THE TRADEMARKS ACTTHE TRADEMARKS ACT

During the British regime in India the big During the British regime in India the big merchants and businessmen who had merchants and businessmen who had established their mark in the market in established their mark in the market in respect of certain goods under the respect of certain goods under the particular brand name, style or design felt particular brand name, style or design felt they should continue to be sold or traded they should continue to be sold or traded under the same brand name, style or under the same brand name, style or design and no other person shall be design and no other person shall be allowed to adopt that brand name, style or allowed to adopt that brand name, style or design. design.

The Government then enacted the Indian The Government then enacted the Indian Merchandise Marks Act, 1889 and with Merchandise Marks Act, 1889 and with development and changes, on 25th development and changes, on 25th November 1958 The Trade And Merchandise November 1958 The Trade And Merchandise Marks Act came into force. Marks Act came into force.

WHAT IS A TRADEMARK? WHAT IS A TRADEMARK? A trademark is a mark used in relation to A trademark is a mark used in relation to

goods for the purpose of indicating a goods for the purpose of indicating a connection between the goods and some connection between the goods and some person having the right as proprietor to person having the right as proprietor to use the markuse the mark

It is a visual symbol in the form of a word, It is a visual symbol in the form of a word, device or a label applied to articles of device or a label applied to articles of commerce with a view to indicate to the commerce with a view to indicate to the purchasing public that they are goods purchasing public that they are goods manufactured or otherwise dealt in by a manufactured or otherwise dealt in by a particular person or a particular organisation particular person or a particular organisation as distinguished from similar goods as distinguished from similar goods manufactured or dealt in by othersmanufactured or dealt in by others

FUNCTIONS OF A TRADEMARK -FUNCTIONS OF A TRADEMARK -A A trademark serves the purpose of trademark serves the purpose of identifying the source or the origin of identifying the source or the origin of goods. Trademark performs the following goods. Trademark performs the following four functions.four functions.

It identifies the product and it’s origin.It identifies the product and it’s origin. It proposes to guarantee its quality.It proposes to guarantee its quality.

It advertises the product. The trademark It advertises the product. The trademark represents the product.represents the product.

It creates an image of the product in the It creates an image of the product in the minds of the public particularly the minds of the public particularly the consumers or the prospective consumers of consumers or the prospective consumers of such goods. such goods.

  MARKS NOT REGISTERABLE MARKS NOT REGISTERABLE The use of which would be likely to deceive or The use of which would be likely to deceive or

cause confusion.cause confusion. A mark the use of which would be contrary to A mark the use of which would be contrary to

any law for the time being in forceany law for the time being in force

A mark comprising or containing scandalous A mark comprising or containing scandalous or obscene matteror obscene matter

A mark comprising or containing any matter A mark comprising or containing any matter likely to hurt the religious susceptibilities of likely to hurt the religious susceptibilities of any class or sectionany class or section

A mark which would be disentitled to protection A mark which would be disentitled to protection in court of lawin court of law

A mark which is identical with or deceptively A mark which is identical with or deceptively similar to a trademark already registered in similar to a trademark already registered in respect of the same goods or goods of the respect of the same goods or goods of the same descriptionsame description

A word which is the accepted name of any A word which is the accepted name of any single chemical name or chemical compound single chemical name or chemical compound in respect of chemical substances. in respect of chemical substances.

A geographical name or a surname or a A geographical name or a surname or a personal name or any common abbreviation personal name or any common abbreviation thereof or the name of a sect, caste or tribe in thereof or the name of a sect, caste or tribe in India.India.

TRADEMARKS ACT 1999TRADEMARKS ACT 1999  

TrademarkTrademarkThe definition has been widened to The definition has been widened to include the 'color combination' and include the 'color combination' and 'shape of goods'. 'shape of goods'.

