ASSIGNMENT

INTELLECTUAL PROPERTY RIGHTS

(402)

TRADEMARK HOLDER AND RIGHTS

(2016-2021)

FAIRFIELD INSTITUTE OF MANGEMENT AND TECHNOLOGY, SCHOOL OF

LAW, KAPASHERA, NEW DELHI-110037

SUBMITTED To: SUBMITTED By:

Ms. Pooja GUNJAN SINGH

Enr: 03790103516
B.B.A. LL.B (H)-“A”
SEMESTER- 8TH
 INDEX

S.NO. PARTICULARS
1. INTRODUCTION

2. OBJECTIVE

3. TRADEMARK HOLDER AND RIGHTS

4. CONCLUSION

5. BIBLIOGRAPHY
 INTRODUCTION

A trademark is anything that identifies and distinguishes the source of the goods or services of
one party from those of others. most trademarks are comprised of words, images, or a
combination of the two, but anything that can identify the source of goods or services can be a
trademark. the core purpose of trademark law is to allow consumers to have confidence in the
accuracy of labels and other information that tells the, where goods or services come from. this
allows the market to build trust in the consistent quality of brands.These laws provide
exclusivity, patent term restoration, a patent extension under various conditions unmatched by
any other industry.
 OBJECTIVE

» To develop further understanding of the theories and concept covered in the course.
» To develop a practice of learning new aspects of the subject and develop a habit of research
related to the subject.
 ✱What is a trademark?

A trademark is one of the elements of Intellectual Property Rights and is represented by the symbol
™ or ®️ or mark is a distinctive sign or indicator of some kind which is used by an individual,
business organisation or other legal entity to identify uniquely the source of its products and/or
services to consumers, and to distinguish its products or services from those of other entities. A
trademark is a type of intellectual property and typically a name, word, phrase, logo, symbol,
design, image or a combination of elements. There is also a range of non-conventional
trademarks comprising marks which do not fall into these standard categories.
A trademark is a recognizable insignia, phrase, word, or symbol that denotes a specific product
and legally differentiates it from all other products of its kind. A trademark exclusively identifies
a product as belonging to a specific company and recognizes the company's ownership of the
brand. Similar to a trademark, a service mark identifies and distinguishes the source of a service
rather than a product, and the term “trademark” is often used to refer to both trademarks and
service marks. Trademarks are generally considered a form of intellectual property.

⋟Understanding trademarks thoroughly …..

A trademark can be a corporate logo, a slogan, a brand, or simply the name of a product. For
example, few would think of bottling a beverage and naming it Coca Cola or of using the famous
wave from its logo. It is clear by now that the name "Coca Cola," and its logo belong to The
Coca-Cola Company (KO).

Trademarking, however, does contain some fuzzy boundaries because it prohibits any marks that
have a “likelihood of confusion” with an existing one. A business cannot thus use a symbol or
brand name if it looks similar, sounds similar, or has a similar meaning to one that’s already on
the books—especially if the products or services are related.

✱History of Trademarks

The first official trademark law was passed in 1940. However due to its limitations and non-use,
it was replaced by the Trade and Merchandise Act, 1958. In 1994, India became part of the
TRIPS Agreements which set basic standards for intellectual property rights. To meet these basic
standards, a number of amendments were introduced to the trademark laws in India. These
amendments were made by replacing the former act with the Trade Marks Act, 1999 and the
Trade Marks Rules, 2002.
 ⋟Why use a trademark?

Individuals and companies have products or services trademarked to protect the product from
being used without the permission of the source company. Most countries have patent laws that
are designed to protect against copyright infringement. In the United States, the United States
Patent and Trademark Office (USPTO) serves this function.

Although most countries have agencies through which businesses can have their products
trademarked, international copyright regulation is more complicated than in the U.S., as there
exists no universally recognized patent office, rules, or consistency.

✱Trademark holder

Trademark Holders are the individuals or entities and their designees (such as licensees or assignees)
that have, or desire to have, their eligible trademark rights included in the Trademark
Clearinghouse. A Trademark Holder can submit a trademark record on its own behalf or can
submit a trademark record through a Trademark Agent.

⋟who should be the owner of the trademark?

