This article is written by
. This is an exhaustive article that covers a thorough analysis of Section 122 of the Trade Marks Act, 1999 which carves out an exception in the whole Act. This article deals with the scope of this provision in relation to other provisions of the Act and a few important and recent judgements that deal with this provision.
is a comprehensive legislation covering the registration, enforcement and protection of trademarks in India. It guarantees and affords protection to individuals and entities acting in good faith while performing duties under this Act. This protection has been clearly mentioned in (Miscellaneous) under of the Trade Marks Act, 1999.
There was no such provision mentioned under the previous Act, the which had been repealed. The term “good faith” is not defined anywhere in the Act. However, the same can be understood through various judicial pronouncements as discussed below.
It acts as a shield against the legal proceedings for all the acts performed or intended to be performed in good faith by any individual under this Act. It protects not only the government officials or employees of the government but every individual who is performing any act in good faith, whether it be the registrar or the applicant under this Act.
The Section reads as, “No suit or other legal proceedings shall lie against any person in respect of anything which is in good faith done or intended to be done in pursuance of this Act.” In simple language, it means that if a person is doing anything in good faith or with a bonafide intention, he cannot be held liable for the same under this Act.
The language of this provision provides broad immunity to all those persons who are performing their duties in good faith under the Act. It includes all the government officials and employees who are involved in the administration and enforcement of the trademark laws.
It further includes all the authorised agents who are acting under the directions of the government. For instance, the registrar cannot be held liable if he is acting in a bonafide manner while registering the trademark and he will be given the protection under this provision.
Furthermore, actions must be carried out with honest intention, good faith and without any malice or the intention to defraud or cause harm to anyone. What can be construed as “good faith” is better explained through the case laws as mentioned below.
Every provision is added in the Act to serve some purpose. Similarly, Section 122 acts as an exception in the Act to safeguard the acts done by people in good faith and thereby, protect them from the threat of legal proceedings against them. This provision serves the following purposes:
The Supreme Court in the case of noted that the protection of actions taken in good faith must be based on honesty and reasonable belief without any malice in that conduct. However, if this provision provides significant protection, it cannot be said to be absolute and thus, it also poses some limitations as discussed below.
It poses certain challenges and a few limitations in this provision are as follows:
“Good faith” is a well-established principle in legal parlance. It refers to the honesty or sincerity of intention without any malafide or defrauding intention. In this context, good faith implies that the conduct of the party regarding a trademark was honest and without any intention to infringe the rights of the real owner. There are certain case laws wherein the court has looked upon this principle for deciding while looking at the facts and circumstances of each case.
In this , the plaintiff was engaged in the business of production and marketing of soaps, toothpaste, hair oil, shampoo, moisturiser, detergent and other allied and cognate products. The predecessor of the plaintiff conceived and adopted the label of “Ghadi” in 1955 for soaps and the worldmark of “Ghadi” in 1975 in relation to other products. The plaintiff was the registered proprietor of around 70 Ghadi Trademarks in multiple classes. They have continuously and uninterruptedly used this trademark. In 2020, the plaintiff’s trademark became a well-known trademark.
The plaintiff came across the registration of the defendant’s trademark which was similar to that of the plaintiff. The plaintiff asserted that the defendant had copied the essential feature of the plaintiff’s trademark and thus infringed the registered trademark. The plaintiff filed for a permanent injunction against the defendant to restrain him from infringing and passing off identical products.
The issue raised before the Delhi High Court was as follows:
The High Court of Delhi compared both trademarks and tried to assess the similarities between the two composite trademarks. It noted that it is the cumulative effect of all the elements like colour scheme, font, etc that give shape to the commercial impression of any trademark.
The comparison in this case revealed that the defendant’s trademark had a deceptive resemblance to the trademark established by the plaintiff. It appeared to be a calculative move by the defendant to evoke the already established image of the trademark of the plaintiff among the consumers. The similarity is enough to mislead the consumers regarding the products available in the market.
The court thus concluded that the adoption of the trademark by the defendant was not in good faith and the defendant had tried to capitalise on the reputation and goodwill of the plaintiff. The suit was accordingly decreed in the favour of the plaintiff and against the defendant.
In this , the petitioner was a company, Marie Stopes International registered under the United Kingdom laws and was a part of the legacy of Ms. Marie Stopes. The petitioner has been using the trademark “Marie Stopes” since 1976 in the UK. The petitioner licensed the use of its trademark to the respondent, Parivar Seva Sanstha (PSS) in 1978.
The petitioner later got to know that the respondent had applied for registration of that trademark in its own name. The petitioner terminated the agreement in 2003 and called the defendant to desist from using its trademark. The petitioner had applied before the Delhi High Court for the removal or cancellation of the defendant’s trademark. The petitioner asserted that since the respondent was only permitted to use the trademark and thus was wrong in registering the same in its own name.
Hence, as per the petitioner, the use of the trademark by the plaintiff was malafide and not in good faith and the registration should be cancelled. On the other hand, the respondent argued that the petitioner had known the use and registration of the trademark for more than three decades and it was not done with a malafide intention and the petition is liable to be dismissed for the reason of acquiescence and delay.