Service markService markThe new definition of 'service mark' has been The new definition of 'service mark' has been included for the benefit of service-oriented included for the benefit of service-oriented establishments such as Banking, establishments such as Banking, Communication, Education, Finance, Communication, Education, Finance, Insurance, Chit funds, Real Estates, Transport, Insurance, Chit funds, Real Estates, Transport, Storage material treatment, Processing, Supply Storage material treatment, Processing, Supply of electrical or other energy, Boarding, lodging, of electrical or other energy, Boarding, lodging, Entertainment, Amusement, Construction, Entertainment, Amusement, Construction, Repair, Conveying of news or information and Repair, Conveying of news or information and advertising . advertising .

Collective markCollective markThe new definition of ' Collective mark ' has The new definition of ' Collective mark ' has been provided for the benefit of members of been provided for the benefit of members of an association of persons (but not an association of persons (but not partnership) and such inclusion of ' Collective partnership) and such inclusion of ' Collective mark ' will benefit the traditional Indian family mark ' will benefit the traditional Indian family trademarks. trademarks.

Well known trademarkWell known trademarkThe new definition for 'well known trademark ' The new definition for 'well known trademark ' has been provided for the benefit of a has been provided for the benefit of a trademark being used by the substantial trademark being used by the substantial segment of the public. segment of the public.

RenewalRenewalThe renewal of registration of a The renewal of registration of a trademark should be made for every ten trademark should be made for every ten years instead of seven years under the years instead of seven years under the present Act. present Act.

REGISTRATIONREGISTRATION

WHO CAN APPLY WHO CAN APPLY Any person who claims to be a proprietor Any person who claims to be a proprietor

of a trademark and is desirous of of a trademark and is desirous of registration of the mark can apply. The registration of the mark can apply. The application may be made in the name of application may be made in the name of an individual, partners of a firm, a an individual, partners of a firm, a Corporation, any Government Corporation, any Government Department, a trust or joint applicants. Department, a trust or joint applicants.

APPLICATIONAPPLICATION After completing all specifications on the After completing all specifications on the

prescribed application form, an application prescribed application form, an application shall be filed in the office of the trademark shall be filed in the office of the trademark Registrar "within whose territorial limits the Registrar "within whose territorial limits the principle place of business in India of the principle place of business in India of the applicant or in the case of the joint applicants applicant or in the case of the joint applicants the principal place of business in India of the the principal place of business in India of the applicant whose name is the first mentioned applicant whose name is the first mentioned in the application, as having the place of in the application, as having the place of business is situated.business is situated.

Every application for registration of a Every application for registration of a trademark shall contain a representation of trademark shall contain a representation of the mark in the place provided in the form for the mark in the place provided in the form for the purpose. Ten additional representations of the purpose. Ten additional representations of the mark have to be supplied with the the mark have to be supplied with the application.application.

Upon submission of an application for Upon submission of an application for registration of a trademark, there can be four registration of a trademark, there can be four outcomes: outcomes:

a. The application is accepted as it is.a. The application is accepted as it is. b. The application is accepted subject to b. The application is accepted subject to

certain amendment.certain amendment. c. The application is accepted but latter it is c. The application is accepted but latter it is

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

ADVERTISEMENTADVERTISEMENT

Soon after acceptance of the application, the Soon after acceptance of the application, the application is advertised in the Trademarks application is advertised in the Trademarks Journal.Journal.

Any person may, within three months from Any person may, within three months from the date of the advertisement or the date of the advertisement or readvertisement of the application for readvertisement of the application for registration or within such further period not registration or within such further period not exceeding one month, give notice in writing to exceeding one month, give notice in writing to the Registrar of opposition to the registration. the Registrar of opposition to the registration. If such an opposition does not arise then the If such an opposition does not arise then the mark is deemed to be registered.mark is deemed to be registered.

TIME PERIOD -TIME PERIOD -The registration of a The registration of a trademark shall be for a period of seven trademark shall be for a period of seven years, but it may be renewed from time to years, but it may be renewed from time to time. time. 

INFRINGEMENTINFRINGEMENT Infringement of a trademark occurs if a Infringement of a trademark occurs if a

person other than the registered proprietor person other than the registered proprietor in the course of trade, in relation to the in the course of trade, in relation to the same goods or services for which the same goods or services for which the mark is registered, uses the same mark or mark is registered, uses the same mark or deceptively similar mark.deceptively similar mark.

