Trademark Law in India - A Critical Ananlysis
- Hamendra Meena, Advocate, Rajasthan High Court
INTRODUCTION
With the advent of the new knowledge economy, the old and some of the existing management constructs and approaches would have to change. The knowledge economy places a tag of urgency on understanding and managing knowledge based assets such as innovations and know-how. The time for grasping knowledge has become an important parameter for determining the success of an institution, enterprise, government and industry; the shorter the time better are the chances of success.
Intellectual property rights (IPR) have become important in the face of changing trade environment which is characterized by the following features namely global competition, high innovation risks, short product cycle, need for rapid changes in technology, high investments in research and development (R&D), production and marketing and need for highly skilled human resources. Geographical barriers to trade among nations are collapsing due to globalization, a system of multilateral trade and a new emerging economic order. It is therefore quite obvious that the complexities of global trade would be on the increase as more and more variables are introduced leading to uncertainties.
Many products and technologies are simultaneously marketed and utilized in many countries. With the opening up of trade in goods and services intellectual property rights (IPR) have become more susceptible to infringement leading to inadequate return to the creators of knowledge.
Developers of such products and technologies would like to ensure R&D costs and other costs associated with introduction of new products in the market are recovered and enough profits are generated for investing in R&D to keep up the R&D efforts. One expects that a large number of IP rights would be generated and protected all over the world including India in all areas of science and technology, software and business methods.
More than any other technological area, drugs and pharmaceuticals match the above description most closely. Knowing that the cost of introducing a new drug into the market may cost a company anywhere between $ 300 million to $600 million along with all the associated risks at the developmental stage, no company will like to risk its intellectual property becoming a public property without adequate returns. Creating, obtaining, protecting and managing intellectual property must become a corporate activity in the same manner as the raising of the resources and funds.
The knowledge revolution will demand a special pedestal for intellectual property and treatment in the overall decision- making process. It is also important to realize that each product is amalgamation of many different areas of science and technologies. In the face of the competition being experienced by the global community, many industries are joining hands for sharing their expertise in order to respond to market demands quickly and keeping the prices competitive. In order to maintain a continuous stream of new ideas and experimentations, public-private partnership in R&D would need to be nurtured to arrive at a win-win situation. Therefore all publicly funded institutions and agencies will have to come to terms with the new ground realities and take positive steps to direct research suitably to generate more intellectual property rights, protect and manage them efficiently.
Intellectual Property Rights (IPR)
Intellectual property rights as a collective term includes the following independent IP rights which can be collectively used for protecting different aspects of an inventive work for multiple protection:-
Trademarks
Copyrights
Patents
Registered ( industrial) design
Protection of IC layout design,
Geographical indications, and
Protection of undisclosed information
Nature of Intellectual Property Rights
IPR are largely territorial rights except copyright, which is global in nature in the sense that it is immediately available in all the members of the Berne Convention. These rights are awarded by the State and are monopoly rights implying that no one can use these rights without the consent of the right holder. It is important to know that these rights have to be renewed from time to time for keeping them in force except in case of copyright and trade secrets. IPR have fixed term except trademark and geographical indications, which can have indefinite life provided these are renewed after a stipulated time specified in the law by paying official fees.
Trade secrets also have an infinite life but they don’t have to be renewed. IPR can be assigned, gifted, sold and licensed like any other property. Unlike other moveable and immoveable properties, these rights can be simultaneously held in many countries at the same time. IPR can be held only by legal entities i.e., who have the right to sell and purchase property. In other words an institution, which is not autonomous may not in a position to own an intellectual property.
GLOBAL INTELLECTUAL PROPERTY LAWS
Law relating to intellectual property may be divided under the following two heads:-
I. Intellectual property law relating to industrial property; and
II. Intellectual property law relating to copyright and cyber law.
III. Intellectual property law relating to industrial property:
The significance of Intellectual property law relating to industrial property right in the international trade had been realized as early as in the 19th century. As in 1883 an international convention on the protection of Industrial property was convened in Paris with the efforts of inventors and industrialists.
