Indian Trademark Law Vs. The US And The UK

If you have ever searched for Trademark registration online in India and the United States, you would’ve likely come across astonishing differences. Considering the relative newness of the laws, one would assume that the rules and guidelines would be similar across the world. But that is far from the truth, each country has a trademark law, but each utilises a different system. In this article, we take a look at the similarities and differences in trademark protection of the US, European Union, and India.

• India employs the Trademarks Act of 1999 for trademark protection.
• The United States employs the federal Lanham Act of 1946 to provide trademark legislation.
• The European Union employs the Community Trademark Regulation set in December 1993 along with the

Trademarks Directive of 2008. In the EU, both the national law of the member states and the trademark law of the Union protect trademarks.

The objective of each law of each country is the same – to protect the trademark, but the process of it and concept may differ from nation to nation.

Registration And First To Use Difference In Trademark Law

• To acquire a trademark in India, registration is necessary. A mark which has not yet been put to use can be registered here. It is done under the “proposed to be used” category. If the trademark needs to be rectified, it can only be done if a 3rd party puts forward an objection. India doesn’t require the trademark owner to prove that the registered mark has been in use to maintain the registration.
• In the US, a mark can only be registered if it has already been put to use. The use can be in trade between the United States and another country or within the states of the US. EU has registration rules similar to India.
• The trademark law in India utilises the first to use method. The use is not limited to the country. It can be anywhere on the planet, but it should have ‘a transborder reputation’ in India. An example is the Playboy magazine. While the magazine itself is banned in the nation, the company argued that the global ads had built a reputation in India of Playboy which was held valid.
• In the EU, to trademark a product or service proof of established goodwill among real consumers in the concerned country is necessary.
• In the US, to create a trademark, general use within the country is required or trade between the US and foreign nation.

Dilution, Opposition and Enforcement Variations In The Laws

• India recognises the concept of dilution clearly which is why the leading brands of the world with known trademarks such as Ford, Apple, and Cartier have won pass-off actions against cases where similar (or identical) marks were utilised on unlike goods.
• In EU, popularity is not needed, but the trademark should be recognised by a considerable portion of the public concerning item or service the mark is put on.
• The US allows for dilution action by owners of trademarks that are “distinctive and famous”.
• To file a trademark opposition, India gives four months from the actual date the mark is advertised in the journal.
• The US, on the other hand, allows for thirty days from the day the mark is advertised in the Gazette.
• The EU offers three months from the day the CTM application is published.

The enforcement of the law is very similar in India, the US, and the EU. The Registrar of Trademark is used for all proceedings. Any appeal is set under the technical and judicial member of the IPAB. The process is similar to the one in law courts just the time taken is smaller.

We hope that the writeup provided a somewhat basic understanding of the difference and some similarities between the trademark laws of the three countries.