Trademark
Trademark

Trademarks act 1999

Before we get into the provisions of this New Act it is well to have a broad and preliminary idea as to the aim of the act, the nature and function of a Trademark and the principle underlying the same. The advantages of registration and how an action for infringement of a Trademark is different from an action for passing off.

The principal object of the act

The principal object of the act are stated to be to provide for :

  • the registration
  • better protection of trademarks
  • the prevention of the use of fraudulent marks on merchandise

Apart from registration which dispenses with proof by long user, the intention of the Legislature is to replace the insufficient protection given under the Act 1940 by better protection and also to prevent the use of fraudulent marks on merchandise by remedies as to information, seizure of infringing labels and penal provisions.

The act aims at protecting the interests of owners of trademarks as well as interests of the public. Whenever it is found that a trademark offered for registration is registrable and there is no bar to it and its registration is not likely to injure the public interest, it must normally be brought on the register of the trademarks.

Trademarks act 1999

Principle underlying trademarks law

The principle underlying the trademarks law is thus stated by Kerley in the opening paragraph of his book :

The foundation upon which the law relating to trademarks and tradenames developed is that the deception of the public by the offer for sale of goods as possessing some connection with a particular trader, which they do not in fact possess, is a wrong in respect of which the trader has a cause of action against any person who is the author of, or is responsible for the deception.

Provisions of Trademarks act not comparable with provisions of designs act and patent act

The provisions of the trademarks act 1999 are not comparable with the provisions of the designs act 2000 and the patent act 1970.

How an action for infringement of trademark is different from a passing off action

The distinction between an action for infringement and an action for passing off was thus stated by Harnam Singh. There is a real distinction between an infringement action and a passing off action. The main question in a passing off case is whether the defendant is passing off his goods as the goods of the plaintiff, whereas in an infringement action the plaintiff has to prove that he has a proprietary right in the trademark.

Reference to English Decisions Helpful

The law of Trademark adopted in the trademarks act 1940 merely reproduces the English Law only with slight modifications and as such a reference to the judicial decisions on the corresponding sections of the English act is apposite and helpful.

General Rules

The will and intention of the Legislature has to be ascertained and given effect to, by looking into the actual words used and words have to be taken in their literal sense and ordinary connotation and according to their grammatical construction.

Policy and Object

If possible, the construction adopted should be in accordance with the policy and object of the statute in question. This must be confined to cases where the policy and object of the legislature are clear from the statute itself although the words may be ambiguous. The danger of these rules concerning intention, object, policy and so on, is that they may open the door to individual bias or opinion or result in guessing at the intention.

Preamble

The preamble of a statute has always been regarded as good means of finding out its meaning. The headings prefixed to sections or sets of sections in statutes are regarded as preamble to those sections and therefore safe guide in interpreting those sections. But the headings or sub-headings cannot either restrict or extend the scope of the sections when the language used is free from ambiguity.

Preamble and section 28 of the 1999 act

The trademarks act 1999 is enacted to amend, and consolidates the law relating to trademarks to provide for registration and better protection or trademarks and for prevention of the use of fraudulent marks.

Where rights accrued presumption against retrospective effect

There are numerous cases which clearly show that the court leans against so interpreting an act as to deprive a party of an accrued right.

Marginal Notes

In many English cases it was held that the side-notes are not part of the act and cannot be looked at. But it is difficult to see how the marginal note does not form part of the act. It is with the marginal note that the act has been passed by the legislature and it must therefore from part of the act.

Headings

These cannot be used to strike out plain words of a section but only for the purpose of explaining doubtful expressions in the body of the section.

Harsh Results-No Consideration

If the language of a statute is clear, it must be enforced though the result may seem harsh or unfair and inconvenient. It is again only where there are alternative methods of construction that nations of in justice and inconvenience may be allowed scope.

Illustration

Their Lordships are of opinion that in the construction of the evidence ordinance, it is the duty of a court of law to accept, if it can be done, the illustrations given as being both of relevance and value in the construction of the text.

Schedule

A schedule in an act is a mere question of drafting, a mere question of words.

General

There was a stay of proceedings regarding registration of an impugned trademark. The appellants wrote to the trademark registry informing the admission of the appeal against the trademark registration and requesting them for adjournment. Since the trademark was not registered, there was no question of certificate of registration being issued.

E.E.C Law and Intellectual Property

A French subsidiary of the American Standard Group voluntarily assigned the French mark “Ideal Standard” to an independent French Company in respect of heating equipment only. The French Company through a subsidiary exported it to Germany. The German subsidiary of American Standard was using the mark on sanitary fittings in Germany.

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