The party who controls the nature and quality of the goods and services used in connection with
the brand should be the trademark owner. This is an important decision and naming the proper
owner for purposes of registration is critical to maintaining a valid trademark. A trademark
owner can include but is not limited to individuals, partnerships, corporations, limited liability
companies, sole proprietorships, trusts, estates etc. Trademark law defines a related company as
any person or entity whose use of a mark is controlled by the owner of the trademark with
respect to the nature and quality of the goods and services. Reliance on related company use
requires that the related company use the mark for the same goods or services identified in the
trademark application or registration. Therefore, as a trademark owner you must use caution if
you are forming another business entity or if you are joining another company and the new
company will be using the trademark. As the trademark owner, you must ensure that you control
use of the mark and specifically control the quality of the goods or services. If appropriate, you
should have license agreements between the trademark owner and other persons or entities using
the mark. Businesses and individuals are distinct legal entities. A trademark registration can be
invalidated if the person or entity claiming ownership is not the one controlling the nature and
quality of the goods or services under the mark. Keep in mind that only a legal owner of a
 trademark has standing to enforce the intellectual property rights of that mark. A common
mistake made by business entities is to have an executive of the company file for a trademark in
their own personal name. This can restrain the company from enforcing its trademark rights
against competitors and it can risk invalidating the trademark registration. In addition, this hurts
the company financially as it deprives the company of one of its most valuable assets. Once a
business entity is formed, typically it will be the registered trademark owner.
There are several advantages to the company owning the trademark registration:
(1) the business entity will be able to license or assign the mark; (2) since trademarks are
quantifiable assets, the mark can add great value to the business; (3) trademarks can be used as
security interests in financial transactions; (4) successful registered marks can be exploited in
business negotiations; and (5) the company will have standing to enforce its trademark rights.

✱Registration of trademark

The registration of a trademark is a costly and time-consuming process. However, once the
registration is obtained, the proprietor of a registered trademark is vested with certain valuable
rights. These rights exist for ten years which can be renewed further. On the other hand, a
proprietor of an unregistered trademark is also vested with rights under the common law. One
such right conferred on both, registered as well as unregistered trademark proprietor, is to
prevent the third party from using an identical or deceptively similar trademark under certain
circumstances.

It is pertinent to note that an unregistered trademark can be protected with the help of common
law after an extensive use made of it however, the registered trademark can be protected from
the date of registration only and before they are used. This brings into sharp focus that a right of
registered trademark holder to prevent an unauthorized use of his trademark is more convenient
than that of an unregistered trademark holder.

⋟Advantages of Registering a Trademark

There are many advantages of registering a trademark. Some of them are:-

● Trademarks make it easier for your customer base to find you: Trademarks
distinguish your services and products from those of your competitors. This identifies
you as the source and indicates a consistent level of quality of your services and
products. Trademarks also increase brand awareness and goodwill.
 ● Trademarks help prevent marketplace confusion: Trademarks prevent confusion as to
the source of the goods and services.
● Trademarks are economically efficient tools: Trademarks create a face value in the
market among competitors. Furthermore, they give your business a monopoly over the
brand name.

✱How to Register Trademarks

The registration process in India is a ‘first to file’ basis. Therefore, it is important to apply for
registration as soon as possible. A trademark usually takes 2-3 years to get registered, if the
trademark is not being opposed by a third party[1]. Trademark applications are handled by the
Office of the Controller General of Patents, Trade Marks, Industrial Designs and Geographical
Indications. Branches for these offices are available in Mumbai, Kolkata, Ahmedabad, Delhi and
Chennai. The application must be filled as per territorial jurisdiction. To register a trademark in
India the following steps must be followed:-

● Select a trademark agent in India: Proprietors are only allowed to file a trademark
application if their place of business is in India. If this is not the case, the right holder
must file a trademark application through an agent or attorney. The agent or attorney
usually takes care of the trivialities such as searching, preparing, filing and prosecution
of the trademark.
● Determination of the eligibility and availability of the trademark: The agent usually
starts the registration process by determining whether the trademark is eligible for
registration and conducting a clearance search to see if there is a similar mark in the
office of the controller general.
● Completing the application form and filing: If the trademark agent has the power of
attorney from the right holder he can complete and file the application form. The form
will require details such as name and address of the proprietor, a description of the goods
and services associated with the mark, whether the mark is in use and a copy of the mark.
● Review by the trademark office: The trademark office reviews the application to see if
it is complete and then allots the application a number. If the trademark is registered, this
number becomes the registration number.
● Preliminary approval and publication, show cause hearing or rejection of the
application: The trademark association determines if the application is barred from
registration either on absolute or relative grounds for refusal as prescribed in the Trade
Marks Act, 1999. After this, they issue an examination report within a period of one
 month. Depending on the examination report the registrar of the trademark determines
whether the application must be accepted, rejected or put up for ‘show cause ‘ During a
‘show cause hearing’ subject to the facts an application might be rejected, accepted or
accepted with certain limitations. If the application is rejected, the applicant can appeal at
the Intellectual Property Appellate.
● Registration: Within the term of three months publication in the Trademarks Journal, if
not opposed by a third party, the trademark will proceed for registration and the
trademark authority will proceed to give a registration certificate.

⋟ Types of Trademarks

Under the Trade Marks Act, 1999 the different types of trademarks that can be registered are:-

● Product Trademarks: They are trademarks attached to identify the business’s products.
● Service Trademarks: They are used to identify the services of the entity. For instance,
the trademark for network and broadcasting service. They help advertise the service
provided.
● Collective Trademarks: These trademarks are registered in the name of groups or
organizations. They help people associate members with the group during commercial
activities.
● Certification Trademarks: They are certifying trademarks which help people judge the
quality, material used, origin and other specific features of goods and services.

