Presented by:

Anna
Ayushika
Dino
Lian
Shrestha
Surbhi

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j 6he 6rade Marks Registry was established in

India in 1940 and presently it administers the
6rade Marks Act, 1999 and the rules there
under.
j 6he objective of the 6rade Marks Act, 1999 is
to register trade marks which qualifies for
registration under the Act and Rules and to
provide for better protection of trade mark
for goods and services and also to prevent
fraudulent use of the mark.
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j A trade mark is a visual
symbol which may be a word
signature, name, device,
label, numerals or
combination of colors used
by one undertaking on goods
or services or other articles of
commerce to distinguish it
from other similar goods or
services originating from a
different undertaking.
j 6he legal requirements to register a trade
mark under the Act are:
6he selected mark should be capable of being
represented graphically (i.e. in the paper form).
It should be capable of distinguishing the goods or
services of one undertaking from those of others.
It should be used or proposed to be used in
relation to goods or services for the purpose of
indicating or so as to indicate a connection in the
course of trade between the goods or services and
some person have the right to use the mark with
or without identity of that person.


 
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 •100.04 billion
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2 billion
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.58 billion

Source: Investopedia.com
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 , Monograms, Sound marks.

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j A trade name is the full name of your business, such as:
DzBlackmark International Ltddz and it identifies your
company. It often ends with Ltd., Inc. or other similar
abbreviations that denote the legal character of the
company.
j A trademark, however, is the sign that distinguishes the
product(s) of your company. And the company may have
various trademarks.
j Companies may use a specific trademark to identify all
the products, a particular range of products, or one
specific type of product.
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j A person who claims to be the proprietor of the
trademark can apply for the registration of its mark for
goods as well service to the 6rademark office under
whose jurisdiction the principal place of the business of
the applicant in India falls.
j 6he application should contain the trade mark, the
goods/services, name and address of applicant and
agent (if any) with power of attorney , period of use of
the mark and signature. 6he application should be in
English or Hindi.
j Before making an application for registration it is
prudent to conduct a trademark search in the
6rademark office in context of the already registered
trademarks.
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j 6erm of registration of a trademark is 10
years, which may be renewed for a further
period of 10 years on payment of prescribed
renewal fees.
j Non-user of a registered trademark for a
continuous period of five years is a ground for
cancellation of registration of such trademark at
the behest of any aggrieved party.
Ý




j Marks used to distinguish certain services

as those Provided by a specific enterprise.
ex: Javed Habib, Cafee Cofeeday, VLCC,
Nat West etcǥ
Ý





j Marks used to distinguish goods or

services that comply with a set of
standards and have been certified by a
certifying authority.
ex: ISI, WOOLMARK etcǥ
Ý



j Marks used to distinguish goods or
services produced or provided by
members of an association or Cooperative
Society.
ex: CII, FICCI, 
 
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j Marks that are considered to be well-

known in the market and as a result
benefit from stronger protection.
ex: Wander cola, Rolacola etcǥ.
 




j If it is a word it should be easy to
speak, spell and remember.
j 6he best trade marks are invented
words or coined words.
j Selection of a geographical name
should be avoided.
j Avoid adopting laudatory word or
words that describe the quality of
goods (such as best, perfect, super
etc)
j It is advisable to conduct a market
survey to ascertain if same/similar
mark is used in market.
 





 
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j It is provided under the 6rade Marks Act,1999 that
goods and services are classified according to the
International Classification of goods and services
as laid in schedule IV of the Act.
j 6he Registrar is the final authority in the
determination of the class in which particular
goods or services fall.
Ý
   



j It identifies the actual physical origin of goods
and services. 6he brand itself is the seal of
authenticity.
j It guarantees the identity of the origin of
goods and services.
j It stimulates further purchase, brand image,
quality & advertisement.
j It serves as a badge of loyalty and affiliation.
j It may enable consumer to make a life style or
fashion statement.
   
 
 

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6he national statue i.e., the 6rade Marks
Act,1999 and rules there under .
(2) International multilateral convention.
() National bilateral treaty.
(4) Regional treaty.
(5) Decision of the courts.
(
) Office practice and rulings
( ) Decision of Intellectual Property Appellate
Board.
(8) 6ext books written by academician and
professional experts.
Ý
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j 6he register of trade mark currently maintained
in electronic form contains
inter-alia the trade mark,
the class and goods/ services in respect of which it is
registered including particulars affecting the scope of
registration of rights conferred;
the address of the proprietors;
particulars of trade or other description of the
proprietor;
the convention application date (if applicable); where
a trade mark has been registered with the consent of
proprietor of an earlier mark or earlier rights, that fact.
     

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j Stage One
Classification and Pre-Filing
Search
¦ 6rademark 42 Classes (including
Classes for Service Marks)
¦ 6M 54 (Search application) three
copies
¦ 6M 55 (Registrarǯs Preliminary
Advice)
¦ Public Search at 6rademark Office
j Stage 6wo
Involves the registration Process
itself
     
 
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j Acceptance before
advertisement
j Publication
Wait for Opposition for 6hree
months
Opposition Proceedings
j Registration
Initially for 10 years from the date of
the application
j Renewal
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While selecting a trademark it is helpful to
know which categories of signs are usually
not acceptable for registration.
j Applications for trademark registration are
usually rejected on what are commonly called
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Yeneric 6erms: Descriptive terms:

