INDIA Law and Practice Contributed by: Safir Anand and Twinky Rampal, Anand and Anand Advocates
As a first-to-use country, unregistered trade marks with prior usage can be protected under common law in India. The passing off of trade marks is a tort action - able under common law and is mainly used to protect the goodwill associated with a mark. Statutory Trade Marks The Indian trade mark statute provides special protec - tion to certain marks: for instance, the Olympic sym - bol, the Olympic motto and the phrases “Olympic(s)”, “Olympian(s)” and “Olympiad(s)” are not to be regis - tered as trade marks in India without prior permission from the Olympic Committee. On the basis of international, national and cross- border repute, the TMO also recognises well-known trade marks in India. Such trade marks that are “well known” are given greater protection under the law, which protects them from infringement and passing off in all the classes. There are certain trade marks governed by charters such as the one developed by the Scotch Whisky Association (SWA) and its members, which protects the SWA trade mark. Similarly, a mark is prohibited for registration as a trade mark under the following conditions: • If it comprises any matter that is likely to offend the religious sensibilities of any class or segment of Indian residents. • If it “comprises or contains scandalous or obscene matter”. • If its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950. • If it is a word which is the commonly used and accepted name of any single chemical element or compound in respect of chemical substances or preparation. Also, the law prohibits registration of a word which is declared by the World Health Organization and notified by the Registrar of Trade Marks as an international non-proprietary name, or which is deceptively similar to such name. If an international non-proprietary name is erroneously accepted for registration in respect of pharmaceuti - cal preparations, or if a prohibited or non-registrable
trade mark is erroneously accepted for registration, the necessity to revoke/withdraw the acceptance of
the application may arise. Well-Known Trade Marks
Beyond jurisdictional protection of trade marks, Indian courts have taken into consideration factors such as transborder reputation and goodwill in protecting a trade mark that is used or registered in foreign coun - tries, its reputation in foreign jurisdictions, and knowl - edge and information of the same within the public at large in India due to spill-over of its reputation through travel, the internet, advertisement or any other means. Indian courts have consistently objected to the unlaw - ful gain or profit from the reputation built by third par - ties around the world. Further, Indian courts have also objected to passing off of unregistered trade marks, including foreign trade marks. In addition to declaration of trade marks as well known through courts, the Trade Marks Act 1999 has special provisions which allow for declaration of trade marks on the basis of evaluation of evidence by the TMO. 2.2 Essential Elements of Trade Mark Protection A mark is prohibited for registration as a trade mark under the following conditions: • If it comprises any matter that is likely to offend the religious sensibilities of any class or segment of Indian residents. • If it “comprises or contains scandalous or obscene matter”. • If its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act 1950. • If it is a word which is the commonly used and accepted name of any single chemical element or compound in respect of chemical substances or preparation. Also, the law prohibits registration of a word which is declared by the World Health Organization and notified by the Registrar of Trade Marks as an international non-proprietary name, or which is deceptively similar to such name. If an international non-proprietary name is erroneously accepted for registration in respect of pharmaceuti -
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