CHAPTER- 1

INTRODUCTION
 CHAPTER I

INTRODUCTION

1.1 General

The term “Intellectual Property” refers to a loose cluster of legal doctrines that regulate
the use of different sorts of ideas and insignia. Intellectual Property denotes the rights
over a tangible object of the person whose mental efforts created it. There is no
Intellectual Property in mere ideas. Only the particular expression of an idea is protected.
Intellectual Property provides rights of ownership in the product created by human
intellect but not in the product itself. Intellectual Property Rights grant the holder the
ability to stop others from doing something, which is a negative right but not necessarily a
right to do it himself, a positive right. However, Intellectual Property also gives two
different rights- one positive and one negative. The positive one is the right to do certain
things in relation to the subject matter, i.e. the owner of the right is entitled to
commercially exploit the idea he expressed previously. The negative right entitles its
owner to prevent others from doing what his positive right permits him to do. The
corollary of this right is the duty1 imposed on others not to infringe. Subsequently, the
owner of the right enjoys the privilege to exploit the idea in a monopoly position.2

1
Elizabeth Verkey, Intellectual Property Law and Practice 1 (Eastern Book Company, Lucknow, 1st edn.,
2015).
2
Id., at 2.
 Introduction

The High Court of Delhi, in the case of American Express Bank Ltd. v. Ms. Priya Puri3,
opined that the term “Intellectual Property” describes works of human creativity that are
protected by various national laws and international treaties in a fashion similar to real
property (e.g. land). Intellectual Property includes Copyrights, Patents, Trademarks, Trade
Secrets, Design Rights, Logos and other intangible industrial or commercial property.4

According to WIPO5, the rights granted to individuals over their creative works are
known as Intellectual Property Rights (IPRs). For a set amount of time, they often grant
the inventor the sole right to use his creation. Thus, the word “Intellectual” used in the
phrase “Intellectual Property” denotes the involvement of human intellectuals, capital,
labour, etc.

IPRs can be classified into two main categories:

(i) Copyright: The legal definition of Copyright has been given under section 14 of the
Copyright Act, 1957.6 In simple words, it refers to the legal right of the owner of the
literary, dramatic work, musical work, computer program, artistic work to reproduce
it or make copies or, use it in any manner as prescribed under the Copyright Act,
1957.7
(ii) Industrial Property: It includes Patent, Trademarks, Designs, Geographical
Indications of Goods, Trade Secret etc.8

Trademarks are an essential part of the IPR, which is under the head of industrial
property. The origin of the Trademark is the result of industrialization and large-scale
production of goods. By the Industrial Revolution, a large-scale competitive market had
emerged, and because of that reason, all were concerned about the protection of their
trademark, which is a symbol for identifying products. That symbol belongs to a
particular brand, and the reputation of production is attached to that particular symbol. If
any other person, except the owner of that company who made that symbol for

3
American Express Bank Ltd. v. Ms. Priya Puri, (2006) Del. 540, available at: indiankanoon.org (last visited on
July 29, 2023).
4
Dr. Rajeev Babel, Intellectual Property Rights in India 1.1 (Bloomsbury Publishing India Pvt. Ltd., New
Delhi, 1st edn., 2022).
5
The World Intellectual Property Organization, 1967, available at: wipo.int (last visited on January 31, 2024).
6
The Copyright Act, 1957 (Act 14 of 1957), s. 14.
7
The Copyright Act, 1957 (Act 14 of 1957).
8
Supra note 4 at 1.1.

2
 Introduction

identifying his goods, copies it, would amount to infringement. That concept gave birth to
Trademark and its protection from infringement.

Intellectual Property Rights (IPR) encompass a diverse range of legal frameworks

designed to protect intangible assets, fostering innovation, creativity, and economic
growth. Among these, trademarks serve as vital tools for businesses to distinguish their
products or services from competitors, thereby building brand recognition and consumer
trust. Within the realm of trademarks, the utilization of distinctive colours as brand
identifiers has emerged as a notable strategy, adding a layer of uniqueness and recognition
to a company‟s identity.

However, the intersection of colour trademarks and traditional trademark law presents
both opportunities and challenges. While conventional trademarks primarily rely on
words, logos, or symbols to establish distinctiveness, colour trademarks introduce a novel
dimension, where specific hues or combinations thereof are utilized to denote a particular
source of goods or services. The registration and protection of colour trademarks entail
meticulous scrutiny, requiring applicants to demonstrate acquired distinctiveness or
inherent distinctiveness in certain jurisdictions, thus underscoring the evolving nature of
trademark law to adapt new branding strategies.

India, since time immemorial, has been rich in the field of IPR, but there were no proper
provisions or enactments related to the protection of IPR and related rights. Due to a lack
of resources and proper awareness with respect to trademark protection, many countries
took advantage of this and copied the ideas of India and used those ideas for their own
benefit.9 “The necessity for protecting the goodwill and reputation of a trademark was,
therefore, felt in all the nations, which led to the adoption of trademark law everywhere.
At the international level, the first multilateral convention, i.e. the Paris Convention for
the Protection of Industrial Property, was adopted in 1883.”10

The object behind the enactment of the Trade Marks Act, 199911 was to amend and
consolidate the law relating to the trademarks. Prior to this Act of 199912, the first statute

9
Available at: rgnul.ac.in (last visited on January 31, 2024).
10
V K Ahuja, Intellectual Property Rights in India, Volume I 447 (Lexis Nexis Publication, Nagpur, 1st edn.,
2009).
11
The Trade Marks Act, 1999 (Act No. 47 of 1999).
12
The Trade Marks Act, 1999 (Act No. 47 of 1999).

