Trademark

ORIGINS

BRAND EQUITY is becoming one of the most valuable assets in this competitive global economy. Your name is now your fortune. It is absolute necessary & crucial that you should protect your brand and benefit from the goodwill and image associated with it. You can do this only by registering your Trademark which is one of your intellectual properties. Trademark registration not only protects your investment of yesterday in brand building, but also enables you to commit resources for tomorrow with confidence.

Trademark registration is the most essential aspect of any Business House. Any Brand Name needs to be registered for the following reasons :

i) To avoid Duplication of Mark by any competitor.

ii) To Protect Goodwill created by a Business House over the

years in the competitive market.

iii) To Build & Protect the Image of Your Brand Name.

ADVANTAGES

From ancient times human beings have been under the process of creating and innovating things, during pre-historic period man had made stone, jewellery, hunting materials, vessels etc, when spirituality started to sprout up he made figurines of gods and goddesses. Originally, marks were placed on objects to identify ownership and to deter would be thieves. By this way the ancient people tried to control low quality goods, and as the maker of the product was identified automatically the infringers were punished.

The more a trademark came to be known the more it inspired confidence in the goods and services to potential clients. When a mark was placed it meant that any other third party other than the manufacturer did not have any right over it, in a large way it helped deter people with vested interest.

LEGISLATION

Trademark and Merchandise Act 1958.

This Act was to provide for registration and better protection of Trademarks and for prevention of the use of fraudulent marks on merchandise. This Law also enables the registration of trademarks so that the proprietor of the trademark gets legal right to the exclusive use of the trademark. The objective of this act was easy registration and better protection of trademarks and to prevent fraud.

Trademark Act 1999

The reappellation of the Trademarks and Merchandise Act gave rise to the Trademark Act 1999; this was done by the Government of India so that the Indian Trademark Law is in compliance with the TRIPS obligation on the recommendation of the World Trade Organisation. 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. It was for the first time protect service marks and give provision of registration for collective marks, it also differentiated between well known trademarks and trademarks in general, and also special treatment and rights are envisaged for well known trademarks. The act of 1999 also gives police the right to arrest in case of infringement. There are some points of changes that are present between the 1958 act and 1999 act, it can be said that the 1999 act is a modification of the 1958 act, it has provided exhaustive definitions of terms frequently used, enhanced punishment for offenders, increased the period of registration, registration of non- traditional trademarks. The changes can be summarized as below:-

Introduction of Service Marks, Collective Marks & Well-known Marks concept
Enlarged scope of registration
Stringent punishment
Appellate Board
Expedited procedure
Enhanced renewal period
License agreements do not need to be compulsorily registered.
Marks may include the shape of goods & combination of colours.

Trademark Rules 2002

The rules of this act are called as Trademark Rules 2002. Both the Act and its set of rules came to effect on September 15th 2003. The trademark act 1999 and its trademark rules 2002 presently govern Indian Trademark Laws in India. Laws of trademarks are based on distinctiveness and deceptive similarity. If distinct signs are freely used the brand equity created by one person will be freely used by another. The value of distinctive sign depends on sales volume and public association of sign with quality.

Trademark (Amendment) Act, 2010

Trademarks (Amendment) Rules,2013 .

PROCEDURE

The trademark application procedure in India involves Search, Drafting TM application, Filing, Examination, Publication or Advertisement, Opposition, Registration and Renewal.

1.Search for availability

A Search of the Brand Name should be conducted through Trade Marks Registry on all India level in order to confirm whether the mark is available for adoption.

2.Drafting Trademark Application (Filling Documents)

An application should be made to The Registrar of Trademarks in the prescribed format containing the details of your application. It should be error free in terms of your business description reciprocating the appropriate class, date of usage, if any and other details.

3.Filling of Trademark Application

The Trademark application should be filled in the appropriate office of the Trademarks Registry depending upon the jurisdiction of your principal place of business along with prescribed Government Filling Fees in DD or Payorder.

Upon filling, the registry acknowledges the submission by providing a filling receipt containing your Proprietary Code Number and Application Number. Now the Brand Name can be written with superscript of ^TM

4.Examination of Trademark Application

After an application is filed the same is then examined by the Registrar with regard to the distinctiveness, possibility of deceptiveness and conflicting trademarks. If an objection to registration is raised, an official examination report will be issued by the Registrar within 3 months to 1 year depending on the backlog at the registry. The Registrar may accept or refuse the application subject to the provisions of the act. An application can be refused/objected by the Registrar on relative or absolute grounds:

a). Relative Grounds:

A mark is similar/ identical to an earlier trademark for the same or similar goods/ services.
A mark which is similar/ identical to an earlier trademark in respect of different goods/services.

The above categories of marks may however be registered if the proprietor of the earlier trademark consents or there has been an honest concurrent use of the later mark.

b). Absolute Grounds:

If the trademark is devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of others.
If the trademark consists exclusively of the marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origins or the time of productions of the goods or rendering of the service or other characteristics of the goods or services.
If the trademark consist exclusively of marks or indications which have become customary in current language or in the bona fide and established practices of the trade.

