INTELLECTUAL PROPERTY ACT TRADE MARKS ACT, 1999 Q1. What is trad !

!ar"# Stat its $%&'ti(& a&d O)* 't# A1. I&tr(d%'ti(& + M a&i&, A trade mark is a visual symbol in the form of a word, a device, or a label applied to articles of commerce with a view to indicate to the purchasing public that they are the goods manufactured or otherwise dealt in by a particular person as distinguished from similar goods manufactured or dealt in by other persons. A person who sells his goods under a particular trade mark acquires sort goods. Such a right acquired by use is recognized as a form of property in the trade mark. Stat%t(r- d .i&iti(& (. trad !ar"/s 'ti(& 0112 (. th 1999 a't Trade mark must be a mark which includes a device, brand, shape of goods, packaging or combination of colors or any combination thereof s. !"# !m#. The mark must be capable of being represented graphically. $t must be capable of distinguishing the goods or services of one person from those of others. $t may include shape of goods, their packaging and combination of colours. $t must be used or proposed to be used in relation to goods or services. The use must be for the purpose of indicating a connection in the course of trade between the goods or services and some persons having the right as proprietor to use the mark. The right to proprietorship of a trade mark may be acquired by registration under the Act or by use in relation to particular goods or services. The right of proprietorship acquired by registration is a statutory right which requires no actual user but only an intention to use the mark. $%&'ti(& (. a trad !ar" %nder modern business conditions a trade mark performs four functions& !"# it identifies the product and its origin, ! # it guarantees its unchanged quality, !'# it advertises the product, and !(# it creates an image for the product. Th ()* 't (. trad !ar" 3a4 The ob)ect of trade mark law is to deal with the precise nature of the rights which a person can acquire in respect of trade marks, the mode of acquisition of such rights, the method of transfer of those rights to others, the precise nature of infringement of such rights, and the remedies available in respect thereof. Q0. What is a ,((d trad !ar"# A0. Apart from distinctiveness or capable of distinguishing a good trade mark should possess the following attributes& $t should be easy to pronounce and remember, if the mark is a word. $n the case of device mark the device should be capable of being described by a single word. *.

$t must be easy to spell correctly and write legible. $t should not be descriptive but may be suggestive of the quality of the goods, $t should be short, $t should appeal to the eye as well as to the ear. $t should satisfy the requirements of registration. $t should not belong to the class of marks prohibited for registration. $n general a manufacturer of goods is free to adopt any mark to distinguish his goods. Q5. E673ai& th 7r(' d%r .(r R ,istrati(& (. Trad Mar"s# A5. Trad !ar"s r ,istr-/ s 'ti(&s 8 a&d 9 An office called the Trade +arks. ,egistry has been established for the purpose of registration of trade marks, maintenance of the register and matters incidental thereto. The -ead .ffice of The ,egistry is at +umbai. $t has branch office at /olkata, 0elhi, 1hennai and Ahmedabad. The Trade +ark ,egistry has a seal. The Trade +ark ,egistry is under the charge of the ,egistrar of Trade +arks who is also the 1ontroller * 2eneral of 3atents, and 0esigns. -e is assisted by a )oint ,egister, 0eputy ,egisters, Assistant ,egistrars, 45aminers of Trade +arks and a 1omplement of 1lerical staff. Pr(' d%r .(r r ,istrati(& The procedure for registration of trade marks is contained in sec. "6* ( of the Trade +ark Act "777. St 7 1: Pr 3i!i&ar- ad;i' a&d s ar'h 8efore or after applying for registration he may also request for the ,egistrar9s opinion as to the distinctive*character of the mark. The ,egistrar9s search report or opinion is not, however, binding on him. St 7 0: E6a!i&ati(& a&d ()* 'ti(&s The ,egistrar will cause the application to be e5amined and communicate to the applicant any ob)ection to the mark which mainly relates to distinctive character and similarity with already registered marks. The applicant can put forward his case either in writing or at a hearing. $f the application is accepted, it will be advertised in the Trade +arks :ournal. $f refused, the applicant may go on appeal to the Appellate 8oard. $f the application is refused on the ground of lack of distinctive character, the applicant may, after some years of use, make a fresh application. St 7 5: O77(siti(& t( r ,istrati(& s 'ti(& 01 4very application accepted will be advertised in the Trade +arks :ournal !an official publication.# any person may ob)ect to the registration by following the procedure for the prescribed purpose. The ,egistrar may either accept*the application; with or without condition or limitations or refuse the application. 1onditions are in the form of disclaimer of certain parts of the mark or as to mode of use. <imitations may be in the form of amendment of the goods or as to area of the use of the mark or as to mode of use. St 7 <: O&%s The onus of establishing a case for registration is on the applicant. St 7 8: D%rati(& a&d r & 4a3 (. r ,istrati(&/ s 'ti(&s 08 a&d 09 $f the application for registration after its advertisement is unopposed; or if opposed decided in favor of registration the mark will be registered as of the date of the application for