3
 Introduction

on the subject of trademarks was the Indian Trade Marks Act, 1940. 13 Prior to the Act of
194014 the Courts were taking reference to the General Clauses Act, 1897.15 After the
independence, The Trade and Merchandise Marks Act, 195816 was enacted, which
repealed the Indian Merchandise Marks Act, 1889 (4 of 1889) and the Trade Marks Act,
1940 (5 of 1940).17

In the year 1994, India became a member of the TRIPS (Trade Related Aspect of
Intellectual Property) agreement because of its previous membership in the WTO (World
Trade Organization). India was facing Trademark infringement problems not only at the
national level but also at the international level. Thus, India became a member of WTO,
and as a member of WTO, India is bound to obey the provisions of the TRIPS Agreement;
apart from that, it was an obligation upon India to it shall incorporate the provision of
protection of trademark in her Municipal Law.

In India, the first legislation with respect to trademarks brought into the statute book was
the Indian Merchandise Marks Act, 1889. This Act was followed by the Trade Marks Act,
1940. Prior to the enactment of the Trade Marks Act, 1940, the disputes or problems,
especially18 those relating to the enactment of trademarks or passing off were decided in
the light of section 54 of the Specific Relief Act, 187719, while the registration-related
problems were tackled by obtaining a declaration as to ownership of a trademark under
the India Registration Act, 1908.20 The Trademarks Act, 1940, introduced the system of
registration of trademarks and provided statutory protection to registered trademarks. In
1958, the Trade and Merchandise Marks Act was adopted, which repealed the Indian
Merchandise Marks Act, 1889 and the Trade Marks Act, 1940 and also provided under
Section 129 that any document declaring or purporting to declare the ownership or title of
a person to a trademark other than a registered trademark was not to be registered under
the Indian Registration Act, 1908.

13
The Trade Marks Act, 1940 (Act No. V of 1940).
14
The Trade Marks Act, 1940 (Act No. V of 1940).
15
The General Clauses Act, 1897 (Act No. 10 of 1897).
16
The Trade and Merchandise Marks Act, 1958 (Act No. 43 of 1958), available at: indiankanoon.org (last
visited on March 17, 2023).
17
Dr. Rajeev Babel, Intellectual Property Rights in India 5.1 (Bloomsbury Publishing India Pvt. Ltd., New
Delhi, 1st edn., 2022).
18
Available at: pdfcoffee.com (last visited on January 31, 2024).
19
The Specific Relief Act, 1877 (Act 1 of 1877) s. 54.
20
The India Registration Act, 1908 (Act 16 of 1908).

4
 Introduction

The 1958 Act did well for four decades. However, a need was felt to make a
comprehensive review of the 1958 Act in view of the developments. Further, as India
became a party to the Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS Agreement),21 it became mandatory for us to bring our Trade Marks law in
conformity with the provisions of the TRIPS Agreement. Accordingly, the Trade Marks
Act, 1999, was adopted, which came into force on September 15, 2003. India also became
a party to the Paris Convention for the Protection of Industrial Property, 1883. The 1999
Act repealed the 1958 Act. The Trade Marks Act, 1999, is in conformity with both
international treaties. Apart from the 1999 Act, which provides for statutory remedies, the
remedies for passing off are also available for unregistered trademarks under common
law.22 The 1999 Act added many new dimensions to the field of Trademark Law, and
“Colour Trademark” is one of them.

In the case of Dau Dayal v. The State of Uttar Pradesh23 the Hon‟ble Supreme Court of
India has discussed the object behind the enactment of the Trade Marks Act. The court
said that the object of the Trade Marks Act24 is to protect the rights of persons who
manufacture and sell goods with distinct trademarks against invasion by other persons
passing off their goods fraudulently and with counterfeit trademarks as those of the
manufacturers. Usually, the remedy for such infringement is by action in Civil courts.25
However, in view of the delay, which is incidental to civil proceedings, and the great
injustice which might result if the rights of manufacturers are not promptly protected, the
law gives them the right to take the matter before the Criminal Courts and prosecute the
offenders, so as to enable them effectively, and speedily to vindicate their rights.26

Moreover, the advent of the internet and digital commerce has catalysed trademark-
domain name disputes, adding complexity to the trademark landscape. With the
proliferation of online platforms and the ease of domain registration, conflicts often arise
when domain names incorporate or infringe upon established trademarks, leading to
disputes over rightful ownership and potential dilution of brand equity. The resolution of

21
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement),1994, available at:
WTO.org (last visited on January 31, 2024).
22
Available at: pdfcoffee.com (last visited on January 31, 2024).
23
Dau Dayal v. The State of Uttar Pradesh, AIR 1959 SC 433, available at: indiankanoon.org (last visited on
January 31, 2024).
24
The Trade Marks Act, 1999 (Act No. 47 of 1999).
25
Dr. Rajeev Babel, Intellectual Property Rights in India 5.5 (Bloomsbury Publishing India Pvt. Ltd., New Del-
hi, 1st edn., 2022).
26
Available at: www.icsi.edu (last visited on January 31, 2024).