PARIS CONVENTION:
The convention known as “Paris Industrial Property Convention, 1883” took within its fold the Patents, Trademarks, Design, etc. The member states of Paris Convention guaranteed the nationals of each member state the same treatment s was given to their own nationals. India deposited its instrument of accession to the Paris Convention for the protection of industrial property on 7th September 1998 and became a member of the Paris Convention.
II. Intellectual property law relating to copyright and cyber law.
Two important conventions relating to copyright law are:
· Bern Convention, 1886; and
· Universal Copyright Convention, 1952 as revised in 1971.
The Bern Convention is the first international convention which was convened in 1886 in Switzerland with the main objective to protect the literary and artistic work. The works protected are for the lifetime of the author and for 50 years after his death. It protects the works of the authors not only in the country of their origin but also in the Countries of Union also. The Universal Copyright Convention was administered by UNESCO. The objective of UCC is to ensure in all countries Copyright Protection of literary, scientific and artistic works.
Trade Related Intellectual Property Rights (TRIPs)
World Trade Organization (WTO) that came into force on 1st January 1995 is an inter-governmental organization of the world. The member states of WTO are the parties to the TRIPs agreement. India being a member of WTO is signatory of TRIPs agreement.
TRIPs agreement
The TRIPs agreement is a significant international instrument to date on IPRs.
TRIPs agreement relates IPRs with the International trade.
TRIPs agreement consists of 73 articles and is divided into 7 parts.
Part 1 of the TRIPs agreement provides for the general provisions and basic principles of the agreement.
Part 2 of the TRIPs agreement provides for the standard concerning the availability, scope and use of the following property rights:
1. Copyright and related rights.
2. Trademarks
3. Geographical Indications
4. Industrial Designs
5. Patents
6. Lay-out Designs of integrated Circuits
7. Protection of undisclosed information
8. Control of anti-compensation practices in Contractual licences.
Part 3 of the TRIPs agreement provides for the enforcement of IPRs.
Part 4 of the TRIPs agreement provides for the acquisition and maintenance of IPR sand related inter partes procedures.
Part 5 of the TRIPs agreement provides for the dispute prevention and settlement among the member states.
Part 6 of the TRIPs agreement provides for the transition agreement.
Part 7 of the TRIPs agreement provides for the institutional arrangements and the final provisions.
Significance of the TRIPs agreement lies in the fact that this is an agreement between nations which are at different levels of economic development, i.e., it involves developed as well as developing nations.
Significance of the Study
Intellectual property law has become more important in the recent past due to an unprecedented development in the field of science and technology particularly in the field of Information Technology. In the age of Satellites and Internet, any development that takes place in one corner of the world gets communicated to the other corner in no time. This gives rise to enormous possibility of unauthorized working of inventions or piracy of industrial designs, infringement or Passing off the Trademarks etc. at the International level. In such situation rights of a person with respect to his Intellectual property require more protection by stringent Intellectual property Law. Because unauthorized working of inventions or piracy of industrial designs affects adversely not only the individual commercial interest of the owner of the Intellectual property but also affects the economy of a nation to which the owner of an Intellectual property belongs.
Importance and object of study in relation to Intellectual Property Rights off
The endeavour of the Study is:
(1) To understand the nature of some of the most common issues relating to Intellectual Property Rights especially Trademarks laws in India.(2) To examine whether the existing laws in India are adequate to deal with them.
(3) To get the perspective regarding Intellectual Property Rights and to see how laws are developed the laws, and deal with criminal offences against Intellectual Property Rights.
(4) To understand whether there is a need to have a legal regime governing and regulating offences against Intellectual Property Rights.
TRADE MARK LAW IN INDIA
A Trademark is any sign which can distinguish the goods and services of one trader from those of another. A sign includes letters and words, logos, pictures, a combination of words and a logo, slogans, colours, product shapes and sounds.
Trade Marks Act, 1999
The trade and Merchandise Marks Act was passed in the year 1958, since then it has been amended several times. Moreover in view of the developments in trading and commercials practices, increasing globalisation of the trade and industry, the need to encourage investment flows and transfer of technology and the need to simplify and harmonise trademarks management systems and to give effect to important judicial decisions it has been considered necessary to bring out a comprehensive legislation on the subject, accordingly, the Trademarks and Merchandise marks Act as amended in 1999. Though the Act was passed in 1999, all the provisions of the Act came in to force from 15th September, 2003, and it extends to the whole of India. The Act has repealed the Trade and Merchandise Marks Act, 1958.
