Protection of Designs and Trademarks in India

UNIT 6 TRADEMARK LAW IN INDIA-II: TRANSFER OF RIGHTS AND ENFORCEMENT

Transfer of Rights in a Trademark Infringement Offences and Penalties Appellate Board Some Miscellaneous Provisions Summary Terminal Questions Answers and Hints

6.1

INTRODUCTION

In Unit 5 you learnt about the various kinds of marks related to goods and services and how they can be registered as intellectual property. You also learnt about the rights that the registration of a trademark confers on the proprietor of the mark. It was also mentioned that though the registration of a trademark gives certain advantages, such registration is not a legal requirement for protection. However, proprietors of unregistered trademarks have to take recourse to common law rights, as against passing off, for protection of their trademarks; they can not file a suit for infringement if the trademark is not registered, Remedies against infringement under the Trade Mark Act, 1999 are available only in the case of a registered trademark. Objectives After studying this unit, you should be able to: describe various ways by which the property rights in a trademark can be transferred to another person; explain what constitutes infringement and what remedies are available under the Indian Law against infringement; enumerate the actions constituting other offences and the penalties for these offences; and explain the mechanism to appeal against a decision or direction of the authority.

6.2

TRANSFER OF RIGHTS IN A TRADEMARK

Property in a trademark consists of two components: (a) title to the trademark, and (b) other rights in the trademark. The entire property rights of the trademark can pass on to another person either by assignment or transmission of rights. The proprietor of a trademark can also authorize another person to exploit the rights in the trademark exclusively or otherwise other than the title to the trademark; the title to the trademark remains with the proprietor. Assignment means an assignment in writing by act of the parties concerned. Transmission means transmission by operation of law, devolution on the personal representative of a deceased person and any other mode of transfer, which is not assignment. Trademarks can also change hands without assignment or transmission when companies merge or one company acquires another.

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Assignment is an unconditional sale of the trademark made in writing by the registered proprietor to a third party. All rights of the assignor, including the title to the trademark, pass on to the assignee, as soon as the assignment is complete by registration. An assignment is subject to the limitations and conditions, if any, which are entered in the register at the time of registration of the mark. The assignment can be made either with or without the goodwill of the business; also, the trademark can be assigned either in respect of all goods or services for which it is registered or in respect of only some of those goods or services. Similarly an unregistered trademark can be assigned either with or without the goodwill of the business concerned. The right to assign or transmit a trademark is not absolute. If assignment or transmission results in multiple exclusive rights in more than one person concerning the use of the trademark, it is not permissible. The intention is to prevent a situation in which concurrent use by more than one person results concerning the same or similar trademark in relation to the same or similar and associated goods or services in the same territory. But such assignment, if the exclusive rights are suitably limited, will not be deemed to be invalid. Assignment of a trademark whether registered or unregistered without goodwill of business does not take effect unless the assignor obtains directions of the Registrar and advertises the assignment as per those directions within a stipulated time period from the date on which the assignment is made. The Act also provides that the assignment in respect of only some of the goods or services with goodwill of business in those goods or services is not to be deemed as an assignment without goodwill of the whole business; similarly in the case of assignment of a trademark which is used only in relation to goods or services for export together with the goodwill of the export business only is not to be deemed as an assignment without goodwill of the whole business. In such cases it is not necessary to seek the directions of the registrar. Assignment or transmission of a certification mark can be done only with the consent of the Registrar. Associated trademarks are not assignable or transmissible separately but only as a whole; however for all other purposes they will be deemed to be registered as separate trademarks. This restriction aims to curb confusion which may result if associated marks could be assigned separately. SAQ 1 Mark the following statements as True (T) or False (F): i) Rights in a trademark can change hands only through assignment or legal transmission. Spend 4 min.

