FIRST AMONGST EQUALS: REVIEW OF THE HISTORICAL PERSPECTIVES OF THE TRADEMARK LEGISLATION AND REGISTRATION

Saravanan A[*], Filma V[**], Edited by Dr. Sudhir Ravindran[***]

ABSTRACT

Intellectual Property Rights help people to assert ownership on their creativity and innovations in various fields. There are many kinds of IPR and one of the most vibrant amongst them is trademark. It is the oldest form of IP and is used to indicate the source of the products and services. The origin of trademarks can be traced back to the times when commence of goods began. This article discusses about the history of trademark legislations and identifies the first registered trademarks.

INTRODUCTION

A trademark was the first way a tradesman identified his goods and services.[1] The history of trademarks traces back to ancient times and it is difficult to fix the exact date when the first trademarks appeared. Trademarks commonly referred to as ‘identifying marks’ have been recognized in some form or the other since times immemorial. Greeks, Romans, Egyptians, and the Chinese used these markings to identify the maker of a product so that a buyer would know the workmanship of the goods or services that he or she was They were one of the foremost forms of Intellectual Property protection and have buying.[2] undergone steady evolution.

EVOLUTION OF TRADE MARK

A trademark is a word, phrase, slogan, design, or symbol that is used to identify merchandise and is used to distinguish merchandise from competing products. The history of trademark originates in ancient times, Neolithic man marked cave walls to show that he owned the cave. These marks are the predecessor to today’s trademarks.[3] In 5000 BC people were producing pottery with indication of the name of the ruling Chinese emperor, name of the manufacturer and place of making.[4]

A Hellenistic author, a Greek Egyptian Horapollon, wrote his book “Hieroglyphica” probably in the 5th hieroglyphs not as elements of Egyptian language, but as ideograms conveying certain notions. Some of the hieroglyphs from Horapollon’s book, for example Phoenix bird, became a commonplace in emblematic science.[5] century AD, which was published in the 15th

Symbolizing and emblematizing were extremely popular in medieval Europe. In the 15th century the military outfit was very bombastic and rich in emblematical elements like innumerable mottos, abundantly decorated hats, jackets, armors and horse harness.[6]

King Edward I of England enacted the law, which prohibited jewelers to sell their gold and silver ware without previous stamping at the Goldsmith’s Hall (assay office in London) when they officially started marking gold and silver in 1300 in England. Those, who tried to counterfeit the hallmarks were sentenced to death.[7]

There were also personal marks that existed since the beginning of 13th century till the end of 16th century and were widely used by traders and merchants throughout Europe. These merchant’s marks can be considered as predecessors of modern trademarks because they bore names of traders and served as a guaranty that the sold goods were of expected quality. In the 15th century there appeared printer’s marks, which were put on books to identify printer, for instance German printer Johannes Gutenberg used the mark representing a double shield, which first appeared in books published in 1462. In the 16th century emblems decorated not only palaces and castles of noblemen, but also on inns and taverns and were widely used in trade.[8]

The British Parliament adopted the first legislative act concerning trademarks in 1266 under the reign of Henry III, and according to that act, every baker (for example) had to put his or her mark on the breads that were produced.[9]

Nowadays it is up to a seller to use or not use a mark. Modern marks are not aimed only at identifying ownership as was the case with the proprietary marks of the middle ages. Modern marks are an asset for the producer whereas in earlier times the trade marks were a liability.[10]

DEFINITION OF TRADE MARK

Trademarks are word, phrase, symbol or design, or a combination of words, phrases, symbols or designs that are capable of distinguishing the goods and/or services produced or provided by one enterprise from those of others and help to establish an identity in the market place. Trademarks have come to represent not only actual goods and services, but also the reputation of the business. It is a marketing tool used by manufacturing and service providers as a means of helping consumers and traders in identifying them.

NEED FOR REGISTRATION

Trademark registration is one of the strongest ways to protect one’s trademark. Registration makes it a lot easier to protect the trademark against would-be infringers and could end up saving a lot of time and money, in proving that, one is the legitimate owner of the trademark. Registering and maintaining registration of the trade marks grants many advantages like protection against infringement of trademark, exclusive use of the mark, license or sell and the right to prevent others from using, applying the said trade mark without proper authority.

