Book Release / Beyond the Sandbox: A Research Agenda for the Interfaces of Indian Trade Mark Law
I am delighted to share that a book I had the pleasure of editing over the summer, Beyond the Sandbox: A Research Agenda for the Interfaces of Indian Trade Mark Law, is now out in the world.
Beyond the Sandbox is my fourth book title, following two editions of Imperfect Recollections: The Indian Supreme Court on Trade Mark Law (2020, 2024, latest edition available in India here and here) and The Finished Article: Essays on Indian Designs Law (2022, available in India here).
Summary
India has witnessed record-breaking trade mark filing numbers and an explosion of specialized trade mark litigation in commercial courts in the past decade. While these developments have understandably grabbed mindspace, they have also caused Indian trade mark law to retreat deeper and deeper into its own sub-universe. As a result, despite a rich history spanning nearly a hundred and seventy-odd years, Indian trade mark law and practice arguably leans more heavily on self-contained foundations today than it ever has before.
Beyond the Sandbox: A Research Agenda for the Interfaces of Indian Trade Mark Law posits that much of what is essential to Indian trade mark law and practice lies beyond these narrow foundations. This collection of essays places in focus selected avenues of interface between trade mark law and other legal regimes in India. Drawing on research into ownership and financing, public law, consumer protection, company law, customs and criminal law, Beyond the Sandbox presents a showcase of Indian trade mark law in its diverse avatars.
Chapter Notes
Beyond the Sandbox is arranged into six essays.
In Chapter 1, Partly Begun, Far from Done: Ownership and Financing under India’s Trade Marks Act, I contrast the limited statutory infrastructure offered by India’s Trade Marks Act 1999 for deploying trademark rights as tools of security and financing and the expansive potential tied to these purposes that exists elsewhere in Indian corporate, insolvency and financing law. The Chapter diagnoses some key doctrinal and operational weaknesses across the board in Indian law that make it challenging for trademarks to be used to raise finance. It concludes with a few prescriptions for improving the uptake of trademark-based financing and sketches out a detailed research agenda for future research in this field.
In Chapter 2, Bad Taste Or Bad Law? Rethinking Morality-Based Refusals under The Trade Marks Act 1999, Kruti Kachhwaha explores the interface between constitutional law, administrative law, and trade mark regulations through the lens of Section 9(2)(c) of the Trade Marks Act. Section 9(2)(c) permits refusal of marks containing ‘scandalous’ or ‘obscene’ matter but offers no guidance as to how such determinations are to be made, consequently vesting unguided discretion in trademark examiners that results in inconsistency in outcomes. So, what makes a trademark ‘scandalous’ or ‘obscene’, the mark itself or the meaning one chooses to see in it? Drawing upon registry practices, this Chapter situates the discretion within Indian constitutional and administrative law principles to demonstrate that the lack of clear standards or guidance thereof, combined with subjective interpretations of scandalousness and obscenity, risks arbitrariness under Article 14 and can have a chilling effect on freedom of speech and expression under Article 19(1)(a) of the Indian Constitution.
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In Chapter 3, Direct Selling in India’s E-Commerce Era: Regulatory Framework and Trademark Tensions, Priyanka Sonowal discusses the emergence of Direct Selling Entities (DSEs) alongside the rapid growth of e-commerce platforms. These twin developments, while undoubtedly benefiting the Indian economy, have also visited legal uncertainty at the intersection of DSEs, trademark law, and consumer protection law. Prominently, this Chapter highlights the fragmented regulatory framework governing DSEs, the landmark Delhi High Court decision in Amazon Seller Services v Amway India Enterprises, and the subsequent introduction of the Consumer Protection (Direct Selling) Guidelines under the Consumer Protection Act in 2021. The Chapter processes the enforceability of these guidelines, particularly the requirement of prior consent from DSEs for listing products on e-commerce platforms in light of Sections 30(3) and 30(4) of the Trade Marks Act, which permit the resale of lawfully acquired products under limited circumstances.
In Chapter 4, Drishti Banerjee examines a fascinating aspect of the interface between company law and trademark protection in a contribution titled “Too Nearly Resembles”: Corporate Name Disputes from Administrative Rectification to Trademark Litigation. This Chapter studies the issue of company name rectification and its relation with trademark infringement actions. It emphasizes that Section 16 of the Companies Act 2013 creates a grey zone and multiple overlapping legal questions at its intersection with potential actions for infringement under Section 29(5) of the Trade Marks Act. The Chapter advances three key propositions. The first is that the resemblance inquiry under company law and the infringement analysis under Section 29(5) of the Trade Marks Act, 1999 are decidedly different. The second is that the practice of Regional Directors under the Companies Act in rejecting Section 16 applications in favour of deferring to civil courts seized of trademark infringement claims amounts to a synthetic refusal to exercise a statutory function. Finally, the Chapter emphasizes that the problems created by this overlap are symptomatic of a broader architectural problem of fragmented commercial identifier governance, and that preserving the distinction between these functions is necessary for a coherent reading of company law and trademark law in company name cases.
Chapter 5, The Interface Between Customs and Trademark Law in India: Border Measures, Procedural Design, and Doctrinal Limits, is a contribution by Akriti Shrivastava. This Chapter highlights that, in cases where products suspected of trademark infringement are received at the Indian border, the legal enforcement is more akin to an administrative customs regime rather than as a criminal trademark regime. This Chapter opens with a broad survey of the various legislations implicated in such cases: the top-level power represented by the Customs Act 1962, the odd fixes supplied by the Trade Marks Act, and the operative engine of in the form of the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007. A second issue taken up in this Chapter is the challenge posed by deciding the proper course of action in cases where the products at issue are genuine but unauthorized by the trademark proprietor rather than the traditional and archetypal case where the products at issue are obvious counterfeits. The Chapter concludes that the effectiveness of the Indian framework will fall to be determined by how it engages with various stakeholders, including customs authorities, trademark rightsholders and importers — at different stages of the legal process.
Finally, in Chapter 6, Superficial Decriminalization of Trademark Offences in India: A Post-Jan Vishwas Analysis, Ishika Sehgal takes up the criminal dimensions of trademark infringement. This Chapter offers a broad-ranging discussion and investigation of the decriminalization-flavoured amendments brought into the Trade Marks Act by the Jan Vishwas (Amendment of Provisions) Act 2023. The Chapter suggests that the Jan Vishwas amendments are in the nature of superficial interventions that do not address either deep-rooted problems in criminal trademark infringement cases or commit fully to decriminalization of trademark infringement. Instead, they furnish an alternative adjudicatory mechanism for a few categories of such cases — which has taken the shape of the newly introduced Sections 112A and Section 113B in the Trade Marks Act — that actually raise fresh concerns about how criminal trademark infringement cases will be processed in the future.
Taken together, these contributions provide strong backing for the view that the application of trade mark law is fundamentally shaped by dialogue with both private and public law. In fact, how trade mark law exists as the intersections of these dialogues is often far removed from or entirely different in character to how it is traditionally understood.
The endeavour of this title, therefore, is to challenge some of that traditional understanding, and hopefully to spark future discussions on Indian trade mark law that guided by the pulls and pressures of what it looks like beyond its sandbox.
Availability
The book is now available to order online at the following links (please check your delivery area for availability):
Please feel free to reach out to me on email or in the replies below with any questions, comments or feedback on the book — I would love to hear from you!