The issue raised before the Delhi High Court was as follows:
The Delhi High Court noted that the agreement of 1978 was duly executed between both the parties and the same was binding on the respondent, Parivar Seva Sanstha. It was further noted that the respondent was not given any independent right to use that trademark but it was permitted only in terms of that agreement of 1978.
The court held the petitioner to be the prior user of the trademark. Since the use of the trademark was terminated by the petitioner, the respondent had no right to use the Marie Stopes trademark and the subsequent use of the trademark amounted to passing off. The court also held that the grant of registration in favour of the respondent was in violation of provisions of the Act and is liable to be cancelled.
The registration by the respondent in the name of “PSS and Marie Stopes” was made by misrepresentation, with malafide intention and not in good faith. Thus, the trademark was held to be adopted by the respondent dishonestly to trade upon the already established goodwill and reputation of the petitioner.
This provision has ensured that the law is applied in a manner which is fair and reasonable to all the parties. By noting the importance of good faith, the Act provided for a balanced approach to protect the interests of the trademark owners and the other parties engaged in the commercial market. This will further promote an equitable approach and contribute to the enforcement of the trademark law in India through evolving judicial interpretation on this subject and the nuanced scope and applicability of this protection.
A trademark is a type of intellectual property which can be in the form of a word, phrase, design, symbol or any combination of these that identifies a company’s goods or services. For example- the Nike swoosh logo with the stylized word “Nike”. It is defined under Section of the Trade Marks Act, 1999.
Before the Trade Marks Act, 1999, the prevailing Act was the
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Introduction
is a comprehensive legislation covering the registration, enforcement and protection of trademarks in India. It guarantees and affords protection to individuals and entities acting in good faith while performing duties under this Act. This protection has been clearly mentioned in (Miscellaneous) under of the Trade Marks Act, 1999.
There was no such provision mentioned under the previous Act, the which had been repealed. The term “good faith” is not defined anywhere in the Act. However, the same can be understood through various judicial pronouncements as discussed below.
It acts as a shield against the legal proceedings for all the acts performed or intended to be performed in good faith by any individual under this Act. It protects not only the government officials or employees of the government but every individual who is performing any act in good faith, whether it be the registrar or the applicant under this Act.
Section 122 of the Act
The Section reads as, “No suit or other legal proceedings shall lie against any person in respect of anything which is in good faith done or intended to be done in pursuance of this Act.” In simple language, it means that if a person is doing anything in good faith or with a bonafide intention, he cannot be held liable for the same under this Act.
Interpretation and Scope
The language of this provision provides broad immunity to all those persons who are performing their duties in good faith under the Act. It includes all the government officials and employees who are involved in the administration and enforcement of the trademark laws.
It further includes all the authorised agents who are acting under the directions of the government. For instance, the registrar cannot be held liable if he is acting in a bonafide manner while registering the trademark and he will be given the protection under this provision.
Furthermore, actions must be carried out with honest intention, good faith and without any malice or the intention to defraud or cause harm to anyone. What can be construed as “good faith” is better explained through the case laws as mentioned below.
Relevance of Section 122 of the Act
Every provision is added in the Act to serve some purpose. Similarly, Section 122 acts as an exception in the Act to safeguard the acts done by people in good faith and thereby, protect them from the threat of legal proceedings against them. This provision serves the following purposes:
- It ensures administrative efficiency and thereby eliminates the potential threat of legal proceedings that can hinder the efficiency of administrative actions.
- It also encourages diligent performance by eliminating the constant fear of litigation and by protecting them from legal actions for bonafide mistakes or errors.
- This provision ensures immunity for all the actions done in good faith and thus, helps foster a culture of integrity and responsibility among all public officials. It fosters confidence in them to take necessary decisions and actions without any hesitation.
The Supreme Court in the case of noted that the protection of actions taken in good faith must be based on honesty and reasonable belief without any malice in that conduct. However, if this provision provides significant protection, it cannot be said to be absolute and thus, it also poses some limitations as discussed below.
Limitations under Section 122 of Trade Marks Act, 1999
It poses certain challenges and a few limitations in this provision are as follows:
- It requires strict proof of action done in good faith. The protection through this provision only applies to actions done in good faith and if an act is done with malice or gross negligence or fraudulent intent, the same is not shielded through this provision.
- Further, it requires judicial scrutiny. Courts have to examine and determine whether the act was done in good faith in the disputed case before it. Here, the judicial oversight ensures that the Section is not misused to get shielded from the wrongful actions.
- This provision demands the need to create a balance of interests between the protection given to individuals from undue litigation and the necessity of holding them liable for genuine misconduct and malafide acts.
Relevant judgements on the element of good faith
“Good faith” is a well-established principle in legal parlance. It refers to the honesty or sincerity of intention without any malafide or defrauding intention. In this context, good faith implies that the conduct of the party regarding a trademark was honest and without any intention to infringe the rights of the real owner. There are certain case laws wherein the court has looked upon this principle for deciding while looking at the facts and circumstances of each case.
