2. TRADEMARKS CONSIDERED AS COMMERCIAL EXPRESSIONS
DESCRIPTIVE AND GENERIC TERMS VS. FREEDOM OF
EXPRESSION
COMPARATIVE ADVERTISEMENTS AND CLAIM OF
INFRINGEMENT OF TRADEMARK RIGHTS
CONSTITUTIONALITY OF EXCLUSIVE TRADEMARK RIGHTS
TRADEMARK DILUTION VS. FREEDOM OF EXPRESSION
DOMAIN NAMES – MONOPOLY OF COMMERCIAL EXPRESSION
OVER INTERNET – G TLDS
WHAT IS COVERED UNDER THIS PRESENTATION:
3. TRADEMARKS CONSIDERED AS COMMERCIAL EXPRESSIONS
• Freedom of Speech and Expression also includes artistic speech such as Trademarks.
• Trademark are considered as commercial expressions.
• Supreme Court held that ‘commercial speech’ is a part of the ‘right of freedom of speech and
expression’ as guaranteed by our Constitution.
• The citizens of India have the right to receive ‘commercial speech’.
• This protection is available to both the speakers as well as the recipients.
• The freedom of expression encompass the rights of third parties to
non-exclusive use of the mark.
• Exclusive Trademark Rights-Trademark Act, 1999 Section 30 to 36
• Need for trademark law to be amended.
4. DESCRIPTIVE AND GENERIC TERMS VS. FREEDOM OF
EXPRESSION
• Section 9 Prohibition of Registration of Trademarks which are descriptive.
• Exceptions to Section 9:-
• J. R. Kapoor v. Micronix India
• TARAI FOOD LTD. V. COMMISSIONER OF CENTRAL EXCISE, MEERUT-I
• Cadila HealthCare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd.
& Ors.
• Balance of Statutory Rights with that of Freedom of Speech
and Expression.
5. COMPARATIVE ADVERTISEMENTS AND CLAIM OF
INFRINGEMENT OF TRADEMARK RIGHTS
• Freedom of Free Speech and expression includes freedom to issue
advertisement both print media and visual media.
• Hamdard Dawakhana (Wakf) Lal ... vs Union Of India And Others
• Tata Press Limited vs Mahanagar Telephone-Nigam
• Dabur India Ltd. vs. Colortek Meghalaya Pvt. Ltd. & Anr
• Trademark Act favours the comparative advertising while at the
same time always ensuring consumers are protected from
possibly misleading advertising.
6. CONSTITUTIONALITY OF EXCLUSIVE
TRADEMARK RIGHTS
• Fundamental rights are protected not only from the governmental interference
through legislations and executive actions but also against private parties.
• Fundamental Rights are subject to Reasonable Restrictions.
• Section 29 of the Trademarks Act.
• To arrive at a conclusion that there is an infringement and no violation of
fundamental rights we need to answer the following two questions.
• Question No.1: Whether the mark in question is in descriptive nature or
not; and
• Question No.2 : Whether use of such mark is to offer and sell products or
to describe the products and pass on the information to the
consumer/purchaser.
• Thus if a commercial expression such as a Trademark is mis-used for illegal
benefits, fundamental right of Freedom to free speech and expression will not
rescue such illegalities.
7. TRADEMARK DILUTION VS. FREEDOM OF
EXPRESSION
• The Trademark Dilution Revision Act (TDRA) in USA and Section 29 (4) of TM Act, 1999.
• T.V.Venu Gopal vs.Ushodaya Enterprises
• Vemuri Balaram Swathi Publications v. Swathi Media Corporate Limited & Ors.
• Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan
8. DOMAIN NAMES – MONOPOLY OF COMMERCIAL
EXPRESSION OVER INTERNET – G TLDS
• Domain Name and Trademark related issues:-
1. Registration of Generic names and descriptive terms as domain names
2. Registration of Domain names of Registered Trademarks
3. Registration of domain names with deceptively similar or mis-spelling of the
Registered Trademarks (Typosquatting)
4. Cybersquatting
5. Registration of Generic Top level Domain names (gTLDs).
9. Conclusion
• Freedom of Speech and Expression as guaranteed by Constitution does includes
the Commercial Speech such as Trademarks and its Advertisement
• However such Freedom is subject to the reasonable Restrictions
• Trademark Act, 1999 is enacted under the Constitution and provision of the
Trademark Act, 1999 are very clear on this Aspect.
• However Section 29 (8) and Section 29 (9) and provisions related to allowing of
Comparative Advertisements, Principle of Dilution of Trademark Rights should
have been elboratively discussed.
• Though there are few case laws that talk about Domain names as Trademarks
and medium of Commercial Expressions – no specific law regulate the same
including the Trademark Act, 1999.
• Freedom is good as long as it is used purposefully- Any misuse of the Freedom
need to curtailed by law. Governments will not interfere into Freedom as along
as it does not hurt rights of other citizens.