The Trademarks Act, 1999Legal Environment of Business

Prepared By

Manu Melwin Joy

Assistant ProfessorIlahia School of Management Studies

Kerala, India.

Phone – 9744551114Mail – manu_melwinjoy@yahoo.com

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Introduction

• For the protection of theinterest of the traderand consumer, somedefinite symbol whichmarks out the origin ofgoods is to be attachedwith the goods. Suchsymbol is called atrademark.

Definition

• A trademark is a visual

representation attached

to goods for the purpose

of indicating their trade

origins.

Salient features of trademark act, 1999

• Providing for registration oftrademarks for services.

• Providing for an appellate boardfor speedy disposal of appeals.

• Transferring the final authorityrelating to registration ofcertification trade mark toregistrar.

• Providing enhancedpunishments for the offensesrelated to trademarks.

• Increasing the period ofregistration and renewal from 7years to 10 years.

Functions of trademarks

• It identifies the productand its origin.

• It guarantees itsestablished quality.

• It advertises the product.

• It creates an image ofthe product in the mindsof the public particularlyconsumers.

Registration of trademark

• Apply in writing to the registrar in theprescribed manner for the registrationof trademark.

• Every application shall be filed in theoffice of trade mark registry.

• On receipt of the application, theregistrar may accept or refuse toaccept the application.

• When accepted, the registrar shalladvertise it in the prescribed manner.

• Registrar will wait for three monthsfrom advertising to know theobjections.

• After disposal of objections, theregistrar shall register the saidtrademark with effect from date ofapplication.

Term of a trademark

• A unique feature oftrademark is its perpetuallife. Though initially theregistration of a trademark shall be for a periodof 10 years, it can beperiodically renewed andcan be used for indefiniteperiod unless it is removedfrom register or prohibitedby court order.

Rights of the trademark holder• To use the trade mark in relation

to goods or services in respect ofwhich the trademark isregistered.

• To transfer his rights throughlicense or assignment of histrademark.

• To obtain legal relief againstalleged infringement of aregistered trade mark.

• To apply for correction of registerwith regards to name, address ordescription of registeredproprietor or to cancel the entryof a trademark on the register.

Infringement of trademarks

• In order to constituteinfringement, followingrequirements must be fulfilled.– The person is not authorized touse the trademark.

– The infringing trademark iseither similar or identical ordeceptively similar to thealready registered trade mark.

– The infringing trademark mustbe used in the course of regulartrade in which the registeredproprietor or user is alreadyengaged.

– The use of infringing trademarkmust be printed.

Legal remedies against infringement

• When there is aninfringement, theaggrieved can file a suitfor infringement.

• In the case of falsificationof trademarks, criminalproceedings can beinitiated in addition tocivil suit.

Assignment and transmission

• A registered trade mark isassignable andtransmissible.

• The proprietor of aregistered trade mark canassign his registered trademark by way of sale,mortgage, lease or license.

• On death of the proprietorof a registered trademark,the trade mark shall betransmitted to the legalheirs.

Collective marks

• Whereas the trademarkbelongs to an individual, acollective mark belongs toan association of persons,other than partnershipfirm.

Certification trade mark

• Certification trade markmeans a mark capable ofdistinguishing the goodsor services in connectionwith which it is used inthe course of trade whichare certified by theproprietor.

Certification trade mark

• The features of certificationtrade mark are– It is a mark capable ofdistinguishing the certifiedgoods or services from that arenot certified.

– It is a mark by which theproprietor of certification trademark certifies the origin,material, mode ofmanufacturing of good orperformance of services.

– It is a mark which can beregistered as Certification trademark under the act and theapplicant as the proprietor ofcertification trade mark.