5
 Introduction

these disputes necessitates a nuanced understanding and application of trademark

principles within the digital sphere, reflecting the ongoing evolution of trademark law in
response to technological advancements.

In the rapidly evolving technological era, trademark law faces emerging difficulties
stemming from novel branding practices, digital innovation, and global
interconnectedness. From the rise of e-commerce platforms and social media influencers
to the increasing prominence of virtual goods and augmented reality experiences, the
traditional boundaries of trademark protection are continually tested. As businesses
navigate these challenges, the role of trademark law in safeguarding Intellectual Property
Rights and promoting fair competition remains paramount, underscoring the need for
agile legal frameworks that can effectively address the complexities of modern commerce
while upholding the principles of innovation and consumer protection.

In addition to technological problems, people face ground-related problems and obstacles

when they try to register a trademark. Many are even incredibly confused and uninformed
about the legal rights and remedies available to protect a registered trademark and a well-
known trademark.

The present study deals with the above-given issues and challenges and tries to provide
better solutions. The researcher has explored the emerging field of colour trademarks by
examining prominent legal rulings at both National and International levels, particularly
emphasising thorough discussions of leading Indian cases. Additionally, the researcher
has utilized various primary and secondary sources to enrich the analysis. As far as the
plan of study is concerned, the present thesis is divided into seven main chapters. Chapter
I, which is the present chapter, is the introduction, attempting to tell what, why and how
of the present research; Chapter II presents an analysis of the evolution of trademark law
in India, and Chapter III focuses on the conceptual framework of colour trademark and its
justification, Chapter IV deals with the global aspects of colour trademark and its
regulations and policies, Chapter V focuses upon the conditions and requisites of
registration and refusal of trademark, Chapter VI deals with the present situation of
trademark and the technological challenges of the trademark which has been found on the
basis of both empirical data collection and analysis of present data of different sources.
This includes identifying the problems that people face while registering and determining

6
 Introduction

remedies against infringement. The last Chapter is the conclusion, which is Chapter VII,
which summarizes the findings of the study and offers workable suggestions.

1.2 Motivation for the Present Study

Prior to pursuing the research, the researcher had some conversations with people who
generally related to trademark-related issues in any way, viz, infringement-related issues,
registration-related issues and many more. They were very confused regarding their rights
and liabilities related to their trademark and the emerging difficulties of trademarks,
which are the outcome of technology. Trademark registration and infringement are very
complicated in themselves, but the complexities are enhanced when these issues are
related to some specific type of trademark, i.e., colour trademark. So, in the present
research, the researcher tried to help the trademark holders, students, researchers, etc., to
identify what kind of trademark issues they are facing and what possible remedies for
that.

1.3 Significance of the Study

The protection of Intellectual Property is as necessary as the other tangible property

because it is as valuable as the tangible one, even sometimes more valuable than the other
tangible property. With the emergence of new technology, the global became the local.
Technological development is necessary for overall growth, but as we all know, a coin has
two faces. With the developmental face of technology, there are some complexities and
challenges which are another side of technological development, viz; trademark-domain
name disputes, infringement of trademark globally etc., the present research will be a
helping hand for those who are eager to find the solution for above-mentioned issues and
want to know the public opinion on them.

1.4 Literature Review

The following section discusses the available literature and attempts to provide
information about what the previous researchers contributed to the above-mentioned

7
 Introduction

research area. It involves analysis of books, reports and law articles. This part, on the
basis of that analysis, would attempt to find out what has not been covered in the existing
literature and would also justify the thesis.

1.4.1 Review of Books

 Elizabeth Verkey‟s book “Intellectual Property Law and Practice” 27 would be a

helping hand in understanding the basic concept of Intellectual Property. This
book would also be helpful in litigating infringement-related cases of Intellectual
Property Rights as it throws light on precedents from jurisdictions across the
world. A user of this book will be able to grasp the complexity of the IP laws,
including Trademark law. Apart from that, helpful guidance can be obtained
regarding the laws of procedure in infringement cases from the chapter on „Indian
Litigation Practice‟ in this book.

 Dr. Rajeev Babel, in his book “Intellectual Property Rights in India”28 covers the
introduction of IPR and discusses the National IPR Policy, which was adopted in
May 2016. The National IPR Policy was framed keeping in view certain
objectives and how far these have been implemented.

It also covers the international perspective of IPR. Besides the International

Institutions like WIPO, ARIPO29, and OAPI, some important Conventions and
Treaties like the Paris Convention, Berne Convention, WIPO Copyright Treaty,
Patent Cooperation Treaty, Budapest Treaty, Madrid Agreement, Hague
Agreement, Trademark Treaty, Patent Law Treaty, NICE Classification30,
Convention on Phonograms, Brussels Convention, WIPO Performances and
Phonograms Treaty, Convention on New Varieties of Plants, & Marrakesh Treaty
have been discussed. The Trade-Related Aspects of Intellectual Property Rights
(TRIPS) have been discussed in detail.

