Indian v European Union v The United States of America Trademark Laws: A Comparative Analysis

Author: Tejas Chhura - NLSIU


Advertisements are all around us, right from in our newspapers to commercial breaks in the shows that we watch. Although they come in many way shapes and forms, they all have one thing in common, the presence of the company’s logo. A company’s logo has immense significance as it is more than just a picture, but rather a stamp of approval. It is that company giving its seal that a product is their own and genuine and hence something that almost all companies hold sacred. With thousands of knock off articles circulating in markets that have a very minor, almost unnoticeable, change in the logo, it becomes necessary to have strong trademark laws. The primary Act dealing with trademark laws in India is the Trade Marks Act, 1999. With India emerging as one of the economic hubs of the world, it becomes necessary to analyse the existing trademark laws of India and compare and contrast it with the trademark laws of other such centres like the European Union and the United States of America.

Definition of Trademark

The way a term is defined plays a significant role in the applicability of the same. While definitions may mean the same thing, the words used can often be interpreted in a way to help favour one side or the other.

In India, we can find the definition of a trademark in Section 2(zb) of the Trade Marks Act, 1999.[1] This section does not only provide a descriptive account of what falls under the ambit of the term but also provides an exhaustive list regarding the same. Owing to this descriptive account, there is very little room from stipulation or interpretation as to what comprises of a trademark and what doesn’t. One could also read this section along with Section 2(1)(m) of the same Act to increase the scope of the definition of what a trademark is.[2] In addition to this, the landmark judgment of Laxmi Patel v Chetanbhat Shah given by the Supreme Court held that the definition of the term trademark in the Indian context is very wide and hence can include a mark that is capable of being represented graphically and is capable of distinguishing the goods or services produced and provided by various persons.[3] Hence, overall, the term trademark in India has been given a very wide, but exhaustive, definition.

In the United States, however, we see a different approach. Trademark law in the United States, is governed by the Lanham Act. Like India, the United States has given a very broad description of what may constitute a mark. Section 1127 of the Act defines what a trademark is,[4] and while it is a very broad definition, it is not as descriptive as the Indian definition. Thanks to the lack of descriptive nature of the definition, we see that the US definition is much wider than that of the Indian definition. In addition to this, unlike India, the Lanham Act uses the term “symbol” without giving a descriptive nature of the same. As a result, this leaves the term up for interpretation and hence can include much more under the ambit of a trademark as compared to India.

In the European Union, trademark law is embodied in the Community Trade Marks Regulations. The Community Trade Marks Regulations, unlike the Trademarks Act or the Lanham Act, does not define what a trademark is or what it constitutes. Instead, it simply states that a trademark includes a ‘word mark’ and other marks constituting of numerals, letters and signs for which the appellant does not claim any special graphic representation. Hence, owing to this vagueness, it has, out of the three jurisdictions we are comparing, the widest definition of the term.

Definition of the Term ‘Use’

Another key definition that is relevant for trademark law is the definition of the term ‘use’. A trademark only has its value when it is in use and should it fall into the non-use category for a considerable period of time, it will lose its value. While the Indian Trade Marks Act does provide the option to challenge a registration of a trademark on the grounds of non-use, the courts have given a wide interpretation and meaning to the word ‘use’. In India, the usage of a trademark may be ‘non-physical’, but it is pertinent that it uses the trademark in a material way as stated by the Indian Supreme Court in Hardie Trading v. Addison Paints.[5] This definition is extremely wide and provides the registered trademark holder with an option to claim any usage of the trademark as material usage and hence prevent it from falling into the non-use category. This is very similar to the test laid down in the Community Trade Marks Regulation, in which it is required that the use of the trademark should be genuine and not merely a symbolic usage. However, the United States does not follow the same definitions. Instead, the Lanham Act distinguishes the usage of trademark into two categories, namely intended usage and actual usage of the same. While people can register for both forms of usages, in order to attain the registration for the intended usage of the mark, one must show proof of the actual usage of the mark. In addition to this, every 5-6 years, the usage of the mark has to be shown to the Patent Offices in order to maintain the registration.[6]

The Doctrine of Dilution

The Doctrine of Dilution is a doctrine introduced in trademark law which permits the owner of a famous mark to forbid others from using the mark in such a way that it harms its uniqueness. This doctrine was accepted in India and embodied in Section 29 of the Trade Marks Act, 1999.[7] As a result of this protection, many of the globally well-known or famous companies like Apple, Honda, BMW and so on, have automatic protection from any diluted usage of their marks This is necessary as for man companies, their trademark is what makes them what they are and the last thing such companies would want, is for knockoffs to emerge that tarnishes the name of the company. However, the terms globally well-known and famous have been left undefined and decided on a case to case basis. This provides it with a wider definition. However, in the case of the United States, there is a limited version of this doctrine available. For the purpose of this doctrine, the mark must be in actual use in the United States as well as being famous. The definition of the term famous has been defined as the “general consuming public” being able to identify the mark in relation to its proprietors or the goods or services that the mark represents.[8] This definition is highly restrictive compared to the Indian context. The European Union has attempted to settle for a middle ground regarding the same by lowering the standard of the term “famous”. For the purpose of the trademark law in the EU, the standard of proof that the mark is famous is much lower than that of the US. A party will simply have to prove that a substantial amount of public can identify with the mark relations to its proprietor or the goods or services that the mark represents.


Overall, the Indian Courts have given a little more liberty and freedom to the trademark holders as compared to the EU and USA. However, this Act is not totally unbiased and rather just helps further the purpose of the Act and despite all the difference to other laws, is in the writer’s opinion apt for the Indian context.

[1] Trade Marks Act, 1999, s 2(zb).

[2] Trade Marks Act, 1999, s 2(1)(m)

[3] Laxmi Patel v Chetanbhat Shah 2002 (24) PTC 1 (SC).

[4] Lanham Act, 1946, s 1127.

[5] Hardie Trading Limited and Anr v. Addisons Paints and Chemicals Limited, 1995 (S) ARBLR 513.

[6] Lanham Act, 1999, s 9(a).

[7] Trade Marks Act, 1999, s 29.

[8] Lanham Act 1946, s 43(c)(2).

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