 2500/-.
GI
Act
The GI Act has been
passed with the object of providing protection to a Geographical Indication,
to any agricultural goods, natural goods or manufactured goods or any
goods of handicraft or goods of industry including food stuff. Geographical
Indications are indications, which identify a good as originating in
a place where a given quality, reputation or other characteristic of
the good is essentially attributable to its geographical origin. Some
more well known examples of geographical indications are "Champagne",
"Bordeaux" and "Chianti", the first two being regions in France and
the third, a region in Italy, all famous for their wines. In the Indian
context, "Banarasi Saris", "Kolhapuri Chappals", "Lakhnowi Kurta", "Darjeeling
Tea" are some of the examples.
Under the TM Act
the trade mark which exclusively consists of marks or indications which
may serve in trade to designate geographical origin of goods or services
cannot be registered. The purpose of a trademark is to denote the origin
of the goods from a particular trader. In case of geographical name,
the name would lead the consumer to believe that the goods originate
from that place thus causing confusion and even deception.
Geographical Indication
(GI) must satisfy two requirements:
- The territorial
aspect and
- That a given
quality, reputation or other characteristic should be essentially
attributable to its geographical origin.
The GI Act provides
for registration of GI and the Authorised User thereof who is able to
bring an action based on this registration.
Rights conferred
by registration:
Registration
of a Geographical Indication confers the following rights on the registered
proprietor and the authorised users:-
- Exclusive right
to the use of the Geographical Indication in relation to the goods
in respect of which Geographical Indication is registered.
- Right to obtain
relief in respect of the infringement of the Geographical Indication.
- Two or more authorised
users of a registered Geographical Indication have co-equal rights.
Classes:
All the goods have been classified in different classes in accordance
with the International Classification of goods for the purposes of registration
of Geographical Indications.
Duration and
Renewal : The registration of Geographical Indication is valid for
a period of ten years, and may be renewed thereafter for further periods
of ten years.
The registration
of an authorised user is valid for a period of ten years or for the
period till the date on which the registration of Geographical Indication
in respect of which the authorised user is registered expires, whichever
is earlier.
Prohibition of
assignment or transmission etc. : The Geographical Indication law
prohibits assignment, transmission, licensing, pledge, mortgage or any
such other agreement in respect of a Geographical Indication.
Infringement:
The Act also provides for infringement and passing off actions thus
recognizing the common law right in a GI and includes civil as well
as criminal remedies. Infringement has been defined to include unfair
competition. In a civil suit the following reliefs are available: Injunction.
discovery of documents. damages or accounts of profits, delivery-up
of the infringing labels and indications for destruction or erasure.
Source:
1.Press Release
of Ministry of Commerce, Government of India, Press Information Bureau,
September 15, 2003.
2.The Trade Marks
Act, 1999; The Trade Marks Rules, 2002; Geographical Indications of
Goods (Registration and Protection) Act, 1999.
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