TRADE MARK PRESENATION

BY HILAL AHMAD MALLA STUDENT OF LL.M, 3RD SEMESTER, HIDAYATULLAH NATIONAL LAW UNIVERSITY RAIPUR CHHATTISGARH

INTELLECTUAL PROPERTY RIGHTS

 INDUSTRIAL

COPYRIGHT

PROPERTY PATENT DESIGN TRADE MARK GEOGRAPHICAL INDICATIONS

TRADE MARK
 A trade mark is any sign which can distinguish the goods of one trader from those of another. Sign includes, words, logos, pictures, or a combination of these.

A trade mark is used as a marketing tool so that

customers can recognize the product of a particular trader. To register a trade mark , the mark must be:distinctive, and, not deceptive, or contrary to law or morality, and, not identical or similar to any earlier marks for the same or similar goods..

How to select a Trade Mark ?

 A word, letter or any combination thereof

and simple in design.  If it is a word it should be easy to speak, spell and remember.  The ideal word for a trade mark is an invented or coined word  Words which are laudatory or which directly describes the character or quality of the goods should not be adopted.

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 Geographical names connected with the reputation or

quality of the goods for which registration is sought should not be adopted.  Are all Trade Marks registrable ?  Not possible to register a mark which is confusing with a trade mark of another trader or a trade mark which describes the character or quality of the goods. The mark should not conflict with a trade mark already registered or pending registration in respect of similar goods.

TRADE NAMES
 Trade names are names, terms or designations that serve

to identify and distinguish an enterprise and its business activities from those of other enterprise and its business activities

 Whereas the trademark distinguishes the goods or services

of an enterprise, a trade name identifies the entire enterprise and symbolizes the reputation and goodwill of the business as a whole.

The main reason for protecting trademark and trade names against infringement is that the public might be misled into thinking that two separate enterprises using same or confusingly similar trademark or a trade name constitute one and the same enterprise

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 It is not only harmful to the consumers but it also

permits the infringing enterprise to benefit unfairly.

SERVICE MARKS

Where a trademark is used in connection with services, it may be called service mark. Service marks are used by hotels, restaurants, airlines, tourist agencies, laundries and cleaners etc.

TRADE MARKS ACT, 1999 INTRODUCTION Patents, designs and copyright are protected only for a limited period. On the other hand, in general, a registered trade mark can be protected in perpetuity subject only to the following conditions It is used and renewed periodically and The registered proprietor takes prompt action against infringers. First TM registered in UK under No. 1 of 1876 consisting of red equilateral triangle in respect of alcoholic beverage is still in force.

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 The present Trade Marks Act, 1999 has replaced the

Trade and Merchandise Marks Act, 1958. And the Trade Marks Act, 1999 has been brought into force only on 15th September 2003. The Trade Mark Rules, 2002 are passed under the Trade Marks Act, 1999.

OBJECTIVES OF THE TM ACT, 1999 A co prehensive revie of TM La as required in vie of  evelop ents in trading and co ercial practices  Increasing globalization of trade and industry  The need to encourage invest ent flo s and transfer of technology  eed for si plification & har onization of trade ark anage ent syste s and  To give effect to i portant judicial decisions

TM Act, 1999 was passed with objectives

To provide for registration of trade mark for services, in addition to goods; b) Registration of trade marks, which are imitation of well known trade marks, not to be permitted, besides enlarging the grounds for refusal of registration; c) Amplification of factors to be considered for defining a well known mark; d) To provide only a single register with simplified procedure for registration and with equal rights.

MEANING AND DEFINITION OF TM

 At times the consumers are duped when they buy commodities presuming them to have originated from a certain identified source, when actually they have not, and after buying such commodity it is found to be substandard.  Examples: Parachute Oil, Fair and Lovely cream, Lifebuoy soap etc. have many look-a-likes in the market.

 In such case, the reputation of the trader/manufacturer suffers if

spurious goods are sold as those originating from him.

 Therefore, the interest of consumer and the trader can be saved if

a definite symbol which marks out the origin of goods from a definite trade source is attached. Such symbol is called a trade mark.

