India introduced a statutory right to prevent “dilution” of well known marks for the first time in 2003 (through the Trademarks Act 1999, which came into force in September 2003). We’d blogged about this provision in the past in several of our blog posts.Kodak (RIP) is a well known mark in India and several other parts of the world. Assume that Kodak registers its mark in India in several classes associated with their core business in the early 70’s. Along comes Rupa Traders which begins selling “Kodak” underwear through all of its major outlets in Jan, 2002. Could Kodak have sued Rupa Traders for dilution (under section 29(4)) before an Indian court in the year 2004?
Section 159 appears to answer this query with a resounding No! It reads:
“Notwithstanding anything contained in this Act, where a particular use of registered trade mark is not an infringement of a trademark registered before the commencement of this Act, then, the continued use of that mark shall not be an infringement under this Act”
Seems clear enough to me–but I’d be happy to hear alternative views on this. And more importantly, if you know of any cases where this argument has been raised or dealt with or where section 159 has been invoked (whether in the context of dilution or otherwise), please let us know.
Your interpretation seems to be the correct interpretation of 29(4) read with 159. Then in the twilight zone of the previous Act when the new Act was already passed but not enforced, any clever trader was free (for the last time) to adopt famous and reputed marks for a variety of dissimilar goods free from any possibility of being held responsible for infringement through dilution.
However, Kodak of your example could try out the following interpretations of 159:
Focus on “a particular use” and try to prove that Rupa’s use of the mark now is not of the same genre, manner, extent or scope. That way the case will be free of 159.
Focus on “is” and try to prove that the test of infringement remains the TM Act of 1999. Section 159(5) makes no reference to the Act of 1958. It only talks about the infringement of a trade mark registered before the commencement of this Act, but this infringement has to be determined under the 1999 Act. If the “is” in 159(5) were “was” then of course the infringement would have to be determined under the 1958 Act.
Focus on “not an infringement” and try to establish that section 159(5) is restricted to only those cases where a court had actually (in a real case) found the usage of the mark to be non-infringing before the commencement of this Act, i.e. under the 1958 Act. The court, in the present matter, is not competent to notionally examine the issue under the 1958 Act and then proceed to carry the consequences to the matter at hand under the 1999 Act.
Focus on “continues use” and try to prove that Rupa’s use of the mark has not been continuous or uninterrupted.
Compare section 159(5) with section 11(11) of TM Act 1999. Section 11(11) reads: “Where a trade mark has been registered in good faith disclosing the material informations to the Registrar or where right to a trade mark has been acquired through use in good faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration of that trade mark or right to use that trade mark on the ground that such trade mark is identical with or similar to a well known trade mark.”
Section 159(5) reads: “Notwithstanding anything contained in this Act, where a particular use of registered trade mark is not an infringement of a trade mark registered before the commencement of this Act, then, the continued use of that mark shall not be an infringement under this Act”
The objective of both these provisions is to protect the prior user of a famous mark. The only different is that 11(11) conditions the saving of such prior user to the exercise of good faith whereas 159(5) does not carry such a condition of good faith expressly. Thereby Kodak can argue that the requirement of good faith is somehow implicit in 159(5) when it mentions “a particular use”.
Raman Mittal
Your interpretation seems to be the correct interpretation of 29(4) read with 159. Then in the twilight zone of the previous Act when the new Act was already passed but not enforced, any clever trader was free (for the last time) to adopt famous and reputed marks for a variety of dissimilar goods free from any possibility of being held responsible for infringement through dilution.
However, Kodak of your example could try out the following interpretations of 159:
Focus on “a particular use” and try to prove that Rupa’s use of the mark now is not of the same genre, manner, extent or scope. That way the case will be free of 159.
Focus on “is” and try to prove that the test of infringement remains the TM Act of 1999. Section 159(5) makes no reference to the Act of 1958. It only talks about the infringement of a trade mark registered before the commencement of this Act, but this infringement has to be determined under the 1999 Act. If the “is” in 159(5) were “was” then of course the infringement would have to be determined under the 1958 Act.
Focus on “not an infringement” and try to establish that section 159(5) is restricted to only those cases where a court had actually (in a real case) found the usage of the mark to be non-infringing before the commencement of this Act, i.e. under the 1958 Act. The court, in the present matter, is not competent to notionally examine the issue under the 1958 Act and then proceed to carry the consequences to the matter at hand under the 1999 Act.
Focus on “continues use” and try to prove that Rupa’s use of the mark has not been continuous or uninterrupted.
Compare section 159(5) with section 11(11) of TM Act 1999. Section 11(11) reads: “Where a trade mark has been registered in good faith disclosing the material informations to the Registrar or where right to a trade mark has been acquired through use in good faith before the commencement of this Act, then, nothing in this Act shall prejudice the validity of the registration of that trade mark or right to use that trade mark on the ground that such trade mark is identical with or similar to a well known trade mark.”
Section 159(5) reads: “Notwithstanding anything contained in this Act, where a particular use of registered trade mark is not an infringement of a trade mark registered before the commencement of this Act, then, the continued use of that mark shall not be an infringement under this Act”
The objective of both these provisions is to protect the prior user of a famous mark. The only different is that 11(11) conditions the saving of such prior user to the exercise of good faith whereas 159(5) does not carry such a condition of good faith expressly. Thereby Kodak can argue that the requirement of good faith is somehow implicit in 159(5) when it mentions “a particular use”.
Raman Mittal
Dear Prof. Basheer,
Kindly have a look at Radico Khaitan Limited vs Carlsberg India Private Limited (http://indiankanoon.org/doc/21075/).
Please also have a look at Carlsberg India Pvt. Ltd vs Radico Khaitan Ltd. (http://indiankanoon.org/doc/49386818/) where the same matter was heard in appeal before the Division Bench at the Delhi High Court.
Hope this helps a bit.
Kind regards,
Ankit Sahni
Dear Raman and Ankit:
Thanks so much for your very helpful responses. Appreciate it.
I do not agree with Dr. Raman Mittal. The reasoning is wrong. In this way there is no purpose of SEction 159(5). The judgement referred to by Ankit Sahni are not on the point of Sec 159(5).
The interpretation in this post regarding Section 159 (5) of the Trade Marks Act, 1999, is not in line with what has been intended by the legislature.
The legislature merely wanted to protect “a particular use of a registered trademark” which is not an infringement under the old Act. The object of this section is to protect a trademark “registered” before the commencement of the new Act.
For eg., Kodak “registered” in respect of pharmaceutical products under the old Act and then “used” will not amount to “violation” of a trademark right under the old Act(as no protection was granted to well-known trademarks thereunder). The use of KODAK registered for pharmaceutical products under the old Act, shall not be considered infringement under the new Act also.