Trademark Law in India-II: Transfer of Rights and Enforcement

ii) Assignment can be through an unwritten understanding between the assignor and the assignee. iii) Only a registered trademark can be assigned. iv) The consent of Registrar is necessary for the assignment or transmission of a certification mark. Licensing of Trademarks A trademark can be licensed to a party for use in any country. It is not necessary that the trademark be registered in the country of its origin or in India. Licensing a trademark means the authorization given by the proprietor to another party to use it on its own goods (or services) while the control on quality is exercised by the proprietor of the trademark. A licensee, to promote his business, may invest considerable money and effort to build/increase the goodwill of a trademark, but the goodwill in the trademark belongs to the proprietor alone; the licensee cannot claim any goodwill or continued use of the trademark after the licensing agreement expires on the plea that he has invested heavily in building the goodwill.

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Protection of Designs and Trademarks in India

Please remember that unlike patents and copyright, a trademark can not be compulsorily licensed. The TRIPS Agreement prohibits members from providing any mechanism for compulsory licensing of trademark in their national laws. Registered User Under the Act, a person may be registered as a registered user in respect of any or all of the goods in respect of which the trademark is registered. Such permitted use of the trademark is deemed as the use by the proprietor. A licensee stands to benefit, if he registers himself as a registered user, as he then derives the authority to use the trademark from both the agreement he makes with the proprietor, and the Trade Marks Act, 1999. As a registered user he can continue to use the trademark so long as his name remains on the register as a registered user, i.e. even if the registered proprietor terminates the agreement, or the agreement expires. The remedy available to the proprietor in such a case is through court, which would bind the registered user to the agreement with the proprietor. The proprietor benefits by the registration of the licensee as a registered user, as the use by a registered user is deemed as the use by the proprietor, and this removes or substantially reduces the threat of removal of the trademark from the register on ground of its non-use, or absence of bona fide use. As a registered user, the licensee may institute proceedings for infringement in his own name as if he were the registered proprietor. However, a registered user has no right of assignment or transmission. For registration as a registered user, the registered proprietor and the proposed user have jointly to apply to the Registrar in the prescribed manner. The application is to be accompanied by a copy of the agreement between them; an affidavit by the registered proprietor giving particulars of the relationship between them which would show the degree of control to be exercised by the registered proprietor over the permitted use, whether the proposed registered user will be the sole registered user, or if there would be any other restriction as to persons who may need to apply for registration as a registered user of the same trademark; stating the goods or services in respect of which registration is proposed; stating the conditions or restrictions with respect to the characteristics of goods or services, or the mode or place of the permitted use, or any other matter; stating the period for which the use of the trademark is permitted.

any other documents or evidence as the Registrar may require.

The Registrar then registers the proposed registered user and issues notice of the registration to other registered users of the trademark, if any.

SAQ 2 Mark the following statements as True (T) or False (F): i) If a trademark is to be licensed by an American business house to a party in India for operation in India, it is necessary to register the trademark in India. Spend 4 min.

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ii) A licensee spends large sum to build up reputation of the licensed trademark in his territory; he can claim the goodwill of the trademark and refused to stop its use after the license period is over. iii) The use of a trademark by a registered user is deemed as use by the proprietor. iv) If a licensee, as registered user, does not stop using a registered trademark after the expiry of the term of his license, the proprietor is helpless to stop him. Cancellation as Registered User The registration of a person as a registered user can be cancelled by the Registrar on a written application, in the prescribed manner, from the registered proprietor, or of any registered user; any person on any of the following grounds:

Trademark Law in India-II: Transfer of Rights and Enforcement

that the registered user has used the trademark otherwise than in accordance
with the agreement;

that the proprietor or the registered user misrepresented, or did not disclose
some material fact, that would not have justified registration;

that the circumstances have changed since registration in a way that on the
date of application for cancellation, the registration of the registered user will not be justified;

that the registration ought not to have been done having regard to the rights
vested in the applicant by virtue of a contract in the performance of which he is interested;

that any stipulation in the agreement between the registered proprietor and
the registered user is not being enforced or complied with, (the Registrar can move on his own to cancel registration on this ground). The Registrar may also cancel registration of a registered user in respect of any goods or services. You may like to refer to a provision in the Trade Marks Act, 1999 (Sec. 51.1) which empowers the Registrar to ask the proprietor to confirm within one month that the License Agreement is in force, and if the proprietor fails to do so, the registered user shall cease to be the registered user. But, such problems can be managed if necessary provisions are made in the license agreement to take care of such situations.