However, a trademark which may be initially refused on absolute grounds can be registered if it acquires a distinctive character as a result of extensive and continuous use by virtue thereof, it being associated with the trademark owner alone.

5.Replying to the Examination Report

Further the objections raised by the Registrar with regard to an application, is forwarded to the applicant and the applicant has to file an appropriate reply with the supporting documents to the official objections within one month

6.Acceptance or Show Cause Hearing Notice

The Registrar may accept the application on the basis of the reply and documents filed or may list the application for hearing.

7.Show Cause Hearing Notice

The show cause hearing should be attended by a legal practitioner having sound knowledge of the subject.

The results can be

Accepted : The hearing authority accepts the argument and documentary evidence
Refused : The hearing authority rejects the argument.
Withdrawn : The hearing authority suggests some changes to the mark – reapply.
Abandoned: The hearing authority abandons the application in lack of prosecution.

8. Advertisement

When an application for registration of a trademark is accepted, the Registrar advertises it in the official Trademarks Journal, which is published all over India. An application is advertised in the Trademarks Journal so as to invite the public for filing opposition against the registration of a mark if any.Upon publication of the trademark in the Trademarks Journal, any person can oppose as to the registration of the said trademark by filing a notice of opposition within the prescribed period of three months from the date the Trademarks Journal is made available to the public. The time period to file the notice of opposition can be extended by a maximum period of one month upon filling a specified request for extension of time along with the prescribed fee, made before the expiry of the statutory period of three months.

9.Registration & Renewal

The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is then registered for a period of 10 years from the date of filing of the application and the registration certificate is issued. Now the mark can be represented with the symbol R

The trademark can be renewed from time to time for an unlimited period by payment of renewal fees, failing which the mark becomes liable to be removed from the registry on account of non-renewal. Each renewal term is for a period of 10 years.

FAQ

1.What is a trade mark?

A trade mark (popularly known as brand name) in laymans language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking.

The legal requirements to register a trade mark under the Act are:
The selected mark should be capable of being represented graphically (that is in the paper form).
It should be capable of distinguishing the goods or services of one undertaking from those of others.
It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.

2.How to select a trade mark?

3.How to select a trade mark?

If it is a word it should be easy to speak, spell and remember.

· The best trade marks are invented words or coined words.

· Please avoid selection of a geographical name. No one can have monopoly right on it.

· Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc)

· It is advisable to conduct a market survey to ascertain if same/similar mark is used in market.

4. What is the function of a trade mark?

Under modern business condition a trade mark performs four functions

· It identifies the goods / or services and its origin.

· It guarantees its unchanged quality

· It advertises the goods/services

· It creates an image for the goods/ services.

5.Who can apply for a trade mark and how ?

Any person claiming to be the proprietor of a trade mark used or proposed to be used by him may apply in writing in prescribed manner for registration. The application should contain the trade mark, the goods/services, name and address of applicant and agent (if any) with power of attorney ,period of use of the mark and signature. The application should be in English or Hindi. It should be filed at th appropriate office.

6.How to apply for a trade mark in respect of particular goods or services?

It is provided under the Trade Marks Act,1999 that goods and services are classified according to the International Classification of goods and services. Currently schedule IV of the Act provides a summary of list of such goods and services falling in different classes which is merely indicative. The Registrar is the final authority in the determination of the class in which particular goods or services fall. The Schedule IV of the Act is annexed at the end of this questionnaire on trade marks. For detailed description of other goods and services please refer to the International Classification published by WIPO or contact the local office for assistance..

7.What are different types of trade marks available for adoption?

Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.

· An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.

· Letters or numerals or any combination thereof.

The right to proprietorship of a trade mark may be acquired by either registration under the Act or by use in relation to particular goods or service.

· Devices, including fancy devices or symbols

· Monograms

· Combination of colors or even a single color in combination with a word or device

· Shape of goods or their packaging

· Marks constituting a 3- dimensional sign.

· Sound marks when represented in conventional notation or described in words by being graphically represented.

8. What purpose the trade mark system serves ?

It identifies the actual physical origin of goods and services. The brand itself is the seal of authenticity.

· It guarantees the identity of the origin of goods and services.

· It stimulates further purchase.

· It serves as a badge of loyalty and affiliation.

· It may enable consumer to make a life style or fashion statement.

9. What are the benefits of registering a trade mark?

The registration of a trade mark confers upon the owner the exclusive right to the use of the registered trade mark and indicate so by using the symbol (R) in relation to the goods or services in respect of which the mark is registered and seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc. Also, where two or more persons have registered identical or nearly similar mark due to special circumstances such exclusive right does not operate against each other.

