Preserving the distinctiveness of corporate marks. An analysis of legal and judicial approaches to well known trademark in India
| DOI | https://doi.org/10.1108/JFC-05-2017-0040 |
| Date | 02 July 2018 |
| Pages | 734-749 |
| Published date | 02 July 2018 |
| Author | Afroza Begum |
| Subject Matter | Accounting & Finance,Financial risk/company failure,Financial crime |
Preserving the distinctiveness of
corporate marks
An analysis of legal and judicial approaches to
well known trademark in India
Afroza Begum
University of Wollongong, Wollongong, Australia
Abstract
Purpose –This paper aimsto investigate the Indian legal and judicial approachesto well-known trademark
(WT) by placing special focus on the way the judiciaryhas striven to foster the regulatory goal of defending
the distinctivenessof WT.
Design/methodology/approach –The research is based on primary and secondary resources;
especially, the paper critically examines the central piece of legislation relevant to WT and analyses and
comparesa number of importantjudicial decisions of India.
Findings –Despite some limitations,the judicial initiatives reflect an impressive progressiontowards WT,
and given the contemporary commercial imperatives backed up by technological advances, the
interconnectednessof economies and global corporisation,such a progression is indispensable.
Research limitations/implications –The research involves only the legal aspects of WT; therefore,
the social and economicimplication is beyond the scope of it.
Practical implications –Even though the legal and judicial attemptsin India have raised an inevitable
tension between differentcompeting claims and are in some instances intensely debated, a reviewof existing
resources evidences a series of effective methods and practices where a balance can sensibly be drawn
between thoseclaims.
Keywords India, Law
Paper type Research paper
1. Introduction
With the advent of globalised corporatebusiness and technological innovation, protection of
well-known trademark (WT) has become an important legal issue in India as elsewhere in
the world. Drastic changes in “Swadeshi”(self-reliance) policies in late 1980s transformed
India’s“closed-economy”into a more liberalised market (Health, 2003), and prompted the
enactment of a range of legislation designed to recognise and stimulate, inter alia, the
modern concept of intellectualproperty. As part of the process, the Trade Mark Act (the Act)
was enacted in 1999 by replacing earlierTrade and Merchandise Marks Act 1958 in which
protection of WT is a firmly entrenchedlegal right.
Despite the fact that “transborder reputation”of the trademark received important
recognition in India via common law,WT has gained statutory protection for the first time
through the passage of the Act. The Act marks a significant advancement toward
the preservation of WT by introducing a range of provisions that fundamentally transcend
the traditional standards of determining and enforcing famous marks. Subsequently, these
provisions received authoritative judicial expositions, and precedents in the past four
decades provide a strong basis for claiming that the Indian courts have developed a very
persuasive and progressive approachto WT. Even though these legal and judicial attempts
JFC
25,3
734
Journalof Financial Crime
Vol.25 No. 3, 2018
pp. 734-749
© Emerald Publishing Limited
1359-0790
DOI 10.1108/JFC-05-2017-0040
The current issue and full text archive of this journal is available on Emerald Insight at:
www.emeraldinsight.com/1359-0790.htm
have raised an inevitable tension between different competing claims and are in some
instances intensely debated, a reviewof existing resources evidences of a series of effective
methods and practices wherea balance can sensibly be drawn between those claims.
This paper aims to investigate the adequacy and appropriateness of the Act by placing
special focus on the way the judiciary has striven to advance the regulatory goal of
protecting WT in India. I argue that despite limitations, India’s endorsement of positive
features (to the Act) and proactive roles of the judiciary reflect a progressivedevelopment of
WT and are indicative of its sincerecommitment to international obligations.
Section 2 begins with a brief exploration of conceptual issues of WT to provide a
theoretical backgroundof the paper. Relevant elements of the Act are examined in Section 3.
Section 4 evaluates the way the judiciary of India interprets and applies legal provisionsto
protect WT, while Section 5 concludesthe paper.
2. Well-known trademarks and its fundamentals
WT entails a renowned symbolused to identify a specific product which is capable of being
distinguished from others based on its distinctive features and public recognition. WT has
been recognised as the most powerful and productive assets owned by modern business[1].
It has its genesis in a term “reputation”and gradually received improved protection for its
unique characteristics and demands[2]. The standard of protection varies depending on its
distinctiveness; the more distinctive or unique the mark is, the greater its needs for
protection against vitiation or dissociation from the particular product in connection with
which it has been used[3]. This feature attracts consumers’endorsement and choice by
identifying and differentiatinga particular product from other products.
In essence, WT displays the quality and ability of the product or services to sustain
consumer’s satisfaction and confidence (Naser, 2008, p. 100). It is the strength and genuine
“selling power”of the productthat demonstrates not only the product’s capacity to influence
customer’s choice but also representsan indivisible connection between the product and the
owner. As being identifier of the quality of the goods it makes the products and owners
renowned (Hill, 2009).
However, there have been disagreementson issues as to whether the quality or the origin
function should get prominence in dealing with WT. Some commentators argued that WT
primarily aims to identify the origins of the product and to value the effort and investment
of the owner (Malliaris, 2010;Naser, 2008, pp. 100-101). WT reflects an inseparable link
between the products and the owner. The quality function differs from the origin because
the latter is a requirement in all trademarks, whereas the existence of the former is not
necessary (Malliaris, 2010;Naser, 2008, pp. 100-101). Schechter refuted this observation by
claiming that globalisation of trade and the way products are manufactured have made it
less important and impracticable for the customer to know the origin of the goods (Naser,
2008, p. 104). Regardless of this disparity, there has been consensus about a fundamental
point is that WT should deserve extra protectionfor obvious reasons. Because of its special
characteristics, WT is more vulnerable to abuse and misrepresentation that necessitate
stronger protection, and providing greater protection is desirable to combat trafficking in
WT and to incentivise the owner.
Also, the general idea of traditional legal protection has not only been dominated by the
above considerations to uphold the owner’s right but also to protect consumers from
deception and confusion and ensure their gratification (Naser, 2008, pp. 104-105). A mark
has been prohibited from registration if there exist likelihood of confusion about the earlier
marks.
Legal and
judicial
approaches
735
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