6.3

INFRINGEMENT

If a person, who is not the owner of a registered trademark, without permission from the owner, uses the same trademark or a deceptively similar trademark in the course of trade, he infringes the trademark and is liable to be sued for legal remedies by the rightful owner, or persons so authorised. No action for infringement is available in respect of unregistered trademarks; however, common law rights for action against passing off are not affected. Specifically, infringement is caused in the following cases which are likely to cause confusion on the part of the public: the offending mark is identical with the registered mark and is used for similar goods/services; the mark is similar to the registered mark and is used for the same or similar goods/services as covered by the registered trademark; and

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Protection of Designs and Trademarks in India

the mark is identical with the registered trademark and is used for identical goods/services.

If a trademark has a reputation in India, the use of a mark identical with or similar to it, even on goods or services which are different, constitutes infringement as such use, without due cause, would take unfair advantage of a reputed trademark or harm its distinctive character. The Act prohibits adoption of a registered trademark by another person as trade name, i.e. the name of an enterprise. The Act explicitly defines the phrase uses a registered trademark as: affixing it to goods or their packaging; offering or exposing goods for sale, putting them on the market, or stocking them for those purposes, or offering or supplying services under the registered trademark; importing or exporting goods under the mark; or using the mark on business papers or in advertising.

Application of the mark to a material intended to be used for labelling or packaging goods, or as a business paper, or for advertising constitutes infringement if the person making such application knew, or had reason to believe, that such application was unauthorised. A registered trademark is infringed by advertising, if such advertising a) takes unfair advantage of the trademark and is contrary to honest practices; or b) is detrimental to the distinctive character of the trademark, or c) is against the reputation of the trademark. If the distinctive elements of a trademark consist of, or include, words, the trademark may be infringed by the spoken use of these words, as well as by their visual representation. What doesnt Constitute Infringement The use of the registered trademark by any person is permitted provided it is in accordance with honest practices in industrial or commercial matters and does not take unfair advantage of, or be detrimental to, the distinctive character or repute of the mark. There are several situations where the use of a registered trademark does not amount to infringement. These are: where the use indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or rendering of services, or some other characteristics of goods or services; where the trademark is registered subject to any conditions or limitations, its use in any manner in any circumstances to which the registration does not extend; the use in relation to any goods to which the registered proprietor or registered permitted user has applied the trademark and has not subsequently removed it, or has at any time expressly or impliedly consented to the use of the trademark; the use, in relation to the services, to which the proprietor or the registered permitted user, has applied the mark where the purpose and effect of the use is to indicate that those services have been performed by the proprietor or the user; the use in relation to goods adapted to form part of, or to be accessory to, other goods or services to which the trademark has been applied without infringing any rights, if such use is reasonably necessary to indicate the fact of adoption;

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the use of a registered trademark, in case of registration of two or more trademarks which are identical or nearly resemble each other, by one of the registered proprietors of such marks.