ESSENTIALS OF INFRINGEMENTESSENTIALS OF INFRINGEMENT 1) The taking of any essential feature of 1) The taking of any essential feature of

the mark or taking the whole of the mark a the mark or taking the whole of the mark a few additions and alterations would few additions and alterations would constitute infringement.constitute infringement.

2) The infringing mark must be used in the 2) The infringing mark must be used in the course of trade, that is, in a regular trade course of trade, that is, in a regular trade wherein the proprietor of the mark is wherein the proprietor of the mark is engaged.engaged.

3) The use of the infringing mark must be 3) The use of the infringing mark must be printed or usual representation of the mark in printed or usual representation of the mark in advertisements, Invoices or bills. Any oral advertisements, Invoices or bills. Any oral use of the trademark is not infringement.use of the trademark is not infringement.

4) Any or all of the above acts would 4) Any or all of the above acts would constitute infringement. constitute infringement. 

REMEDIESREMEDIES

The proprietor of a trademark has a right The proprietor of a trademark has a right to file a suit for infringement of his right to file a suit for infringement of his right and obtain and obtain

Injunction- an injunction restrains the Injunction- an injunction restrains the defendant from using the offending mark defendant from using the offending mark pending the trial of the suit or until further pending the trial of the suit or until further orders. orders.

Damages in assessing the damages the Damages in assessing the damages the important question is what is the loss sustained important question is what is the loss sustained by the plaintiff. The loss must be the natural by the plaintiff. The loss must be the natural and direct consequence of the defendant’s and direct consequence of the defendant’s acts. The object of damages is to compensate acts. The object of damages is to compensate for loss or injury.for loss or injury.

Accounts of profits. Where a plaintiff claims the Accounts of profits. Where a plaintiff claims the profits made by the unauthorised use of his profits made by the unauthorised use of his trademark, it is important to ascertain to what trademark, it is important to ascertain to what extent he trademark was used, in order to extent he trademark was used, in order to determine what proportion of the net profits determine what proportion of the net profits realised by the infringer was attributable to its realised by the infringer was attributable to its use. use.

FAQ’SFAQ’S

What is a trademark?What is a trademark? A A trademarktrademark popularly known as brand popularly known as brand

name, is a visual symbol in the form of a name, is a visual symbol in the form of a word or a device or a label applied to the word or a device or a label applied to the commercial goods or service to enable commercial goods or service to enable the consumer public to identify one the consumer public to identify one trader's goods from similar goods of other trader's goods from similar goods of other traders.traders.

What is a service mark?What is a service mark? Under the Trade and Merchandise Marks Act , 1958 Under the Trade and Merchandise Marks Act , 1958

registration of 'service mark' is not possible but registration of 'service mark' is not possible but under the new under the new Trade Marks Act ,1999Trade Marks Act ,1999 registration of registration of 'service mark' can be done.'service mark' can be done.

Such 'service mark ' can be used as a trade mark Such 'service mark ' can be used as a trade mark but applied to services rather than goods i.e. but applied to services rather than goods i.e. Banking , Banking , Communication ,Education ,Financing ,Insurance ,Communication ,Education ,Financing ,Insurance ,Chit Funds, Real Estate , Transport , Storage Chit Funds, Real Estate , Transport , Storage material treatment , Processing , Supply of material treatment , Processing , Supply of electrical or other energy , Boarding and Lodging , electrical or other energy , Boarding and Lodging , Entertainment , Amusement , Construction ,Repair Entertainment , Amusement , Construction ,Repair , Conveying of news or Information or Information , Conveying of news or Information or Information and Advertising.and Advertising.

Whether registration of Trade Mark is Whether registration of Trade Mark is compulsory under the Act?compulsory under the Act?

No. Registration of a trade mark is not No. Registration of a trade mark is not compulsory. But for better protection it is compulsory. But for better protection it is advisable to register a trade mark.advisable to register a trade mark.

