TRADEMARK
ACT
MEANING OF TRADEMARK
A trademark or trade mark is a distinctive sign or indicator
of some kind which is used by an individual, business
organization or other legal entity to uniquely identify the
source of its products and/or services to consumers, and to
distinguish its products or services from those of other
entities
A trademark is a device which can take almost any form, as
long as it is capable of identifying and distinguishing
specific goods or services.
A trademark may be designated by the
following symbols:
for an Unregistered Trademark, that is, a mark used to
promote or brand goods)
(for an unregistered Service mark,
that is, a mark used to promote
or brand services)
(for a registered trademark)
A trademark is typically a name, word, phrase, logo, symbol,
design, image, sound or a combination of these elements.
There is also a range of non-conventional trademark
comprising marks which do not fall into these standard
categories, may therefore be visible signs (e.g. colors,
shapes, moving images, holograms, positions), or non-visible
signs (e.g. sounds, scents, tastes, textures).
Indian Trademark law
Indian trademark law provides protection to trademarks
statutorily under the Trademark Act, 1999 and also
under the common law remedy of Passing Off.
Passing off is a common law tort which can be used to
enforce unregistered trademark rights. The tort of
passing off protects the goodwill of a trader from a
misrepresentation that causes damage to goodwill.
Statutory protection of trademark is administered by the
Controller General Of Patents, Designs and Trade
Marks, a government agency which reports to the
Department of Industrial Policy and Promotion(DIPP),
under the Ministry of Commerce and Industry.
Indian Trademark law
The law of trademark deals with the mechanism of
registration, protection of trademark and
prevention of fraudulent trademark.
The law also provides for the rights acquired by
registration of trademark, modes of transfer and
assignment of the rights, nature of infringements,
penalties for such infringement and remedies available
to the owner in case of such infringement
HISTORY(Indian Context)
The law of trademark in India before 1940 was based on the
common law principles of passing off and equity as followed in
England before the enactment of the first Registration Act, 1875.
The first statutory law related to trademark in India was the Trade
Marks Act, 1940 which had similar provision like the UK Trade
Marks Act, 1938.
In 1958, the Trade and Merchandise Marks Act, 1958 was
enacted which consolidated the provisions related to trademarks
contained in other statutes like, the Indian Penal Code, Criminal
Procedure Code and the Sea Customs Act.
HISTORY(Indian Context)
The Trade and Merchandise Marks Act, 1958 was repealed by
the Trade Marks Act, 1999 and is the current governing law
related to registered trademarks.
Though some aspects of the unregistered trade marks have been
enacted into the 1999 Act, but they are primarily governed by the
common law rules based on the principles evolved out of the
judgments of the Courts.
Where the law is ambiguous, the principles evolved and
interpretation made by the Courts in England have been applied in
India taking into consideration the context of our legal procedure,
laws and realities of India.
Trademark
According to Section 2 (zb) of the Trade
Marks Act, 1999, “trade mark means a mark
capable of being represented graphically and
which is capable of distinguishing the goods or
services of one person from those of others and
may include shape of goods, their packaging
and combination of colours.” A mark can
include a device, brand, heading, label, ticket,
name, signature, word, letter, numeral, shape of
goods, packaging or combination of colours or
any such combinations
Trademark Classification in
India
Trademark in India is classified in about 45 different
classes, which includes chemical substances used in
industry, paints, lubricants machine and machine tools,
medical and surgical instruments, stationary, lather,
household, furniture, textiles, games, beverages
preparatory material, building material, sanitary
material, and hand tools, other scientific and
educational products.
These classes again are further sub-divided. The main
objective of trademark classification is to group
together the similar nature of goods and services. Here
are the classes for product and for services.
TRADEMARK
REGISTRATION
WHAT ARE THE TYPES OF
Under the Indian trademark law the following are the types of
trademarks that can be registered:
Product trademarks: are those that are affixed to identify goods.
Service trademarks: are used to identify the services of an entity,
such as the trademark for a broadcasting service, retails outlet, etc.
They are used in advertising for services.
Certification trademarks: are those that are capable of distinguishing
the goods or services in connection with which it is used in the
course of trade and which are certified by the proprietor with regard
to their origin, material, the method of manufacture, the quality or
other specific features
Collective trademarks: are registered in the name of groups,
associations or other organizations for the use of members of the
group in their commercial activities to indicate their membership of
the group.
Advantages of Trademark
Registration
Protects your hard earned goodwill in the business
Protects your Name / Brand Name from being used in a same or
similar fashion, by any other business firm, thus discourages others
from cashing on your well built goodwill
Gives your products a status of .Branded Goods.
Gives an impression to your customers that the company is selling
some standard Products or Services
The exclusive right to the use of the trade mark in relation to the
goods or services in respect of which the trade mark is registered.
To obtain relief in respect of infringement (misuse by others) of the
trade mark.
Power to assign (transfer) the trade mark to others for consideration.
Procedure/Steps for Trademark
Registration
Filing of an application for registration by a person claiming to be the
proprietor of a trademark, in the office of the Trade mark Registry, within the
territorial limits of the place of business in India.
Examination of the application by the Registrar to ascertain whether it is
distinctive and does not conflict with existing registered or pending
trademarks and examination report is issued.
Publication of the application after or before acceptance of the application in
the Trademark Journal.
After publication if any person gives notice of his opposition to the
registration within three months which may be extended to the maximum of
one month.
If the opposition has been decided in favour of the applicant of the
registration of trademark, the Registrar shall register the Trademark.
On the registration of the Trademark the Registrar shall issue to the applicant
a Trademark Registration
Today, as per the Trademark Rules, 2002, the application fees (similar to a
tax) are Rs. 3500 per trademark.
Term/Duration of a Trademark in
India
The term of registration of trademark is 10 (Ten) years,
but may be renewed subject to the payment of the
prescribed fee, in accordance with the provisions of the
Trademarks Act, 1999. An application for renewal of a
trademark can be filed within six months from Constantia
(Body) the expiry of the last registration of trademark
Use ofone
Generally, the
[Link]. andan®application
has filed symbols(pending
registration) can use the TM (trademark) designation with
the mark to alert the public of his exclusive claim. The
claim may or may not be valid. The registration symbol,
®,may only be used when the mark is registered
Trademark Infringement
Trademark Infringement is a violation of exclusive rights attaching
to a trademark without the authorization of the trademark owner or
any licensee. Trademark infringement mostly occurs when a person
uses a trademark which may be either a symbol or a design, with
resembles to the products owned by the other party. The trademark
owner may begin a legal proceeding against a party, which infringes
its registration.
Offences shall be punishable with imprisonment for a term of
minimum of six months but which may extend to three years and
with a minimum fine of fifty thousand rupees but which may extend
to two lakh rupees or more. For adequate and special reasons
mentioned in the judgement, the court may impose a sentence of
imprisonment for a term of less than six months or a fine of less than
fifty thousand rupees
Conclusion
The trade mark is for protecting the name of the product or services rather
the product itself;
Trade mark assures the customer about the source of a product, though the
quality of the product is not assured by the trade mark;
The trade mark should be distinctive;
Deceptively similar marks, geographical names etc. can not be registered as a
trade mark;
In India, the Trade Mark Act of 1999 is presently in force;
The term of trade mark protection is 10 years, which can be renewed from
time to time, indefinitely;
Trade mark can be assigned or transmitted;
Using deceptively similar marks, falsifying the mark or using unregistered
mark cause infringement under Trade Mark Act; and
The penalties against offences related to trade mark can range from fine to
imprisonment.
THANK YOU