Trademark Law in India-II: Transfer of Rights and Enforcement

If the goods bearing a registered trademark are lawfully acquired by a person, putting them on sale is not infringement of a trade by reason only of a) the fact, that the mark has been assigned by the registered proprietor to another person, after the goods were acquired; or b) the goods have been put on the market under the registered trademark by the proprietor or with his consent. Where the proprietor of an earlier trademark acquiesces for a continuous period of five years in the use of a registered trademark, being aware of that use, he looses the right either to oppose the use of the later trademark in relation to goods or services for which it has been registered or to ask for declaring the registration of the lateral trademark as invalid. A suit for infringement of registered trademark must be filed in the District Court within whose territorial jurisdiction, the plaintiff (or if there are more than one such person, any one of them) instituting the suit or proceeding actually and voluntarily resides or carries on business or personally works for gain. SAQ 3 The proprietor of a registered trademark is aware that another person has been using it on the same goods at a different locality. After two years he starts feeling the heat of competition from this other person. Can the registered proprietor file a suit of infringement and hope to win? Discuss. Non-Infringement of Certification Mark In the case of a certification mark the following acts do not constitute infringement: if the registration of the certification mark is subject to any conditions or limitations, the use of the mark that will be covered by those conditions or limitations. the use of the certification mark in relation to goods or services certified by the proprietor of the mark, if the proprietor has applied the mark and has not subsequently removed it, or if the proprietor has at any time consented to the use of the mark. the use in relation to goods or services, which have been adapted to form part of, or to be accessory to, other goods in relation to which the mark has been used without infringement, if the use of the mark is reasonably necessary to indicate that the goods or services are so adapted and the fact that the goods and services are certified by the proprietor. Spend 3 min.

Protection of Trademark by Copyright Law The Trade Mark Act, 1999, prescribes, under relative grounds for refusal of registration, that a trademark shall not be registered if, or to the extent that, its use in India is liable to be prevented a) by virtue of any law in particular the law of passing off protecting an unregistered trademark used in course of trade: or b) by virtue of law of copyright. Often a plaintiff may join remedies available both with the trademark law and the copyright law while moving to a court. Protection of a trademark under the copyright law is important because copyright is not concerned with any specific goods or services and can protect trademarks on all types of goods. It not necessary that to
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Protection of Designs and Trademarks in India