27
Elizabeth Verkey, Intellectual Property Law and Practice 5 (Eastern Book Company, Lucknow, 1st edn.,
2015).
28
Dr. Rajeev Babel, Intellectual Property Rights in India 5.6 (Bloomsbury Publishing India Pvt. Ltd., New
Delhi, 1st edn., 2022).
29
African Regional Intellectual Property Organization, 1976, available at: wipo.int (last visited on January 31,
2024).
30
The World Intellectual Property Organization (WIPO) provides a standardized classification system called the
Nice Classification for goods and services to register trademarks. A general list of the trademark classes as per
the Nice Classification is attached in appendix-C of the present thesis, available at: www.wipo.int (last visited
on January 31, 2024).

8
 Introduction

Chapter 5 of the present book contains the Trade Marks Act, 199931. Notes, Rules,
Forms Prescribed, and the judicial pronouncements of various courts were
extremely useful to me. The Trade Marks Act, 199932 is in harmony with The
Paris Convention for the Protection of Industrial Property33 and TRIPS
Agreement34, of which India is a signatory. Articles 15 to 21 of Section 2 of Part
II of the TRIPS Agreement35 deals with trademarks.

 V K Ahuja‟s book “Intellectual Property Rights in India, Volume I” 36, is an

attempt to discuss and analyses all the Acts and Regulations related to IP rights in
depth through commentary supported by case laws. A summary of all the
International Agreements, Treaties and Conventions on IPs is also given at the end
of the book to enable the readers to understand them more clearly. Apart from
Indian cases, cases from the UK and other countries have also been referred in this
book to make it more explanatory.

 V. K. Unni‟s book “Trade Marks & The Emerging Concepts of Cyber Property
Rights”37 is an appropriate book to find out the threat that the Internet has posed to
the arena of trademarks through domain names. However, it should be mentioned
that the abusive registration of other identifiers, such as domain names, has also
been covered prominently.

The first chapter of the book introduces the opportunities that the Internet has
presented to us and the importance of our laws being in tune with technological
advancements. The second chapter deals specifically with the Internet and its
impact on the commercial scene, domain names, their significance and abusive
practices of registering trademarks as domain names rightly called
Cybersquatting. It also covers the reasons for such conflicts and briefly deals with

31
The Trade Mark Act, 1999 (Act 47 of 1999).
32
The Trade Mark Act, 1999 (Act 47 of 1999).
33
Paris Convention for Protection of Industrial Property, 1967, available at: WTO.org (last visited on January
31, 2024).
34
Trade Related Aspect of Intellectual Property Rights, 1994, available at: WTO.org (last visited on January
31, 2024).
35
Trade Related Aspect of Intellectual Property Rights, 1994, available at: WTO.org (last visited on January
31, 2024).
36
V K Ahuja, Intellectual Property Rights in India, Volume I 45 (Lexis Nexis Publication, Nagpur, 1st edn.,
2009).
37
V. K. Unni, Trade Marks & The Emerging Concepts of Cyber Property Rights (Eastern Law House, Kolkata,
2002).

9
 Introduction

the rationale of trademark protection. The policies for the organization and
management of domain names have been widely discussed globally, with special
emphasis on the management of the Domain Name System (DNS). Moreover,
importance was given to the interface between Intellectual Property, more
especially, trademarks, which were the acknowledged rights of identity prior to
the Internet and Domain Names as addresses on the Internet.

Chapter 6 of the present book, which was extremely important for my research,
makes a sincere attempt to get an overview on a global basis of the
Anticybersquatting legislation. Since the U.S. is the only country in the world to
have specific legislation in this regard, special emphasis has been given to the
Anticybersquatting Consumer Protection Act, 1999 and its relevant provisions.
Some important cases which were initiated under the said Act have been
mentioned. Cases in other jurisdictions like the U.K., India, and New Zealand,
which grant protection against cybersquatting by invoking the concept of passing
off, have also been enumerated. These include the landmark cases of Marks and
Spencer, Yahoo and Rediff.

 Lionel Bently & Brad Sherman, in their book “Intellectual Property Law”38,
depicts important developments at an international level regarding IP laws. Part
IV of the present book related to trademark accounts for new case law from the
European Court of Justice on the functions of marks (L'Oreal, Louis Vuitton,
Interflora), the territorial aspects of notions such as distinctiveness, reputation, and
genuine use (Pago, Leno Merken) and infringement (DHI), and anticipates the
revision of the Community Trademark in light of the Max Planck review, apart
from that, it has provided for the present research very appropriate information
pertaining to and associated with the trade mark‟s historical aspect.

 Pankaj Jain and Pandey Sangeet Rai, in their book “Copyright and Trademark
Laws Relating to Computers”39, have endeavoured to supply basic information to
all those who are interested in Intellectual Property and E-Commerce. Some of the
IPR issues which are faced in E-Commerce are domain names; protection of

38
Lionel Bently & Brad Sherman, Intellectual Property Law, (Oxford University Press, United Kingdom, 4th
edn., 2014).
39
Pankaj Jain and Pandey Sangeet Rai, Copyright and Trademark Laws relating to computers (Eastern Book
Company, Lucknow, 1st edn., 2005).

