Trade Mark ion

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TRADE MARK PRESENATION

BY HILAL AHMAD MALLA

STUDENT OF LL.M, 3RD SEMESTER,HIDAYATULLAH NATIONAL LAW UNIVERSITY RAIPUR

CHHATTISGARH


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INTELLECTUAL PROPERTY RIGHTS

INDUSTRIAL COPYRIGHT

PROPERTY

PATENT

DESIGN

TRADE MARKGEOGRAPHICAL INDICATIONS


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TRADE MARK

A trade mark is any sign which can distinguish the goods of one

trader from those of another. Sign includes, words, logos,

pictures, or a combination of these.

A trade mark is used as a marketing tool so that

customers can recognize the product of a particulartrader.

To register a trade mark , the mark must be:-distinctive, and, not deceptive, or contrary to law or

morality, and, not identical or similar to any earliermarks for the same or similar goods..


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How to select a Trade Mark ?

A word, letter or any combination thereof

and simple in design.

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

The ideal word for a trade mark is an

invented or coined word

Words which are laudatory or which directly

describes the character or quality of the

goods should not be adopted.


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Geographical names connected with the reputation or

quality of the goods for which registration is sought

should not be adopted.

Are all Trade Marks registrable ?

Not possible to register a mark which is confusing with

a trade mark of another trader or a trade mark which

describes the character or quality of the goods. The

mark should not conflict with a trade mark already

registered or pending registration in respect of similar

goods.


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TRADE NAMES

Trade names are names, terms or designations that serveto identify and distinguish an enterprise and its businessactivities from those of other ent

erprise and its businessactivities

Whereas the trademark distinguishes the goods or servicesof an enterprise, a trade name identifies the entireenterprise and symbolizes the reputation and goodwill of

the business as a whole.

The main reason for protecting trademark and trade

names against infringement is that the public might bemisled into thinking that two separate enterprises usingsame or confusingly similar trademarkor a trade nameconstitute one and the same enterprise


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It is not only harmful to the consumers but it also

permits the infringing enterprise to benefit unfairly.


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SERVICE MARKS

Where a trademark is used in connection with services,

it may be called service mark.

Service marks are used by hotels, restaurants, airlines,

tourist agencies, laundries and cleaners etc.


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TRADE MARKS ACT, 1999

INTRODUCTION

Patents, designs and copyright are protected only for alimited period. On the other hand, in general, a registeredtrade mark can be protected in perpetuitysubject only to

the following conditions It is used and renewed periodically and

The registered proprietor takes prompt action againstinfringers.

First TM registered in UK under No. 1 of 1876 consistingof red equilateral triangle in respect of alcoholic beverageis still in force.


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The present Trade Marks Act, 1999 has replaced theTrade and Merchandise Marks Act, 1958. And the Trade

Marks Act, 1999 has been brought into force only on

15th September 2003. The Trade Mark Rules, 2002 are

passed under the Trade Marks Act, 1999.


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OBJECTIVES OF THE TM ACT, 1999

A co prehensive revie of TM La as required in vieof

evelop ents in trading and co ercial practices

Increasing globalization of trade and industry

The need to encourage invest ent flo s and transfer oftechnology

eed for si plification & har onization of trade ark anage ent syste s and

To give effect to i portant judicial decisions


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TM Act, 1999 was passed with objectives

To provide for registration of trade mark for services, inaddition to goods;

b) Registration of trade marks, which are imitation of wellknown trade marks, not to be permitted, besides

enlarging the grounds for refusal of registration;c) Amplification of factors to be considered for defining a

well known mark;

d) To provide only a single register with simplified procedure for registration and with equal rights.


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MEANINGAND DEFINITION OF TM

At times the consumers are duped when they buy commodities presumingthem to have originated from a certain identified source, when actually they

have not, and after buying such commodity it is found to be substandard.

Examples: Parachute Oil, Fair and Lovely cream, Lifebuoy soap etc. have

many look-a-likes in the market.

In such case, the reputation of the trader/manufacturer suffers if

spurious goods are sold as those originating from him.

Therefore, the interest of consumer and the trader can be saved ifa definite symbol which marks out the origin of goods from a

definite trade source is attached. Such symbol is called a trade

mark.


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Trade Mark is a visual symbol in the form of- A word, device or label

Applied to articles of commerce

With a view to indicate to the purchasing public that

They are goods manufactured orOtherwise dealt in by a particular person or particular

organization

As distinguished from similar goods manufactured ordealt by others

TM is a visual representation attached to goods forthe purpose of indicating their trade origin.