The Trade Marks Act,1999, a relatively more comprehensive legislation, has been enacted to take account of the changing global scenario. It has been enacted with following objectives:
Providing registration of trade marks for services in addition to goods.
Simplifying procedure for registration by registered user and enlarging the scope of permitted use.
Prohibiting the use of someone else’s trademarks as a part of the name(s) of business concern(s).
Salient features of the Trade Mark Act, 1999
1. Definition of Trade Mark includes “Service”
The Trade Marks Act, 1999 has changed the definition of trade mark given under the TMM Act, 1958. The Trade Marks Act, 1999 for the first time includes 'services' within the definition of "trade mark". Therefore, under the Trade Marks Act, 1999 businessmen and traders may apply not only for the registration of the trade marks for their goods but also for the "services" provided by them.
2. Register of trademarks is not divided into parts and may be maintained in computer floppies or diskettes
Under the Trade Marks Act, 1999 the register of trademarks is not divided in Part A and Part B for the registration of trademarks as it was under the TMM Act, 1958. The Trade Marks Act, 1999 provides that the register of trademarks may be maintained on computer. Therefore, any reference to an entry in the register of trademarks shall be construed as reference to an entry maintained on computer or in any other electronic form.
3. Absolute and relative grounds for refusal of the registration for the trademark
The Trade Marks Act, 1999 for the first time divides the grounds for the refusal of the registration for the trademarks as: (i) absolute grounds; and (ii) relative grounds.
4. Better protection to the 'well-known' trade marks
The Trade Marks Act, 1999 for the first time defines "well-known" trade mark. The Trade Marks Act, 1999 not only defines the well-known trade marks. Under the Trade Marks Act, 1999, a trade mark is refused registration if it is identical with or similar to a well-known trade mark even though registration is sought for the goods or services which are not similar to the goods with which the well-known trade mark is associated. Thus, a well-known trade mark is accorded protection not only with respect to those goods and services with which it is associated but also with respect to the goods or services with which it is not associated.
5. Registration of "Collective Marks" owned by associations
The Trade Marks Act, 1999 for the first time defines and provides for the registration of the 'Collective Marks' as trademarks. The 1999 Act defines the term 'Collective marks" as another separate category of the trademarks owned by the members of the association of persons. As the "collective mark" is owned by an association as its proprietor.
6. Single application for registration of more than one class of trade marks
The Trade Marks Act, 1999 provides for a single application for the registration of a trade mark for different classes of goods and services.
7. Registrar to be final authority relating to registration and certification of trademarks
The Trade Marks Act, 1999 provides that it is the Registrar of the trade marks who is the final authority with respect to the registration and the certification of trademarks instead of the Central Government.
8. Establishment of Appellate Board
The Trade Marks Act, 1999 does not provide for the jurisdiction of High Court as provided under section 3 of the TMM Act, 1958. In the place of High Court the Trade Marks Act, 1999 provides for Appellate Board for speedy disposal of appeals which lie before the High Court.
Filing for Trademark Registration in India
Requisites for Registration
Absolute Grounds for refusal of registration of Trade Marks are listed in sections 9(1), (2) and (3) which conversely are requisites for registration. Most of the substantive law laid down by 1958 Act remained valid and held the ground for administering 1999 Act.
Now any mark which is a trade mark may be registered for any goods or services if it is not hit by any of the two kinds of grounds for refusal or other specific prohibitions. The first requisite is that it should be mark within the meaning of Trade Marks Act, 1999 which concept itself imports many conditions as has been mentioned earlier in the legal concept of trade mark.
The next pre-requisite is distinctive character emerges from the presence of words... capable of distinguishing goods of one person from those of others in the definition of trade mark in section 2(1)(zb).A mark shall be trade mark only if, in addition to fulfilling other conditions in the definition of trade mark, it also satisfies the requirement of distinctive character. The term 'distinctiveness' has been changed to 'distinctive character', which would bring jurisprudence of distinguishing function of the trade mark in conformity with international practice. The 1999 Act, as in earlier laws also, recognises that distinctive character may be inherent or acquired.
