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Trade Mark
bulet What is a Trade Mark?
bulet Why do you need a Trade Mark?
bulet How to select a trade mark for your products?
bulet How to acquire a right of property in a trade mark?
bulet How to protect your trademark?
bulet Advantages of registration of the trade mark
bulet The types of trademarks that can be registered
bulet Trademarks are not registered if:
bulet Information Required
bulet Renewal of registration
bulet Procedure for registration of trade marks
bulet Jurisdiction of Registry of Trade Mark in India
bulet Infringement of a trademark
bulet Relief that the court may grant in an infringement suit
 
 
What is a Trade Mark? top
A trade mark is an identification mark which may be a word, a device, a label, a name brand, heading or numeral etc. or a combination thereof used to enable the people to distinguish one trader's goods from other traders. Service Mark, Collective Mark, Certification Mark, Textile Marks, Trade Name or Enterprise Name are all various types of trade marks. Now shape of goods, packaging and combination of colours can be also adopted as a trade mark. A trade mark becomes identification of the company and the goods sold there under and thus become the symbol of goodwill and reputation of trader.
 
Why Do You Need A Trade Mark? top
• Trade Mark identifies the source of the goods
• Trade Mark gives the brand recognition
• Trade Mark guarantees the quality of the product
• Trade Mark enables brand extensions to other products
• Trade Mark avoids confusion between two similar products of different manufacturers
• Trade Mark becomes a valuable asset.
 
How to select a Trade Mark for your products? top
• A trademark may be a word, letter a device or numeral label or any combination thereof.
• It shall be distinctive.
• If it is a word it should be easy to speak, spell and remember.
• An ideal word for a trademark is an invented or coined word.
• Entity interested in registering trademark should make appropriate search through market and/or through Registry of Trade Mark that no other mark is already in market similar, deceptively similar or confusing to the mark he is interested in registering.
 
How to acquire a right of property in a trade mark? top
A person may acquire a right of property in a trade mark in the following modes:
  • By use of the mark in relation to particular goods ;or
  • By registration under the Act; or
  • By assignment or transmission of the right from another person
 
How to protect your trademark? top
Care should be taken to keep the distinctiveness of the trademark intact by using it in correct ways in written materials, in promotions etc.

It should be used exactly the way it was designed.

It should be registered at earliest. “The Trade Marks Act, 1999” is the legislation which deals with trademark law in India. Under this Act registration of trademark is permitted under specified classes of goods and services.

Once the trademark is registered it helps in action against infringement.

In case of unregistered marks and marks which are not able of being registered, the only form of protection is the common law remedy of passing off.

The basic difference between the protections available for registered trademarks (infringement action) and unregistered trademarks (action for passing is that the former is a statutory remedy and the later is a common law remedy. In order to establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required. In the case of a passing off action, proving that the marks are identical or deceptively similar alone is not sufficient. The use of the mark should be likely to deceive or cause confusion. Further, in a passing off action it is necessary to prove that the use of the trademark by the defendant is likely to cause injury or damage to the plaintiff’s goodwill, whereas in an infringement suit, the use of the mark by the defendant need not cause any injury to the plaintiff.
 
Advantages of registration of the trade mark top
The exclusive rigsht to use the trade mark in relation to the goods for which it is registered and the right to take legal action against others who may infringe the registered trade mark or one resembling it in relation to similar goods.
 
The types of trademarks that can be registered top
Trademark protection is available for words, names, symbols, or devices that are capable of distinguishing the owner's goods from the goods of others. A trademark that merely describes a class of goods rather than distinguishing the trademark owner's goods from goods provided by others cannot be registered.
 
Trademarks are not registered if: top
• The use of the mark is likely to deceive or cause confusion;
• The use of the mark is contrary to any law or is disentitled to protection in any court of law;
• The mark contains scandalous or obscene matter;
• The mark contains any matter that is likely to hurt the religious sentiments of any section of the citizens of India;
• The mark is identical or deceptively similar to a trademark already registered in respect of the same goods or goods of the same description;
• The use of the mark is prohibited under The Emblems and Names (Prevention of Improper Use) Act, 1950.
 
