AN INTERFACE BETWEEN THE TRADEMARK LAW AND THE CONSUMER LAW

Sanchita Bera

Introduction

There is an approved concord about the Intellectual Property, that its main purpose is to serve the big entrepreneurs and producers, but when the same Intellectual Property is viewed from another angle the same also serves the interests of the consumers. In the modern world, consumer awareness has increased, people know what are their rights as a consumer, all thanks to the Government’s campaign of ‘Jago Grahak Jago’. It is the prime duty of the Producers to meet the demands and needs to the consumer’s satisfaction. Similarly, the consumers are supposedly aware of what they are purchasing and consuming. The products or services are served in the market by the producers through representation and description. It is here, where the Trademark plays the most important role because the product’s/service’s trademark not only helps to identify, advertise or market them but also guarantees such product’s/ service’s quality, quantity, trust, and the rate of satisfaction the consumers have upon the same. The trademark serves two different purposes: One, it helps the consumer to identify the quality of a specific product/service with a specific producer/service provider, and Two, it helps the producer/service provider in marketing that product/service attached with the quality with which it is associated.

Meaning of certain important terms

  1. Intellectual Property(IP): According to WIPO(World Intellectual Property Organization), IP refers to the creation of the minds, such as inventions; literary and artistic works; designs; and symbols, names, and images used in commerce. The IPs are protected by law, for example, patents, copyright, and trademarks, which enable people to earn recognition or financial benefit from what they invent or create[1]. In other words, IPs are intangible property that is the result of creativity, such as patents, copyrights, trademarks, etc[2]. WIPO is one of the specialized agencies of the United Nations which was created to protect and promote IP across the world by cooperating with countries as well as international organizations[3].
  2. Trademarks: According to WIPO, a trademark is a sign capable of distinguishing the goods or services of one enterprise from those of another enterprise. Trademarks are protected by IPRs (Intellectual Property Rights)[4].
  3. Consumer: A person who buys goods or services of their use[5].

The Consumer Law

The General Assembly of the United Nations by Consumer Protection Resolution adopted the guidelines on July 26, 1999, to provide a framework for governments, particularly those of developing countries to use in elaborating and strengthening consumer protection policies and legislations. The main purpose of these guidelines was to bring in the concept of consumer protection which will force the producers and manufacturers to maintain a certain code of conduct and ethical standards in their business with the consumers[6]. But the Indian Parliament brought in the Consumer Protection Act, 1986 way before the UN did. The legislation was created to protect the interests of consumers of India. Now, India has a new legislation Consumer Protection Act, 2019, which replaced the 1986 Act.

The Trademark Law

India for the first time codified the trademark law and provided registration of trademarks that are already in use and even those proposed to be used under the Trade and Merchandise Marks Act, 1958[7]. The 1958 Act was replaced by the Trade Marks Act, 1999 in conformity with the TRIPS Agreement (Trade-Related Intellectual Property Rights) and international systems and practices. TRIPS Agreement is an international legal agreement between all the member nations of the WTO (World Trade Organization), which establishes minimum standards for the regulation by national governments of different forms of IP[8].

The problem of Trademark Misrepresentation affecting the Consumer Interest

The trademark ‘L`Oréal’ differentiates the cosmetics of L`Oréal S.A. from those cosmetics of MAC. Here, the trademark L`Oréal associates the manufacturer who is in charge of the quality of the cosmetics, the consumer identifies these trademarks and links such trademarks with both the origin and the producer/service provider of such products/services. If supposedly, L`Oréal did not register its trademark and some other cosmetics company uses the name ‘LOreal’ and sells their products under the pretention of the original brand L`Oréal, this would lead to misrepresentation. Because the company would be using the image and brand value set by L`Oréal and sell their products using such brand name. The climax of the situation arises here, under the Indian Trademarks law, only registered trademarks that have suffered from misrepresentation will be termed as trademark infringement. The trademark infringement allows aggrieved persons to institute proceedings either to prevent further use of the trademark or to recover damages suffered due to the infringement or misrepresentation under the trademark law. But misrepresentation suffered by unregistered trademarks, they cannot claim under the provisions of trademark infringement, but under the tortuous law of ‘passing-off’. This concept of passing-off has not been recognized under the Trademarks Act, 1999. Here, the proprietor (persons who are the owner/holder of the trademark) can initiate proceedings against the infringer. The law of passing-off has been adopted from the common law remedy. But the main issue is in an action for infringement is way different from an action of passing-off. The action for an infringement has a statutory right that is right to sue given by the Trademarks Act, while an action for passing-off is a common law remedy and there is no definite result or backing or right provided under the trademark law.