How to acquire a right of property in a trade How to acquire a right of property in a trade mark?mark?

A person may acquire a right of property in A person may acquire a right of property in a trade mark in the following modes:a trade mark in the following modes:

a) By use of the mark in relation to a) By use of the mark in relation to particular goods ;orparticular goods ;or

b) By registration under the Act; orb) By registration under the Act; or c) By assignment or transmission of the c) By assignment or transmission of the

right from another personright from another person

Whether ' user' is very important in trade Whether ' user' is very important in trade mark?mark?

Yes . A trade mark must be used in relation to Yes . A trade mark must be used in relation to the goods for which the registration is sought or the goods for which the registration is sought or obtained .If it is not used but merely renewed obtained .If it is not used but merely renewed from time to time , then it will be possible that a from time to time , then it will be possible that a mark may be removed on the ground of ' non-mark may be removed on the ground of ' non-user' on a petition filed by any 'aggrieved user' on a petition filed by any 'aggrieved person'person'

Is it possible to file trade mark application Is it possible to file trade mark application on the ground of ' proposed to be used ' ?on the ground of ' proposed to be used ' ?

Yes . But the application should have Yes . But the application should have bonafide intention to use the mark at the time bonafide intention to use the mark at the time of filing the application and further the of filing the application and further the applicant can claim rights from the date to applicant can claim rights from the date to filing such application.filing such application.

Is it possible to get registration of a trade Is it possible to get registration of a trade mark without any intention to use?mark without any intention to use?

No. It is well established rule of law that to get a No. It is well established rule of law that to get a trade mark registered without any intention to trade mark registered without any intention to use it in relation to any goods or services but use it in relation to any goods or services but merely to make money out of it by selling to merely to make money out of it by selling to others the right to use, it would be " trafficking others the right to use, it would be " trafficking in trade marks " .in trade marks " .

What is the advantage of 'prior user ' of a What is the advantage of 'prior user ' of a trade mark ?trade mark ?

'Prior user' of a trade mark is in better position 'Prior user' of a trade mark is in better position rather than the registered proprietor of a rather than the registered proprietor of a mark. Hence the  rule of law is -" priority in mark. Hence the  rule of law is -" priority in adoption and use prevails over priority in adoption and use prevails over priority in registration " .registration " .

Whether the proprietor of an unregistered Whether the proprietor of an unregistered trade mark can initiate legal action?trade mark can initiate legal action?

Yes. The proprietor of an unregistered mark Yes. The proprietor of an unregistered mark may bring legal action against the subsequent may bring legal action against the subsequent user by filing a civil suit for ' passing off ' action user by filing a civil suit for ' passing off ' action on the basis of ' prior user '. Further he can on the basis of ' prior user '. Further he can lodge criminal complaint also under the lodge criminal complaint also under the provisions of the Trademarks Act.provisions of the Trademarks Act.

What about the Renewal of a Registered What about the Renewal of a Registered Trade Mark?Trade Mark?

A registered trade mark should be renewed for A registered trade mark should be renewed for every seven years under the present Act . The every seven years under the present Act . The period of said seven years will be calculated period of said seven years will be calculated from the date of filing the applicationfrom the date of filing the application

Will any rights be conferred upon the Will any rights be conferred upon the applicant on mere filing of trade mark applicant on mere filing of trade mark application ?application ?

No Mere filing of trade mark application will No Mere filing of trade mark application will not confer any rights on the applicant. not confer any rights on the applicant. Proprietary rights over a trade mark can be Proprietary rights over a trade mark can be claimed only by continuous use of the mark.claimed only by continuous use of the mark.

Whether advertisement is sufficient to Whether advertisement is sufficient to establish the 'User ' of a trade mark ?establish the 'User ' of a trade mark ?

The advertisement of a mark in any periodical The advertisement of a mark in any periodical or magazine or in electronic media may be or magazine or in electronic media may be regarded as evidence to establish the 'prior regarded as evidence to establish the 'prior user' of a trade mark.user' of a trade mark.