Grounds for Refusal of Registration
There are two grounds of refusal of registration:
(1) Absolute grounds,
(2) Relative grounds
(1) Absolute grounds for refusal of registration: Sub-sections (1) to (3) of section 9 list the absolute grounds for refusal of registration.
Section 9(1):
As per section 9(1) of the 1999 Act, a trade mark shall not be registered:
(a) Which is devoid of any distinctive character, i.e., not capable of distinguishing goods or services of one person from those of others,
(b) Which indicates quality or other descriptive character (e.g., quantity, kind, intended purpose, values, geographical origin, time of production of goods or rendering of services) of the goods or services,
(c) Which have become customary in the current language or in the bona fide or established practice of the trade.
Distinctive character—Definition of trade mark and proviso to section 9(l)(a) Whole of the trade mark law may be said to be centred around protection of 'distinctive character' of a mark adopted by a person in or as a trade mark and used by him on goods or services. If the trade mark does not possess the capability of distinguishing the goods or services by presence of such characteristics in the trade mark, it is not a trade mark. The law allows the proposition that there can be a trade mark which has yet to acquire distinctive character by reason of use and other circumstances. As stated elsewhere, the registration requirements and the fact of being z trade mark have converged. A trade mark which lacks distinctive character can not be termed as a trade mark and there may not arise a question of registering the same.
Inherent Distinctive Character
The characteristics or features which make the mark distinctive, if they are inherent in the mark, such a mark possesses inherent distinctive character. When sufficient 'distinguishing characteristics are present in the mark itself that distinctiveness is to be expected to result whatever the type and scale of the user and thus secure an estimation of a positive quality in the mark, it is inherent distinctive character.
The court in Imperial Tobacco v. Registrar held that:
"To be distinctive (which means adapted to distinguish) or capable of distinguishing the goods as aforesaid, there may be some inherent qualities or distinguishing characteristics in the mark itself which may make it so distinctive or capable of distinguishing the goods of the applicant from others. The degree or extent of such inherent quality that may satisfy the requisite qualification for registration is left to the discretion of the Tribunal to determine, with his expert knowledge as the extent of quality is always variable from mark to mark".
Invented Words
An invented word is that which is new and not present in the dictionary. Invented words were enacted as one of the qualifying pre-requisites for registration in section 9(1 )(c) of 1958 Act. In 1999 Act there is no such separate mention of invented words for registration of trade marks. They were preferred for registration as they were considered distinctive ab initio and did not have to prove their distinctiveness. The protection to invented word marks has been superior throughout the world. The conditions imposed for registration on other word marks were not applicable on invented words. As to the meaning of invented words the following case can be referred.
In order to sustain claim for registration of invented words, the applicant must prove:
(1) That the applicant invented or coined the word
(2) That the word is not found in any dictionary of any language spoken in any part of the country or in any other commonly known language.
(3) That the word is unknown in the use of the languages spoken in India, and
(4) That whatever familiarity the coined word has acquired is due exclusively to the fact that it has been used by a particular trade (the applicant for registration) and the mark is an indication of origin of his goods.
Statutory provisions:-
The procedure for registration of trade-marks is contained in Section 18 to 26 of the trade marks Act, 1999 and Rules 25 to 62 of the Trade Marks Rules 2002.
Application for registration:
An application for registration may be made by any person claiming to be the proprietor of a mark but only as regards the particular goods or service in respect of which he/she is using or proposing to use the mark. At the time of filing the application, the proprietor must have the intention to use the mark himself/herself or through a registered user.
Requirements for filing a trademark application
1. The name, address and nationality of the applicant. If the applicant is a partnership firm, the names of all the partners.
2. If the applicant is a company, the country or state of incorporation.
3. A list of goods and/or services for which registration is required.
4. One clear representation of a trade mark in black and white or 20 copies, if the trademark is in colour.
5. If the mark contains or consists of non-English words, a translation of those words into English is required.
6. If the application is to claim priority from an earlier filed convention application, details of that application is also required (application number, filing date, country and goods/services). A certified priority document or its duly notarized copy is to be submitted. If the certificate is not in English, a certified/notarized English translation is also required. If it is not readily available, the application can be filed based on the basic application number, date of the application and country of the application. A copy of the priority document can be submitted within 1 month from the filing date of the application.
