Introduction
A trademark, in simple words, is a phrase, word, symbol, or anything else capable of being recognised, that denotes a certain product and legally distinguishes it from all other similar products[1]. Apple’s Mac and macOS, the phrase ‘Coca-Cola’ and curved design of the brand’s bottle, McDonald’s corporate logo ‘M’, are some examples of trademarks. The Trade Marks Act, 1999[2] governs trademarks in India, with the objective of registering trademarks applied for in the country, providing better protection for trademarks for goods and services, and preventing fraudulent use of the mark[3]. Trademarks in the United States, on the other hand, are governed by the Lanham (Trade Mark) Act of 1946[4], which protects trademark owners against those who use similar marks and regulates unfair competition laws and violations[5]. The article aims to provide key differences in the US and Indian legal frameworks when it comes to trademark law.
Registration
In India, Trade Marks Act, 1999 and the Trade Marks Rules, 2017 provide for the registration of trademarks, through which trademark rights can be acquired. Registration can be undertaken by filing an application with the Intellectual Property Office (IPO). It is important to note that a trademark does not require to be used in India to make it eligible for registration. One can register a trademark on a “proposed user basis” also. Further, once a mark is registered, it becomes the prima facie evidence of its validity[6].
In the US, the rules governing registration are Title 37, Part 2 of the Code of Federal Regulations (CFR) along with the Lanham Act, 1946. Registration can be obtained only when the mark has been in use, either in US interstate commerce or international commerce. The applications are further examined by the US Patent and Trademark Office (PTO). After a trade mark completes five years of registration and certain formalities have been fulfilled, the registration becomes conclusive evidence of the trademark’s validity.[7]
What constitutes a mark
In India, Section 2(zb)[8] defines trade mark as a mark that is capable of:
- Being represented in graphical form and
- Distinguishing the goods or services of one person from those of others.
Further, it states that it may include the shape of goods, their packaging, and the combination of colours. This definition is descriptive and clear.
In the US, as per Section 1127[9], a trademark is any symbol, design, word, name, or any combination of them, ‘used in commerce’ for the identification and distinguishment of the goods of one seller or manufacturer from those of another, along with indicating the source of the goods. The scope of the definition is wider when compared to the Indian definition.
Distinctiveness
In India, trademarks devoid of any distinctive character are not registrable[10]. Further, the Indian courts have been giving wider scope to the application of the principle of ‘acquired distinctiveness’[11]. Along with this, the evidence supporting the goodwill or reputation of the trademark is given top priority[12]. In the US, the definition of a trademark states the need for it to be distinctive. Traditionally, trademarks in the country are divided into four categories of distinctiveness: arbitrary or fanciful, suggestive, descriptive, and generic[13].
What constitutes use and non use
In India, Chapter VI of the 1999 Act deals with the use of trademarks and registered users, under which Section 47 allows removal of a trademark from the register for non-use. It is to be noted that showing the reputation of a mark in international lands or that it is in use outside India is not sufficient to indicate its use[14]. It has been held by the court that “use” may be “non-physical” but must be “material”, i.e. meaningful[15]. If non use is proved, a trademark may be cancelled[16]. In the event of cancellation of a registered trademark, the party concerned may request cancellation of the trademark either within 5 years of registration of the trademark or within 5 years of subsequent registration[17]. In India, cancellation actions often fail even before the actual use of the challenged mark is assessed, due to the absence of a bona fide intent of the third party that files the action[18].
Trademark law in the US differentiates between the actual use of a mark and the intent to use it. As per Section 1127 of the Lanham Act, “use” of a mark means its bona fide use in the ordinary course of trade, and not just for reserving a right in it. Further, the Section provides that a mark shall be deemed ‘abandoned’ if:
- It is not used for 3 consecutive years.
- Its use has been discontinued with the intent not to resume such use.
- When any course of conduct of the owner causes the mark to become the generic name for the goods or services or it has lost its significance as a mark in connection with which it is used.
Moreover, a petition for cancellation of a trademark registration may be filed at any time by any person who believes that he is or will be damaged.
Cause of action for dilution
The doctrine of dilution is a concept where if a trademark is well known and reputed and famous, the owner can prevent others from using it[19]. In India, the concept is mentioned under Section 29 of the 1999 Act that provides for an infringement action where the marks are deceptively similar or identical in relation to the goods and services in which a trademark is registered. Under the US legal system also, the owner of a distinctive and well known mark has a cause of action for dilution. The rules allow for dilution in two ways: dilution by blurring[20] and dilution by tarnishment[21].
Enforcement
In India, proceedings are conducted before the Registrar of Trademarks, who is also the Controller General of Patent, Designs, and Trade Marks. He is assisted by officers designated as Joint-Registrar, Deputy Registrars, Assistant Registrars, and Examiners of Trade Marks. Those officers discharge the functions of the Registrar under his superintendence and direction. Appeals are filed with the Intellectual Property Appellate Board (IPAB)[22], which constitutes of a Chairman, Vice-Chairman, and a bench comprising of a technical member and a judicial member, as appointed by the Central Government. All the proceedings are conducted in accordance with the procedural laws of the country.