Examples: Lakme distinguishes the goods of LakmeCompany from that of Revlon.


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A person who sells his goods under a particular trademark acquires limited exclusive rightto use of the markin relation to those goods.

A trade markmay be registered or unregistered. Anunregistered trade mark is called common law mark.

A trade markwhen registered gets a stable existence.Aregistered trade mark can be in relation not only to itsexisting use but also for a proposed use.

The proprietor of an unregistered trade mark shall notbe entitled to institute any proceeding to prevent, or torecover damages for, the infringement of anunregistered trademark.


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However, such proprietor of unregistered trade markshall have common law remedy to take action againstanother person, forpassing offgoods as goods of theproprietor, or passing off services as services provided

by proprietor.


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STATUTORY DEFINITIONS

MARK: Section 2(1) (m) of TM Act, 1999 defines

Mark as Mark includes a Device, brand,

heading, label, ticket, name, signature, word, letter,

numeral, shape of goods, packing or combination ofcolours or any combination thereof.

Example M written in a particular style with

yellow colour for MacDonald's; 555/777 numerical

used for detergent soaps; signature used as a

mark for alcohol.


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TRADE MARK: Section 2 (1) (zb)

Trade mark is defined as a mark capable of beingrepresented graphically and that is capable of distinguishing the goods or services of one person fromthose of others and may include shape of goods, their

packing and other combination of colours.E.g. Colgate, Bata, Pantene etc.


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SERVICE MARK: Section 2 (1) (z)

It means service of any description that is made

available to any potential users and includes the

provision of service in connection with business of any

industrial or commercial matters such as banking,communications, education, financing, insurance, chit

funds, real estate, transport, storage, material

treatment, processing, supply of electrical or other

energy, boarding, loading entertainment amusement,construction, repair, conveying of news or information

and advertising.


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WELL KNOWN TRADE MARK: Section 2(1) (zg)

Well known trade mark in relation to any goods or services, means a mark which has become so to thesubstantial segment of the public which uses suchgoods or receives such services that the use of such

mark in relation to other goods or services would belikely to be taken as indicating a connection in thecourse of trade or rendering of services between thosegoods or services and a person using the mark in

relation to the first-mentioned goods or services.Example: Coco Cola, Frooti, Bata.


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COLLECTIVE MARK: Section 2(1) (g)

A Trade mark distinguishing the goods or services ofmembers of an association of persons not beingpartnership firm from those of others

The proprietor of the mark is the association.

The goods and services of a company or group of companies like GODREJ or H INDUSTAN UNILEVERLTD. may be the subject matter of collective Trademark. It is not to be registered if it is likely to deceive orcause confusion to the public.


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CERTIFICATION TRADE MARK

Section 2 (1) (e)There is a species of trade mark called as CertificationTrade mark. Its function is to indicate that the proprietorof the mark has certified the goods bearing the mark asto certain characteristics of the goods.

e.g. Geographical origin, ingredients and so on such asISI, AGMARK, FPO


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Section 479 ofIndian Penal Code, 1860 providesSection 479 ofIndian Penal Code, 1860 provides

that A mark used for denoting that moveablethat A mark used for denoting that moveable

property belongs to a particular person is called aproperty belongs to a particular person is called a

property mark.property mark. The distinction between trade mark and propertyThe distinction between trade mark and property

mark is not recognized in English Law.mark is not recognized in English Law.

However in

India, the distinction between a tradeHowever inIndia, the distinction between a trademark and a property mark is as follows:mark and a property mark is as follows:

PROPERTY MARKSPROPERTY MARKS


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FUNCTI NS FTRADE ARK

As per modern business conditions a TM performsfollowing functions:

It identifies the product and origin.

It guarantees its unchanged quality.

It advertises the product.

It creates an image for the product.

e.g. Zip Drive associated with Santro Car; Taj Mahalfor a particular quality of tea which will be different inquality from Brooke Bond; SONY is associated withelectronic items etc.

The functions of service marks in relation to servicesare similar to that of a TM in relation to goods. E.g.Courier services such as DHL, DTDC, GATIetc.


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Advantages of trade mark The Regd.Proprietor: The Regd.Proprietor of a trade

mark can stop other traders from unlawfully using histrade mark, sue for damages and secure destruction ofinfringing goods and or labels.