10
 Introduction

copyrights and related rights; patents and patentable subject matters; trademarks
and unfair patents; online service providers‟ liability and counterfeit products,
hyperlinking, music and audio-visual works, piracy and data protection issues are
very efficiently discussed in this book.

 Justice P.S. Narayana‟s book “Intellectual Property Law in India”40, is a short and
brief commentary on the subject. The important enactments dealing with this
subject can be enumerated in brief as follows- (1) Patents Act, (2) Trademarks
Act, (3) Copyright Act and (4) Designs Act. In the present edition, the Intellectual
Property Law in India has been incorporated in the form of a compact
compendium which will be useful to the advocates, the students of law, the bench,
the business executives, civil servants, artists, Patent and Trademark attorneys,
etc. Though the commentary on this subject is short, much care has been taken to
see that. The relevant case laws on the subject of the privy council, different High
Courts, and the Supreme Court are also given in the appropriate cases. Further
relevant discussion was also incorporated wherever necessary relating to the
amendment of the enactment and the rules framed thereunder.

 Venkateswaran‟s book “Trademarks and Passing-off”41, however, it is more than a

legal textbook. It is a complete presentment of the case for the establishment of a
trademark registry. This aspect of the matter is scientifically developed in the First
Part and in the concluding chapter, and the author exhibits a very thorough grasp
of the practical questions involved. I would recommend these portions of the book
to commercial India and to the high administrative authorities who will have to
tackle a difficult and necessarily unfamiliar problem. It is clear that, from a
judicial point of view, Patents and Trademarks will have to be administered as a
federal subject, and the extraordinary situation that now prevails should be
terminated as soon as possible.

 M. K. Bhandari‟s book “Law Relating to Intellectual Property Right”42, has given

an idea about the international aspect of the trademark, its function and its objects.

40
Justice P.S. Narayana‟s, Intellectual Property Law in India (Gogia Law Agency, Hydrabad, 4th edn., 2007).
41
Venkateswaran, Trade Marks and Passing-off (Lexis Nexis Publication, Nagpur, 5th edn., 2010).
42
M. K. Bhandari, Law Relating to Intellectual Property Right (Central Law Publications, Allahabad, 3rd edn.,
2012).

11
 Introduction

 Robin Jacob‟s book “IP and Other Things”43, suggested a new aspect of the colour
trademark. It gave the idea of correlating colour trademarks with the Olympic
Games symbol.

1.4.2 Review of Articles

 “M M S Karki‟s article on “Nontraditional Areas of Intellectual Property

Protection: Colour, Sound, Taste, Smell, Shape, Slogan and Trade Dress” 44,
reviews the developments in nontraditional areas of Intellectual Property
protection viz; colour, sound and smell. Especially sounds and colours are
commonly trademarked today. Smell, shape and slogan are also gaining ground
slowly and gradually. Besides unconventional trademarks, smell marks have also
been reported in this article by M M S Karki.45”

 Linda Annika Erlandsson‟s article “The Future of Scents as Trademarks in the

European Community”46, has also given a broad idea about the colour trademark
and its grounds for registration. It also gives an overview of how rapidly colour
and other modern trademarks are commonly trademarked today. Part 3rd of this
article divided distinctiveness, which is an important ground for registration of a
trademark and also the most dominant ground for refusal of a trademark, into two
kinds, viz; inherent distinctiveness and acquired distinctiveness, which was very
useful for my study, especially chapter V of my thesis.

1.5 Research Gap

The Trade Marks Act, 1999 was enacted for the protection of trademarks in India. But it
faced criticism on the following points;

 “Trade Marks Act, 1999 amended the old trademark laws because whenever an earlier
state of law is changed by repealing and re-enacting the legislation, then it cannot be
called a new law, and for all practical purposes, it is an amendment of trademark law.

43
Robin Jacob, IP and Other Things 45 (Oxford and Portland, Oregon, 2015).
44
M M S Karki, “Nontraditional Areas of Intellectual Property Protection: Colour, Sound, Taste, Smell, Shape,
Slogan and Trade Dress.”
45
Available at: docs.manupatra.in (last visited on January 31, 2024).
46
Linda Annika Erlandsson, “The Future of Scents as Trademarks in the European Community”.

12
 Introduction

The 1999 Act has done exactly this, and therefore, all rules relating to the
interpretation of amending laws shall be applicable to the interpretation of the 1999
Act47, but there are some provisions in it that still create confusion and are not specific
enough, viz; sec. 10, which is related to colour trademark, and Sec. 12, which deals
with honest concurrent use of a trademark, etc.”

 We are living in the era of Computers and the Internet. The Internet is a vast global
network of computers storing information on every conceivable subject. The
proliferation of transactions over the Internet has given rise to various legal issues
pertaining to jurisdiction, admissibility of electronic evidence, the validity of digital
signatures, software piracy, domain name disputes, cyber-crimes, electronic cash and
violation of human rights. Cyber laws have emerged, and nations have been
compelled to amend existing legislation or introduce new legislation.