enjoy such protection under the copyright law the mark should be a reputed mark. However, protection of a trademark under the copyright law is for limited time; under the trademark law it is available indefinitely, not bound with any limitation of time. Another advantage in protection available under the copyright law is that under the Berne Convention (and the TRIPS) of which India is a member, national treatment is available to Indian copyright holders in all countries which are members of the Berne Convention. Also it may be recalled that no formalities are required to be completed for enjoying the protection in a work under the copyright law. There is no distinction in protection to a copyright work, whether registered or unregistered in the case of infringement. However, it is necessary to claim protection for artistic features in a trademark under the copyright law, that the label should have been first used in relation to goods in India; or if it has been used first outside India the creator of the label should have been an Indian citizen on the date of first such use. Infringement and Passing off A suit for violation of a trademark often combines infringement and an action of passing off. However, both have a distinction as their causes are different. In infringement the unauthorised person (the defendant) uses a trademark identical with the registered trademark or deceptively similar to it and thus violates the exclusive right of the proprietor to use the trademark by the fact of its registration. In the action of passing off, the defendant commits a wrongful act by passing off his own goods as that of the plaintiff. Counterfeiting is different from infringement or passing off. In counterfeiting goods are made out as produced by the actual proprietor. Parallel Importation and Exhaustion Principle We include these topics in view of their extra-ordinary importance in allocations of market, and therefore for the growth of the world trade. The IPRs are the central issue here. The issue is complex and not yet resolved in the sense of a globally acceptable solution or approach. Parallel Importation A registered trademark confers on its owner or his licensee the exclusive right to manufacture and import the goods protected by the trademark. Now consider a situation where the owner has licensed the trademark for manufacture and marketing in several countries. If in such a situation, a third party in a country A, makes bulk purchases of the goods legitimately produced by a licensee in that country, and supplies them, against the wishes of the owner of the trademark, to a dealer in another country which permits such imports, a complex situation may arise, if the owner of the trademark has a licensee in the importing country to manufacture the same goods. Usually the imported goods (which are both legitimately produced and legally imported, though against the wishes of the owner of the trademark) are marketed at a price lower than the goods produced in the importing country under a proper licence. Such legal importation of goods into one country, manufactured legally in another country, where a licensee manufacturing the same goods already exists is known as parallel importation. Parallel importation helps the consumers in the importing country as it introduces competition in the market and makes goods available at competitive prices. However, parallel importation hurts the interests of the owner/licensee of the trademark who see it as violation of IPRs. It is, therefore, necessary to foresee and take into account any such situation and provide for necessary provision in a license agreement. Exhaustion Principle This is invoked to counter the violation of IPR argument in parallel importation. The exhaustion principle takes the position that once the goods bearing a trademark are put on the market, their exclusive right to sell those goods is exhausted. If a third party purchases them legitimately, it has the right to sell them in any market. Thus the
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issue brings in considerations of the rights of a trader to sell legitimately purchased goods, as also the rights of consumers. The argument against the exhaustion principle is that its applicability has to be within the territorial jurisdiction of the manufacturer, or as specified in the licensing agreement. It cannot be universal exhaustion. In turn this argument is countered by pointing out that the objective of IPR is to protect the right, and the right-related goods; it is not meant to protect distribution channels. If the exhaustion principle is made inapplicable, it becomes protection of the manufacturers interests in a given jurisdiction and leads to control of distribution channels. Monopoly over distribution channels would lead the owner of the Trademark to jack-up price beyond justifiable limits. Different countries/regional communities are evolving the law on exhaustion principle as suited best to their interests. The Trade Mark Act, 1999, does not address the issue of parallel importation. There is no bar on import of trademarked goods into India, excepting those that bear a false trademark, as defined in the Trade Marks Act. Under the Customs Act, 1962, the import of goods bearing a trademark, identical to the name or trademark of any manufacturer, dealer or trader in India, is permitted, if such goods bear indication showing the country of origin in English, in letters as large and conspicuous as any letter in the name or trademark. Injunctive Relief A suit for infringement or passing off can be instituted in any court not inferior to a District Court having jurisdiction includes a District Court within the local limits of whose jurisdiction, the person, or one of the persons, instituting the suit actually or voluntarily resides or carries on business or personally works for gain. The Court may grant relief including relief subject to any conditions it may think fit, and either damages or an account of profit at the option of the plaintiff, with or without any order for delivery up of the infringing labels and marks for destruction or erasure. The order of injunction may include an ex parte injunction or any interlocutory order for any of the following matters: a) discovery of documents; b) preserving of infringing goods, documents or other evidence c) restraining the defendant from disposing of or dealing with his assets in a manner which may adversely affect plaintiffs ability to recover damages, costs or other pecuniary remedies after final orders. The Court shall not grant relief by way of damages (other than nominal damages) or an account of profits where the infringement is in relation to a certification trademark or collective mark; or where the defendant satisfies the court (i) that when he started using the trademark, he was unaware and had no reasonable ground for believing that it was on the register or the plaintiff was a registered user; and (ii) that when he became aware of the existence and the nature of the plaintiffs rights, he forthwith ceased to use the trademark.

Trademark Law in India-II: Transfer of Rights and Enforcement

6.4

OFFENCES AND PENALTIES

Falsifying and falsely applying Trade Marks A person making a registered trademark or a deceptively similar mark is deemed to falsify a trade mark if he is doing it without the consent of the proprietor of the trade
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Protection of Designs and Trademarks in India

mark. Any alteration, addition, effacement of a genuine trade mark also amounts to its falsification. A person who, without authorisation, applies registered trademark or a deceptively similar mark to goods or services or any package containing goods is deemed to falsely apply the genuine trademark. If any person uses any package bearing a mark which is identical with or deceptively similar to the registered trademark for the purpose of packing, filling or wrapping any goods other than the genuine goods of the proprietor of the trade mark he is guilty of falsely applying the trade mark. Offence under the Act is committed if a person makes, disposes of, or has in his possession, any die, block, machine, plate or other instrument for the purpose of falsifying or of being used for falsifying a trademark; applies any false trade description to goods or services; applies a false indication of the country or place where the goods were produced or name and address of the manufacturer, or of the person for whom they are produced; tampers with, alters or effaces an indication of origin which has been applied to any goods to which it is required to be applied.