The Government: The Trade Marks Registry isexpected to earn a revenue of nearlyRs.40 crores during the current year and which isperpetually on the rise.

The Legal professionals: The Trade Marks Registrationsystem is driven by professionals and legaland para legal advisors(Agents) who act for the clientsin the processing of the trade marks application.


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The Purchaser and ultimately Consumers of

trade marks goods and services.


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Formalities And GovernmentFeesFor Major Trade Mark

For filing ne applications there are prescribed for sdepending on the nature of application such as For T -1,T -2, T -3, T -8, T -51 etc.

To file a otice of pposition to oppose an applicationpublished in the Trade

arks Journal (For T 5). Fees: s.2,500/- For ene al of a egd.trade ark (For T -12 ).

Fees: s.5,000/-

urcharge for belated rene al (For -10).Fees: s.3,000/-

estoration of re oved ark (For T -13)Fees:5,000/-

pplication for rectification of a registered tradeark (For T -26) Fees: s.3,000/-


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Legal Certificate (Form TM-46) (Providing details of entries in the

Register) Fees:Rs.500/ Official search request (FormTM-54). Fees:Rs.500/-

Preliminary advise of the Registrar as tothe registrability of a mark(Form TM-55).Fees: Rs.500/

Copyright search request and issuance ofcertificate (Form TM-60) Fees: Rs,5,000/-.


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TRADEMARK REGISTRATION PROCESS FLOW

SEARCH

TRADE MARK APPLICATION

ISSUANCE OF OFFICIAL RESULT

OFFICIAL

ACTION

EARING

RESPONSE

RESPONSE

ACCEPTED

ACCEPTANCE PUBLICATION

APPLICATION 3 MONT

S

REGISTRATION

RENEWAL

10 YEARS FROM T

E

DATE OF APPLICATION


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DETAILED PROCEDURE OF REGISTRATION

Two StagesClassification and Pre-Filing Search

STAGE ONE

Trademark 42 Classes (including 7 Classes for Service Marks)

for Service Marks)

TM 54 (Search application) three copies

TM 55 (Registrars Preliminary Advice)

Public Search at Trademark Office

STAGE TWO Involves the registration Process itself


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Trademark Applicationssuance of Official Issuance of Official Receipt ( TM No will be issued).

Examination Report

Within three months from application. Response within one month from the date of the

examination report.

Response by filing an affidavit.

Response by hearing.

Response by interview (in case the agent has 100+

pending cases.


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Jurisdiction

TRADE MARKS REGISTRY, MUMBAI(HEAD OFFICE)

101, MAHARSHIKARVE ROAD,

101, MAHARSHIKARVE ROAD,

PRATISHTA BHAWAN, MUMBAI-400 020

PRATISHTA BHAWAN, MUMBAI-400 020

TEL. 22030924/22081315, FAX: 22013694.

Jurisdiction: State of Maharashtra, Madhya Pradesh andGoa

Trade Marks Registry, Delhi

Trade Marks Registry, Delhi

Intellectual Property Bhawan, Plot NO.32, Section 14, Dwarka, Delhi

Intellectual Property Bhawan, Plot NO.32, Section 14, Dwarka, Delhi

Tel. 011-28082915/ 16/17 Fax:

Tel. 011-28082915/ 16/17 Fax


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Jurisdiction: State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur,

Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, AndamanNicobar

Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, AndamanNicobar

Island.

Island.

Trade Marks Registry, Ahmadabad,

Trade Marks Registry, Ahmadabad,

15/27 National Chambers, 1st floor,

15/27 National Chambers, 1st floor,

Ashram road,

Ashram road,

Ahmedabad-380 009.

Ahmedabad-380 009.

Tel: 079-26580567

Tel: 079-265


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Jurisdiction: The state ofGujarat and Rajasthan and Union

Territory of Damman, Diu, Dadra and Nagar Haveli

and Nagar Haveli

Trade Marks Registry, Chennai

Trade Marks Registry, Chennai IPR building, GST Road,

IPR building, GST Road,

Chennai-31 Tel : 044-23222441

Chennai-31 Tel : 044-23222441


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Documents Information Required for Filing trademark

Application.

Logo soft copy in JPEG FORM

TM 48 (FORM OF AUTHORIZATION)

DATE OF FIRST USE OF THE MARK

.

NAME AND ADRESS OF THE PROPRIETOR

OF THE MARK.

REQUIRED FEE.

Thank you

Trade Mark ion

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