Protection of Trademark - An Ever Expanding Concept

The development of trademarks can be traced back to the onset of industrial revolution, which facilitated in the large scale production and distribution of goods. As a result of commercialization and globalization, the consumers started identifying the goods and services on the basis of trademarks and trade names. The trademarks tend to leave an ever lasting impact upon the minds of the consumers/public. The trademarks distinguish the products of one person or enterprise from those of other persons. Over a prolonged period of usage, the products with particular marks started gaining popularity as well as recognition in the market. With advertising came the propensity to adopt deceptively similar trademarks to enhance profits and gain unscrupulous financial gain by trading on the reputation of another trade mark. Therefore there was a need for uniform laws for protection of such marks. Infringement or passing off mostly occurs when another trader/manufacturer copies the trademark, or essential features of a trademark of another, but sell the goods in his own name in contrast to counterfeiting where the counterfeiter holds out that the goods and produced by the actual proprietor. If the Trade Mark offended against is unregistered, only an action for passing off is permissible. Infringement is a remedy based on violation of statutory laws whereas passing off is based on common law. In India, the very first legislation in respect of trademark was the Trademarks Act 1940. Prior to 1940, the law relating to trademarks in India was based on the common law principles. In the year 1958, The Trade and Merchandise Marks Act was adopted which repealed the Trademarks Act 1940. The Trademarks Act 1999 repealed the previous legislations. The present act is an �Act to amend and consolidate the law relating to trademarks, to provide for registration and better protection of trademarks for goods and services and for the prevention of the use of fraudulent marks�. The Trademarks Act, 1999 is in compliance with the TRIPS Agreement. It provides a platform for the registration of trademarks of goods and services, thereby, providing the exclusively identifying the product with its manufacturer and thereby also providing the manufacturer relief in case of infringement of his trademark. The law of passing off applies whenever there is the prospect of confusion between marks and getup or where there is the prospect of confusion of identity through the unauthorised use of similar marks or get-up. It is because the main consideration of passing off is whether deception or confusion is likely to arise, passing off can be used to protect any kind of distinctive name, mark, logo or get-up used to identify a company or business as well as products or services.