the trademarks act

8/10/2019 The Trademarks Act

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THE TRADEMARKS ACT


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During the British regime in India the bigmerchants and businessmen who hadestablished their mark in the market in

respect of certain goods under theparticular brand name, style or design feltthey should continue to be sold or tradedunder the same brand name, style or

design and no other person shall beallowed to adopt that brand name, style ordesign.


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The Government then enacted the Indian

Merchandise Marks Act, 1889 and with

development and changes, on 25thNovember 1958 The Trade And Merchandise

Marks Act came into force.


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WHAT IS A TRADEMARK?

A trademark is a mark used in relation to

goods for the purpose of indicating a

connection between the goods and some

person having the right as proprietor to

use the mark


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It is a visual symbol in the form of a word,device or a label applied to articles of

commerce with a view to indicate to the

purchasing public that they are goodsmanufactured or otherwise dealt in by a

particular person or a particular organisation

as distinguished from similar goods

manufactured or dealt in by others


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FUNCTIONS OF A TRADEMARK -A

trademark serves the purpose of

identifying the source or the origin of

goods. Trademark performs the followingfour functions.

It identifies the product and its origin.

It proposes to guarantee its quality.


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It advertises the product. The trademarkrepresents the product.

It creates an image of the product in the minds of

the public particularly the consumers or theprospective consumers of such goods.


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MARKS NOT REGISTERABLE

The use of which would be likely to deceive orcause confusion.

A mark the use of which would be contrary to

any law for the time being in force


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A mark comprising or containing scandalous

or obscene matter

A mark comprising or containing any matterlikely to hurt the religious susceptibilities of

any class or section


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A mark which would be disentitled to protection

in court of law

A mark which is identical with or deceptively

similar to a trademark already registered in

respect of the same goods or goods of the

same description


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A word which is the accepted name of anysingle chemical name or chemical compound

in respect of chemical substances.

A geographical name or a surname or apersonal name or any common abbreviation

thereof or the name of a sect, caste or tribe in

India.


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TRADEMARKS ACT 999

Trademark

The definition has been widened to

include the 'color combination' and'shape of goods'.


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Service mark

The new definition of 'service mark' has been

included for the benefit of service-orientedestablishments such as Banking,

Communication, Education, Finance,

Insurance, Chit funds, Real Estates, Transport,Storage material treatment, Processing, Supply

of electrical or other energy, Boarding, lodging,

Entertainment, Amusement, Construction,Repair, Conveying of news or information and

advertising .


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Well known trademark

The new definition for 'well known trademark '

has been provided for the benefit of atrademark being used by the substantial

segment of the public.


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Renewal

The renewal of registration of a

trademark should be made for every tenyears instead of seven years under the

present Act.


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REGISTRATION

WHO CAN APPLY

Any person who claims to be a proprietor

of a trademark and is desirous ofregistration of the mark can apply. The

application may be made in the name of

an individual, partners of a firm, aCorporation, any Government

Department, a trust or joint applicants.


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APPLICATION

After completing all specifications on theprescribed application form, an applicationshall be filed in the office of the trademarkRegistrar "within whose territorial limits the

principle place of business in India of theapplicant or in the case of the joint applicantsthe principal place of business in India of theapplicant whose name is the first mentioned

in the application, as having the place ofbusiness is situated.


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Every application for registration of a

trademark shall contain a representation ofthe mark in the place provided in the form for

the purpose. Ten additional representations of

the mark have to be supplied with the

application.


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Upon submission of an application for

registration of a trademark, there can be fouroutcomes:

a. The application is accepted as it is.

b. The application is accepted subject tocertain amendment.

c. The application is accepted but latter it is

found to have been accepted in error. d. The application stands rejected.


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ADVERTISEMENT

Soon after acceptance of the application, theapplication is advertised in the TrademarksJournal.

Any person may, within three months fromthe date of the advertisement orreadvertisement of the application forregistration or within such further period notexceeding one month, give notice in writing to

the Registrar of opposition to the registration.If such an opposition does not arise then themark is deemed to be registered.


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TIME PERIOD -The registration of atrademark shall be for a period of seven

years, but it may be renewed from time to

time.


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INFRINGEMENT Infringement of a trademark occurs if a

person other than the registered proprietor

in the course of trade, in relation to thesame goods or services for which the

mark is registered, uses the same mark or

deceptively similar mark.


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ESSENTIALS OF INFRINGEMENT

1) The taking of any essential feature ofthe mark or taking the whole of the mark afew additions and alterations wouldconstitute infringement.

