THE TRADEMARKS ACT

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THE TRADEMARKS ACT
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• 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.

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• 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.

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• 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

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• 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

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• 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.

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• 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.

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•  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

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• 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

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• 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

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• 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.

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TRADEMARKS ACT 1999 

• TrademarkThe definition has been widened to
  include the 'color combination' and 'shape of
  goods'.

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• Service markThe 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
  .

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• Collective markThe 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.

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

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

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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.

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• 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.

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• 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.

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• 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.

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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.

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• TIME PERIOD -The registration of a trademark
  shall be for a period of seven years, but it may
  be renewed from time to time. 

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• 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.

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• 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.

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• 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. 

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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.

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• 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.

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• 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.

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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.

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• 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.

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• 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.

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• 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

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• 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 '
  non-user' on a petition filed by any 'aggrieved
  person'

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• 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.

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• 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 " .

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• 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 " .

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• 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.

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• 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

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• 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.

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• 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.

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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.

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• .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.

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• 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.

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• 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.

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• 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. 

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• . Examples of possible Indian Geographical
  Indications.
• Ans
• Basmati Rice
• Darjeeling Tea
• Kanchipuram Silk Saree
• Alphanso Mango
• Nagpur Orange
• Kolhapuri Chappal
• Bikaneri Bhujia
• Agra Petha

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• . 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.

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• 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

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• 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.

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• 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

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• 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.

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• 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

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• 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.

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• 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.

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• 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.