Intellectual property rights or can be called IPR, defines all those rights and privileges attached to the ownership of that intellectual property. They are like intangible properties, which must be protected from being stolen. The rights conferred to the owner over the use of their creation are not permanent. The owner can only enjoy a temporary monopoly over the creation. IPR allows the owner to choose who may use the product or the work with the conditions under which they can use it. If simply put, Intellectual property right plays a significant role in influencing trade in India. Therefore it is very well established at all levels, i.e. judicial, statutory and administrative. India is also a part of WTO, the World Trade Organisation and a signatory member of the Agreement on Trade-Related Aspects of Intellectual Property Rights, also known as TRIPS. It lays down the minimum standards for the protection and enforcement of IPR. All the signatory members of the TRIPS are required to follow the rules written there, and with that, they are also required to amend their national laws in accordance with the rules and regulations of TRIPS. In this article, we will talk about Section 9 Trademark Renewal.
IPR has been sub-categorised into six parts:
- Geographical Indications
- Plant Varieties
In this article, we will talk about trademark law and all the aspects related to it. Trademarks can be defined as any sign or any combination of signs or a mark, a logo that is capable of distinguishing one product or service from another one. A Trademark is not only limited to the above terms, but it also includes a device, brand, label, name, signature, word, letter, numerical, shape of goods, packaging, colour or combination of colours, smell, sound, movement or any combination that is capable of distinguishing goods and services of one business from those of the others.
The trademark law in India has its roots way back to 1266. It was known as the Anglo-Indian Trademark law or the Balers Marking Law. As the name suggests, this law required all bakers to put a mark on the bread they sell. The world saw its first systematic intellectual property law in 1474, that was the Venetian Patent Statute of 1474.
But before 1940, there were no proper laws for IPR protection in India. The trademark act was the first step towards the protection of intellectual property rights. Prior to this act, the protection of trademarks was governed by common laws, such as cases concerning trademarks that were decided as per Section 54 of the Specific Relief Act of 1877, while registration of the trademark was decided under the Indian Registration Act of 1908.
Trademark Law in India
- Definition of trademark
The term trademark has been defined under Section 2(1)(zb) of the Trademark Act of 1999.
According to the act, a trademark is defined as a “Mark which is capable of being represented graphically and also capable of distinguishing the goods or services of one business from those of others business and may include the shape of goods, their packaging and combination of colours.”
So in simple words, a trademark provides protection for the symbols, colours, shapes, words, etc., that are related to a good or service. There is a famous quote which goes like this, “A brand is always a trademark but a trademark is not always a brand.” It was important to quote this here because there is often confusion between a brand and a trademark.
- Types of Trademarks
There are four types of trademarks; they are as follows:
- Service Mark
- Collective Mark
- Certification Mark
- Trade Dress
- Historical Perspective
The reach shows that various forms of proprietary protection for marks in India were developed several years before. But India’s first statutory trademark law only dates back to 1860. Prior to 1940, there were no proper laws governing trademarks in India. Common laws use to govern various aspects of a trademark. This led to numerous problems related to infringement and passing off. To overcome all these issues, the Trademarks Act of 1940 was enacted. The act was in correspondence with the English Trademarks Act.
But with, the passing of time and increasing trade activities resulted in the need for better protection for trademarks. Therefore Trademark and Merchandise Act of 1958 was enacted. The only objective of the act was to provide a simplified procedure to register a trademark in India with better protection for the trademark owners against infringement.
After independence, it became a signatory member of TRIPS, which allowed the central government to repeal the act of 1958 and enact a whole new act, which is known as the Trademark Act of 1999. The act of 1999 is in compliance with all the rules and regulations of TRIPS.
The rules of the Trademark Act of 1999 are known as the Trademark Rules of 2002. The trademark act 1999 and its trademark rules 2002 presently govern Indian Trademark Laws in India.