Information Required top
1. Name, nationality and address of applicants and constitution there of.
2. Specification of goods/Service in which the registration is required. I.e. pharmaceutical & Medicinal preparations, event management,
3. Colors of the trademark to be claimed [if any]
4. Date of user.
5. Translation of the word mark into English, if the mark is in a language other than English or Hindi
6. Power of Attorney
7. 20 Trademark specimens
 
Renewal of registration top
The registration of a trademark is for a period of ten years from the date of the application. Registration of the mark can be renewed for successive period of ten years.
 
Procedure for registration of trade marks top
1. Any person/entity who claims to be the proprietor of a trademark can apply for registration. Before applying for registration, the applicant may apply for a report from the Registrar of Trademarks, as to whether the mark or one similar to it has already been registered or applied for. The applicant can also conduct private searches using the records maintained in the Registry

2. Thereafter, the application for registration should be filed in Form TM-1, as per Trade Marks Rules, 2002

3. After the application is received, the Registrar of Trademarks will examine the same and communicate any objections to the applicant. The applicant can put forward his case in writing or at a hearing. He can also file affidavit in support of his application along with sufficient evidences to prove his claims. If the submissions of the applicant are accepted, the application will be advertised in the Trademarks Journal.

4. In case any objections are received, applicant will have to pass through the process of filing counterstatement, filing of evidences and then the Registrar will conduct a hearing and give a decision regarding the same.

5. If no objections are received, the Registrar will enter the mark in the Register of Trademarks and issue a certificate of registration to the applicant. The certificate of registration is valid from the date of application for registration
 
Jurisdiction of Registry of Trade Mark in India top
The Trade Marks Registry has its Head Office at Mumbai and branch Offices at Kolkata, Delhi, Chennai and Ahmedabad having territorial jurisdiction:
 
Trade Marks Registry, Mumbai (Head Office)
Intellectual Property Bhavan, Near Antop Hill Head Post Office, S.M. Road, Antop Hill,
Mumbai 400037
Tel: 022-2410 1144, 24101177, 24148251, 24112211
Fax: 24120808, 24132295
Jurisdiction: State of Maharashtra, Madhya Pradesh and Goa

Trade Marks Registry, Delhi
Intellectual Property Bhavan, Plot NO.32, Section 14, Dwarka, Delhi
Tel. 011-28082915, 28082916, 28082917
Jurisdiction: State of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Union Territory of Delhi and Chandigarh

Trade Marks Registry, Kolkata,
CP-2, Sector V, 5th floor, I.P.Bhavan, Salt Lake,
Kolkata-700091
Telfax. 033-23677311
Jurisdiction: State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andamar & Nicobar Island.

Trade Marks Registry, Ahmedabad,
15/27 National Chambers, 1st floor,
Ashram road,
Ahmedabad-380 009.
Tel: 079-26580567
Jurisdiction: The state of Gujarat and Rajasthan and Union Territory of Damman, Diu, Dadra and Nagar Haveli

Trade Marks Registry, Chennai
IP building, GST Road, Guindy
Chennai-600032
Tele-Fax : 044-22322441, Tele: 044-22322442
Jurisdiction: The state of Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and Union Territory of Pondicherry and Lakshadweep Island.
 
Infringement of a trademark top
A registered trademark is infringed if a person uses the same/deceptively similar mark in the course of trade, in respect to the same goods. The test for deceptive similarity is whether the defendant's use of a mark is likely to cause confusion, i.e., whether an appreciable number of reasonably prudent consumers are likely to be confused or deceived as to the source, affiliation or sponsorship of the parties and their goods and services
 
Relief that the court may grant in an infringement suit are: top
• Injunction, restraining the further use of the trademark;
• Damages or an account of profits; and
• An order for delivery of the infringing labels and marks for destruction.