Trade Mark Ò
DIVINE LOGICS
What is a Trade Mark?
A 'Mark' may consist of a word or invented word, signature, device, letter, numeral, brand, heading, label, name written in a particular style, the shape of goods other than those for which a mark is proposed to be used, or any combination thereof or a combination of colors and so forth. Subject to certain conditions, a trademark may also be symbolised by the name of a person, living or dead.
For the purpose of registration, a mark chosen should not be deceptively similar to an existing mark of another person and not the one expressly prohibited under the Act. The marks devoid of any distinctive character, or which are only indicative of the kind, quality, quantity, purpose, value or geographical origin of the goods, or which are marks already in vogue in the trade due to their customary use may not be registered. But these disqualifications do not apply to marks, which have already acquired distinction due to their popularity and consistent use. The new Act also seeks to make internationally acclaimed brand names freely available for use in India.
Legislation (Indian Trade Mark Law)
The Trade & Merchandise Marks Act, 1958 has served its purpose over the last four decades. The government of India has notified September 2003 as the date for bringing in to force 'The Trade Marks Act, 1999' and 'The Trade Mark Rules, 2002' framed there under. The salient features of the Trademarks Act are the provision for registration of Trade Marks and Service Marks. For the purpose the 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.
What is covered under Trade Marks?
Trade marks may be registered in respect of any of the goods comprised in a described class of goods (Class 1 - 34). For the purpose of registration under the Act, the goods are divided into 42 classes, as specified in the IV Schedule to The Trade Marks Act, 1999 and these classes are based on the International Classification of such goods. At present, the protection of Act is extended to service providers which is covered under Class 35 - 42 known as the Service Mark or "SM").
Functions of Trade Mark
- A trademark serves the purpose of identifying the source or the origin of goods. Trademark performs the following four functions.
- It identifies the product and it’s origin. (No one can use this name in same style)
- It proposes to guarantee its quality. (Add value to your products / services, Title looks good and name becomes international)
- It advertises the product. The trademark represents the product. (Make yourself an established business entity)
- It creates an image of the product in the minds of the public particularly the consumers or the prospective consumers of such goods.
- It is essential for any Business to brand its products and services. (Improve quality of the business you are doing and improve sales)
- Trade marking has become essential for new generation Business houses. (Your sales staff can use this as a marketing tool)
- It is essential to protect the "Name and Style" which is the most valuable asset of any organization created by them. (Creates goodwill for the company)
DIVINE LOGICS assists you to get the name protected by trademarking your name by registering with the TM registry.
Who can apply for a Trade Mark?
The right to use a mark can be exercised either by the registered proprietor or a registered user. A person may apply for registration of a trade mark to the Trademark office under whose Jurisdiction the principal place of the business of the applicant in India falls. In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company's favor.
Before making an application for registration it is prudent to make an inspection of the already registered trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.
Rights Conferred by Registration (Remedies for Infringement and Passing-Off)
The registration of a trade mark confers on the registered proprietor of the trade mark the exclusive right to use the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain the relief in respect of infringement of the trade mark by others. The registration of a trade mark is not compulsory. However, without registration a owner of a trade mark cannot bring an action for infringement to protect the mark if it is copied by others. Suing for infringment of a trade mark is much simpler than launching a common law action for passing off to protect any unregistered trade mark.
The remedies are: - 'an action for infringement' in case of a registered trademark and 'an action for passing off' in the case of an unregistered trademark. While former is a statutory remedy, the latter is a common law remedy. In a suit for infringement or for passing off, the relief that the court may grant includes injunction and either damages or an account for profits with or without any order for delivery of the infringing labels and marks for destruction or erasure.
Although registration under the existing Act is prima facie evidence of validity of a trademark, yet the registration can not upstage a prior consistent user of trademark, for the rule is 'priority in adoption prevails over priority in registration'.
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Applying for Registration
Before applying for registration it is desirable to obtain preliminary advice regarding the distinctiveness of your mark from the Registrar by making a request on form TM-55.
A request can be made on form TM-54 with a prescribed fee to the Trade Marks Registry to obtain an official report to ascertain whether any identical or deceptively similar trade mark exists on the Register or pending for registration for the same goods or a personal inspection or search through the records of the Trade Marks Registry on may be done.
An application in the prescribed form with Govt. fee in one of the five office of the Trade Marks Registry located at Mumbai, Chennai, Delhi, Kolkata and Ahmedabad depending on the place where the applicant resides or has his principle place of business. The application is examined to ascertain whether it is distinctive and does not conflict with existing registered or pending trade marks and examination report issued. If it is found to be acceptable then it is accepted and advertised in the Trade Marks Journal to allow others to oppose the registration. If there is no opposition or if the opposition is decided in favour of the applicant then the mark is registered and a certificate of registration is issued.
After following the above procedure an application for trade mark may be made on form TM-1 with prescribed fee at the appropriate office of the Trade Marks Registry. The appropriate office means the office within whose territorial limits.
Territorial Jurisdiction
There is Trade Marks Registry and the Patents Office, combined under the Controller General of Patents, Designs and Trade Marks. The Head Office is in Mumbai, with branch offices in Kolkata, Chennai & Delhi. The validity of a trade mark extends to the whole of India, while applications for registration etc. are to the filed in the branch office, within whose territory, the principal place of business of the applicant is situated.
- MUMBAI (H.O): Maharashtra, M.P., Chattisgad and Goa.
- AHMEDABAD: Gujarat and Rajastan and the Union Territories of Daman, Diu, Dadra and Nagar Haveli.
- KOLKATA: Arunachal Pradesh, Assam, Bihar, West Bengal, Orissa, Manipur, Misoram, Meghalaya, Sikkim, Tripura and Union Territories of Nagaland, Andaman & Nicobar Islands.
- NEW DELHI: Jammu & Kashmir, Punjab, Hariyana, U.P., Himachal Pradesh, Delhi and The Union Territories of Chandigadh.
- CHENNAI: Andhra Pradesh, Kerala,Tamil Nadu, Karnataka and the Union Territories of Pondicherry and Lakshadweep Island.
Duration of Trade Mark
The present term of registration of a trademark is seven years, which may be renewed for a further period of seven years on payment of prescribed renewal fees. Under the new Act, the term of registration would be extended to ten years, subject to renewal.
But non-user of a registered trademark for a continuous period of five years is a ground for cancellation of registration of such trademark at the behest of any aggrieved party.
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