TRADE MARKS ACT 1999

BACKGROUND

It replaced the Trade & Merchandise Marks Act, 1958 The Trade Mark Act, 1999 was enacted to bring our law in conformity with the TRIPs Agreement 1994, to which India is a signatory

The Trade Marks Act, 1999, came into force on September 15, 2003.
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Trade Mark-Definition
Trade Mark is a mark capable of being represented graphically (visually)and which is capable of distinguishing goods or services of one person from those of others. It may include shape of goods, their packaging and combination of colours

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Mark
Mark includes brand (name used to identify goods or services or business), label, name, letter, word, numeral, ticket, signature, device, shape of goods, packaging, combination of colours, or any combination of these

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Some More Definitions

Well-known Trade Mark: means a mark well known to a substantial segment of the public using such goods or services, if the use of such mark in relation to other goods or services would be taken as indicating a connection with that well-known trade mark.[ S. 2(zg)], eg. Wal-Mart, Marks and Spencer Collective Mark: a Trade Mark distinguishing the goods and services of members of an association of persons. Collective Mark is owned by an association of persons (not being a partnership within the meaning of Indian Partnership Act, 1932) [S. 2(g)] ; eg. ASSOCHAM, FICCI Certification Mark: means a mark capable of distinguishing goods or services which the proprietor of the mark certifies in respect of origin, material, quality, accuracy, ingredients or other characteristics, etc. e.g. Agmark, ISI mark [S. 2(e)]

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PROCEDURE FOR REGISTRATION

a) Filing b) Examination c) Acceptance and advertisement of application d) Opposition, if any, within three months of advertisement e) Registration
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Maintenance and protection of Trade Mark

1. Renewal of Trade Mark 2. Acquiescence 3. Cancellation for non use 4. Infringement

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Renewal (S.25,26)
An application for renewal (for ten years) should be made six months before the expiry of the registration with the prescribed renewal fee Registrar may remove the trade mark from the register, after giving notice, if the trade mark is not renewed. Registrar may restore the trade mark on application and fee within one year from the expiration Where a trade mark is removed from the register for non payment of renewal fee, that trade mark will be freezed for one year ( Will not be allocated to another applicant for one year).

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Acquiescence
Where the proprietor of an earlier trade mark has acquiesced for five years in the use of a registered trade mark, being aware of that use, he shall no longer be entitled to oppose the use of the later trade mark, unless he can prove that the registration of the subsequent trade mark was not obtained in good faith (S.33)
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Non-Use of Trade Mark

A registered Trade Mark may be taken off the register (removed from the register) if there is no bonafide use of the trade mark for a continuous period of five years (S.47)

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Infringement of Registered Trade Mark (S.29)

A registered trade mark is infringed by the use of identical or deceptively similar trade mark in relation to goods or services for which the trade mark is registered. Use in relation to other good and services, which , without due cause, takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark Use on packaging or business papers, sale, import or advertisment under the registered mark, Registered Trade mark may be infringed by spoken use of words as well as visual representation No action for infringement can be taken in respect of unregistered Trade Mark (S. 27)
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Penalties
Falsifying and Falsely applying a trade mark: Applying a trade mark without the assent of the proprietor, or making a deceptively similar trade mark, or altering a genuine trade mark ( S. 102); Passing Off ones goods and services as some body eleses. Penalty for applying false trade mark- Imprisonment for 6 months to 3 years and with fine of Rs 50,000 to Rs 2 lakh (S.103).The offence is cognizable ( S.115) Penalty for selling goods or services to which false trade mark is applied- same penalty (S.104). The offence is cognizable (S. 115) Penalty for falsely representing a trade mark as registeredimprisonment up to 3 years, or fine, or both (s.107) Court may order forfeiture of goods to government in case of conviction (S.111) Note: cognizable: Police can arrest without warrant

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INFRINGEMENT OF TM (Civil Remedies)

Suit for infringement can be filed in the District Court (s.134) Relief in Suits for Infringement (S. 135): 1. Injunction, and 2. Either damages or an account of profits, at the option of the plaintiff, 3. Destruction or erasure of infringing labels and marks
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International Applications
Where a person has made an application in a convention country, within 6 months of that date he may get registered under this Act in India; and the registration will be deemed to be as of date on which the application was made in the convention country. (S.154)

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