The history of trademark law begins when enactments were made in the 19th century in Europe and the United States of America. However, this isn’t the first Trademark-like situations that have emerged in History. Throughout history, going back thousands of years, there have been marks, symbols, or graphics that have been associated with specific individuals or organizations. They have been used in advertisements, seals of approval, etc.[11]

United Kingdom

The first legislation on trademarks can be traced to England where the Bakers Marking Law, 1266 was enacted, which governed the use of stamps or pinpricks on loaves of bread. The law on registration of trademarks was later enacted on August 13, 1875 in Great Britain. This granted to a trademark holder a monopolistic right for his or her mark and also the right to sue those who infringe upon it.[12]

There were Acts in 1883, 1905 and 1919 but the key Act, foreshadowing the current regime, was the 1938 Trade Marks Act. Several amending acts were subsequently passed in the UK but these only added to the difficulties in the interpretation of the 1938 Act[13]. The Trade Marks (Amendment) Act 1984 introduced the registration of service marks in respect of services such as laundries and banking. The Patents, Designs and Trade Marks Act 1986, and the Copyright, Designs and Patents Act 1988 made further amendments, which made the forgery of a trade mark a criminal offence.[14]

External pressures overtook the 1938 Act and its amendments and soon the case for a regime more in line with European countries was irresistible. Indeed, the EC directive on the harmonization of trade mark law has been hailed as the single largest driving force behind the 1994 Act[15]. Now the modern regime is enshrined in the 1994 Trade Mark Act in UK.

United States of America

American trademark law was initially influenced strongly by English trademark law. In the U.S., various avenues are available for seeking a remedy. The state courts will adjudicate based on state registration or common law right; the federal courts will adjudicate based on federal registration.[16]

On July 8, 1870, the Federal Trade Mark Act was enacted as the first U.S. federal law to protect trademarks. In 1879, however, the U.S. Supreme Court held the law was unconstitutional due to a conflict with the provision on patents in the U.S. Constitution. It was therefore abolished. In its place, a trademark law was enacted on March 3, 1881 that targeted trademarks used in interstate commerce based on the interstate commerce clause in the U.S. Constitution (Art. 1, Sec. 8, Cl. 3). This law, however, was unable to accommodate the development of the American economy and underwent a major Amendment in 1905. It underwent further partial revisions occasionally during subsequent years.[17]

Upon the enactment of the Lanham Act on July 5, 1946, American trademark law came to rank equally with English or German trademark laws. The Lanham Act is similar to English trademark law because it adopted use-based principles as its foundation. Further, it was the first United States trademark law which approved the registration of service marks.[18]

Prior to their federation, four of the states in Australia had set up trademark registers: South Australia in 1863, Queensland in 1864, New South Wales in 1865, and Victoria in 1876. In each of those states local statutes contained provisions for punishing the fraudulent use of trademarks and provided for a register of trademarks.[19]

In 1905 a Federal Trademarks Act was introduced to cover all of Australia. Prior registrations in the separate states remained in force but were not renewable. The 1905 Act was based largely on contemporary trademark legislation in the United Kingdom.[20] The next trademark registration was the Trade Marks Act, 1955 which also largely mirrored then United Kingdom legislation of 1938. Since then, Australia has passed two more Trade Mark Acts although only one of them came into effect. [21]The present legislation is the Trade Marks Act, 1995 which came into effect on 1st January, 1996.

India

While some form of proprietary protection for marks in India dates back several millennia, India’s statutory Trademarks Law dates back to 1860. The definition of trademarks was provided in the Indian Penal Code and was later adopted in Indian Merchandise Marks Act, 1889. Prior to 1940 there was no official trademark Law in India. Numerous problems arouse on infringement, law of passing off etc and these were solved by application of Section 54 of the Specific Relief Act, 1877 and the registration was obviously adjudicated by obtaining a declaration as to the ownership of a trademark under Indian Registration Act 1908.

The first trademark law in India was passed in the year 1940 and was known as the Trade Marks Act, 1940 and this corresponded with English Trademarks Act. This law was subsequently replaced by the Trade and Merchandise Act, 1958. Thereafter the Government of India amended this Act in order to bring the Indian trademark law in compliance with its TRIPS obligations. The new Act that was passed was the Trade Marks Act, 1999. This Act came into force in the year 2003. The Trade Marks Act, 1999 and the Trade Marks Rules, 2002, presently govern the trademark law in India. The object of the 1999 Act is to confer the protection to the user of the trademark on his goods and prescribe conditions on acquisition, and legal remedies for enforcement of trademark rights.

