The Lanham Act & it’s equivalent in India.

Lanham Act is a Federal Trademark law (United States) also known as the Trademark Act of 1946 which governs issues involving trademark infringement and damages. The Lanham Act provides federal causes of action for trademark dilution, cybersquatting, and several other unfair competition claims, such as unregistered trademark infringement, false advertising, false endorsement, and false designation of origin. A trademark is considered as a word, phrase, logo, graphic symbol, or another device that identifies the source of a product or service and distinguishes it from competitors. No other person or company can use the mark in a way that reduces how unique it is. The Lanham Act allows legal entities to consider the implications of issuing a trademark under the trademark laws.

Similar to Lanham Act practiced in the United States, in India this law is known as Trademark act 1999 which came into force with effect from 15-9-2003 vide Notification S.O. 1048 (E) dated 15-9-2003 and the Trade Marks Rules, 2002. Below we have mentioned few noteworthy points which are followed by the Indian government;

In India, the trademarks can be registered with the Controller-General of Patent, Designs and Trade Marks which will have the same effect as that of federal registration in the US which has a distributed power of laws among all states which is governed by the Federal government. So it is only the Union i.e. the Central Government that has the power to enact the legislations on intellectual property, States do not enjoy such power.

In India, trademark registry is under the charge of the Registrar of Trade Marks who is also the Controller General of Patent, Designs, and Trademarks. 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. Ordinarily, the Joint-Registrar, Deputy Registrars, Assistant Registrar are authorized to hear and decide cases in respect of all proceedings under the Act before the Registrar. The Examiner of Trade Marks examines applications for registration of trademarks to see whether they qualify for registration under the provision of the Act and the Rules. They also assist the Registrar in all various proceedings under the Act and the Rules. The marks which are not registrable with the Registrar of Trademarks will not have any alternative registration procedure as the Indian Trade Marks system does not have any provision for supplemental register for the purpose of registration of marks which are not registrable with the Registrar.

The Trade Marks Act, 1999 deals with trademarks and Section 47 of the Act provides that a registered trademark can be taken off from the register on an application made by any person aggrieved if there was no bona fide intention of using the mark by the registrant or by the company to be formed and the mark had not been used up to three months prior to the application. In cases, such the Indian courts have interpreted that does not necessarily mean and imply actual physical sale, even mere advertisement without having even the existence of the goods can be said to be a use of the mark.

Indian trademark does not require the filing of an affidavit for the continuous use of the trademark, however, non use of trademark for five years is a ground for removal from the register. Under the Indian trademark system once the owner of a mark registers the mark it is sufficient for such registration to be prima facie evidence of validity.

Trademark Dilution in India recognise the concept of trademark dilution by virtue of Section 29(4) which reads as follows; A registered trademark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which
(a) is identical with or similar to the registered trademark.
(b) is used in relation to goods or services which are not similar to those for which the trademark is registered.
(c) the registered trademark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or reputation of the registered trademark.

However, the paradox of the Indian courts is that in practice the concept is referred to in the matters not of dilution but in relation to the common law action of passing-off. It has been held by the Indian courts that even when a mark is well known in India, the use of the same for different goods cannot be restricted

Damages under the Indian law the relief which a court may grant in any suit for infringement includes either damages or an account of profits, together with or without any order for the delivery of the infringing labels and marks for destruction or eraser. But there is no specific provision as to the treble damages.

Cyber Privacy Prevention in India India has no domain name specific legislation. In India, domain name disputes are regulated under Section 29 of the Act and by an action for passing-off.

Remedies for Infringement in India In an action for infringement of trademark the plaintiff is entitled to the injunction and at the option of the plaintiff either damages or an account of profits, together with or without any order for the delivery of the infringing labels and marks for destruction or eraser. Indian law, unlike the US, provides criminal remedies for trademark infringement. Under Indian law applying of false trademarks, 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 Rs 50,000 but which may extend to Rs 2 lakh. 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.

The above-mentioned points are few of the resolution under the Trademark act 1999 which may or may not be the acts presently followed. As India is still under the internet transition phase, these laws are being changed or removed from the act from time to time. To know more get on a search engine and search for Indian Trademark act 1999.

4 Comments

  1. November 11, 2017 at 6:23 am

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  2. November 13, 2017 at 3:07 pm

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    Cheers! Where are your contact details though?

    • Anurag-Reply
      November 13, 2017 at 6:16 pm

      You can reach us at harsha@tradevigil.com. Alternatively you can call us at 00919000109998

  3. November 15, 2017 at 1:34 pm

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