Sociology Index

History of IP and Indian Trade Mark Act

Intellectual Property Rights, Trademark Dilution, Trademark Infringement

The Intellectual Property Rights embodied in various Indian Acts are based on the English and American Law with modifications. In 1710, the Statute of Anne was passed in England forming the basis for modern copyright laws. The Statute of Anne was used as a model for national laws in Denmark (1741), the United States (1790), and France (1793). In 1617, Southern v. How, a court remedy resulted where a clothier used the same mark as used by another clothier to deceive.

The first Trade Mark Act was enacted in 1875. It codified the formulations courts had made in relation to property in trade mark. It recognised the principle of a right developing in a trade mark with usage. The Act provided for a register of trade marks.

A trader using a mark could get it registered. Registration could be secured only on proof of user and fulfilment of criterion whether the trade mark distinguished the goods of the trader or not. Once a registration was secured, it became a proof of ownership in all court action for trade mark infringement, reducing the burden on the judicial system and the associated costs of litigation. The first British trade mark Act of 1875 was repealed and substituted by the Patents, Designs and Trade Marks Act, 1883. This Act was substituted by the Trade Marks Act, 1905. The next re-enactment was the Trade Marks Act, 1938.

While the law on registration of trade marks and protection against infringement developed through statutory enactments, non-registered trade marks and appropriation of goodwill could seek remedy under the common law of passing off.

The first Indian Act on the subject as the Trade mark Act of 1940 was borrowed from the British Trade Marks Act of 1938. The law provided for registration of trade marks and their protection from infringement. The Indian courts had already started giving remedy under common law of passing off. Independent India brought in Trade and Merchandise Marks Act, 1958. The Act was in operation till September, 2003. The operative law now is the Trade mark Act, 1999.