1.6 Statement of Problem

 The advent of the Internet has established a new world order, a world in which the
global became the local.

 It has become the super highway of free-way traffic for people around the world to
communicate easily and instantly.

 The proliferation of transactions over the Internet has given rise to various legal issues
pertaining to jurisdiction, admissibility of electronic evidence, the validity of digital
signatures, software piracy, domain name disputes, cyber-crimes, electronic cash and
violation of human rights.

 People confront new kinds of disputes with respect to trademarks also, viz; Abusive
practices of registering trademarks as domain names rightly called cybersquatting,
Overlapping of Domain names and Trademarks, etc., which require different kinds of
adjudication and settlement.

 Apart from the technological issues, there are some ground-related issues and
challenges are also there, which are facing by the people for the registration of
trademarks, and they are even very much confused and unaware of the rights and

47
Available at: pdfcoffee.com (last visited on January 31, 2024).

13
 Introduction

remedies which are provided by law for the protection of a registered trademark and a
well-known trade mark.

 The present study deals with the above-given issues and challenges and tries to
provide a better solution for that.

1.7 Aim and Objectives

The aim and objectives of the present study are below:

 To know the origin, development, and concept of trademark laws.

 To understand the judicial approach behind trademark.

 Study of colour as an emerging modern trademark.

 To understand the global position of the colour trademark.

 To know the concept of the distinctiveness of colour trademark.

 To find out the real problems and issues behind the registration and infringement of
trademarks.

 To find out the threat that the internet has posed to the arena of trademarks.

 Why is the registration of a combination of colours slightly lenient as compared to

that of a single colour on account of distinctive pairing?

1.8 Hypothesis

(i) Trade Marks Act, 1999 enhanced trademark protection and stopped the unauthorized
or dishonest use of trademarks on goods and services. It allowed for the formal
registration of trademarks, granting their proprietors sole legal entitlement to their
use. However, there are certain shortcomings within the Act, viz; Sec. 10, 12, etc.,
that resulted in ambiguity and overburdened the judicial system.

(ii) The computer and the Internet have not only revolutionized the commercial field but
also influenced and changed every aspect of a person. Trademark infringement issues,

14
 Introduction

particularly those concerning domain names, have escalated significantly in the

technological age.

(iii) Section 9 of the Trade Marks Act, 1999 provides “Absolute grounds for refusal of
registration”, which include distinctive character, exclusive geographical origin, well-
known character, etc. However, judicial interpretations indicate that among these
conditions, the most prevalent requirement for registration is that the trademark must
be „capable of being represented as distinctive‟.

1.9 Research Methodology

In the present study, the combination of both methodologies, viz; Doctrinal and Non-
Doctrinal, have been used to provide a more comprehensive understanding of the above-
mentioned legal issue. In the first part of the study, the researcher finds out the real
problem through analysis of statutory provisions and cases by applying the power of
reasoning. In the second part of the study, law is involved with other behavioural
sciences. For that purpose, the researcher has used socio-legal research, which typically
embraces a combination of qualitative and quantitative research methods, such as
interviews, surveys, case studies, content analysis, and statistical analysis. This
interdisciplinary approach allows researchers to explore how legal systems and practices
impact individuals and communities and how social norms and behaviours shape legal
institutions and decision-making. The researcher used Survey Research Methodology to
study attitudes, opinions, and behaviour by collecting data from a sample of persons
through questionnaires or interviews. The researcher has adopted both online (through
Google form) and offline (through one-on-one talk) questionnaire methods based on the
convenience of the respondents.

1.9.1 Sample Size

A total of 250 samples were collected during the course of this study. Out of these,
150 were collected from those who were facing problems regarding the registration of
trademarks and were facing infringement-related issues; 50 were collected from
academicians in order to ascertain the depth of their knowledge vis-a-vis colour
trademarks, and the remaining 50 were from scholars and other related people.

15
 Introduction

1.9.2 Sampling Method

As far as the sampling method of the present research is concerned, the researcher
followed non-probability or convenient sampling (also known as accidental
sampling). In this sampling method, the researcher studied those persons who were
most conveniently available or who accidentally came into contact with her during a
certain period of research.

1.9.3 Sampling Area

For the empirical part, the research involves fieldwork pertaining to the State of Uttar
Pradesh (though it is not limited to Uttar Pradesh) with regard to the concept of
trademark protection. This is done to explore the practical situation as distinct from
the legislative positions.

1.9.4 Data Sources

The study utilized a combination of primary and secondary data sources.

1.9.4.1 Primary Data

The primary data was collected through the questionnaire from consumers,
people facing problems regarding registration and infringement of trademarks,
research scholars, academicians, and other people who were related.

1.9.4.2 Secondary Data

Secondary data was drawn from books, scholarly articles, leading judicial
pronouncements (national and international), reports, training manuals, etc.

1.9.5 Data Collection Instrument

The primary method of data collection was the questionnaire method.