Geographical IndicationGeographical Indication

Some geographical names have Some geographical names have acquired a lot of distinctiveness and acquired a lot of distinctiveness and importance in the Global commercial importance in the Global commercial market particularly with regard to the market particularly with regard to the goods associated with such geographical goods associated with such geographical names. Most commonly, a geographical names. Most commonly, a geographical indication consists of a name of the place indication consists of a name of the place of the origin of the goods. of the origin of the goods.

.Agricultural goods, natural goods or .Agricultural goods, natural goods or manufactured goods or any goods of handicraft manufactured goods or any goods of handicraft or goods of industry including food stuff, or goods of industry including food stuff, generally bears the geographical indications to generally bears the geographical indications to attracts the attention of the consumers.attracts the attention of the consumers.

To prevent unauthorized persons from To prevent unauthorized persons from misusing geographical indications, the misusing geographical indications, the Government of India has passed "The Government of India has passed "The Geographical Indications of Goods Geographical Indications of Goods (Registration and Protection)Act,1999".Hence (Registration and Protection)Act,1999".Hence the protection under the said Act helps the the protection under the said Act helps the consumers from deception.consumers from deception.

FREQUENTLY ASKED QUESTIONSFREQUENTLY ASKED QUESTIONS What is a Geographical Indication?What is a Geographical Indication? A Geographical Indication is a sign used A Geographical Indication is a sign used

on goods which have a specific on goods which have a specific geographical origin and possess qualities geographical origin and possess qualities or a reputation that are due to the place or a reputation that are due to the place of origin e.g., Scotch Whisky. But the of origin e.g., Scotch Whisky. But the place of origin may be village or town or place of origin may be village or town or a region or a Country.a region or a Country.

What is the difference between What is the difference between Geographical Indication and a Trade Geographical Indication and a Trade Mark?Mark?

A Trade Mark is a sign used by A Trade Mark is a sign used by commercial establishments to commercial establishments to distinguish their goods and services distinguish their goods and services from those of other traders. But a from those of other traders. But a Geographical Indication tells Geographical Indication tells consumer that a product is produced consumer that a product is produced in a certain place and has certain in a certain place and has certain characteristics that are due to that characteristics that are due to that place of production.place of production.

Why does Geographical Indication need Why does Geographical Indication need protection?protection?

Geographical Indications are understood by Geographical Indications are understood by consumers to denote the origin and the quality consumers to denote the origin and the quality of products. Many of them have acquired of products. Many of them have acquired reputation and goodwill, which may be reputation and goodwill, which may be misrepresented by dishonest traders. False use misrepresented by dishonest traders. False use of geographical indications by unauthorized of geographical indications by unauthorized traders, for example "Darjeeling" for tea, which traders, for example "Darjeeling" for tea, which was not grown in the Darjeeling area of Indian was not grown in the Darjeeling area of Indian Territory, is detrimental to consumers and Territory, is detrimental to consumers and legitimate products. Hence geographical legitimate products. Hence geographical indication needs protection under the Act.  indication needs protection under the Act. 

. Examples of possible Indian Geographical . Examples of possible Indian Geographical Indications.Indications.

Ans : Ans : Basmati Rice Basmati Rice Darjeeling Tea Darjeeling Tea Kanchipuram Silk Saree Kanchipuram Silk Saree Alphanso Mango Alphanso Mango Nagpur Orange Nagpur Orange Kolhapuri Chappal Kolhapuri Chappal Bikaneri Bhujia Bikaneri Bhujia Agra Petha Agra Petha

. What is the benefit of registration of . What is the benefit of registration of geographical indications?geographical indications?

Ans : Ans : It confers legal protection to Geographical It confers legal protection to Geographical

Indications in India Indications in India Prevents unauthorised use of a Registered Prevents unauthorised use of a Registered

Geographical Indication by others Geographical Indication by others It provides legal protection to Indian It provides legal protection to Indian

Geographical Indications which in turn boost Geographical Indications which in turn boost exports. exports.

