| In India the first Trademark legislation was Indian | | | | different classes. In the new law, a single application |
| Merchandise Act, 1889 where the disputes or | | | | can be made for registration in more than one class. |
| problems relating to the infringement of Trademark | | | | The definition of Trademark has been expanded |
| or passing off were decided under of s. 54 of the | | | | to include shape of goods, their packaging, and |
| Specific Relief Act 1887 and registration problem was | | | | combination of colors, so long as the mark is capable |
| tackled under the Registration Act 1908. This act was | | | | of distinguishing the goods and services of one, from |
| repealed in the year 1940 and was followed by the | | | | the goods and services of another. |
| enactment of Trademark Act 1940. In the year 1958, | | | | The new Act has introduced the category of |
| The Trade and Merchandise Marks Act was adopted | | | | collective mark. An association could get a mark, |
| which repealed the Indian Merchandise Act, 1889 and | | | | distinguishing the goods and services of its members, |
| Trademark Act 1940 and was provided with s.129 for | | | | registered as a collective mark. |
| the registration of Trademarks. | | | | Certification Mark is another introduction for a |
| Further, in the year 1999, Trademark Act was | | | | person who is competent to certify goods or |
| adopted which came into force on 15th September, | | | | services for their origin, material, mode of production, |
| 2003 which repealed The Trade and Merchandise | | | | quality, accuracy etc. |
| Marks Act, 1958. | | | | An Appellate Board to be known as the |
| Salient Features of the Trade and Merchandise Act, | | | | Intellectual Property Appellate Board to exercise the |
| 1958 | | | | jurisdiction, powers and authority conferred on it is |
| The Trade and Merchandise Marks Act, 1958 | | | | established under this Act. |
| provides for the creation of a Trade mark Registrar | | | | In the earlier Act, a trade mark was infringed by |
| where an individual or firm could register their Trade | | | | use of identical or similar mark 'in relation to any |
| mark in the office of Mumbai, Delhi, Chennai, Kolkata | | | | goods in respect of which the trade mark is |
| and Ahmedabad. The Act provided with the ground | | | | registered'. Thus, the benefit of registration was |
| of registration and refusal to register trademark | | | | confined strictly to the goods in relation to which the |
| The trademark Act, along with rules, creates 34 | | | | mark was registered. The new Act has vastly |
| classes. A class covered similar and related goods. | | | | expanded the extent of protection to a trade mark. |
| A trademark could be registered only if it met | | | | The scope of the new law is discussed under the |
| certain criteria. It could not be registered in the | | | | following two heads: |
| following situations. | | | | 1. Similar goods in different classes an identical or |
| 1. Different Laws may prohibit or restrict use of | | | | similar mark in relation to identical or similar goods, |
| certain names and marks. | | | | and such use is likely to cause confusion or likely to |
| 2. Descriptive or laudatory words cannot be | | | | have an association with a registered trademark, it |
| registered. | | | | would be a case of trade mark infringement |
| 3. It should not 'deceive or cause confusion' | | | | 2. Dissimilar goods: Trademark infringement has been |
| A trademark could be registered only if it was | | | | made available even in the cases of unconnected |
| established that it had become distinctive of the | | | | goods. |
| goods of the trader. | | | | The new Act states that a trade mark is |
| Discouraged foreign trade names and | | | | infringed not only by attaching it to goods but also |
| encouraged Indian marks of domestic firms. | | | | by printing it on packaging material and using it in |
| Common law remedy of passing off was | | | | advertisement. Foreign companies to find protection |
| available. | | | | for their trade marks |
| The Act of 1958 was 'nationalist' reducing the | | | | Under the Act, a well-known trade mark is a |
| presence of foreign trade marks and guarding marks | | | | mark used over particular goods or services that has |
| of domestic firms, the new law, understandably, has | | | | gained sufficient recognition among the consumers. A |
| reversed to give | | | | mark can be a well known trademark even if there |
| Overwhelming protection to foreign trade marks. | | | | are no goods in the Indian market. |
| Provisions in the new law, the Trade marks Act, | | | | The new Act has broadened the concept of |
| 1999: | | | | criminality in trade marks and enhanced penalty and |
| Service Marks were included which have made | | | | punishments. Falsifying, that is, using identical or |
| seven classes of services. A mark associated with a | | | | deceptively similar mark, has been made into a |
| service could be registered under the Act. | | | | cognizable offense. A Police officer has been given |
| The duration for which a trademark would be | | | | the power to search and seize without warrant. The |
| valid has been increased from 7 years to 10 years. | | | | punishment has been fixed at 6 months to 3 years |
| In the earlier law, a separate application had to | | | | and fine at Rs. 50, 000 to 2 lakhs. |
| be made for registration of the same trade mark in | | | | |