In Part I of this three-part guest post tracing the birth and early life of the Indian Trade Marks Register, Aparajita discussed the first phase of legislative activity. In Part II (below) and Part III (here) of the post, she examines the change in commercial opinion from ‘no registration’ to ‘pro registration’.
Aparajita is a lawyer based in Bangalore. Her previous posts on the blog can be viewed here, here and here.
The Grand Old Indian Trade Marks Register: Episode 2 (1881-1920s)
Aparajita Lath
As discussed in Part I of this post, a bill for establishing a nation-wide trademark registration system was introduced in 1879 but was quickly withdrawn. Initially, it was felt that registration would transform trademark protection as registration would increase certainty regarding ownership of trademarks, serve as notice to others reducing use of similar marks, establish property rights in the trademark itself, and all this would help reduce and maybe even cheapen trademark disputes. Despite this promised transformation of rights, the commercial community recommended the withdrawal of the bill that proposed the establishment of a nation-wide trademark legislation.
Why did the commercial community change their mind? Some of reasons are documented in letters exchanged between the Governor General of India in Council and Secretary of State for India, London between 1903 and 1909. During this period, the Cutler’s Company of Sheffield and the Association of Chamber of Commerce of UK urged that a legislation should be undertaken in India, along the lines of the English statute. This prompted the London office to refer the matter to the India office and the local chambers of commerce for their opinions. The Indian commercial community had quickly realised that such a law would be positively disadvantageous to them and resisted its passage. Such a law was inherently international in character and its implementation created uncertainties regarding rights of Indian traders and merchants.
While Indian manufacturing was on the rise, British made goods (especially cotton and cloth) dominated the Indian bazaars. During this period, it appears that separation between production and distribution had emerged in England. Many British firms were still too small to engage in both manufacture and distribution of their products. Therefore, independent merchants were engaged for distribution. Merchants either used their own trademarks or sometimes continued to use the same mark as the manufacturer. It appears that the same mark could be owned by one person in England and by another in India (presumably a merchant). There was therefore uncertainty on how English trademarks would be registered in India. Would they be deemed to be registered in India as a matter of course or would they have to be re-registered? Neither option seemed viable. If they were automatically considered to be registered, this would create conflicting rights in India. The second option of re-registration of English trademarks was also considered unviable. This process would be expensive and would require addressing complicated questions regarding priority of user. Further, from an implementation perspective, it was observed that no expert staff was available in India to scrutinise applications and the expenditure would be considerable.
The other solution of Indian trademarks being registered and governed by the English statute was also rejected. The fear was that most Indian trademarks, however well-known in the Indian market, were not distinctive enough to qualify as ‘trademarks’ as defined under the English statue and would therefore be refused registration. Any distinctive element, if added to the trademark, would destroy its identity and therefore deplete its value.
Further, special difficulties were highlighted in the cotton and cloth markets. There had emerged multiple brands with only small differences between each. Such a market would not fit well within a registration system that was intended to create exclusive property rights for unique marks that did not overlap. It would therefore be complicated and expensive to include this class of goods within a system of registration.
There was also growing concern that use based protection granted to unregistered trademarks would be abolished. Similar concerns and confusion prevailed in England after the passage of 1875 Act. This matter was put to rest only in 1905 when the law in England was amended to clarify that unregistered trademarks would continue to be protected under common law.
The requirement of such a system in India was also questioned. It was observed that England would benefit from such a system as the right of ownership of the original mark was the most difficult question that came up and registration was of great value to facilitate proof of title. The situation in India was very different. It was argued that the question of ownership of the original mark was rarely raised. The primary concern in India was whether or not the mark in question was an imitation of the original mark. This was a question of fact, to be decided on a case to case basis, on the common law principles of likelihood of confusion. A system of registration was considered to be of no service for this.
Questions regarding the adoption of a registration system continued to be ventilated in the country for several years. By 1883, trademarks had been classified as industrial property and a multilateral treaty for the protection of industrial property had been signed. Surprisingly, despite the pressure, the commercial and mercantile community did not change their opinion for a very long time. They permitted the passage of the Merchandise Marks Act, 1889 that amended trademark provisions of the Indian Penal Code. With this legislation, trademarks registered in England were protected in India against fraudulent application and use. However, since there was no central registration system, rights to a trade mark continued to be acquired only through use till as late as 1940. The next and final part of this post will attempt to analyse the changes that may have triggered the requirement and final passage of a comprehensive trademarks legislation in India.
*References
The Annual Report of the Millowners Association Bombay, 1909 annexes copies of the correspondence between the Indian and London offices on the subject of trademark registration (here)