Conclusion

The main highlights of this article were to understand the linkage between trademarks law and consumer law, and how one affects the other. The lacuna in the trademark law which will directly affect the consumers is not acknowledging the concept of passing-off. Codifying passing-off into the trademarks Act would secure the unregistered trademarks as well. Although the initiative of the trademark law not providing a remedy to unregistered trademark was to encourage registrations of the same, but the basic purpose of the trademark law was to help consumers identify the products/services and prevent them from becoming victims of misrepresentations. Also, looking at the charge levied for the registration of trademark ranging from Rs. 4500-9000, not everyone can afford the same, even if the charges are set aside, the difficulty and the lengthy registration processing make it less likely for many to register their trademarks. India being a welfare state must incorporate provisions that will ultimately benefit the consumers and others at large. Taking into consideration the new Consumer Protection Act, 2019, which established CCPA (Central Consumer Protection Authority) to regulate matters like unfair trade practices, violation of consumer rights, misleading or false advertisements, and the list goes on. Here, the concept of passing-off is a species of unfair trade practice/competition, hence any aggrieved consumer can initiate proceedings against the misrepresentation under the new legislation, but what about the proprietor of the trademark who has suffered from misrepresentation? The new consumer legislation is not enough to protect the consumers from the misrepresentation, changes are to be made in the Trademarks Act, 1999, by codifying passing-off, which will secure both the consumers and the trademark holder from the damages of misrepresentation. Because ultimately, the trademark is the symbol of the quality, satisfaction, credibility, longevity of usage of any product, an impression upon the consumers about such product, and if there is any infringement in the same, it will affect the consumers as well. As such to date, none of the countries have codified passing-off to bring in infringement actions against the violator of unregistered trademarks, including the common law countries like the United Kingdom, Phillippines, and New Zealand, but they use passing-off as a tortuous law just like India does. WIPO has given acknowledgment to the concept of passing-off as one of the types of actions against trademark infringement but did not codify the same. TRIPS Agreement has no mention of passing-off. Looking into the World Organizations dedicated to the protection and promotion of IPRs, not protecting the infringement of unregistered trademarks, makes it incomplete. The use of passing-off has been left at the discretion of the member countries to use the same as a tortuous law. India can move a step ahead for the same, by codifying the concept of passing-off in the statute of Trademarks Act, 1999, just like replacing the 1958 Act with the 1999 Act, to stay at par with international standards and practices and follow the TRIPS Agreement.


[1] Meaning of Intellectual Property, https://www.wipo.int/about-ip/en/, (Last Visited on May 10, 2021)

[2] Meaning of Intellectual Property, https://www.google.co.in/search?q=meaning+of+intellectual+property&authuser=0&sxsrf=ALeKk01zB72WJa1YDmyBsgjxj1SuEHwyuQ%3A1620657948392&source=hp&ei=HEeZYPupFYiW4-EPueGfoA8&iflsig=AINFCbYAAAAAYJlVLI2QerRyMYt8tFRyOKzZOSnPgeVc&oq=meaning&gs_lcp=Cgdnd3Mtd2l6EAEYADIECCMQJzIECCMQJzIECCMQJzIFCAAQkQIyBQgAEJECMgUIABCRAjIFCAAQsQMyCggAEIcCELEDEBQyBQgAELEDMgIIADoECAAQQzoHCAAQsQMQQ1CxggFYq4oBYP2XAWgAcAB4AIAB3QGIAZ4KkgEFMC42LjGYAQCgAQGqAQdnd3Mtd2l6&sclient=gws-wiz, (Last Visited on May 10, 2021)

[3] Wikipedia of WIPO, https://en.wikipedia.org/wiki/World_Intellectual_Property_Organization, (Last Visited on May 10, 2021)

[4] Meaning of Trademark, https://www.wipo.int/trademarks/en/, (Last Visited on May 10, 2021)

[5] Meaning of Consumer, https://dictionary.cambridge.org/dictionary/english/consumer, (Last Visited on May 10, 2021)

[6] Jawal, Sandhu and Anand Pawar, Consumer Activism, Competition and Consumer Protection, 36 Rajiv Gandhi National University of Law, Patiala, Punjab, edn. 2012, https://www.slideshare.net/akshaymalgi7/consumerism-in-india-consumer-protection-act1986, (Last Visited on May 10, 2021)

[7] Dr. GB Reddy, Intellectual Property Rights and the Law 266 (Gogia Law Agency, Hyderabad, 2017)

[8] Wikipedia of TRIPS, https://en.wikipedia.org/wiki/TRIPS_Agreement, (Last Visited on May 10, 2021)

This article is authored by Sanchita Bera, pursuing Masters in Law at The Maharaja Sayajirao University of Baroda. She is currently working as a Contributing Author at TBL.

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