Paper presented at A TWO DAY NATIONAL SEMINAR on “EXPANDING CONTOURS OF FREEDOM OF EXPRESSION IN INDIA- CONSTITUTIONAL AND LEGAL PERSPECTIVES”

1. FREEDOM OF EXPRESSION
AND
TRADEMARK RIGHTS
By
VIJAY KUMAR. M
Vijay.iptm@gmail.com
9700029123

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.