It promotes economic prosperity of producers of It promotes economic prosperity of producers of goods produced in a geographical territory. goods produced in a geographical territory.

Who can apply for the registration of a Who can apply for the registration of a geographical indication?geographical indication?

Ans : Ans : Any association of persons, producers, Any association of persons, producers,

organisation or authority established by or organisation or authority established by or under the law can apply: under the law can apply:

The applicant must represent the interest of The applicant must represent the interest of the producers the producers

Who is a registered proprietor of a Who is a registered proprietor of a geographical indication?geographical indication?

Ans : Ans : Any association of persons, Any association of persons,

producers,organisation or authority established producers,organisation or authority established by or under the law can be a registered by or under the law can be a registered proprietor. proprietor.

Their name should be entered in the Register of Their name should be entered in the Register of Geographical Indication as registered proprietor Geographical Indication as registered proprietor for the Geographical Indication applied for. for the Geographical Indication applied for.

Who is an authorised user?Who is an authorised user? Ans : Ans : A producer of goods can apply for registration A producer of goods can apply for registration

as an authorised user as an authorised user It must be in respect of a registered It must be in respect of a registered

geographical indication geographical indication He should apply in writing in the prescribed He should apply in writing in the prescribed

form alongwith prescribed fee form alongwith prescribed fee

Who is a producer in relation to a Who is a producer in relation to a Geographical Indication?Geographical Indication?

Ans :Ans : The persons dealing with three categories of The persons dealing with three categories of

goods are covered under the term Producer:goods are covered under the term Producer: Agricultural Goods includes the production, Agricultural Goods includes the production,

processing, trading or dealing processing, trading or dealing Natural Goods includes exploiting, trading or Natural Goods includes exploiting, trading or

dealing dealing Handicrafts or Industrial goods includes Handicrafts or Industrial goods includes

making, manufacturing, trading or dealing. making, manufacturing, trading or dealing.

Is a registration of a geographical indication Is a registration of a geographical indication compulsory and how does it help the applicant?compulsory and how does it help the applicant?

Ans : Ans : Registration is not compulsory Registration is not compulsory Registration affords better legal protection to Registration affords better legal protection to

facilitate an action for infringement facilitate an action for infringement The registered proprietor and authorised users can The registered proprietor and authorised users can

initiate infringement actions initiate infringement actions The authorised users can exercise the exclusive The authorised users can exercise the exclusive

right to use the geographical indicationright to use the geographical indication

How long the registration of Geographical How long the registration of Geographical Indication is valid?Indication is valid?

Ans : Ans : The registration of a geographical indication is The registration of a geographical indication is

valid for a period of 10 years. valid for a period of 10 years.

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

When is a registered Geographical Indication When is a registered Geographical Indication said to be infringed?said to be infringed?

Ans : Ans : When an unauthorised user uses a geographical When an unauthorised user uses a geographical

indication that indicates or suggests that such goods indication that indicates or suggests that such goods originate in a geographical area other than the true originate in a geographical area other than the true place of origin of such goods in a manner which place of origin of such goods in a manner which mislead the public as to the geographical origin of mislead the public as to the geographical origin of such goods. such goods.

When the use of geographical indication result in an When the use of geographical indication result in an unfair competition including passing off in respect of unfair competition including passing off in respect of registered geographical indication. registered geographical indication.

When the use of another geographical indication When the use of another geographical indication results in false representation to the public that results in false representation to the public that goods originate in a territory in respect of which a goods originate in a territory in respect of which a registered geographical indication relates. registered geographical indication relates.

How a geographical indication is different How a geographical indication is different from a trade mark?from a trade mark?

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

course of trade and it distinguishes goods or course of trade and it distinguishes goods or services of one enterprise from those of other services of one enterprise from those of other enterprises. enterprises.

Whereas a geographical indication is an Whereas a geographical indication is an indication used to identify goods having indication used to identify goods having special characteristics originating from a special characteristics originating from a definite geographical territory. definite geographical territory.