RSPL Limited vs. Agarwal Home Products (2024)
Facts of the case
In this , the plaintiff was engaged in the business of production and marketing of soaps, toothpaste, hair oil, shampoo, moisturiser, detergent and other allied and cognate products. The predecessor of the plaintiff conceived and adopted the label of “Ghadi” in 1955 for soaps and the worldmark of “Ghadi” in 1975 in relation to other products. The plaintiff was the registered proprietor of around 70 Ghadi Trademarks in multiple classes. They have continuously and uninterruptedly used this trademark. In 2020, the plaintiff’s trademark became a well-known trademark.
The plaintiff came across the registration of the defendant’s trademark which was similar to that of the plaintiff. The plaintiff asserted that the defendant had copied the essential feature of the plaintiff’s trademark and thus infringed the registered trademark. The plaintiff filed for a permanent injunction against the defendant to restrain him from infringing and passing off identical products.
Issue raised
The issue raised before the Delhi High Court was as follows:
- Whether the defendant infringed the trademark of the plaintiff by adopting a similar trademark for similar kinds of goods or acted in good faith while adopting such a trademark?
Judgement given
The High Court of Delhi compared both trademarks and tried to assess the similarities between the two composite trademarks. It noted that it is the cumulative effect of all the elements like colour scheme, font, etc that give shape to the commercial impression of any trademark.
The comparison in this case revealed that the defendant’s trademark had a deceptive resemblance to the trademark established by the plaintiff. It appeared to be a calculative move by the defendant to evoke the already established image of the trademark of the plaintiff among the consumers. The similarity is enough to mislead the consumers regarding the products available in the market.
The court thus concluded that the adoption of the trademark by the defendant was not in good faith and the defendant had tried to capitalise on the reputation and goodwill of the plaintiff. The suit was accordingly decreed in the favour of the plaintiff and against the defendant.
Marie Stopes International vs. Parivar Seva Santha (2023)
Facts of the case
In this , the petitioner was a company, Marie Stopes International registered under the United Kingdom laws and was a part of the legacy of Ms. Marie Stopes. The petitioner has been using the trademark “Marie Stopes” since 1976 in the UK. The petitioner licensed the use of its trademark to the respondent, Parivar Seva Sanstha (PSS) in 1978.
The petitioner later got to know that the respondent had applied for registration of that trademark in its own name. The petitioner terminated the agreement in 2003 and called the defendant to desist from using its trademark. The petitioner had applied before the Delhi High Court for the removal or cancellation of the defendant’s trademark. The petitioner asserted that since the respondent was only permitted to use the trademark and thus was wrong in registering the same in its own name.
Hence, as per the petitioner, the use of the trademark by the plaintiff was malafide and not in good faith and the registration should be cancelled. On the other hand, the respondent argued that the petitioner had known the use and registration of the trademark for more than three decades and it was not done with a malafide intention and the petition is liable to be dismissed for the reason of acquiescence and delay.
Issue raised
The issue raised before the Delhi High Court was as follows:
- Whether the use and registration of the trademark by the respondent was in good faith or is it liable to be cancelled for infringing the trademark of the petitioner?
Judgement given
The Delhi High Court noted that the agreement of 1978 was duly executed between both the parties and the same was binding on the respondent, Parivar Seva Sanstha. It was further noted that the respondent was not given any independent right to use that trademark but it was permitted only in terms of that agreement of 1978.
The court held the petitioner to be the prior user of the trademark. Since the use of the trademark was terminated by the petitioner, the respondent had no right to use the Marie Stopes trademark and the subsequent use of the trademark amounted to passing off. The court also held that the grant of registration in favour of the respondent was in violation of provisions of the Act and is liable to be cancelled.
The registration by the respondent in the name of “PSS and Marie Stopes” was made by misrepresentation, with malafide intention and not in good faith. Thus, the trademark was held to be adopted by the respondent dishonestly to trade upon the already established goodwill and reputation of the petitioner.
Conclusion
This provision has ensured that the law is applied in a manner which is fair and reasonable to all the parties. By noting the importance of good faith, the Act provided for a balanced approach to protect the interests of the trademark owners and the other parties engaged in the commercial market. This will further promote an equitable approach and contribute to the enforcement of the trademark law in India through evolving judicial interpretation on this subject and the nuanced scope and applicability of this protection.
Frequently Asked Questions (FAQs)
What is a trademark?
A trademark is a type of intellectual property which can be in the form of a word, phrase, design, symbol or any combination of these that identifies a company’s goods or services. For example- the Nike swoosh logo with the stylized word “Nike”. It is defined under Section of the Trade Marks Act, 1999.
What was the prevailing Act before the Trade Marks Act, 1999?
Before the Trade Marks Act, 1999, the prevailing Act was the
References
- P. Narayanan, 2018, Intellectual Property Law (Third edition).
- P. Narayanan, 2017, Law of TradeMarks and Passing off.
Students of regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.
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