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 Trade Mark is a visual symbol in the form of A word, device or 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 particular organization  As distinguished from similar goods manufactured or dealt by others  TM is a visual representation attached to goods for

the purpose of indicating their trade origin.  Examples: Lakme distinguishes the goods of Lakme Company from that of Revlon .

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 A person who sells his goods under a particular trade

mark acquires limited exclusive right to use of the mark in relation to those goods.  A trade mark may be registered or unregistered. An unregistered trade mark is called common law mark.  A trade mark when registered gets a stable existence. A registered trade mark can be in relation not only to its existing use but also for a proposed use. The proprietor of an unregistered trade mark shall not be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trademark.

Continue However, such proprietor of unregistered trade mark shall have common law remedy to take action against another person, for passing off goods as goods of the proprietor, or passing off services as services provided by proprietor.

STATUTORY DEFINITIONS
 MARK: Section 2(1) (m) of TM Act, 1999 defines

Mark as Mark includes a Device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packing or combination of colours or any combination thereof.  Example M written in a particular style with yellow colour for MacDonald's; 555/777 numerical used for detergent soaps; signature used as a mark for alcohol.

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 TRADE MARK: Section 2 (1) (zb)

Trade mark is defined as a mark capable of being represented graphically and that is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packing and other combination of colours. E.g. Colgate, Bata, Pantene etc.

SERVICE MARK: Section 2 (1) (z)

 It means service of any description that is made

available to any potential users and includes the provision of service in connection with business of any industrial or commercial matters such as banking, communications, education, financing, insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of electrical or other energy, boarding, loading entertainment amusement, construction, repair, conveying of news or information and advertising.

WELL KNOWN TRADE MARK: Section 2(1) (zg)

 Well known trade mark in relation to any goods or

services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services. Example: Coco Cola, Frooti, Bata.

COLLECTIVE MARK: Section 2(1) (g)

A Trade mark distinguishing the goods or services of members of an association of persons not being partnership firm from those of others The proprietor of the mark is the association. The goods and services of a company or group of companies like GODREJ or HINDUSTAN UNILEVER LTD. may be the subject matter of collective Trade mark. It is not to be registered if it is likely to deceive or cause confusion to the public.

CERTIFICATION TRADE MARK

 Section 2 (1) (e) There is a species of trade mark called as Certification Trade mark. Its function is to indicate that the proprietor of the mark has certified the goods bearing the mark as to certain characteristics of the goods. e.g. Geographical origin, ingredients and so on such as ISI, AGMARK, FPO

PROPERTY MARKS
 Section 479 of Indian Penal Code, 1860 provides

that A mark used for denoting that moveable property belongs to a particular person is called a property mark.  The distinction between trade mark and property mark is not recognized in English Law.  However in India, the distinction between a trade mark and a property mark is as follows:

FUNCTI NS F TRADE

ARK

 As per modern business conditions a TM performs

following functions:  It identifies the product and origin.  It guarantees its unchanged quality.  It advertises the product.  It creates an image for the product.  e.g. Zip Drive associated with Santro Car; Taj Mahal for a particular quality of tea which will be different in quality from Brooke Bond; SONY is associated with electronic items etc.  The functions of service marks in relation to services are similar to that of a TM in relation to goods. E.g. Courier services such as DHL, DTDC, GATI etc.

Advantages of trade mark

 The Regd.Proprietor: The Regd.Proprietor of a trade

mark can stop other traders from unlawfully using his trade mark, sue for damages and secure destruction of infringing goods and or labels.  The Government: The Trade Marks Registry is expected to earn a revenue of nearly Rs.40 crores during the current year and which is perpetually on the rise.  The Legal professionals: The Trade Marks Registration system is driven by professionals and legal and para legal advisors(Agents) who act for the clients in the processing of the trade marks application.

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 The Purchaser and ultimately Consumers of

trade marks goods and services.

Formalities And Government Fees For Major Trade Mark

 For filing ne applications there are prescribed for s depending on the nature of application such as For T -1, T -2, T -3, T -8, T -51 etc.