1.9.5.1 Framing of Questionnaire

For the collection of data, the questionnaire was prepared to contain 13

multiple-choice questions, and some of them were open-ended for the purpose

16
 Introduction

of understanding the respondents. The questions included in the questionnaire

were framed to get information with regard to the knowledge and awareness of
procedures and rights of people with respect to the different issues of
trademarks. The questionnaire was framed in both Hindi and English language
so that the respondents would be comfortable answering the questions. The
respondents were also provided with the choice to fill out the answers either
by themselves or to communicate the answers to the researcher. The data
collection was done both online (through Google Forms) and offline (through
one-on-one talk) mode, at the convenience of respondents. In addition to the
questions, the respondents were asked to provide their valuable feedback on
how to make the present system relating to colour trademark protection more
efficient to prevent its infringement.

1.9.5.2 Combination of Survey and Interview Methods

For the present study, the researcher plans to utilize a combination of surveys
and interviews as the primary data collection methods. Surveys will allow to
gather quantitative data efficiently from a larger sample size, providing
valuable insights into the trends and patterns within the research topic. These
surveys will be carefully designed to include both closed-ended questions,
allowing for quantitative analysis, and open-ended questions to capture more
nuanced perspectives. Additionally, the researcher will conduct interviews
with a subset of participants to delve deeper into specific themes or issues
identified in the survey responses. Interviews will provide rich qualitative
data, allowing for a more comprehensive understanding of the experiences,
attitudes, and opinions of participants. By employing both surveys and
interviews, the researcher aims to triangulate the findings and ensure a robust
analysis in the present thesis.
1.9.6 Experience of Data Collection

The data collection was done during September, 2023 to December 2023. Efforts
were made to reach out to every component of the study to obtain original data. The
experience of data collection had been both challenging and enriching. Insightful
information was received on different types of issues, such as difficulties in
protecting colour trademarks and remedies for their infringement.

17
 Introduction

1.9.7 Limitation of the Study

The result of the study cannot be generalized to the whole population. Maybe the
result will be deferred if the researcher takes a bigger sample size and population.

1.9.8 Ethical Consideration

Before the start of the filling up of the questionnaire, permission was obtained from
the respondents and confidentiality and anonymity were assured to them. The
purpose of the questionnaire, the estimated time required and the type of questions
were shared. It was shared with the respondents that the research would help to
generate greater awareness among people and make effective improvements in the
field of colour trademark protection.

 Participation in the research was voluntary.

 All personal information pertaining to the respondents would be kept confidential

and used for research purposes only.

 Respondents were also provided an option to withdraw from the interview at any
stage of the research.

1.10 Scope of the Study

The present study is a combination of doctrinal and empirical research. For the doctrinal
part, the study pertains to the various legal documents. Besides the Trade Marks Act,
1999 and related IP laws, i.e. the Copyright Act, 1957 other relevant legislations include
Indian Penal Code, 1860, The Indian Merchandise Marks Act, 1889 48, The Trade Marks
Act, 194049, The Specific Relief Act, 187750, India Registration Act, 190851 etc., and other
rules are notified under it. At the same time, there are various International Conventions
that deal with the issues, viz; Trade-Related Aspect of Intellectual Property Rights,

48
The Indian Merchandise Marks Act, 1889 (Act IV of 1889).
49
The Trade Marks Act, 1940 (Act 5 of 1940).
50
The Specific Relief Act, 1877 (Act 1 of 1877).
51
The India Registration Act, 1908 (Act 16 of 1908).

18
 Introduction

199452, The World Intellectual Property Organization, 196753, The Paris Convention,
188354, The Madrid Agreement and Protocol, 189155, The Trademark Law Treaty (TLT),
(1994)56 etc.

For the empirical part, the research involves fieldwork pertaining to the State of Uttar
Pradesh (though it is not limited to Uttar Pradesh) with regard to the concept of trademark
protection. This is done to explore the existing situation as distinct from the legislative
position. Therefore, this study tries to bridge the gap between theory and practice by
highlighting the flaws that exist in our present system in relation to trademark protection
and will suggest the ways by which the existing legal provisions and their implantation
mechanism related to colour trademarks can be improved. As a result, there will be
consistency in judicial pronouncements.

1.11 Plan of Chapters

The present study is divided into seven chapters;

CHAPTER- 1 INTRODUCTION

1.1 General

1.2 Motivation for Present Study

1.3 Significance of the Study

1.4 Literature Review

1.4.1 Review of Books

1.4.2 Review of Articles

1.5 Research Gap

1.6 Statement of Problem

52
Trade Related Aspect of Intellectual Property Rights, 1994, available at: WTO.org (last visited on January
31, 2024).
53
The World Intellectual Property Organization, 1967, available at: wipo.int (last visited on January 31, 2024).
54
The Paris Convention, 1883, available at: WTO.org (last visited on January 31, 2024).
55
The Madrid Agreement and Protocol, 1891, available at: wipo.int (last visited on January 31, 2024).
56
The Trademark Law Treaty, 1994, available at: wipo.int (last visited on January 31, 2024).

