A Trade Mark is any sign which can distinguish the goods and services of one trader from those of another. A sign includes words, logos, colours, slogans, three-dimensional shapes and sometimes sounds and gestures.
A trademark is therefore a "badge" of trade origin. It is used as a marketing tool so that customers can recognise the product of a particular trader. To be registrable in India it must also be capable of being represented graphically, that is, in words and/or pictures.
On February 8, 2007, India ratified its accession to the Madrid Protocol, a system for international registration of Trade Marks. In order to bring into force the Madrid Protocol in India, The Trade Marks (Amendment) Act, 2010 was passed on 21st September, 2010. The Amendment Act has been implemented as of 8th July, 2013.
Some of the important features of the present Trade Marks Act, 1999, which was introduced in India from September 15, 2003, are as follows:
A mechanism is available to protect marks used in the service industry. Thus businesses providing services like computer hardware and software assembly and maintenance, restaurant and hotel services, courier and transport, beauty and health care, advertising, publishing and educational services and the like are now in a position to protect their names and marks.
Marks being used by a group of companies can be protected by the group collectively.
Marks which are deemed to be well-known have been defined by the Trade Marks Registry. Such marks will enjoy greater protection. Persons will not be able to register or use marks which are imitations of Well-known Trade Marks even in respect of non competing goods/services.
Persons who get their marks registered for particular goods in a particular class and commence using their marks can sue and prevent other persons from:
The punishment for violating a Trade Mark right has been enhanced. The offence has now been made cognizable and wide powers have been given to the police to seize infringing goods. At the same time the power of the Courts to grant ex parte injunctions have been amplified.
An appellate board (IPAB) has been constituted (based in Chennai) for speedy disposal of Appeals and rectification applications.
Mechanisms have been set in place for expediting search and registration by paying five times the normal fee.
Registered Trade Marks need to be renewed every ten years.
To view the procedure for filing a Trademarks application, Click Here
The law is based mainly on the United Kingdom Trade Marks law and provides for the registration of Trade Marks which are being used, or which will be used for certain goods to indicate a connection between them and some person who has the right to use the marks, with or without any indication as to the identity of the person.
An application for registration may be made by any person claiming to be the proprietor of a mark but only as regards the particular goods or services in respect of which he/she is using or proposing to use the mark. At the time of filing the application, the proprietor must have the intention to use the mark himself/herself or though a registered user.
Such persons may be recorded as being registered proprietors of Trade Marks but they must provide the Registry with an address for service in India, otherwise, they must appoint a registered agent or representative.
The law provides for the registration of association trademarks, certification marks, defensive marks and collective marks.
To be registrable, a Trade Mark application must contain or consist of the following essential particulars:
Registrable in India in eleven classes (35-45).
Can be claimed from the earliest corresponding application in a Convention country provided that an application is filed in India within six months of the priority date. Multiple and partial priorities are allowed.
The international classification of goods is used and separate applications must be filed for goods falling in different classes. Classes 1 to 34 are available for goods; and classes 35-45 are available for services.
The Trade Mark legislation covers the whole of the territory of India, including the States of Jammu and Kashmir and the territories of Goa, Daman, Diu, Dadra, Nagar Haveli and Pondicherry.
Applications are examined to ensure that they comply with the requirements of the law and that they do not conflict with marks which are already registered, or which are the subjects of earlier pending applications.
An application may be amended provided the amendment does not constitute a major alteration of the mark.
Registration may be refused in respect of marks which are scandalous or obscene, which are likely to deceive, cause confusion, or offend religious susceptibilities, which are contrary to the law or morality, or which would otherwise be disentitled to protection in a court, which are accepted chemical names or which are identical to other marks for the same goods or description of goods. In the case of identical marks, registration may however be allowed upon proof that the mark was being used concurrently and in good faith.
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