Trademarks Protection Under Trademarks Act with Passing Off

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A. History of Trademarks:

Trademarks commonly referred to as ‘identifying marks’ or ‘distinctive marks’[1] have been recognised in some form or the other since times immemorial. They were one of the foremost forms of intellectual property protection witnessed by the world and have undergone a steady evolution since then. The first legislation on trademarks can be traced to England where the Bakers Marking Law, 1266 was enacted, which governed the use of stamps or pinpricks on loaves of bread. The first case of trademark infringement, Southern v How was heard as far back as 1618. The common law of trademark arose originally to prevent manufacturers from trying to pass off their goods as someone else's. Since these humble origins, trademark law has taken giant strides and now provides protection not only to words and phrases but also three-dimensional objects and musical notes.

B. Purpose of Trademarks:
Trademarks serve as a vehicle for the creation and retention of custom by their use, as they indicate the origin of goods and services. The Supreme Court has outlined the purpose of trademarks as follows: ‘The function of a trademark is to give an indication to the purchaser or possible purchaser as to the manufacture or the quality of the goods, to give an indication to his eye of the trade source or trade hands through which they pass on their way to the market.’ Thus, the purpose of a trademark is to focus attention on the origin of goods, not the proprietor of the goods.

C. Legislative History of the Trademark Act, 1999
The first legislation governing trademark in the country was the Trademarks Act, 1940 which came to be replaced by the Trademark and Geographical Indications Act, 1958. This Act provided the some protection to the holders of trademarks, but at the same time failed to recognise a trademark in relation to services as opposed to goods. Further the Act provided trademark protection only for a period of five years and adopted a cumbersome procedure for registration of a trademark. With increasing globalisation and the spate of multinational corporations, some uniformity was felt essential in the grant of intellectual property rights by the various nations of the world. It was out of this need that the Agreement on Trade Related Aspects of Intellectual Property Rights, 1995 (TRIPS Agreement) arose. The Agreement, which is binding on its members, governs all intellectual property rights and provides the basic standards of uniformity to be adopted by nations in drafting their intellectual property legislations.

Section 2 of the TRIPS Agreement, lays down the subject matter of trademark protection as under: ‘15. Protectable Subject Matter:1.Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.’

Further, Article 16 of the Agreement lays down the rights conferred upon the holder as: ‘16. Rights Conferred:1.The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a...
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