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THE TRADEMARKS ACT

During the British regime in India the big


merchants and businessmen who had
established their mark in the market in
respect of certain goods under the
particular brand name, style or design felt
they should continue to be sold or traded
under the same brand name, style or
design and no other person shall be
allowed to adopt that brand name, style or
design.

The Government then enacted the Indian


Merchandise Marks Act, 1889 and with
development and changes, on 25th
November 1958 The Trade And Merchandise
Marks Act came into force.

WHAT IS A TRADEMARK?
A trademark is a mark used in relation to
goods for the purpose of indicating a
connection between the goods and some
person having the right as proprietor to
use the mark

It is a visual symbol in the form of a word,


device or a label applied to articles of
commerce with a view to indicate to the
purchasing public that they are goods
manufactured or otherwise dealt in by a
particular person or a particular organisation
as distinguished from similar goods
manufactured or dealt in by others

FUNCTIONS OF A TRADEMARK -A
trademark serves the purpose of
identifying the source or the origin of
goods. Trademark performs the following
four functions.
It identifies the product and its origin.
It proposes to guarantee its quality.

It advertises the product. The trademark


represents the product.
It creates an image of the product in the minds of
the public particularly the consumers or the
prospective consumers of such goods.

MARKS NOT REGISTERABLE


The use of which would be likely to deceive or
cause confusion.
A mark the use of which would be contrary to
any law for the time being in force

A mark comprising or containing scandalous


or obscene matter
A mark comprising or containing any matter
likely to hurt the religious susceptibilities of
any class or section

A mark which would be disentitled to protection


in court of law
A mark which is identical with or deceptively
similar to a trademark already registered in
respect of the same goods or goods of the
same description

A word which is the accepted name of any


single chemical name or chemical compound
in respect of chemical substances.
A geographical name or a surname or a
personal name or any common abbreviation
thereof or the name of a sect, caste or tribe in
India.

TRADEMARKS ACT 1999


Trademark
The definition has been widened to
include the 'color combination' and
'shape of goods'.

Service mark
The new definition of 'service mark' has been
included for the benefit of service-oriented
establishments such as Banking,
Communication, Education, Finance,
Insurance, Chit funds, Real Estates, Transport,
Storage material treatment, Processing, Supply
of electrical or other energy, Boarding, lodging,
Entertainment, Amusement, Construction,
Repair, Conveying of news or information and
advertising .

Collective mark
The new definition of ' Collective mark ' has
been provided for the benefit of members of
an association of persons (but not
partnership) and such inclusion of ' Collective
mark ' will benefit the traditional Indian family
trademarks.

Well known trademark


The new definition for 'well known trademark '
has been provided for the benefit of a
trademark being used by the substantial
segment of the public.

Renewal
The renewal of registration of a
trademark should be made for every ten
years instead of seven years under the
present Act.

REGISTRATION
WHO CAN APPLY
Any person who claims to be a proprietor
of a trademark and is desirous of
registration of the mark can apply. The
application may be made in the name of
an individual, partners of a firm, a
Corporation, any Government
Department, a trust or joint applicants.

APPLICATION
After completing all specifications on the
prescribed application form, an application
shall be filed in the office of the trademark
Registrar "within whose territorial limits the
principle place of business in India of the
applicant or in the case of the joint applicants
the principal place of business in India of the
applicant whose name is the first mentioned
in the application, as having the place of
business is situated.

Every application for registration of a


trademark shall contain a representation of
the mark in the place provided in the form for
the purpose. Ten additional representations of
the mark have to be supplied with the
application.

Upon submission of an application for


registration of a trademark, there can be four
outcomes:
a. The application is accepted as it is.
b. The application is accepted subject to
certain amendment.
c. The application is accepted but latter it is
found to have been accepted in error.
d. The application stands rejected.

ADVERTISEMENT

Soon after acceptance of the application, the


application is advertised in the Trademarks
Journal.
Any person may, within three months from
the date of the advertisement or
readvertisement of the application for
registration or within such further period not
exceeding one month, give notice in writing to
the Registrar of opposition to the registration.
If such an opposition does not arise then the
mark is deemed to be registered.

TIME PERIOD -The registration of a


trademark shall be for a period of seven
years, but it may be renewed from time to
time.

INFRINGEMENT
Infringement of a trademark occurs if a
person other than the registered proprietor
in the course of trade, in relation to the
same goods or services for which the
mark is registered, uses the same mark or
deceptively similar mark.