✱Rights of Unregistered Trademark Holder/Owner

The proprietor of an unregistered trademark can prevent any third party from using an identical
or deceptively similar trademark, provided such an unauthorized use by the rival results into
passing-off. For this purpose, he can initiate the proceedings under common law. Therefore,
such a right is known as a common law right. Apart from an injunction, the claimant may at his
option, obtain either damages or an account of profits. The claimant must establish three
important factors in order to bring an action against the pass-off, namely-

● He has acquired goodwill in his trademark;

● (ii) The act of the defendant amounts to misrepresentation;
 ● (iii) The claimant has suffered or is likely to suffer damage due to the act of the
defendant.

✱Rights Of Registered Trademark Holder/Owner

Following are the rights which are at disposal of the owner or holder of a registered trademark:

(i) Right to Exclusive Use

Section 28(1) of the Act provides that subject to the other provisions of this Act, registration of a
trademark, if valid, give to the registered proprietor of the trademark the exclusive right to use
the trademark in relation to the goods or services in respect of which the trademark is registered.
In Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel the Supreme Court observed
“Section 28…. confers an exclusive right of using trademark to a person who has the trademark
registered in his name. Such right is, thus, absolute. However, from the opening of Section 28(1)
of the Act namely, “subject to the provisions” the right conferred on the registered proprietor is
not an indefeasible right. This is further, made clear by Section 27(2) of the Act, which says
“nothing in this Act shall be deemed to affect the right of action any person for passing off the
goods as goods of another person, or the remedies in respect thereof. Thus, the right created by
Section 28(1) of the Act in favour of a registered proprietor of a trademark is not an absolute
right and is subservient to other provisions of the Act Namely Sections 27(3), 33 (saving for
vested rights) etc. It is also pertinent to note that the registered proprietor of a trademark gets
exclusive rights to use the trademark in relation to goods or services in respect of which it is
registered and that person may not have the right to use the trademark in respect of the other
goods or services in respect of which the trademark is registered”.

(ii) Right to Seek Statutory Remedy Against an Infringement

Section 28(1) also provides that the registered proprietor of a trademark can seek legal remedy in case
of an infringement of his trademark in the manner provided by this Act. He may obtain an
injunction and at his option, either damages or an account of profits by instituting a suit against
the alleged infringer. The proprietor of an unregistered trademark cannot initiate the
infringement proceeding in the event of a deliberate counterfeiting. The Delhi High Court has
observed that registration of a trademark confers on the person some very valuable rights. To
mention only one such right, one may turn to Sub-section (1) of Section 27 which provides that
 no person shall be entitled to institute any proceedings to prevent or to recover damages for, the
infringement of an unregistered trademark.

(iii) Right of Registered Trademark holder of Identical Trademark

Section 28(3) provides that where two or more persons are registered proprietor of trademarks, which
are identical with or nearly resembling with each other, the exclusive right to use of any of those
trademarks shall not (except so far as their respective rights are subject to conditions or
limitations entered on the register) be deemed to have been acquired by any of those persons as
against any other of those persons merely by registration of trademarks. However, each of those
persons has otherwise the same rights against other persons excluding registered users using by
way of permitted use, as he would have if he were the sole registered proprietor.

(iv) Right to Assign

Section 37 of the Act provides that the registered proprietor of a trademark shall have the power
to assign the trademark and to give effectual receipts for any consideration for such assignment.
However, this right shall be subject to the provisions of the Act and to any rights appearing from
the register to be vested in any other person.

(v) Right to Seek Correction of Register

The registered proprietor of a trademark has a right to make an application to the registrar
seeking correction of register regarding the errors pertaining to the particulars of the registered
proprietor and other aspects relating to the registered trademark.

(vi) Right to Alter Registered Trademark

The registered proprietor of a trademark must make an application to the registrar seeking leave
to add to or after the trademark in any manner not substantially affecting the identity thereof.
The Registrar may refuse the leave or grant it on such terms and may be subject to such
limitations as he may think fit.
 CONCLUSION

Trademark is for protecting the name of the product or services rather the product itself.
Trademark assures the customer about the source of a product, though the quality of the product
is not assured by the trade mark, the trademark should be distinctive, deceptively similar marks,
geographical names etc,. cannot be registered as a trademark. In India, the Trade Mark Act of
1999 is presently in force. the term of trademark protection is 10 years, which can be renewed
from time to time, indefinitely, trademark can be assigned or transmitted, using deceptively
similar marks, falsifying the mark or using unregistered mark cause infringement under Trade
Mark Act: and the penalties against offences related to trade mark can range from fine to
imprisonment
 BIBLIOGRAPHY

» https://www.setindiabiz.com/learning/exclusive-rights-of-trademark-owner/

» https://www.lexology.com/library/detail.aspx?g=51704e3b-5ebb-4dad-852f-991d02a0c1a7

» https://www.business.qld.gov.au/running-business/protecting-business/ip-kit/browse-ip-
topics/names,-such-as-trademarks,-brands,-logos,-domain-names,-business-names-or-company-
names/registered-trademark-rights

» https://www.trademark-clearinghouse.com/content/trademark-holder