By Priya Adlakha and Tanvi Bhatnagar
In India, the Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’) inter-alia provides for registration, infringement and cancellation of ‘Certification Trade Marks’. In simple terms, ‘Certification Trade Mark’ refers to a mark upon a product/service, to apprise the consumers or public at large that a particular product or service meets the standards/ quality certified by the said proprietor.
A ‘Certification Trade Mark’ is defined under Section 2(1)(e) of the Act as under “means a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics from goods or services not so certified and registrable as such under Chapter IX in respect of those goods or services in the name, as proprietor of the certification trade mark, of that person”.
While it is interesting to note that some important provisions of the Act relating to registration/opposition of a trade mark, remedies against infringement, assignment, rights of registered user and permitted user etc. are not applicable on Certification Trade Marks, this Article aims to clarify the dilemma and misconception surrounding the protection and enforcement of Certification Trade Marks. Section 69-78 of Chapter IX of the Act deals with provisions relating to ‘Certification Trade Marks’.
PROTECTION AND ENFORCEMENT OF CERTIFICATION TRADE MARKS
REMEDY OF INFRINGEMENT:
Similar to Section 28 of the Act in respect of a ‘trade mark’, Section 78 of the Act provides that the proprietor of a Certification Trade Mark will have exclusive right to use the mark in relation to those goods or services for which it is registered, however the said exclusive right is subject to any condition and limitation to which the registration is subject to. One such pre- condition for registration of every Certification Trade Mark is provided under Section 70 of the Act itself i.e. that a mark shall not be registrable as a Certification Trade Mark in name of a person, who carries a trade of the same goods/services for which Certification Trade Mark is applied. In simple words, it means that if a person is trading in Medical equipments, he shall not be able to get a Certification Trade Mark registered in respect of Medical equipments. Such condition is imposed apparently to prevent the abuse of dominance which the proprietor may have while certifying and trading the same goods/services.
The pre-conditions for infringement of a Certification Trade Mark are given in Section 75 of the Act, which are not as broad as Section 29 of the Act in respect of infringement of a ‘trade mark’. As per Section 75 of the Act, a Certification Trade Mark is said to be infringed when:
- the said certification mark is being used by a person other than its registered proprietor or its authorized user under the regulations, in the course of trade;
- a mark which is identical or deceptively similar to the certification mark in relation to any goods or services in respect of which it is registered;
- the use is in such a manner as to render the use of the mark likely to be taken as being used as a trade mark.
If the above conditions as mentioned in Sections 75 and 78 of the Act, are satisfied, the proprietor shall have the remedy to file a civil suit for infringement of its Certification Trade Mark under Sections 75, 78, 134 and 135 of the Act. However, the relief of grant of damages in an infringement and passing off suit in respect of a Certification Trade Mark, shall be for nominal damages as is stated in Section 135 (3) of the Act.
It is also worth noting that since the provisions of Chapter XII of the Act (relating to offences and penalties, except Section 107 of the Act), are not applicable upon Certification Trade Marks. However, in case proprietor of certification marks wants to initiate criminal action against an infringer, they can file a complaint for offences of cheating, fraud and misrepresentation under the Indian Penal Code, 1960 before the concerned police station. However, if the police fails to register FIR, the proprietor can file a complaint under Section 156 (3) of the Code of Criminal Procedure, 1973 for passing directions to police for registration of FIR.
Though the law surrounding infringement of a ‘Certification Trade Marks’ seems to be quite clear and unambiguous on a plain reading, surprisingly, there are apparently no orders/judgements in this regard.
One such interesting judgement, we came across was passed by the Hon’ble High Court of Calcutta in Tea Board V. ITC, 2011 SCC OnLine Cal 2834, concerning allegation of infringement of Certification Trade Mark. The Plaintiff i.e. Tea Board challenged the order passed by a learned Single Judge of Calcutta High Court, wherein its application for interlocutory injunction against ITC was dismissed. The grievance of Tea Board was that ITC was operating a lounge under the name DARJEELING LOUNGE in its hotel in Kolkata, which is an infringement of its registered geographical indication ‘DARJEELING’, the name and logo and/or amounts to passing off or attempting to pass off its business or services so as to discredit the fame of DARJEELING tea as a geographical indication and/or to mislead persons as to the nature of the beverages sold at the said premises of ITC so as to allude a nexus with the registered geographical indications for the name DARJEELING or logo and to confuse persons in any manner. Tea Board in appeal alleged that since it is the registered proprietor of DARJEELING as a certification trade mark, it is the sole authority to certify that any tea marked by the said name DARJEELING or logo is guaranteed to be 100% DARJEELING tea originating from the 87 tea gardens in the Darjeeling District of West Bengal and possesses certain organoleptic qualities and characteristics. The Hon’ble Division Bench while rejecting the contentions of Tea Board held that the Board only had certification trademark within the meaning of Section 2(e) of the Trade Marks Act 1999. It is not the case of the Tea Board that ITC is using the word ‘DARJEELING’ for the purpose of falsely asserting that it has the right to certify that the tea is served in the lounge is grown in the region Darjeeling nor has ITC used its logo. The Hon’ble Court observed that we must not lose sight of the fact that the protection given in respect of certification trademarks relates to any goods or services in respect of which it is registered and the Plaintiff has not registered its name as holder of the mark DARJEELING in respect of hotel business but for the purpose of certification of tea as one grown in Darjeeling district, where benefit of Sections 28 and 29 of the Act is not available. On the claim of passing off, the Hon’ble DB hold that the Tea Board has not even made out a prima facie case of passing off and therefore, dismissed the appeal upholding the order of the learned Single Judge. In the year 2019, the suit also came to be dismissed against Tea Board and the Judgement throws more light on both the statues i.e. Trade Marks Act, 1999 and Geographical Indications of Goods (Registration and Protection) Act, 1999 (hereinafter referred to as ‘the GI Act’) in respect of relief of injunction for infringement of a Certification Trade Mark as well as passing off action.
REMEDY OF PASSING OFF ACTION:
Chapter IX of the Act is silent on the remedy of passing off action in case of a ‘Certification Trade Mark’. So the question that now arises is, whether a suit for passing off action, which is a common law remedy under the law of Torts, is maintainable in respect of a registered/unregistered Certification Trade Mark, from being misused by a third party?
The answer would be ‘Yes’ for two apparent reasons (a) that Section 69 of Chapter IX the Act, which states that certain provisions of the Act do not apply in respect of Certification trade Mark, does not bar the applicability of Section 27 (action for passing off) in respect of a Certification Trade Mark; and (b) a plain reading of Section 27 of the Act, itself do not suggest that it is in respect of a regular trade mark only and not a Certification Trade Mark.
Inference can be taken from the parallel laws also. In this regard, it is also pertinent to mention that Section 22 of the GI Act, provides relief of passing off only in respect of registered Geographical Indications, whereas Section 66 of the GI Act which deals with jurisdiction of a Civil Court, mentions suits concerning passing off action of a Geographical Indication whether registered or unregistered Section 67 of the GI Act prescribes reliefs that a Court can grant in a passing off suit as well. Therefore, it can be safely concluded that suit for passing off action is maintainable in respect of an unregistered Geographical Indication as well.
In India, WOOLMARK, AGMARK, BIS, HALLMARK and ISI are some of the well-recognized examples of Certification Trade Marks. Though, Certification Trade Marks found there place even in the repealed Trade and Merchandise Act, 1958 however, this section of a Mark is yet to start its journey of interpretation through judicial pronouncements.