registration. The first registration is for a period of ten years which can be renewed from time to time by paying the renewal fee. Although registration is antedated to the date of application, no infringement action can be instituted before the mark is actually entered on the register. $f the mark is not renewed, it will be removed from the register but can be restored if a request is made to that effect within one year from the date of e5piry of registration or last renewal. St 7 9: C rti.i'ati(& trad !ar"/ s 'ti(&s 99/=> Trade marks indicate trade sources or trade connection. There is a class of marks the purpose of which is to indicate that the goods on which it is impressed have been certified by some competent person in respect of some characteristic of the goods like origin, composition, mode of manufacture or quality. Q<. E673ai& th 7r(;isi(&s r 3ati&, t( I&.ri&, ! &t (. Trad !ar"s# A<. I&.ri&, ! &t (. trad !ar"s/ s 'ti(& 0= a&d 09112 A registered trademark will be infringed if the person in course of the trade, in relation to the same goods for which the mark is registered, uses without authority the same mark or deceptively similar mark. if the whole of the registered mark is taken the addition of the other matter will not affect the issue. =raudulent intention is not necessary to prove infringement. The mark must be used in the course of trade as a trade mark and use must be of a printed or other visual representation of the mark. %se on advertisement, invoices or bills would be infringement. %se of the mark as part of the trading style of the defendant is also an infringement. %se on reconditioned or second hand articles will infringe the registered mark even if it is made clear that the goods are not original but only reconditioned. >here the mark registered consists of a descriptive word, surname or geographical name, any bonafide use of that word or name by others for descriptive purposes is protected and will not be an infringement. I&.ri&, ! &t %&d r s 'ti(& 09102 t( 192 %nder s. 7! # ? !'# the following uses of the registered trade mark which are likely to cause confusion or likely to have an association with the registered mark also constitute infringement of the registered trade mark& marks identical and goods or services similar; marks similar and goods or services identical or similar; +arks identical and goods or services identical. S 'ti(& 091<2 +arks identical or similar, and goods or services not similar; and the registered trade mark has a reputation in $ndia& and the use of the mark without due cause takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark. S 'ti(& 09182 +ark used as a trade name or part of trade name or name of business concern dealing in the goods or services in respect of which the trademark is registered. S 'ti(& 09192 =or the purpose of this section !i.e.s. 7# a person uses a registered trade mark if, in particular he*

a. ).

Affi5es it to goods or to the packaging thereof; .ffers or e5poses goods for sale, puts them on the market, or stocks them for there purposes under the registered trade mark; '. $mports or e5ports goods under the mark; or d. %ses the registered trade mark on business papers or in advertising. $t would appear that this sub*section will apply to all kinds of infringement where the marks are similar and@or the goods are similar. S 'ti(& 091=2 %nauthorized application of the registered trade mark to a material intended to be used for labeling packaging goods as a business paper, or for advertising goods or services, provided that such person when he applied the trade mark knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee. S 'ti(& 091>2 Any unauthorized advertisement of the registered trade mark if such advertisement. a. takes unfair advantage of and is contrary to honest practices in industrial or commercial matters, or ). is detrimental to its distinctive character; or '. $s against the reputation of the trade mark. This refers to comparative advertisement. S 'ti(& 09192 %nauthorized spoken !oral# use of words, which constitute distinctive elements of a registered trade mark. The various types of infringement listed under s. 7! # to !7# involves e5pressions like similar mark, similar goods or services, use of the mark without de cause, taking unfair advantage, detrimental to distinctive character or repute, contrary to honest practices in industrial or commercial matters, against the reputation of a trade mark, and distinctive elements of a registered trade mark. Q8. E673ai& th 3a4 r 3ati&, t( th 7assi&, (. Pr(7 rt- %&d r I&t 33 't%a3 7r(7 rt- A't# A8. C3assi'a3 .(r!%3ati(& (. 7assi&, (.. 9Ao man is entitled to represent his goods as being the goods of another man, and no man is permitted to use any mark, sign or symbol, devise, or other means, whereby, without making a direct false representation himself to a purchaser who purchases from him, he enables such purchaser to tell a lie or to make a false representation to somebody else who is the ultimate customer. This principle also applies to business share no goods are involved. $t is an actionable wrong for any person to pass off his goods or business as and for the goods or business of another person by whatever means that result may be achieved. Passi&, (.. is a .(r! (. t(rt The law of passing off, based on common law, has remained substantially the same over more than a century though its formulation has changed over the time. The ob)ect of this law is to protect the goodwill and reputation of a business from encroachment by dishonest competitors. Passi&, (.. )- !isr 7r s &ti&, '(&& 'ti(&

$n certain circumstances passing off action will lie when there is a representation to the effect that the defendants9 goods or business is connected or associated with the goods or business of the plaintiff. M(d r& .(r!%3ati(& (. th 3a4 (. 7assi&, (.. The essential characteristics which must be present in order to create a valid cause of action for passing off ahs been stared as follows& a. misrepresentation, ). made by a person in the course of trade, '. to prospective customers of his or ultimate customers of goods or services supplied by him, d. which is calculated to in)ure the business or the goodwill of another trader !in the sense that is reasonably foreseeable consequence#.