TRADEMARK LAW IN INDIA

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TRADEMARK LAW IN INDIA

• PGDIPR
• MIP-005 Protection of IP at the National Level

Dr. V.B. Lal School of Sciences, IGNOU 11
September, 2005
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TRADEMARK LAW IN INDIA

• Trade Mark Act, 1999
• TM a visual symbol (word, letter, numeral, name,
  signature, device, label, symbol) identifying
  goods or services of one person from those of
  others, and capable of graphic representation
• Includes shape of goods, packaging, combination
  of colours

TM-1
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• Well known TM If consumers seeing it applied on
  some goods relate it to the same mark applied on
  some other goods.
• Collective Mark Owned by an Association of
  Persons, who donot make a partnership (Indian
  Partnership Act, 1932)
• Certification Mark Proprietor certifies that
  goods conform to certain characteristics
  quality, ingredients, etc. e.g. Agmark, ISI mark

TM-2
4

• Use of Sign
• Used on goods, means appearance of sign not
  only on goods but containers wrappers too
• Used in connection with the marketing means
  appearance of sign in advertisements and display
  windows.

TM-3
5

• Registration of TM
• Controller General of Patents, Designs and
  Trademarks is also Registrar of Trademarks
• Registry H.O. Bombay
• Branch offices (4) Kolkata, Chennai, New Delhi,
  Ahmedabad
• Register of TM contains all record of registered
  TMs, with names, addresses and description of
  proprietors, users, assignments, transmissions,
  conditions and limitations.
• A digital library of 1,50,000 TMs and 1250 TM
  journals on CD-ROM

TM-4
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REGISTRABILITY OF TM

• A TM should satisfy at least one of the following
  characteristics for registration.
• Be a name of a company/individual represented in
  a special manner
• Be the signature of the applicant
• Be one or more invented words
• Be one or more words having no direct reference
  to the characters or quality of the goods,
  barring certain exceptions
• A part of TM can be registered separately.

TM-5
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ABSOLUTE GROUNDS FOR REFUSAL

• Not being distinctive
• Incapable of graphical representation
• Consisting exclusively of marks and indications
  to designate kind, quality, quantity, intended
  purpose, values, geographical origin etc.
• Mark being identical with or deceptively similar
  to a registered TM in respect of same goods or
  services.

TM-6
Contd.
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Abs.Gds. (Contd.)

• A Mark whose use would be contrary to any law
• A Mark containing scandalous/obscene matter or
  likely to hurt religious susceptability of any
  class/section of the people
• A mark if it is prohibited under the Emblems and
  Names (Prevention of Improper Use) Act, 1950

TM-7
Contd.
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Abs.Gds. (Contd.)

• A mark if it consists exclusively of the shape of
  goods which
• results from the nature of goods themselves
• is necessary to obtain a technical result
• which gives substantial value to the goods
  (difficult to interpret).

TM-8
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RELATIVE GROUNDS FOR REFUSAL

• Except in rare circumstances of honest,
  concurrent use, a mark shall not be registered,
  if
• it has identity with an earlier TM and similarity
  of goods or services or
• it has similarity to an earlier TM and the
  identity or similarity of the goods or services
• and such identity or similarity is likely to
  cause confusion.

TM-9
Contd.
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Rel.Gds. (Contd.)

• A TM has similarity/identity with an earlier well
  known TM even for dissimilar goods/services, if
  its use would take unfair advantage of, or be
  detrimental to, the distinctive character or
  repute of the earlier TM.
• If its use is prevented by any law, particularly
  the law of passing off, protecting an
  unregistered TM.

TM-10
Contd.
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PROHIBITION FROM REGISTRATION

• No word which is
• the commonly used and accepted name of any single
  chemical element or compound, or
• declared by the WHO and notified by the Registrar
  as an international non-proprietory name, (or
  word deceptively similar to it),
• shall be registered as TM.

TM-11
Contd.
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• Honest Concurrent Use
• Registrar may permit registration of identical or
  similar TMs by more than one proprietor in
  special circumstances.
• If a TM falsely suggests a connection with a
  living person (or a person, who has died within
  20 years preceding the application), Registrar
  may require written consent of the living person
  or the legal representative of the deceased.

TM-12
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ADVERTISEMENT, OPPOSITION

• After acceptance, the application is advertised
  in the Trademarks Journal.
• Any person may give notice of opposition to
  Registrar within 3 months of publication the
  period extendable by 1 month.

TM-13
Contd.
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AO (Contd.)

• Registrar serves a copy of the notice to the
  applicant, who files a counter-statement within 2
  months, which is then sent to the opponent.
• Registrar considers evidence, hears the parties
  and decides suitably. Any conditions or
  limitations could be prescribed on registration.

TM-14
Contd.
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REGISTRATION

• TM is then registered and Registrar issues a
  certificate of registration to the application
  with the seal of the Registry.
• Registration valid for 10 years, may be renewed
  indefinitely, for 10 years each time.
• Failure to renew registration leads to removal of
  TM from the Register it could be restored by an
  application filed within one year.

TM-15
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EFFECT OF REGISTRATION

• No proceedings for infringement of an
  unregistered TM can be instituted.
• Action can be taken for passing off
  goods/services
• Registration gives exclusive right to the
  proprietor to the use of the registered TM in
  relation to the goods/services regd., subject to
  any conditions/limitations of registration.

TM-16
Contd.
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EOR (Contd.)

• Where two or more persons are registered
  proprietors of identical, or closely resembling
  TMs, none of them have the exclusive right to use
  the TM. vis-à-vis each other, but each of them
  has the exclusive right against others, excluding
  the registered users.
• Registration is prima facie proof of validity in
  all legal proceedings.

TM-17
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INFRINGEMENT OF TM

• A registered TM is infringed by a person who,
  without the permission of the proprietor,
• Uses in the course of trade an identical or a
  deceptively similar TM in relation to goods or
  services for which the TM is registered or

TM-18
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Inf. (Contd.)

• Uses a mark which because of
• its identity with the regd. TM and the
• identity or similarity of the goods/services
• covered by it or
• its similarity to the regd. TM and the
• identity or similarity of the goods/services
• Is likely to cause confusion on the part of the
  public.

TM-19
Contd.
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Inf. (Contd.)

• Uses a mark which is identical with or similar to
  the regd. TM and is used in relation to
  dissimilar goods/services and the regd. TM has a
  reputation in India and the use of the mark takes
  unfair advantage of, or is detrimental to, the
  distinctive character or repute of the regd. TM

TM-20
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• Infringement I-IS, S-IS, IS-D (WT)
• TM Goods/services Status

Identical Yes Similar
Yes Identical Yes Similar
Yes Dissimilar Yes Dissimilar Yes

• Identical
• Similar
• (only for Well-Known TM)
• Identical
• Similar

TM-21
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• Exemptions
• Use of a mark in accordance with honest
  practices, and not such as to take unfair
  advantage of, or harm the distinctive
  character/repute of the TM, is not infringement.
• The following are not infringement
• use in relation to goods/services to indicate
  kind, quality, quantity etc. of the
  goods/services

TM-22
Contd.
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Exemp. (Contd.)

• use in a manner outside the scope of
  registration
• use in relation to goods/services where the owner
  had once applied the mark and had not
  subsequently removed it or impliedly consented to
  its use
• use in relation to parts/accessories of other
  goods, where such use is reasonably necessary and
  not likely to deceive as to the origin.

TM-23
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Exemp. (Contd.)

• The proprietor of a registered TM can not
  interfere with the use of any identical/similar
  TM, if a person has been using this mark from an
  earlier date.

TM-24