 To file a otice of pposition to oppose an application    

published in the Trade arks Journal (For T 5). Fees: s.2,500/For ene al of a egd.trade ark (For T -12 ). Fees: s.5,000/urcharge for belated rene al (For 10).Fees: s.3,000/estoration of re oved ark (For T -13) Fees:5,000/pplication for rectification of a registered trade ark (For T -26) Fees: s.3,000/-

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 Legal Certificate (Form TM-46)  (Providing details of entries in the Register) Fees:Rs.500/ Official search request (Form TM-54). Fees:Rs.500/ Preliminary advise of the Registrar as to the registrability of a mark(Form TM-55).Fees: Rs.500/  Copyright search request and issuance of certificate (Form TM-60) Fees: Rs,5,000/-.

TRADEMARK REGISTRATION PROCESS FLOW

SEARCH
TRADE MARK APPLICATION

ISSUANCE OF OFFICIAL RESULT

OFFICIAL ACTION EARING

RENEWAL 10 YEARS FROM T E DATE OF APPLICATION

RESPONSE

REGISTRATION
RESPONSE ACCEPTED

ACCEPTANCE

PUBLICATION APPLICATION 3 MONT S

DETAILED PROCEDURE OF REGISTRATION

Two Stages
Classification and Pre-Filing Search STAGE ONE
 Trademark 42 Classes (including 7 Classes for Service Marks)

for Service Marks)

  

TM 54 (Search application) three copies TM 55 (Registrars Preliminary Advice) Public Search at Trademark Office STAGE TWO

 Involves the registration Process itself

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 Trademark Applicationssuance of Official  Issuance of Official Receipt ( TM No will be issued).  Examination Report  Within three months from application.  Response within one month from the date of the

examination report.  Response by filing an affidavit.  Response by hearing.  Response by interview (in case the agent has 100+ pending cases.

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TRADE MARK APPLICATION AMENDMENT.TM 16 Acceptance before advertisement PUBLICATION Wait for opposition for three months. Opposition proceedings REGISTRATION Initially for 10 years from the date of the application. RENEWALS

Jurisdiction
     

TRADE MARKS REGISTRY, MUMBAI(HEAD OFFICE) 101, MAHARSHI KARVE ROAD, 101, MAHARSHI KARVE ROAD, PRATISHTA BHAWAN, MUMBAI-400 020 PRATISHTA BHAWAN, MUMBAI-400 020 TEL. 22030924/22081315, FAX: 22013694.

      

Jurisdiction: State of Maharashtra, Madhya Pradesh and Goa Trade Marks Registry, Delhi Trade Marks Registry, Delhi Intellectual Property Bhawan, Plot NO.32, Section 14, Dwarka, Delhi Intellectual Property Bhawan, Plot NO.32, Section 14, Dwarka, Delhi Tel. 011-28082915/ 16/17 Fax: Tel. 011-28082915/ 16/17 Fax

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Jurisdiction: State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andaman Nicobar Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andaman Nicobar Island. Island. Trade Marks Registry, Ahmadabad, Trade Marks Registry, Ahmadabad, 15/27 National Chambers, 1st floor, 15/27 National Chambers, 1st floor, Ashram road, Ashram road, Ahmedabad-380 009. Ahmedabad-380 009. Tel: 079-26580567 Tel: 079-265

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 Jurisdiction: The state of Gujarat and Rajasthan and Union Territory of Damman, Diu, Dadra  and Nagar Haveli  and Nagar Haveli  Trade Marks Registry, Chennai  Trade Marks Registry, Chennai  IPR building, GST Road,  IPR building, GST Road,  Chennai-31 Tel : 044-23222441  Chennai-31 Tel : 044-23222441

Documents Information Required for Filing trademark Application.

 Logo soft copy in JPEG FORM  TM 48 (FORM OF AUTHORIZATION)  DATE OF FIRST USE OF THE MARK.  NAME AND ADRESS OF THE PROPRIETOR

OF THE MARK.  REQUIRED FEE. Thank you