Every country has a different system for Trademark protection. In India, we have the Trademarks Act 1999. The Lanham (Trade Mark) Act, 1946 is a piece of legislation that contains the federal statute of trade mark law in the United States. The Trademark law in Europe comprises European Union (EU) legislation as well as the national laws of the 27 Member States of the Union on the protection of marks i.e. the Community Trademark Regulation (CTMR) of December 1993 & the Trademarks Directive 2008. Though all these legislations have the same goal i.e. to protect Trademark, there are certain procedural and conceptual differences in all these countries.
First to ‘Use’ system:
Indian trademark law is based on a “first to use” system. The first use may be anywhere in the world accompanied by a transborder reputation of the mark in India. This transborder reputation can be established through the mere availability of literature or advertising materials featuring the mark in question, which need not even be directed to Indian customers. Even the existence of materials relating to products that are banned in India and not directed towards the Indian public has been considered sufficient for proving reputation. For example, Playboy, whose own magazines are banned in India, relied on global advertisements to claim that the mark “Playboy” had goodwill and reputation in India. Whereas in EU, an established goodwill among actual customers of the relevant product or service in the respective country needs to be proved and in the United States, general use of the mark in commerce in the United States or in commerce between a foreign country and the United States is required to be proved to establish rights in the mark.
Trademark rights in India can be acquired through registration. A trademark may be registered, even for a mark which has not yet come into use, i.e. on a “proposed to be used” basis. Moreover, rectification can occur only when there is an objection from a third party. Registered trademark owners are not required to periodically prove that their marks are in use in order to maintain their registrations. This is the same as in the EU but not in the US, registration can be obtained only when the mark has been used in U.S. interstate commerce or in commerce between a foreign country and the United States.
Third Party Action:
The position in the EU and India also differs in one important respect. In India, cancellation actions often fail, even before the assessment of the actual use of the challenged mark, on account of the lack of a bona fide intent of the third party bringing the action. In a 2008 judgement of Kanishk Gupta v. Liberty Footwear, the IPAB went on to rule that the blatant adoption by a third party of a mark that is deceptively similar to an invented mark on the register entitles that party to seek its removal. In other words, a mark consisting of an invented word cannot form the subject matter of a cancellation application, especially when the party seeking cancellation has adopted a similar mark with the intention to deceive.
The term “use” has been given a broad meaning by the Indian courts. In a 2003 judgment of Hardie Trading v. Addison Paints, the Supreme Court of India ruled that “use” may be “non-physical” but must be “material,” that is, meaningful. Similarly in the EU, use must be “genuine” and not mere token use. There is no quantity threshold that needs to be met to establish the use of a registered mark in India. For example, in a case involving Toshiba Corporation, the Supreme Court of India held that, in case of a government ban on account of which goods could not be imported into India, a single instance of an advertisement by Toshiba in India, coupled with its global reputation, registrations for the TOSHIBA brand and marketing, gave the corporation’s trademark immunity from cancellation.
In the United States, the owner of a famous and distinctive mark has a cause of action for dilution. In the EU, the trademark need not be “famous” but it must be known by a significant part of the public concerned with respect to the products or services covered by the mark. In India, the principle of dilution has traditionally been well recognized. Many proprietors of globally well-known trademarks, including APPLE, CARTIER, CATERPILLAR, DUNHILL, FORD, HONDA, HYUNDAI and MERCEDES-BENZ, have succeeded in passing-off actions in India against users of identical or similar marks in relation to dissimilar goods.
In India, trademark opposition against a Trademark needs to be filed within 4 months from the date on which the mark is advertised or readvertised in the Trademark Journal. In the US, the time limit is 30 days from the date on which the mark is published in the Gazette (maximum 180 days). In EU, for Community Trademarks, the time limit is 3 months from the date of publication of the CTM application.
The enforcement procedures are almost similar in all the 3 countries. Proceedings are conducted before the Registrar of Trademarks, and appeals are filed with the IPAB. The IPAB comprises a technical member and a judicial member. The procedure involved is the same as in a court of law, although timelines are shorter.
Apart from these, there are certain differences in the Indian Trademark law and the US Trademark law.
There are 2 types of registers in US- Principal Register and Supplemental Register. Whereas in India, trade mark registry is under the charge of the Registrar of Trade Marks 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.
“Incontestability” under the Lanham Act is different from the Indian position. Section 33(a) of the Lanham Act states that once a trade mark has been registered for at least five years and certain formalities addressed by the Act completed by the registrant, the registration becomes conclusive evidence of the validity of the trade mark and the registrant has the exclusive right to use the mark on or in connection with the identified goods or services. Under the Indian trade mark system once the owner of a mark registers the mark it is sufficient for such registration to be prima facie evidence of validity.
Remedies for Infringement: In the US the plaintiffs shall be entitled to a wide range of remedies under federal law. In trade mark infringement suits, monetary relief may also be available including: (1) defendant’s profits, (2) damages sustained by the plaintiff, and (3) the costs of the action. The Lanham Act does not provide for criminal remedies for trade mark infringement. Indian law, unlike the US, provides criminal remedies for trade mark infringement. Applying of false trade marks, trade description is punishable with imprisonment for a term which shall not be less than six months but which may extend to three years and with fine which shall not be less than INR 50,000 but which may extend to INR 2 lakhs. The Act also provides that falsely representing a trade mark as registered shall be punishable with imprisonment for a term which may extend to three years or with fine or with both.