Foreigners and nationals not living in the country:
May be recorded as being registered proprietors of trademarks but they must provide the Registry with an address for service in India, otherwise, they must appoint a registered agent or representative.
Classification of goods and services
The international classification of goods and services is used and separate applications must be filed for goods and services falling in different classes. Which are available from Class 1 to 45
Territory Covered:
The trademark legislation covers the whole of the territory of India as at present constituted, including the States of Jammu and Kashmir and the territories of Goa, Daman, Diu, Dadra, Nagar Haveli and Pondicherry.
Examination of application:
Applications are examined to ensure that they comply with the requirements of the law and that they do not conflict with marks which are already registered, or which are the subjects of earlier pending applications. Examination of the trade mark is carried out with particular reference to the following sections:-
Section 2(1) (zb)[1]to see whether the mark comes within the scope of the definition of a trade mark.
Advertisement of application:
If the applicant satisfactorily meets all the objections raised by the office, the application will be advertised in the Trade Marks Journal, either as accepted or before acceptance (Section 20), on the applicant furnishing a printing block, where necessary. An application may be advertised before acceptance if it relates to a trade mark to which Section 9(1) and Section 11(1) and (2) applies or in any other case where it appears that it is expedient by reason of any exceptional circumstances so to do.
Amendments:
An application may be amended provided the amendment does not constitute a major alteration of the mark. Section 22 of the Act empowers the Registrar to permit the correction of any error in the application or an amendment of the application.
Ground for refusal:
Registration may be refused in respect of marks which are scandalous or obscene, which are likely to deceive, cause confusion, or offend religious susceptibilities, which are contrary to the law or morality, or which would otherwise be disentitled to protection in a court, which are accepted chemical names or which are identical to other marks for the same goods or description of goods. In the case of identical marks, registration may, however, be allowed upon proof that the mark was being used concurrently and in good faith.
Hearing:
Hearing may be sought with regard to applications which the Registrar proposes to refuse and an appeal may be made to the High Court against any orders issued at a hearing.
Opposition:
Applications which have been accepted are advertised in the Trade Marks Journal and opposition may be filed within three months of the date of advertisement; an extension of time of one month for filing opposition may be obtained upon application. The Register was formerly divided into two parts. Part A contained the marks already registered under the Trade Marks Act 1940 and all marks which were distinctive or had acquired distinctiveness (satisfactory evidence to this effect must be produced) could be registered in Part A of the Register. Part B contained marks which could not be registered in Part A or which were not distinctive but were capable of distinguishing the goods of the applicants. Since 2003 this distinction is removed. There is now only a single register.
Registration:
Where an application has been advertised as accepted and has not been opposed, or if opposed, the opposition has been decided in favour of the applicant, the mark will be registered.
Renewal fees:
The registration of a trade mark is for a period of ten years but it may be renewed from time to time by making an application on the prescribed form. An application for renewal of registration cab be made only by the registered proprietor or an assignee of the registered trade mark. In the case of an assignee the application for renewal must be accompanied by an application for registration of the assignee as subsequent proprietors.
Restoration:
Where a trade mark has been removed from the register for non-payment of renewal fee, it may be restored if within one year from the expiration of the last registration. The power to restore a trade mark is a discretionary one. The Registrar may restore the trade mark and renew the registration either generally or subject to such conditions or limitations as he thinks fit to impose.
Assignment:
A registered trademark can be assigned with or without the goodwill of the business concerned. An unregistered trade mark is not assignable without the goodwill of the business concerned except if it is used in the same business as a registered trademark and assigned to the same person and along with a registered trademark covering the same goods.
Registered user:
The Central Government can refuse the registration of a registered user if it is against the public interest or the development of industry, trade or commerce in India.
Rectification for non-use:
The Register may be rectified (removal of a mark) in respect of a registered mark and one of the grounds for applying for rectification is the non-use of a mark for a period exceeding five years and one month before filing of the rectification application unless there are special circumstances excusing non-use.
