Suggestion For Amendments In Trademarks Law
It has been said the we are having ancient law with medieval law enforcement
agencies to tackle modern offences. Can we succeed in handling the modern cyber
crimes, that is the question? This observation also appears to be true if look
at our law of Land in India.
We are having Indian Penal Code 1860, Indian Evidence Act Act 1972, Civil
Procedure Code 1908 to tackle modern days offences. Though Indian Government has
enacted Trademarks Act 1999, Copyright Act 1957, Design Act 2000, Patent Act
1970 for handling cyber crimes, technology based crimes, still there are lots of
amendments required to be done. This article deals with few of the suggestions,
which are required to be carried out to deal with problems faced in Modern Days
The right holder has to face problem while dealing with counterfeit products.
There is always dilemma in ascertaining the counterfeiting , as term
counterfeiting has not been defined under the trademark marks act. Because of
this lacunae , the counterfeiters are able take advantage of different
interpretations given differently by different courts to the term
Though there has been amendment in Notification No.28-2017 Dated 22.02.2017
Central Tax (Rate) dated 28.06.2017, issued by Government of India, Ministry of
Finance, (Department of Revenue), where by a party can seek exemption in GST,
after disclaiming right in Brand, but there has not been any corresponding
amendment in Trade mark law. Because of this a party can get exemption from
government in taxes, still can enforce their right in trademarks act. This
anomaly has to be eradicated.
There has been amendment with respect to declaration of a well known trade mark,
but what would be having advantages of that, it is missing in Trade mark law.
Section 135 of trade marks Act provides the registered proprietor, the right of
remedy , either damages or rendition of account. While in Copyright Act , both
remedy can be availed by Copyright holder. Similar right should be granted in
trademark act also.
Though goods have been defined in the trade marks act, however term similar
goods, allied and cognate goods have not been defined. Lots of confusion are
always there has been inconsistent judgements by various courts while
interpreting the term same, similar , allied or cognate goods. In order to avoid
confusion, term same goods, similar goods, allied and cognate goods should be
defined in the trademarks act.
World IP Law is changing and is getting broader and broader in order to
encompass smell, sound etc. as a trademark. In order to keep at pace with
changing IP World scenario, the trademark law should be amended to incorporate
sound trademark, smell trademark, ambience trademark also.
There should be provisions for carrying out amendment in registered trademark.
In many cases, where parties settle the matter and agree to change their
registered trademark, however in absence of any such provision for amendment of
registered trademark, lots of problems are faced by the registered proprietor in
resolving the inter se disputes on registered trademark.
Term goods will and reputation is again a problem which has not been defined in
the trademarks act. This is the area, where definite explanation is required to
be given. Trademark Act should be amended to incorporate unregistered user
including authorized and permitted user also who can also initiate civil suit
proceeding. Penalty for repeated offences committed under trade mark act should
be enhanced up to 4 years to give teeth to trademarks act 1999. This step would
create some deterring effect on the counterfeiters.
There might be possibilities of various such suggestion to equip our law to keep
at pace with the modern offences like cyber crimes, counterfeiting. However in
opinion , the afore mentioned amendment are necessary and the call of time.
Government of India should keep an eye to these suggestions.
Written By: Ajay Amitabh Suman
Law Article in India
You May Like
Legal Question & Answers