2) The infringing mark must be used in thecourse of trade, that is, in a regular tradewherein the proprietor of the mark is

engaged.


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3) The use of the infringing mark must be

printed or usual representation of the mark in

advertisements, Invoices or bills. Any oral use

of the trademark is not infringement.

4) Any or all of the above acts would

constitute infringement.


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REMEDIES

The proprietor of a trademark has a right

to file a suit for infringement of his right

and obtain Injunction- an injunction restrains the

defendant from using the offending mark

pending the trial of the suit or until furtherorders.


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Damages in assessing the damages the

important question is what is the loss sustained

by the plaintiff. The loss must be the natural

and direct consequence of the defendants acts.The object of damages is to compensate for

loss or injury.


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Accounts of profits. Where a plaintiff claims the

profits made by the unauthorised use of histrademark, it is important to ascertain to what

extent he trademark was used, in order to

determine what proportion of the net profitsrealised by the infringer was attributable to its

use.


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QS

What is a trademark?

A trademarkpopularly known as brand

name, is a visual symbol in the form of aword or a device or a label applied to the

commercial goods or service to enable

the consumer public to identify onetrader's goods from similar goods of other

traders.

What is a service mark?
http://www.trademarksmanagement.com/trademarks-trademarks.htmlhttp://www.trademarksmanagement.com/trademarks-trademarks.html


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What is a service mark?

Under the Trade and Merchandise Marks Act ,

1958 registration of 'service mark' is not possible

but under the new Trade Marks Act ,1999registration of 'service mark' can be done.

Such 'service mark ' can be used as a trade mark

but applied to services rather than goods i.e.

Banking , Communication ,Education ,Financing

,Insurance ,Chit Funds, Real Estate , Transport ,

Storage material treatment , Processing , Supply

of electrical or other energy , Boarding andLodging , Entertainment , Amusement ,

Construction ,Repair , Conveying of news or

Information or Information and Advertising.
http://www.trademarksmanagement.com/trademarks-trademarks.htmlhttp://www.trademarksmanagement.com/trademarks-trademarks.html


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Whether registration of Trade Mark is

compulsory under the Act?

No. Registration of a trade mark is notcompulsory. But for better protection it is

advisable to register a trade mark.


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How to acquire a right of property in a trade

mark?

A person may acquire a right of property in

a trade mark in the following modes:

a) By use of the mark in relation to particular

goods ;or

b) By registration under the Act; or

c) By assignment or transmission of the

right from another person


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Whether ' user' is very important in trade

mark?

Yes . A trade mark must be used in relation to

the goods for which the registration is sought or

obtained .If it is not used but merely renewed

from time to time , then it will be possible that amark may be removed on the ground of ' non-

user' on a petition filed by any 'aggrieved

person'


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Is it possible to file trade mark application

on the ground of ' proposed to be used ' ?

Yes . But the application should havebonafide intention to use the mark at the time

of filing the application and further the

applicant can claim rights from the date tofiling such application.

Is it possible to get registration of a trade


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Is it possible to get registration of a trade

mark without any intention to use?

No. It is well established rule of law that to get a

trade mark registered without any intention to

use it in relation to any goods or services but

merely to make money out of it by selling to

others the right to use, it would be " traffickingin trade marks " .


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What is the advantage of 'prior user ' of a

trade mark ?

'Prior user' of a trade mark is in better positionrather than the registered proprietor of a mark.

Hence the rule of law is -" priority in adoption

and use prevails over priority in registration " .


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Whether the proprietor of an unregistered

trade mark can initiate legal action?

Yes. The proprietor of an unregistered mark

may bring legal action against the subsequent

user by filing a civil suit for ' passing off ' action

on the basis of ' prior user '. Further he canlodge criminal complaint also under the

provisions of the Trademarks Act.

What about the Renewal of a Registered


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What about the Renewal of a Registered

Trade Mark?

A registered trade mark should be renewed for

every seven years under the present Act . The

period of said seven years will be calculated

from the date of filing the application


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Will any rights be conferred upon the

applicant on mere filing of trade mark

application ? No Mere filing of trade mark application will

not confer any rights on the applicant.

Proprietary rights over a trade mark can beclaimed only by continuous use of the mark.


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Whether advertisement is sufficient to

establish the 'User ' of a trade mark ?

The advertisement of a mark in any periodicalor magazine or in electronic media may be

regarded as evidence to establish the 'prior

user' of a trade mark.