There are two types of registers in the United States: Principal Register and the Supplemental Register. The USPTO Trademark Examiner registers the trademark, and entries are made in Principal Register. Infringement proceedings are heard in federal courts across the country, while registration cases are heard by the Trademark Trial and Appeal Board. Furthermore, US Customs has the authority to prohibit goods bearing infringement marks from being imported into the country[23].
Remedies for trademark infringement
Indian law provides both civil and criminal remedies for the infringement of trade mark. Criminal liability for falsely applying trade marks can last up to three years of imprisonment, with a minimum fine of INR 50,000 and a maximum fine of INR 2 lakhs[24]. As far as civil remedies are concerned, courts can issue an injunction against future violations, empower a public authority to conduct civil search and seizure operations, and order the defendant’s assets to be preserved[25]. These three remedies can be administered ex parte. The discovery of documents and order of preservation of infringing goods, documents, or any other evidence are the other two civil remedies that are available to a plaintiff. Plaintiffs in the US are entitled to a wide range of civil remedies. Monetary remedies may be provided in the form of the defendant’s profits, the plaintiff’s damages, and the cost of the action[26]. There is, however, no provision for seeking criminal remedies under the 1949 Act.
Opposition
Opposition to a trademark registration submitted by a third party is known as a “trademark opposition[27].” Any natural or legal person may file an opposition before the trademark registry. In India, a trademark opposition has to be filed before the Office of the Registrar of Trademarkswithin four months of the mark being advertised or re-advertised in the Trademark Journal. The grounds of opposition are mentioned under Section 21[28]. In the United States, anybody can file a notice of opposition before the Trademark Trial and Appeal Board (TTAB) of the USPTO within the prescribed period of 30 days (extendable up to 30 days and maximum up to 180 days) after a trademark application is submitted to the Official Gazette. The grounds for opposition are mentioned under Section 2[29].
Conclusion
From the above discussion, it is clear that the legal frameworks for trademarks in both countries differ significantly in many ways. In today’s fast-changing world, the concept of trademarks could be seen evolving in terms of its scope, the consequences of trademark infringement, registration criteria, and so on. Thus, it is important for anyone wishing to register a trademark in any of the two countries to have a proper understanding of the rules and regulations regarding trademark law.
[1] Carla Tardi, Trademark, INVESTOPEDIA (FEB. 20, 2021), https://www.investopedia.com/terms/t/trademark.asp.
[2]Trade Marks Act, 1999, No. 47, Acts of Parliament, 1999 (India).
[3] https://ipindia.gov.in/about-us-tm.htm.
[4] Lanham (Trademark) Act, 1946.
[5] Lanham Act: Everything You Need to Know, UPCOUNSEL, https://www.upcounsel.com/lanham-act
[6] Section 31, Trade Marks Act, 1999.
[7] Section 33(a), Lanham Act, 1946.
[8] Section 2(zb), Trade Marks Act, 1999.
[9] 15 U.S. Code § 1127.
[10] Section 9, Trade Marks Act, 1999.
[11]Indian Trademark law. Comparison with US and EU, iPLEADERS (April 19, 2017), https://blog.ipleaders.in/trademark-india-us-eu/.
[12] Janhavi Dudam, Secondary meaning / acquired distinctiveness as criteria for trademark protection, iPLEADERS (July 11, 2021), https://blog.ipleaders.in/secondary-meaning-acquired-distinctiveness-criteria-trademark-protection.
[13] Trademark, CORNELL LAW SCHOOL, https://www.law.cornell.edu/wex/trademark.
[14] Supra note 12.
[15] Hardie Trading v. Addison Paints, 2003 Supp(3) SCR 686.
[16] A registered trademark cancellation is a legal process through which an aggrieved individual or group attempts to have a registered trademark removed from the list.
[17] Section 47, Trade Marks Act, 1999
[18] Intepat Team, Worldwide: Indian Trademark Law: Comparative Analysis With Europe And US, MONDAQ (Aug. 5, 2016), https://www.mondaq.com/india/trademark/516816/indian-trademark-law-comparative-analysis-with-europe-and-us
[19] Supra note 15.
[20] 15 U.S.C. § 1125(c)(2)(B).
[21] 15 U.S.C. § 1125(c)(2)(C).
[22] Section 83, Trade Marks Act, 1999
[23] Supra note 19.
[24] Section 103, Trade Marks Act, 1999.
[25] Chander Mohan Lall, The Trademarks Law Review: India, THE LAW REVIEWS (Nov. 15, 2021), https://thelawreviews.co.uk/title/the-trademarks-law-review/india.
[26] Anam Faiyaz, “INDIAN AND US TRADEMARK LAW; A STUDY”, ISSN NO: 2347-3150, Mukt Shabd Journal, http://shabdbooks.com/gallery/120-july2020.pdf.
[27] Singhania & Partners LLP, Opposition of a trademark and rectification of the trademark register, LEXOLOGY (July 2 2020), https://www.lexology.com/library/detail.aspx?g=bbc7b621-19a5-44cd-9777-1da741db07a9.
[28] Section 21, Trade Marks Act, 1999.
[29] 15 U.S.C. 1052 (Section 2 Of The Lanham Act).