The above mentioned offences shall be punishable with imprisonment for a term of minimum of six months but which may extend to three years and with a minimum fine of fifty thousand rupees but which may extend to two lakh rupees. For adequate and special reasons mentioned in the judgement, the court may impose a sentence of imprisonment for a term of less than six months or a fine of less than fifty thousand rupees. Penalty for selling goods or providing services to which false trademark or false trade description is applied is punishable with imprisonment for a minimum term of six months but which may extend to three years and with a minimum fine of fifty thousand rupees but which may extend to two lakh rupees. Enhanced penalty can be imposed on second or subsequent conviction. Such offences shall be punishable with imprisonment for a term between one to three years and with fine between one lakh rupees to two lakh rupees. A person, who represents an unregistered trademark as a registered trademark, shall be punishable with imprisonment for a term which may extend to three years, or with fine, or with both. The penalty for falsification of entries in the register is imprisonment for a term which may extend to two years, or a fine, or both. The use of words which may falsely suggest that a persons place of business is officially connected with the trademark office, attracts imprisonment for a term up to two years or a fine or both. If the person committing an offence under this Act is a company, the company as well as every person in charge of, and responsible to, the company for the conduct of its business at the time of the commission of the offence shall be deemed to be guilty of the offence. A company means any body corporate and includes a firm or other association of individuals. Abetment of any offence is punishable as if the abetter himself committed that offence.

6.5

APPELLATE BOARD

The Trade Marks Act, 1999, establishes an Intellectual Property Appellate Board (hereinafter referred to simply as AB) to exercise the jurisdiction, powers and authority conferred on it by the Act. Before it, these matters were dealt with by the
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High Courts. All cases of appeal against any order or decision of the Registrar and all cases pertaining to rectification of register pending before any High Court in the country were to be transferred to the AB. In certain cases the application for rectification of register is to be made to the AB and not to the Registrar, as discussed in Unit 5. Such will be the case, where in a suit of infringement, the validity of the registration of the trademark is questioned by the defendant, or if the defendant contends that his use of the trademark, is permitted as the trademark being used by him is one of two or more of trademarks registered under the Act which are identical or nearly resemble each other, and the plaintiff contests the validity of the registration of the defendants trademark. The Registrar may also refer an application for rectification of the registrar made to him at any stage of the proceedings to the AB. The AB consists of a Chairman, a Vice-chairman and such number of other members as the Central Government may deem fit. The AB functions through its Benches. Each bench consists of one Judicial Member (JM) and one Technical Member (TM). Only a person who is, or has been, a judge of a High Court, or who has held the office of the Vice-Chairman for at least two years can become chairman of AB. For appointment as Vice-Chairman a person must have held the office of a JM or a TM for at least two years, or must have been a member of the Indian Legal Service (ILS) and have held a post in Grade I of that Service or any higher post for at least five years. The Judicial Member must have held a post in Grade I of the ILS for at least three years, or must have held a civil judicial office for at least 10 years. A Technical Member must have exercised, for at least ten years, the function of a tribunal under the Trade Mark, 1999 or under the Trade and Merchandise Act, 1958, or both and must have held a post not lower than the post of a Joint Registrar for at least five years; or must have been an advocate, for at least ten years, of a proven specialized experience in trademark law. The appointment of the Chairman has to be made in consultation with the Chief Justice of India. The term of office for the Chairman and the Vice-Chairman is five years or the attainment of the age of 65 years whichever is earlier. For the JM and the TM the age limitation is of 62 years. A past Chairman, Vice-Chairman or Member is barred from appearing before the AB or the Registrar.