ESSENTIALS OF INFRINGEMENT
1) The taking of any essential feature of
the mark or taking the whole of the mark a
few additions and alterations would
constitute infringement.
2) The infringing mark must be used in the
course of trade, that is, in a regular trade
wherein the proprietor of the mark is
engaged.

3) The use of the infringing mark must be


printed or usual representation of the mark in
advertisements, Invoices or bills. Any oral use
of the trademark is not infringement.
4) Any or all of the above acts would
constitute infringement.

REMEDIES
The proprietor of a trademark has a right
to file a suit for infringement of his right
and obtain
Injunction- an injunction restrains the
defendant from using the offending mark
pending the trial of the suit or until further
orders.

Damages in assessing the damages the


important question is what is the loss sustained
by the plaintiff. The loss must be the natural
and direct consequence of the defendants acts.
The object of damages is to compensate for
loss or injury.

Accounts of profits. Where a plaintiff claims the


profits made by the unauthorised use of his
trademark, it is important to ascertain to what
extent he trademark was used, in order to
determine what proportion of the net profits
realised by the infringer was attributable to its
use.

FAQS
What is a trademark?
A trademark popularly known as brand
name, is a visual symbol in the form of a
word or a device or a label applied to the
commercial goods or service to enable
the consumer public to identify one
trader's goods from similar goods of other
traders.

What is a service mark?


Under the Trade and Merchandise Marks Act ,
1958 registration of 'service mark' is not possible
but under the new Trade Marks Act ,1999
registration of 'service mark' can be done.
Such 'service mark ' can be used as a trade mark
but applied to services rather than goods i.e.
Banking , Communication ,Education ,Financing
,Insurance ,Chit Funds, Real Estate , Transport ,
Storage material treatment , Processing , Supply
of electrical or other energy , Boarding and
Lodging , Entertainment , Amusement ,
Construction ,Repair , Conveying of news or
Information or Information and Advertising.

Whether registration of Trade Mark is


compulsory under the Act?
No. Registration of a trade mark is not
compulsory. But for better protection it is
advisable to register a trade mark.

How to acquire a right of property in a trade


mark?
A person may acquire a right of property in
a trade mark in the following modes:
a) By use of the mark in relation to particular
goods ;or
b) By registration under the Act; or
c) By assignment or transmission of the
right from another person

Whether ' user' is very important in trade


mark?
Yes . A trade mark must be used in relation to
the goods for which the registration is sought or
obtained .If it is not used but merely renewed
from time to time , then it will be possible that a
mark may be removed on the ground of ' nonuser' on a petition filed by any 'aggrieved
person'

Is it possible to file trade mark application


on the ground of ' proposed to be used ' ?
Yes . But the application should have
bonafide intention to use the mark at the time
of filing the application and further the
applicant can claim rights from the date to
filing such application.

Is it possible to get registration of a trade


mark without any intention to use?
No. It is well established rule of law that to get a
trade mark registered without any intention to
use it in relation to any goods or services but
merely to make money out of it by selling to
others the right to use, it would be " trafficking
in trade marks " .

What is the advantage of 'prior user ' of a


trade mark ?
'Prior user' of a trade mark is in better position
rather than the registered proprietor of a mark.
Hence the rule of law is -" priority in adoption
and use prevails over priority in registration " .

Whether the proprietor of an unregistered


trade mark can initiate legal action?
Yes. The proprietor of an unregistered mark
may bring legal action against the subsequent
user by filing a civil suit for ' passing off ' action
on the basis of ' prior user '. Further he can
lodge criminal complaint also under the
provisions of the Trademarks Act.

What about the Renewal of a Registered


Trade Mark?
A registered trade mark should be renewed for
every seven years under the present Act . The
period of said seven years will be calculated
from the date of filing the application

Will any rights be conferred upon the


applicant on mere filing of trade mark
application ?
No Mere filing of trade mark application will
not confer any rights on the applicant.
Proprietary rights over a trade mark can be
claimed only by continuous use of the mark.

Whether advertisement is sufficient to


establish the 'User ' of a trade mark ?
The advertisement of a mark in any periodical
or magazine or in electronic media may be
regarded as evidence to establish the 'prior
user' of a trade mark.