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Geographical Indication

Some geographical names haveacquired a lot of distinctiveness and

importance in the Global commercial

market particularly with regard to the

goods associated with such geographical

names. Most commonly, a geographical

indication consists of a name of the place

of the origin of the goods.

Agricultural goods natural goods or


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.Agricultural goods, natural goods or

manufactured goods or any goods of handicraft

or goods of industry including food stuff,

generally bears the geographical indications toattracts the attention of the consumers.

To prevent unauthorized persons from

misusing geographical indications, theGovernment of India has passed "The

Geographical Indications of Goods

(Registration and Protection)Act,1999".Hencethe protection under the said Act helps the

consumers from deception.


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FREQUENTLY ASKED QUESTIONS

What is a Geographical Indication?

A Geographical Indication is a sign usedon goods which have a specific

geographical origin and possess qualities

or a reputation that are due to the place

of origin e.g., Scotch Whisky. But theplace of origin may be village or town or

a region or a Country.


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What is the difference betweenGeographical Indication and a TradeMark?

A Trade Mark is a sign used bycommercial establishments todistinguish their goods and services

from those of other traders. But aGeographical Indication tellsconsumer that a product is producedin a certain place and has certaincharacteristics that are due to thatplace of production.


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Why does Geographical Indication need

protection?

Geographical Indications are understood byconsumers to denote the origin and the quality

of products. Many of them have acquired

reputation and goodwill, which may bemisrepresented by dishonest traders. False use

of geographical indications by unauthorized

traders, for example "Darjeeling" for tea, which

was not grown in the Darjeeling area of Indian

Territory, is detrimental to consumers and

legitimate products. Hence geographical

indication needs protection under the Act.


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. Examples of possible Indian GeographicalIndications.

Ans : Basmati Rice

Darjeeling Tea

Kanchipuram Silk Saree Alphanso Mango

Nagpur Orange

Kolhapuri Chappal Bikaneri Bhujia

Agra Petha

What is the benefit of registration of


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. What is the benefit of registration of

geographical indications?

Ans :

It confers legal protection to Geographical

Indications in India

Prevents unauthorised use of a Registered

Geographical Indication by others

It provides legal protection to Indian

Geographical Indications which in turn boost

exports.

It promotes economic prosperity of producers of

goods produced in a geographical territory.


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Who can apply for the registration of a

geographical indication?

Ans :

Any association of persons, producers,

organisation or authority established by or

under the law can apply:

The applicant must represent the interest of

the producers


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Who is a registered proprietor of a

geographical indication?

Ans :

Any association of persons,

producers,organisation or authority established

by or under the law can be a registeredproprietor.

Their name should be entered in the Register of

Geographical Indication as registered proprietorfor the Geographical Indication applied for.


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Who is an authorised user?

Ans :

A producer of goods can apply for registrationas an authorised user

It must be in respect of a registeredgeographical indication

He should apply in writing in the prescribedform alongwith prescribed fee


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Who is a producer in relation to aGeographical Indication?

Ans :

The persons dealing with three categories ofgoods are covered under the term Producer:

Agricultural Goods includes the production,processing, trading or dealing

Natural Goods includes exploiting, trading or

dealing Handicrafts or Industrial goods includes

making, manufacturing, trading or dealing.


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Is a registration of a geographical indication

compulsory and how does it help the applicant?

Ans : Registration is not compulsory

Registration affords better legal protection to

facilitate an action for infringement

The registered proprietor and authorised users can

initiate infringement actions

The authorised users can exercise the exclusive

right to use the geographical indication


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How long the registration of GeographicalIndication is valid?

Ans : The registration of a geographical indication is

valid for a period of 10 years.

It can be renewed from time to time for furtherperiod of 10 years each.

When is a registered Geographical Indication


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said to be infringed?

Ans :

When an unauthorised user uses a geographicalindication that indicates or suggests that such goodsoriginate in a geographical area other than the trueplace of origin of such goods in a manner whichmislead the public as to the geographical origin ofsuch goods.

When the use of geographical indication result in anunfair competition including passing off in respect ofregistered geographical indication.

When the use of another geographical indicationresults in false representation to the public thatgoods originate in a territory in respect of which aregistered geographical indication relates.


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How a geographical indication is differentfrom a trade mark?

Ans : A trade mark is a sign which is used in the

course of trade and it distinguishes goods or

services of one enterprise from those of otherenterprises.

Whereas a geographical indication is anindication used to identify goods having

special characteristics originating from adefinite geographical territory.

the trademarks act

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