Protection of Trade Marks
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities. A trademark is a type of intellectual property, and typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. Certain exclusive rights attach to a registered trademark, which can be enforced by way of action for trademark infringement, while unregistered trademark rights may be enforced pursuant to a common law tort of passing off. Trademark also include any device, label, brand, name, signature, word, letter, numerical, shape of goods, packaging, colour or combination of colours, smell, sound, movement. It must be capable of graphical representations.
1.Injunction
2.Damages
3.Account of profits
Under section 29 of the Trade mark Act, 1999, the use of a trade mark by a person who not being registered proprietor of the trade mark or a registered user thereof which is identical with, or deceptively similar to a registered trademark amounts to the infringement of trademark and the registered proprietor can take action or obtain relief in respect of infringement of trademark.
Infringement
Suits may be filed against the infringement of registered marks and in any suit; registration may be regarded as valid in all respects even years from the date of registration. Unregistered trademarks with reputation in India or internationally well-known trademarks, can be protected against misuse in a passing off action.
In an action for infringement of trademark:
(a) The plaintiff must be the registered owner of a trademark
(b) The defendant must be use a mark deceptively similar to the plaintiff’s mark
(c) The use must be in relation to the goods in respect of which the plaintiff’s mark is registered,
(d) The use by the defendant must not be accidental but in the course of trade
Infringement of Trademarks and Enforcement of Rights
Injunction and other Interlocutory orders
As regards enforcement of rights, the Act itself empowers courts to pass ex- parte injunction orders and other interlocutory orders for discovery of documents, preserving the infringed goods, documents or other evidence and restraining the offender from disposing off or dealing with its assets in a manner which may adversely affect the plaintiff’s ability to recover damages, costs or other pecuniary remedies.
Criminal Liability Section 115 (4) of Trade Marks Act 1999[3]
A minimum penalty of six months imprisonment and Rs.50, 000/- (US$ 1115) has now been prescribed for trade mark violations. The maximum penalty has been increased to three years imprisonment and fine of Rs.2, 00,000 (US$ 4450).
Trade mark violation is now a cognizable and non-bail able offence.
Civil Liability
In respect of civil suits a significant departure has been made from the provisions of the Code of Civil Procedure. Trade mark owners (including registered users) will now be able to initiate civil proceedings in any court having jurisdiction where they reside, work for gain or carry on business. No longer will it be necessary to initiate proceedings where the infringer resides or works for gain or carries on business i.e. makes its goods / services available. This provision will assist the rights owner to plan all-India anti piracy operations from one jurisdiction of its own choice.
Passing Off in Internet Domain Names
Domain Name:
Essentially, a domain name is Internet equivalent of a telephone number or a geographical address[4]. The communication format used on the Internet is called Internet Protocol (IP). As a part of the IP, Internet addresses are comprised of a string of digits delimited by periods (commonly called “dots”). The delimited field indicates the network, sub-network and the local address, read from left to right. A typical Internet address might appear as "11.23.55" where "11" denotes the network, "23" denotes the sub-network and "55" denotes the computer itself. This all-numeric form is known as the IP address. Domain names are nothing but proxies for the IP address, although there is no logical correspondence between the IP address and the domain name. When computers communicate on the Internet, they do not "talk" in terms of domain names, but interpret a domain name into the corresponding IP address. All servers on the Internet interpret the same domain names the same way. That is the reason why when one types "indiainfo.com", one is taken to the Web site hosted by indiainfo, irrespective of where the person accessing the data is located or which server he is connected to.
Domain Name Disputes and Trademarks Law
Domain name disputes are relatively unheard of in the Indian courts. There have been hardly a handful of reported decisions regarding domain name disputes and the case law has still not developed in India. However, with the use of the Internet catching up at an amazing pace in the country, the Indian courts would surely be faced with domain name disputes in times to come. A global study of domain name disputes showed that they could be broadly classified under the following heads: (i) Infringement, (ii) Concurrent claim, and (iii) Cyber-squatting.[5]
Infringement
This refers to disputes where the original registrant intentionally trades off the resemblance between the domain name and another famous trademark. Thereafter, the registrant tries to cash on the reputation of the trademark holder by running a business similar to that of the trademark holder. In such cases, the use of the mark (domain name) would be illegal under the existing trademark law, regardless of whether the infringement occurred as Internet domain names or in any other context[6]. The standard factors which determine infringement under the traditional trademarks law like: (a) the strength of the trademark; (b) the deceptive similarity between the plaintiff's and the defendant's mark; and(c) the likelihood of confusion in the minds of the public, etc. would apply incases of infringement of domain names also[7].