Geographical Indication
Some geographical names have
acquired a lot of distinctiveness and
importance in the Global commercial
market particularly with regard to the
goods associated with such geographical
names. Most commonly, a geographical
indication consists of a name of the place
of the origin of the goods.

.Agricultural goods, natural goods or


manufactured goods or any goods of handicraft
or goods of industry including food stuff,
generally bears the geographical indications to
attracts the attention of the consumers.
To prevent unauthorized persons from
misusing geographical indications, the
Government of India has passed "The
Geographical Indications of Goods
(Registration and Protection)Act,1999".Hence
the protection under the said Act helps the
consumers from deception.

FREQUENTLY ASKED QUESTIONS


What is a Geographical Indication?
A Geographical Indication is a sign used
on goods which have a specific
geographical origin and possess qualities
or a reputation that are due to the place
of origin e.g., Scotch Whisky. But the
place of origin may be village or town or
a region or a Country.

What is the difference between


Geographical Indication and a Trade
Mark?
A Trade Mark is a sign used by
commercial establishments to
distinguish their goods and services
from those of other traders. But a
Geographical Indication tells
consumer that a product is produced
in a certain place and has certain
characteristics that are due to that
place of production.

Why does Geographical Indication need


protection?
Geographical Indications are understood by
consumers to denote the origin and the quality
of products. Many of them have acquired
reputation and goodwill, which may be
misrepresented by dishonest traders. False use
of geographical indications by unauthorized
traders, for example "Darjeeling" for tea, which
was not grown in the Darjeeling area of Indian
Territory, is detrimental to consumers and
legitimate products. Hence geographical
indication needs protection under the Act.

. Examples of possible Indian Geographical


Indications.
Ans :
Basmati Rice
Darjeeling Tea
Kanchipuram Silk Saree
Alphanso Mango
Nagpur Orange
Kolhapuri Chappal
Bikaneri Bhujia
Agra Petha

. What is the benefit of registration of


geographical indications?
Ans :
It confers legal protection to Geographical
Indications in India
Prevents unauthorised use of a Registered
Geographical Indication by others
It provides legal protection to Indian
Geographical Indications which in turn boost
exports.
It promotes economic prosperity of producers of
goods produced in a geographical territory.

Who can apply for the registration of a


geographical indication?
Ans :
Any association of persons, producers,
organisation or authority established by or
under the law can apply:
The applicant must represent the interest of
the producers

Who is a registered proprietor of a


geographical indication?
Ans :
Any association of persons,
producers,organisation or authority established
by or under the law can be a registered
proprietor.
Their name should be entered in the Register of
Geographical Indication as registered proprietor
for the Geographical Indication applied for.

Who is an authorised user?


Ans :
A producer of goods can apply for registration
as an authorised user
It must be in respect of a registered
geographical indication
He should apply in writing in the prescribed
form alongwith prescribed fee

Who is a producer in relation to a


Geographical Indication?
Ans :
The persons dealing with three categories of
goods are covered under the term Producer:
Agricultural Goods includes the production,
processing, trading or dealing
Natural Goods includes exploiting, trading or
dealing
Handicrafts or Industrial goods includes
making, manufacturing, trading or dealing.

Is a registration of a geographical indication


compulsory and how does it help the applicant?
Ans :
Registration is not compulsory
Registration affords better legal protection to
facilitate an action for infringement
The registered proprietor and authorised users can
initiate infringement actions
The authorised users can exercise the exclusive
right to use the geographical indication

How long the registration of Geographical


Indication is valid?
Ans :
The registration of a geographical indication is
valid for a period of 10 years.
It can be renewed from time to time for further
period of 10 years each.

When is a registered Geographical Indication


said to be infringed?
Ans :
When an unauthorised user uses a geographical
indication that indicates or suggests that such goods
originate in a geographical area other than the true
place of origin of such goods in a manner which
mislead the public as to the geographical origin of
such goods.
When the use of geographical indication result in an
unfair competition including passing off in respect of
registered geographical indication.
When the use of another geographical indication
results in false representation to the public that
goods originate in a territory in respect of which a
registered geographical indication relates.

How a geographical indication is different


from a trade mark?
Ans :
A trade mark is a sign which is used in the
course of trade and it distinguishes goods or
services of one enterprise from those of other
enterprises.
Whereas a geographical indication is an
indication used to identify goods having
special characteristics originating from a
definite geographical territory.

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