10. What are the sources of trade mark laws?

The national statue i.e., the Trade Marks Act,1999 and rules thereunder .
· International multilateral convention.
· National bilateral treaty.
· Regional treaty.
· Decision of the courts.
Office practice and rulings
· Decision of Intellectual Property Appellate Board.
· Text books written by academician and professional experts.

11. What does the Register of trade mark contain ?

The register of trade mark currently maintained in electronic form contains interalia the trade mark the class and goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred; the address of the proprietors; particulars of trade or other description of the proprietor; the convention application date (if applicable); where a trade mark has been registered with the consent of proprietor of an earlier mark or earlier rights, that fact.

12. Can any correction be made in the application or register?

Yes. But the basic principle is that the trade mark applied for should not be substantially altered affecting its identity. Subject to this changes are permissible according to rules detailed in the subordinate legislation.

13.Can a registered trade mark be removed from the register?

Yes. It can be removed on application to the Registrar on prescribed form on the ground that the mark is wrongly remaining on the register. The Registrar also can suo moto issue Notice for removal of aregistered trade mark.

Differentiate between Trademarks Act 1999 Trade and Merchandising Marks Act, 1958?
The newly enacted Act has some features not present in the 1958 Act and they are
Registration of service marks, collective marks and certification trademarks.
Increasing the period of registration and renewal from 7 years to 10 years.
Allowing filing of single application for registration in more than one class
Enhanced punishment for offences related to trademarks.
Exhaustive definitions for terms frequently used.
Simplified procedure for registration of registered users and enlarged scope of permitted use.
Constitution of an Appellate Board for speedy disposal of appeals and rectification applications, which at present lie before High Court.
Is registration of Trademark compulsory?
Registration of a trade -mark is not compulsory. However, the Registration of the trademark establishes that the registered owner is the proprietor of the mark covered by the registration.
Can unregistered proprietor institute Trademark infringement proceeding?
No. The proprietor of an unregistered trademark shall not be entitled to institute any proceeding to prevent, or to recover damages for, the infringement. It is possible to file a suit against ‘passing off’ under common law if the previous usage can be established by the plaintiff.
What is Nice classification?
The Nice Classification consists of a classification of goods and services for the purposes of registering trademarks and service marks. The Nice Classification is based on a multilateral treaty administered by WIPO. This treaty is called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, which was concluded in 1957. The referred agreement was entered in the city called ‘Nice’ in Southeast France and thus the Classification is commonly referred as ‘the Nice Classification’. The Nice Agreement is open to States party to the Paris Convention for the Protection of Industrial Property.
What is meant by deceptively similar work?
The expression “deceptively similar” in relation to a mark has been defined as that which so nearly resembles the other mark as to be likely to deceive or cause confusion.
Can a single application be made for different class of goods or services?
Yes. A single application can be made for different class of goods or services included in any one class from a convention country. A single application can also be made for series trade mark.
Who are the Statutory Authorities of Trademark?
The Central Government, by notification in the Official Gazette, appoint a person to be known as ‘The Controller General of Patents, Designs and Trade Marks’ who shall be The Registrar of Trade Marks positioned as the statutory authority. A Joint Registrar, Deputy Registrars, Assistant Registrars, Examiners of Trade Marks and a complement of ministerial staff assist the Controller General in the discharge of his functions.
What is the Classification of goods adopted in India?
Section 7 of the 1999 Act provides that the Registrar shall classify goods and services in accordance with the 7th Edition of international classification for registration of trademarks, which is known as Nice Classification.
What cannot be registered as Trademark?
Descriptive words, surnames and geographical names are not prima facie registrable.
Can Trademark be removed on ground of non-use?
Yes. The life of a trademark depends on its actual use. Section 47 of the Act provides that a trademark maybe removed from the Register on ground of non–use.
Can a foreign language be registered as Trademark?
A word in a foreign language may be considered as an ‘invented word’ for the purpose of registration as a trademark.
Can a registered Trademark be assigned or transmitted?
A registered trademark is assignable and transmissible. The proprietor of the registered trademark has power to assign or transmit the trademark with or without the goodwill of the business concerned. The assignment or transmission can be for all of the goods or services covered by such trademark or only some of such goods or services.

The registered proprietor and the proposed registered user have to jointly apply in the prescribed manner to the Registrar enclosing with the application the written agreement between them and an affidavit of the registered proprietor or a person authorised by him, giving particulars of the relationship between them.

Registered user however shall have no right to assign or transmit right to use the trademark.

14. Does non-use of the mark cause cancellation?

Yes, there is a cancellation system on the ground of non-use of a registered mark or fraudulent obtaining of the trademark by filing petition for rectification of the trademark under Section 92 of the Trademarks Act.

15. What do you understand by principal place of business in India?

Rule 4 of the Trade Marks Rules, 2002 defines that the principal place of business in India is the place where the business is carried on at that particular place only, but where the business is carried on at more than one place then place mentioned by the person, carrying on the business, as principal place of business