Can a person in India apply for a trademark which is similar to a work Copyrighted in some other country?
The International Copyright Order, 1999 provides copyright protection for foreign nationals whose countries are signatories to the Berne Convention, which India is also a signatory. This order safeguards foreign nationals' creative works in India from any infringement.
According to the Copyright Act of 1957 (hereinafter referred to as the "Act"), the term "foreign work" is not defined. However, it can be argued that any work that does not fall under the definition of "Indian Work" as stated in Section 2 (1) of the Act is considered "foreign work" for the purposes of defining the term. India has joined the following international conventions on copyright and neighbouring (related) rights in order to safeguard Indian works in other nations.
The International Copyright Order, 1999 was created to enable the creators and owners of works covered by foreign copyright to enforce their rights outside of their home countries. The copyright of citizens of nations that are parties to the Berne Convention for the Protection of Literary and Artistic Works is protected in India, according to Section 40 of the Copyright Act, 1957, read with the International Copyright Order, 1999.
The provisions with regard to enforcing the rights under the Copyright Act 1957 are also available to the foreign copyright holders because the foreign works are protected under the Copyright Act 1957, as per the International Copyright Order 1999. The protection provided by the Copyright Act of 1957 is extended to foreign works under paragraph 3 of the International Copyright Order 1999, and as a result, the foreign works are subject to both civil and criminal remedies for infringement under Chapters XII and XIII.
A trademark shall not be registered under Section 11(3)(b) because its use in India may be prohibited by applicable copyright laws.
Both of the aforementioned rules suggest that a foreign copy right is treated as copyright in India and that a trademark that violates the rights granted by copyright is not eligible for registration.
However, in the recent judgment the court held that “The 13th Lok Sabha debates, on which both sides placed reliance, fortify the conclusion. Despite a specific recommendation, in the Debates, to further elaborate Clause 11(3)(a) of the Trademarks Bill-which metamorphosed into Section 11(3)(a) of the Trademarks Act after Presidential sanction-to protect India's commitments under the Universal and Berne Copyright Conventions, and its obligations under the TRIPS agreement, these suggestions were never acted upon. The legislative intent was always, therefore, to restrict the proscriptions against registration to the intellectual property rights available under intellectual property legislation in India.
In that view of the matter, the learned Deputy Registrar cannot be faulted in declining the objection of the appellant against registration of the impugned mark, predicated on Section 11(3) of the Trademarks Act.”
It is therefore concluded that intellectual property rights are protected by Indian intellectual property law, which also covers international copyright 1999, which gives copyright owners abroad additional legal protection. Therefore, it is against section 11(3)(b) of the Trademark act of 1999 to register a trademark that is protected by copyright in another nation.