Position in India
The main issue of contention is the relationship between domain names and trademarks. While domain names were originally intended to perform only the function of facilitating connectivity to remember and use. Businesses have started to realize the significant potential of web sites as a primary means of facilitating E-commerce. By using trade and service marks as their domain names, businesses hope to attract their potential customers to their web sites and increase their market visibility, ultimately their sales and profits.
WIPO Arbitration and Mediation Centre
Though each country has its own law governing protection of domain names, and courts but everywhere, more specifically in India the spate of litigation is so high that such cases take years to be decided. So the forums like WIPO arbitration and mediation become indispensable.
The WIPO Arbitration and Mediation Center, established in 1994 as a unit of WIPO’s International Bureau, offers alternatives to court litigation for the resolution of commercial disputes between private parties concerning intellectual property. The WIPO Center has created – with the active involvement of many of the foremost alternative dispute resolution (ADR) and intellectual property experts – the WIPO Mediation, Arbitration, and Expedited Arbitration Rules and Clauses. The WIPO Rules and Clauses, which exist in several languages, incorporate the latest developments in the area of dispute resolution and can be used in any legal system in the world.
Global Scope
The UDRP is international in scope, in that it provides a single mechanism for resolving a domain name dispute regardless of where the registrar, the domain name registrant, or the complaining trademark owner is located. Any person or company in the world can file a request for the resolution of a domain name dispute through the UDRP procedure, asserting that each of the UDRP criteria is present in its case. UDRP proceedings administered by the WIPO Center have involved parties from over 100 countries across the world.
Some of the advantages of WIPO Arbitration and Mediation Center over ordinary litigation are:
(1) Time and Cost Effective
Compared to court litigation, the UDRP procedure is highly time- and cost effective, especially in an international context. A domain name case filed with the WIPO Center is normally concluded within two months, involving one round of limited pleadings and using mostly online procedures. WIPO fees are fixed and moderate.
(2) Enforceable Decisions
A key advantage of the UDRP procedure is the mandatory implement-ation of the resulting decisions. There areno international enforcement issues, as registrars are obliged to take the necessary steps to enforce any UDRP transfer decisions, subject to the losing party’s right to file court proceedings and suspend the implementation of the decision.
(3) Transparent
The UDRP process is transparent. The WIPO Center posts all disputed domain names, case status, case statistics and full-text of decisions on its web site. In addition, the WIPO Center’s online Index of WIPO UDRP Panel Decisions offers easy access to the jurisprudence developed under the UDRP.
(4) Without Prejudice to Court Adjudication
Once a complainant initiates a UDRP proceeding, the registrant of a domain name must submit to the process. However, in line with its administrative character, the UDRP does not preclude the domain name registrant or the trademark holder from submitting the dispute to a court for independent resolution; either party may commence a lawsuit in court before, during, or after a UDRP proceeding. Paragraph 4(k) of the UDRP also allows a losing domain name registrant to challenge the administrative panel’s decision by filing a lawsuit in a competent court and thereby suspend the implementation of the panel decision. Although parties retain this court option, in practice this is a rare occurrence. The WIPO Center maintains a selection of court orders and decisions in relation to the UDRP or specific UDRP cases at its web site.
The Three UDRP Criteria
The UDRP procedure is designed for domain name disputes that meet the following cumulative criteria (UDRP, paragraph 4(a)): (i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and (iii) the domain name has been registered and is being used in bad faith.
Reliefs Given by WIPO
Disputes under the UDRP are decided by independent panels appointed by the WIPO Center. The remedies available to a complainant in a UDRP proceeding are limited to the transfer of the disputed domain name registration to the complainant, or the – rarely requested – option of cancellation of the domain name registration. Neither monetary nor injunctive relief is available. Panels decide on the basis of the submitted complaint and response, without oral hearing.
