THE TRADEMARKS ACT During the British regime in

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 25 th 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 it’s 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 defendant’s 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.

FAQ’S § 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 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.