Trademark Law in India-II: Transfer of Rights and Enforcement

6.6

SOME MISCELLANEOUS PROVISIONS

Special Provisions for Textile Goods The Act makes special provisions for goods, classified as textile goods by Central Government. They include restrictions on registration of trademarks to be applied on textile piece goods, and provisions dealing with stamping of piece goods cotton yarn and thread, and sampling and testing to determine character of textile goods as claimed. Certificate of Validity of Registration of Trademark If in any legal proceeding for rectification of the register, the validity of registration is contested and the AB upholds the validity of registration in favour of the registered proprietor, the AB may grant a certificate to that effect. Such a certificate would help the proprietor in any subsequent legal proceeding in relation to recovery of full cost charges and expenses. Groundless Threat of Legal Proceedings
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Protection of Designs and Trademarks in India

Where a person threatens another person, be means of circulars advertisements or otherwise, with an action for infringement of a trademark, or some other proceeding, the aggrieved person may bring a suit against the first person to obtain a declaration that such threats are unjustifiable, and an injunction against the continuance of the threats; he may also recovers such damages, if any, as he may have sustained. International Arrangements The Act contains special provisions relating to applications for registration from citizens of convention countries. If a person who has made an application for the registration of a trademark in a convention country, applies within six months of such application, for the registration of the same trademark in India, he will get the same date of priority in India as the date of application in the convention country. Please note that it is not required that the person seeking registration of the trademark in India be a citizen of a convention country; the requirement is that he should have made an application for registration in a convention country. Trademark Agent The Act permits a person who is required to do an act (except submitting an affidavit) before the Registrar, to appoint an agent for the purpose on his behalf. The agent can be a person in his sole and regular employment, or a legal practitioner, or a person registered as a trademarks agent. The rules prescribe that an agent must possess a detailed knowledge of the Trademarks Act and the Rules, and must know the elements of the trademarks law for his name to be entered in the Register of the Trademarks Agents. An agent must also qualify in a written examination on trademarks law and practice, followed by an interview.

6.7

SUMMARY
Property in a trademark consists of (a) title to the trademark, and (b) other rights in the trademark. Rights, except the title to the trademark, can be transferred by the owner of the trademark to another person by assignment, or legal transmission. Trademark can change hands with acquisition or merger of two enterprises. Assignment or transmission is not permissible if it may result in multiple exclusive rights in more than one person with regard to the use of the trademark. A trademark can be licensed for use in any country; it is not necessary that it should be registered in that country. The licensee may use it on his own goods/services but the quality control is to be exercised by the licensor. As a registered user, the licensee can initiate infringement proceedings. The Registrar can cancel registration of a person as a registered user on certain grounds following a prescribed procedure. Infringement of a trademark is caused when (a) an identical mark is used on similar goods/services; or (b) a similar mark is used on same or similar goods/services; or (c) an identical mark is used for identical goods/services, and the result is to cause confusion in the public mind. A trademark can also be protected under the copyright law in relation to its artistic features, and through an action against passing off. Parallel importation and exhaustion principle are viewed differently in different countries and are contentious issues. Falsifying and falsely applying a trademark are offences punishable by fine or imprisonment or both.

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The Act has created an Appellate Board to which an appeal can be made by a person aggrieved by a decision or direction of the registrar. The Act has made special provisions for Textile Goods, and has special provisions for international arrangements with regard to registration of trademarks in India by foreigners and by Indian citizens in other countries.

Trademark Law in India-II: Transfer of Rights and Enforcement

6.8
min.

TERMINAL QUESTIONS

Spend

10

1. Discuss Parallel Importation and the Exhaustion Principle. 2. What relief can a proprietor of a registered trademark get if he sues for infringement and his plea is upheld? 3. The proprietor of a trademark keeps threatening another person in the trade with a suit for infringement of his trademark. Does the second person have another remedy available in the Act to stop the threats?

6.9

ANSWERS AND HINTS

Self Assessment Questions 1. i) False iii) False 2. i) False iii) True 3. Refer 6.3 Terminal Questions 1. Refer 6.3 2. Refer 6.3 3. Refer 6.6 ii) False iv) True ii) False iv) False

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