This article is written by Shreya Jad. This article exhaustively covers Section 124 of the Trade Marks Act, 1999, which allows a stay on the ongoing proceedings in a suit for infringement of a trade mark in case the validity of a registered trade mark is brought into question. The article also covers the nuances of the defence taken by either party and the correlation of Section 124 with other relevant provisions of the Trade Marks Act, 1999, which deal with the invalid registration of a trade mark. For better understanding, relevant case laws have also been discussed.
Introduction
The primary objective of a trade mark is to act as an identifier of a brand/business. This may be done using words, designs, symbols, phrases, packaging, etc., or a combination of all of them.
Section 2(1)(zb) of the Trade Marks Act, 1999 (hereinafter referred to as the Trade Marks Act) defines a trade mark as a graphically represented mark, which is used to identify the goods or services provided by a specific person, and/or is capable of distinguishing the goods and services provided by one person from others. Such a mark is graphically represented using different colors, shapes, symbols, packaging, or a combination thereof.
The essential conditions for identifying and using a trade mark are as follows:
- The mark can be reproduced on paper, that is, it can be represented graphically.
- The mark is distinguishable.
- The mark creates a connection between the goods/services it is representing and the audience viewing the mark.
The sub-classification of trade marks has also widened the scope of protection offered to different products. Service marks, for instance, represent the services being offered by a company and cannot be used or replicated by any other existing company (ex: FedEx). In addition to this, word marks protect the textual representation of the trade mark, offering a wide range of protection (ex: iPhone). Device marks protect the visual and artistic representation of a trade mark, using colors, fonts, and drawings, and also include the packaging of a product (ex: the packaging of Orion’s Choco Pie).
A trade mark is generally protected from infringement by others through its continuous use and registration. Most trade mark laws across different jurisdictions combine both forms of protection, but complete legal protection of a trade mark is only guaranteed by way of its registration. In India, the process of registration of a trade mark follows the timeline and process laid down in Section 18 (application for registration), Section 19 (withdrawal of application), Section 20 (advertisement of application), Section 21 (opposition to registration), Section 22 (correction and amendment), and Section 23 (registration) of the Trade Marks Act. Once a trade mark has been registered in the Trade Marks Register, the registration remains valid for a period of ten years from the date of registration, after which the proprietor shall have to renew the registration of the trade mark.
