Home / Blogs

India: Changing Trends in Passing-Off

In India, whilst the Intellectual property owners continue to face the problems of counterfeiting and infringements of their brand names/trade marks, the emerging trend amongst misusers appears to be adopting famous/well known marks as a part of their trading style/corporate name. Obviously, the intention is to choose a name that is easy to recollect and gives the impression of being associated with a well-known company. More often than not, in order to claim honesty in adoption, the marks are adopted in relation to a different business as that of the IP holder. Also it is common among misusers to slightly twist the name or add a descriptive suffix/prefix to the well-known mark.

With the past IT boom, famous marks in the IT industry such as INTEL, PENTIUM, INFOSIS, DELL, and YAHOO have become victims in the hands of the copy cats. In such cases, as the marks are being misused in the form of trade names, strictly speaking, a case for trademark infringement is not made out. Therefore, the pressure is on brand owners to prove goodwill and reputation of their mark/corporate name to establish a case for confusion and deception in the course of trade.

The question that a number of IP holders are asking is why these companies are allowed to be registered in the first place.

In case of companies seeking registration with the Registrar of companies (ROC), although only such company names are approved that are not identical with companies already registered. However, the search system is not full proof. Therefore, a misuser can overcome the objection by adding a prefix or suffix or by adopting a similar name/mark as opposed to identical mark. Also, the Companies Act has no provision to protect trademarks. Thus, it is common for infringers to obtain clearance for a company name containing a well-known trademark.

Therefore, the misusers cleverly adopt famous trade names and get them approved from the Registrar. As a result, in a trade name dispute, the primary argument of the infringers is that they had sought prior approval from the Registrar of companies to use the name and the same was not found conflicting with any of the existing companies? names. Thus, an infringer is clearly able to take advantage of the fact that there is no provision to check if the desired company name is a registered mark or a well known trade mark and no clearance from the Trade Mark office is required.

The good news is that as per the provisions of new Trade Marks Act, 1999 and the corresponding amendments made to Section 20 of the Companies Act, 1956, a company name that is identical to a registered trade mark or a trade mark which is subject of an application for registration may not be registered. The Registrar of Trade Marks would be consulted for confirming this.

The amendments to the Companies Act and the new Trade Marks Act have also made provisions for the owners of registered trade marks who can now move an application to the Central government informing existence of a company name that is identical or similar to their registered marks. The Central Government, if satisfied on similarity of names may direct the company to change its name within a period of three months. The time limit for filing an objection by the IP holder has been fixed as 5 years from the date on which registration of the company first came into notice.

The amendments to the Companies Act are being welcomed by the trade mark owners who currently have no option but to initiate civil action for passing-off in case a third party copies their registered mark as trade name. With the above provisions coming into force, the trademark owners would be able to invoke administrative remedy under the Companies Act to have the infringing name removed from the Register. However, it would be interesting to see the extent and time frame with in which the Central government would be able to provide relief to the TM owners.

June 2003 - Rachna Bakhru, Rouse & Co. Intl.

By Rouse & Co., Intellectual Property Consultancy

Filed Under

Comments

Comment Title:

  Notify me of follow-up comments

We encourage you to post comments and engage in discussions that advance this post through relevant opinion, anecdotes, links and data. If you see a comment that you believe is irrelevant or inappropriate, you can report it using the link at the end of each comment. Views expressed in the comments do not represent those of CircleID. For more information on our comment policy, see Codes of Conduct.

CircleID Newsletter The Weekly Wrap

More and more professionals are choosing to publish critical posts on CircleID from all corners of the Internet industry. If you find it hard to keep up daily, consider subscribing to our weekly digest. We will provide you a convenient summary report once a week sent directly to your inbox. It's a quick and easy read.

I make a point of reading CircleID. There is no getting around the utility of knowing what thoughtful people are thinking and saying about our industry.

VINTON CERF
Co-designer of the TCP/IP Protocols & the Architecture of the Internet

Related

Topics

Cybersecurity

Sponsored byVerisign

DNS

Sponsored byDNIB.com

Brand Protection

Sponsored byCSC

Domain Names

Sponsored byVerisign

New TLDs

Sponsored byRadix

IPv4 Markets

Sponsored byIPv4.Global

Threat Intelligence

Sponsored byWhoisXML API