The first case which was decided by the body was World Wrestling Federation Entertainment, Incv Michael Bosman[8],wherein the respondent had registered the domain name of the complainant only to sell them at US $1,000,000. The Administrative panel ordered the respondent to transfer the ownership of the domain name to the complainant. Subsequently the panel has also decided a plethora of other
Conclusion
The Intellectual property laws in India have had almost a docile and stagnant existence ever since they were framed with the result that the inadequacy of Indian laws, is now being exploited by commercial opportunists’ world over.
At the outset it may be mentioned that the term jurisdiction is nowhere defined. Question of jurisdiction has been the first question of law in order to address and appreciate legal order and change in any legal system. Although the aspect of jurisdiction has always been considered to be a usual aspect of procedure, it has played a critical role in legal thinking. However, much attention is not given to the same in contemplating legal theory. It is indisputable that the question of jurisdiction engages with the fact that there is law and with the power and authority to speak in the name of law. It also provides for authorization and ordering of law as well as determinations of authority with a legal framework in any legal system.
The prerequisite of protecting trademark in various jurisdictions simultaneously are more or less harmonized but the enforcement of the same in those states still remains diverse. In any of the international conventions or treaties on trademark, there are no special rules or reference on jurisdictional rules by which the trademark rights protected in numerous countries simultaneously can be enforced. The only provision in this context that can be located in the internationally harmonized system is in the form of principle of national treatment. However, the principle of national treatment as laid down in the Paris Convention[9] does not determine which court will have jurisdiction. It provides only that the same substantive provisions will be applicable to both foreign as well as nationals. In fact it is explicitly provided in the Paris Convention[10]that the convention rules do not deal with jurisdiction and the same is left to the rules of the domestic law of the members.
In view of the above, the assumption made under the hypothesis appears to be true and hence it is concluded that in almost all countries the rules on jurisdiction whether substantial or procedural as applicable to trademark disputes are significantly different. One of the reasons is that no country can afford to sacrifice its internal unity, stability and tranquillity for the sake of uniformity of rules to facilitate international trade and commerce. Various political, economic and ideological controversies have prevented states from creating a fully harmonized international intellectual property regime.
BIBLIOGRAPHY
1. K. C. Kailasam and RamuVedaraman, Law of Trade Marks & Geographical Indications; 2nd Ed.; 2007,Wadhwa and Company Nagpur
2. Ashwani Kr. Bansal, Law of Trade Marks in India; 2nd Ed., 2006, CLIPTRADE
3. Robert A. Gorman, Trade Marks, 6th Ed., 2002, Foundation Press New York
4. Bently, Lionel, "The Making of Modern Trade Marks Law: The Construction of the Legal Concept of Trade Mark (1860-80)" Cambridge University Press, 2008
5. World Intellectual Property Organization (1997). Introduction to Intellectual Property: Theory and Practice. Kluwer Law International. p. 23
6. Chasser, Anne H. (January–February 2003). "A Historical Perspective: The International Trademark Association and the United States Patent and Trademark Office" . The Trademark Reporter93 (1): 31, 34. Retrieved June 2013.
7 .David Kitchin and David Llewelyn, Kerly’s Law of Trade Marks and Trade Names; 4th Ed., 2005, Sweet & Maxwell, London
8. P. K. Mittal and O. P. Chadha, Supreme Court on Trade Marks, Copyrights, Patents & Designs (1950 – 2006);1st Ed. ; 2007, Om Law Book House, Delhi
9. Neil J. Wilkof and Daniel Burkitt, Trade Mark Licensing; 2nd Ed. 2005, Sweet & Maxwell, London
10. Keshav, Krishan, Intellectual Property Rights (Trademarks, Copyright, Patents & Designs), Singhal Law Publications, Delhi.
[1]Section 2 (1) (zb)Reference from Trade Marks Act 1999
[2] 2008 (38) PTC 554 (Ker).
[3]115 (4) of Trade Marks Act 1999
[4]Ibid
[5]Bhatia Sanjay, Domain names, cyber squatting and trademarks in India- A legal perspective, at http://www.indiainfo.com
[6]However this article deals with only infringement and passing off in domain names
[7]Milton Mueller, Trademarks and domain names: Property Rights and Institutional Evolution in Cyberspace
[8]Ibid
[9] Paris Convention art 2(1)
[10] ibid art 2(3) 259