HISTORY OF TRADE MARK REGISTRATIONS

United Kingdom

Registration of trademarks in the United Kingdom was first provided for by the 1875 Trade Marks Act. Protection was, and still is, afforded after first use of the mark. The first trademark to be registered under the 1875 Trade Marks Act was the famous Bass “red triangle” design, which is still registered for “beer.”[23] It is considered as the oldest registered Trade mark in the world. It remains conceptually unchanged since the last 135 years. It is valid up to 1st January, 2022.[24]

Applicant’s nameTrademarkTrademark No.Date of GrantClassValidity
Bass and Companyimg-711st Jan, 187632Till 1st Jan, 2022

United States of America

The Federal Trade Mark Act of 1870 began to register the trademarks five years earlier to England. The first trademark to be federally registered in 1870 was a design mark for liquid paints, primarily composed of linseed oil and zinc oxide that was produced by Averill Paints Company of Newburgh, Ohio. The mark consisted of an eagle holding in its beak a pot of paint and a pennant with a slogan shown against an industrial background. However the Law of 1870 was later repealed as contradicting to the Constitution and the first registration was annulled.[25]

Applicant’s nameTrademarkTrademark No.Date of GrantClassValidity
Averill Chemical Paint Companyimg-8125st Oct, 1870Annulled

Australia

Australia respected rights acquired by use rather than by being the “first to file.” The first trademark registered under the 1905 Act was for the image of a pine tree; that registration is now owned by Fisons Plc, which uses the mark on chemical substances prepared for use in medicine and pharmacy.[26]

Applicant’s nameTrademarkTrademark No.Date of GrantClassValidity
Collison and Companyimg-912nd July 1905

India

The first registered trade mark in India is not traceable. However, the earliest trademark traceable is trademark No. 10 granted by Kolkata Trade mark Office on 1st June, 1942 for the mark BLACK AND WHITE (Device) to James Buchanan & Company Ltd. It is a British company involving in the manufacture of Whisky. This mark has been renewed and is valid up to 1st July, 2016.[27]

Applicant’s nameTrademarkTrademark No.Date of GrantClassValidity
James Buchanan & co. Ltdimg-10101st June, 194233Till 1st June, 2016

CONCLUSION

It is evident that, Trade mark is not a new form of IP and there have been marks, symbols, or graphics that have been associated with specific individuals or organizations throughout history. They have been used in advertisements, seals of approval, etc. The marks have been adopted and used by manufacturer or merchant in order to designate his or her goods or services. The qualitative and quantitative standardization of products led to the use of distinguishing signs to assist consumers in choosing their products. Throughout the history of trademark law, the law has worked to protect the manufacturers from infringers and consumers from inferior counterfeits or substitutes. The trademark consequently acquired its present financial, social and commercial importance with the development of mass production, distribution and consumption.

*Intern with Altacit Global and 1st year LL.M. student of Symbiosis Law School, Pune

** Trade Mark Department – Head with Altacit Global, e-mail: trademark@altacit.com

*** Solicitor-England and Wales, Patent and Trade mark Agent and Attorney with Altacit Global e-mail:ravindran@altacit.com

  1. “Patents, Copyrights, and Trademarks – A Look Back” by Rachel Ralston, Craig Fellenstein, Jaclyn Vassallo, available at http://www.informit.com/articles/article.aspx?p=366896 last visited on 08 December 2011
  2. Ibid
  3. Ibid
  4. http://www.tmprotect.idknet.com/eng/history.html last visited on 08 December 2011
  5. Ibid
  6. Ibid
  7. Ibid
  8. Ibid
  9. “Patents, Copyrights, and Trademarks – A Look Back” by Rachel Ralston, Craig Fellenstein, Jaclyn Vassallo, available at http://www.informit.com/articles/article.aspx?p=366896 last visited on 08 December 2011
  10. http://www.nls.ac.in/resources/ded/resources/IPR/IPRFeb11KA.pdf last visited on 07 December 2011
  11. http://www.tabberone.com/Trademarks/TrademarkLaw/History/History.shtml last visited on 07 December 2011
  12. Ibid
  13. http://writepass.co.uk/journal/2011/10/free-law-essay-uk-trademark-law-and-fashion-brands/ last visited on 09 December 2011
  14. http://www.ipo.gov.uk/types/tm/t-about/t-whatis/t-history.htm last visited on 08 December 2011
  15. Ibid
  16. http://www.iip.or.jp/translation/ono/ch2.pdf last visited on 08 December 2011
  17. Ibid
  18. Ibid
  19. http://www.inta.org/INTABulletin/Pages/EarlyTrademarkLegislationAroundtheWorldPartI.aspx Last visited on 12th December, 2011
  20. Ibid
  21. Mark J. Davison, Ann Louise Monotti, Leanne Wiseman, Australian Intellectual Property Law Pg. 64
  22. Paul Goldstein, Intellectual Property in Asia: Law, Economics, History and Politics Pg. 73
  23. http://www.inta.org/INTABulletin/Pages/EarlyTrademarkLegislationAroundtheWorldPartI.aspx Last visited on 12th December, 2011
  24. http://www.ipo.gov.uk/tm/t-find/t-find-number?detailsrequested=C&trademark=1 Last visited on 14th December, 2011
  25. http://www.tmprotect.idknet.com/eng/history.html last visited on 14th December 2011
  26. Ibid
  27. http://124.124.193.235/eregister/eregister.aspx last visited on 14th December 2011