- Registration of Trademark
Section 18 to Section 23 of the Trade Marks Act of 1999 talks about the procedure to register your trademark. The sections are discussed below:
- Section18 of the act talks about the acceptance of an application;
- Section 19 of the act talks about the withdrawal of acceptance;
- Section 20 of the act talks about the advertisement of accepted applications;
- Section 21 of the act talks about the opposition to registration;
- Section 22 of the act talks about the correction and amendment of the application;
- Section 23 of the act talks about registration.
The central government is responsible for appointing a controller general of trademarks. As per The Trademark Act of 1999, a registered trademark is valid for a period of ten years.
Section 9 of the Trademark Act, 1999
Once the application for registration is submitted, the Indian trademark office issues an examination report. In this report, the office raises all the majorly objections to the application. Section 9 & Section 11 of the Trade Marks Act of 1999 talk about such objections.
Section 9 of the Act majorly talks about absolute grounds for refusal of registration. According to Section 9 trademark office can reject any mark that is:
- Descriptive in nature
- Generic in nature
- Deceptive of the origin of goods or services,
- Deceptive about the nature of the goods or services,
- Deceptive about the quality of the goods or services
- Analysis of Section 9 (1)(a) of the Trademark Act, 1999
Under this part of the act talks about the prohibition of trademark registration, which are devoid of any distinctive character. Now the word devoid means the unpossessed. The act says that a trademark cannot be registered if it is not capable of distinguishing the goods or services of one person from those of another person. In order to determine whether the trademark is capable of distinguishing, the tribunal must consider both the scenarios that are inherent capabilities to distinguish and factual capability to distinguish.
- Analysis of Section 9 (1)(b) of the Trademark Act, 1999
This part of the section prohibits the registrar of the trademark office from registering a trademark where the trademark for which the protection is sought is both descriptive and non-distinctive in nature. This means that the signs or the indications which consist simply of designations or kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods and that are served/used in normal usage by a customer’s point of view either directly or by reference.
- Analysis of Section 9 (1)(c) of the Trademark Act, 1999
This part of the section totally prohibits all those signs and indications that are common to the trade and are available to all those who choose to use them
- Analysis of Section 9 (2)(A) of the Trademark Act, 1999
This part of the section prohibits the registrar of the trademark office from registering a trademark if it of the nature of misrepresentation as to the characteristics of the goods/service or to the effect that they were made in a specified geographical region or place when in fact not so made. In simple terms, if the trademark is of a deceiving nature, that can create confusion among the customers.
- Analysis of Section 9 (2)(B) of the Trademark Act, 1999
This part of the section prohibits the registrar of the trademark office from registering a trademark if it contains or comprises any matter likely to hurt the religious sentiments of any class or section of the citizens of India. It is a very common trade practice in India to use the names and pictures of gods and goddesses or religious heads as trademarks.
- Analysis of Section 9 (2)(C) of the Trademark Act, 1999
This part of the section prohibits the registrar of the trademark office from registering a trademark which comprises/contains scandalous/obscene matter. It is obvious that registration should be denied for marks, which are contrary to morality/considered obscene.
A trademark is obscene or not is a question of fact and the onus will be on the applicant to show that it is by presenting the evidence and overcoming the objection.
- Analysis of Section 9 (2)(D)of the Trademark Act, 1999
This part of the section prohibits the registrar of the trademark office from registering a trademark that bears any emblem or name, the use of which is in contravention of the Emblems and Names Act of 1950. The prohibited name or emblem is specified in the schedule of the said act.
Under Section 8 of the act Central government is empowered to add to or alter the schedule and notify in the official gazette.
The subject matter of intellectual property is the product of the mind or; we can say, the human intellect. It is an intangible property which cannot be touched but can be sold, bought, leased or owned; therefore, it needs protection from the law. One such category of IPR is the trademark, which has become very important in this present competitive world because each and every producer of goods or services in this world needs a mark or a symbol to distinguish its product from the other. The trademark helps a businessman to build goodwill among consumers. Thus, the Trademark law has undergone a gruelling evolution so that it can strengthen the conditions under which one may carry on trade within the country.
Read Our Article: What Is The Process Of Trademark Renewal In India?