We’re pleased to bring to you a three-part guest post by our former blogger Aparajita Lath, tracing the birth and early life of the Indian Trade Marks Register. Part I of the post can be viewed below and Parts II and III can be read here and here.
The Grand Old Indian Trade Marks Register: Episode 1 (1877- 1881)
The Indian Trade Marks Register is now 80 years old. Established in 1940, this register ‘institutionalized’ trademark protection in India. The rules of this institution have lived long. Before analyzing whether they lived well, the following three posts will be dedicated to tracing the birth and early life of this institution. This post will cover the first phase of legislative activity. The subsequent posts (see here and here) will attempt to examine the change in commercial opinion from ‘no registration’ to ‘pro registration’.
Archival material reveals that the creation of such a system was no easy task. Opinions differed and often changed. Even powerful commercial associations were hot and cold, yes and no, in and out, in their decisions.
It all formally started in 1879 (informal negotiations appear to have started in 1877). A Trade Marks Bill was introduced before the Council of the Governor General of India, on the wishes of the Bombay Chamber of Commerce and Millowners Association, Bombay. Similar legislative activity had just wrapped up, or so it was hoped, in England with the passage of the Trade Marks Registration Act, 1875. Prior to this enactment, English trademark law was fragmented. In the absence of a centralized law on registration, common law remedies, criminal remedies and trade specific laws made up the legal landscape. Trademarks for cutlery ware in Hallamshire were protected by registration with the Cutlers Company of Sheffield. The Cutlers Company of Sheffield would later play a significant role in influencing Indian law and policy on trademarks.
In the absence of a law on registration, Indian commercial and mercantile communities set up their own regulatory order. For instance, in 1886, the Millowners Association, Bombay passed a resolution where members agreed to register all their trademarks in the books of the association. All rights were to be established only through registration. Rules were put in place and disputes were to be resolved by arbitrators.
The need, however, was felt for a government law on this subject especially since manufacture, particularly cotton manufacture, was increasing in India. While common law afforded protection to reputation / goodwill generated from the use of trademarks, such actions were cumbersome. Owners of trademarks were on the backfoot since rights to a trademark were confirmed, in individual cases, by a particular set of circumstances. It was hoped that a registration system would transform trademark protection. It would assist in establishing property rights upfront, serve as notice to other traders, cheapen and also reduce trademark disputes.
In 1879, a bill was therefore proposed, along the lines of the 1875 Act in England, for establishing a centralised trade-marks registry in Calcutta. This was a convenient location for administrative reasons since the patents registry had already been set up there. The bill specified that there would be no action for trademark infringement unless a trademark was registered. Despite the enhanced protection granted by a registration system, this bill would not see the light of day. It was abruptly withdrawn, around 1881, on the recommendation of the associations on whose behest the bill was introduced in the first place. This recommendation was also endorsed by other leading commercial associations in India. Suddenly, they were all of the opinion that a centralised registration system and a legislation was not necessary and may even prove to be inconvenient. Were they wrong when it was right? Read Part II of the post to know more about the reasons for this change of heart.
Abstract of the proceedings before the Council of the Governor General of India on the Trade Marks Bill, 1879 (here)
Annual General Meeting of the Millowners Association, Bombay, 1886 (here)
Referred to Lionel Bently and David Higgins in ‘Trade marks and brands: An interdisciplinary critique’, generally for a background on the historical developments in the English trademarks system.