19
 Introduction

1.7 Aim and Objectives

1.8 Hypothesis

1.9 Research Methodology

1.9.1 Sample Size

1.9.2 Sampling Methods

1.9.3 Sampling Area

1.9.4 Data Sources

1.9.4.1 Primary Data

1.9.4.2 Secondary Data

1.9.5 Data Collection Instrument

1.9.5.1 Framing of Questionnaire

1.9.6 Experience of Data Collection

1.9.7 Limitation of Study

1.9.8 Ethical Considerations

1.10 Scope of Study

1.11 Plan of Chapters

CHAPTER- 2 EVOLUTION OF TRADEMARK LAW IN INDIA

2.1 General

2.2 Origin of Trademark

2.3 History of the Legal Protection of Marks

2.4 International Conventions/Treaties for the Development of Trademark Law

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 Introduction

2.4.1 The Paris Convention

2.4.2 The Madrid Agreement and Protocol

2.4.3 TRIPS Agreement

2.4.4 The Trademark Law Treaty

2.5 Development of Trademark Laws in India (1877-1940)

2.5.1 Prior to the Trade Marks Act, 1940

2.5.2 Development from 1940 to 1958

2.5.3 Development from 1958 to the Trade Marks Act, 1999

2.5.3.1 The Trade Marks Act, 1999

2.5.3.2 Statement of Object and Reasons for the Enactment of the Trade
Marks Act, 1999

2.5.3.3 Salient Features of Trade Marks Act, 1999

2.5.3.4 Trade Marks Act Amendment Rule 2017

2.6 Summary

CHAPTER- 3 THE CONCEPTUAL FRAMEWORK OF COLOUR TRADEMARK

AND ITS JUSTIFICATION

3.1 General

3.2 How to Define a Trade Mark

3.2.1 Sign

3.2.2 Mark

3.2.3 Definition of Mark

3.2.4 Kinds of Marks

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 Introduction

3.2.4.1 Traditional Marks

3.2.4.2 Non-Traditional Marks/Modern Marks

i. Smell Marks

ii. Sound Marks

iii. Taste Marks

iv. Moving Images, Holograms and Gestures

v. Certification Trade Mark

vi. Collective Mark

vii. Trade Marks for Goods and Services

viii. Domain Name

ix. Well-Known Trademark

3.3 Functions of Trade Mark

3.4 Tests for Trade Mark

3.4.1 Trade Mark Should be Capable of Being Represented Graphically

3.4.2 Distinctiveness

3.5 Justification behind Trademark and Its Protection

3.5.1 Judicial Justification

3.5.2 Theoretical Justification

3.5.2.1 Labour Theory

3.5.2.2 Personality Theory

3.5.2.3 Economic Incentive Theory

22
 Introduction

3.5.2.4 Social Requirement Theory

3.6 Summary

CHAPTER- 4 THE GLOBAL ASPECTS OF COLOUR TRADEMARK:

REGULATIONS AND POLICIES

4.1. General

4.2 Registration and Protection of Colour Trademark: A Global Approach

4.2.1 United States of America

4.2.1.1 The Lanham Act (US)

4.2.1.2 The Colour Depletion Doctrine

4.2.2 United Kingdom

4.2.3 UAE (United Arab Emirates)

4.2.4 European Union

4.2.5 Australia

4.2.6 Austria

4.2.7 Brazil

4.2.8 Cambodia

4.2.9 China

4.2.10 Canada

4.2.11 Germany

4.2.12 Position in India

4.3 Colours

4.3.1 Single Colour

23
 Introduction

4.3.2 Combinations of Colours

4.4 Trade Mark and the Olympic Games Symbol

4.5 Judicial Approach with Regards to Colour Trade Marks

4.6 Summary

CHAPTER- 5 REGISTRATION AND REFUSAL OF A TRADE MARK:

CONDITIONS AND REQUISITES

5.1 General

5.2 Conditions of Registration of Colour Trade Marks

5.2.1 Relative Grounds for Refusal of Registration

5.2.2 Absolute Grounds for Refusal of Registration

5.2.2.1 Must Be a Trademark

5.2.2.2 Time of Possessing Distinctive Character

5.3 Meaning of Distinctiveness

5.3.1 Kinds of Distinctiveness

5.3.1.1 Inherent Distinctiveness

5.3.1.2 Acquired Distinctiveness

5.4 The Risk of Colour Depletion

5.5 Preliminary Advice by Registrar as to Distinctiveness

5.6 Judicial Attitude on the Concept of Distinctiveness

5.7 Summary

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 Introduction

CHAPTER- 6 REGISTRATION AND INFRINGEMENT OF COLOUR

TRADEMARK IN THE DIGITAL ERA: AN EMPIRICAL
STUDY

6.1 General

6.2 Registration and Infringement: Issues and Challenges in the Technological Age

6.2.1 Issues and Challenges with Respect to Legal Framework

6.2.1.1 Confusion and Deception

6.2.1.2 Honest Practices

6.2.1.3 Trademark Domain Name Disputes

A. Types of Domain Name Disputes

a. Cybersquatting

b. Profit Grabbing

c. Misspelling and Identical Domain Names

d. Concurrent Claims

6.2.2 Issues and Challenges with Respect to Implementation

6.2.2.1 Data Analysis

6.2.2.2 Major Findings

CHAPTER- 7 CONCLUSION AND SUGGESTIONS

7.1 Conclusion

7.2 Testing of Hypothesis

7.3 Suggestions

25
 Introduction

7.4 Contribution to the Field

7.5 Suggestions for Further Research

26