CHAIR for chairs SWEE6 for chocolates

Deceptive: marketing margarine Marks considered to be contrary

under a trademark featuring a cow to public order or morality

Flags, armorial bearings, official

Hallmarks & emblems of states
And international organizations
  '


j When the trademark conflicts with prior

trademark rights
j If the trademark is considered to be identical
or confusingly similar to an existing one for
an identical or similar products, it will be
rejected or cancelled, as the case may be
j Avoid using trademarks that risk being
considered confusingly similar to existing
marks
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~ It can be removed on application to the

Registrar on prescribed form on the ground that
the mark is wrongly remaining on the register.
6he Registrar also can issue Notice for removal
of a registered trade mark. Non use of a
registered trademark for continuous period of 5
years is also a ground of removal.
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j Only the proprietor of a trademark whose
trademark has been registered in India can use the
symbol ® in India. sing the symbol ® unless your
mark has been registered in India is unlawful.ëë
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j §sing this symbol with your trademark simply
implies that you claim to be the proprietor of the
trademark. 6here is no prohibition on the use of the
symbol ̿ in India.
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j 6he penalty for selling or providing services

using a false trademark is a minimum of six
months and maximum of three years and with
fine not less than Rupees fifty thousand but
which may extend to Rupees two lakh.



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j Indian trademarks registration is possibly the most
crucial piece of the intellectual property protection
program of a company. 6herefore without proper
trademark registration the company would entirely
rely upon common legal rights in the geographic
area where the company uses trademark.
j Most important, without this registration the
latecomer might even register a mark similar or
identical to their own mark. But if you have
registered at the right time your company would
have all the superior rights to the latecomer and
block their expansion.
j 6rademark filing in India offers constructive notice of your
registration and also defeats any claims which the infringer
didǯnt know that you had already registered trademark.
j 6rademark registration India creates jurisdiction to file
trademark infringement action at the business place of
plaintiff.
j 6he credible rights can also become incontestable when
you use Indian trademarks within the next five years.
j Some other companies which conduct trademark search
before adopting the trademark would most likely not adopt
a mark strictly similar to the trademarks of your company.
j Your registration on Indian trademarks register would be
the basis for the convulsion of infringing merchandise and
counterfeit.
j Additionally if you need to expand offshore then the date
of trademark filing might even be used as the precedence
date in other countries if they are members of an
International agreement.
j 6he registration of a trade mark confers upon the owner
the exclusive right to the use of the registered trade
mark and indicate so by using the symbol (R) in relation
to the goods or services in respect of which the mark is
registered and seek the relief of infringement in
appropriate courts in the country. 6he exclusive right is
however subject to any conditions entered on the
register such as limitation of area of use etc. Also, where
two or more persons have registered identical or nearly
similar mark due to special circumstances such exclusive
right does not operate against each other.
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j 6
   6he 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.
j 6Y 6he 6rade Marks Registry is expected to
earn a revenue of nearly Rs.40 crores during the current
year and which is perpetually on the rise.
j 6
  6he 6rade 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.
j 6he 
 and ultimately w of trade marks
goods and services.
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j INFRINYEMEN6
j PASSINY OFF
j S§I6 FOR 6HREA6 OF LEYAL PROCEEDINYS
AND 6RADE LIBEL
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j IDEN6ICAL OR DECEP6IVELY SIMILAR MARKS
j COVERED YOODS AND SERVICES
j §SE OF MARK IN CO§RSE OF 6RADE
j §SE OF MARK IN MANNER OF 6RADE MARK
j PERMI66ED §SER

MAYIC V MAYIX FOR FANS

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j IDEN6ICAL MARK - SIMILAR YOODS AND
SERVICES
MA6RIX V MA6RIX FOR MO§SE AND KEYBOARD

j SIMILAR MARK Ȃ IDEN6ICAL OR SIMILAR

YOODS AND SERVICES
MAYIC V MAZIX FOR FANS

j IDEN6ICAL MARK Ȃ IDEN6ICAL YOODS AND

SERVICES
MA6RIX V MA6RIX FOR COMP§6ERS
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APPLICAN6ǯS 6RADE MARK ǮAN6IFLAMǯ
RESPONDEN6 6RADE MARK ǮN6 FLEMǯ
PHARMA PROD§C6S
INFRINYEMEN6
YES

6HE CO§R6 HELD SINCE 6HE YOODS ARE

SAME, RIVAL MARKS PHONE6ICALLY SIMILAR
AND RESPONDEN6 S§BSEQ§EN6 §SER,
6HEREFORE HELD INFRINYEMEN6
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j COMPARA6IVE ADVER6ISINY
DECLARE OWN YOODS AS BES6
DECLARE OWN YOODS BE66ER 6HAN
O6HERS, EVEN IF §N6R§E
COMPARE ADVAN6AYES OF OWN YOODS
WI6H O6HERS
NO6 SLANDER OR DEFAME

j DISPARAYEMEN6
FALSE OR MISLEADINY S6A6EMEN6
S6A6EMEN6 CAPABLE OF DECEP6ION
DECEP6ION INFL§ENCE P§RCHASINY DECISION





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j HONES6 PRAC6ICES EY Ȃ LIV6EC V LIVDEE

j NO §NFAIR ADVAN6AYE DE6RIMEN6AL 6O

DIS6INC6IVE CHARAC6ER OR REP§6E. EY Ȃ
COMPARA6IVE ADVER6ISEMEN6

j DESCRIP6IVENESS. EY Ȃ COOLAIR FOR AIR

CONDI6IONERS
j §SAYE S§BJEC6 6O CONDI6IONS AND
LIMI6A6IONS

j RESALE OF YOODS OR S§PPLY OF SERVICES

ON WHICH MARK APPLIED AND NO6
REMOVED EY Ȃ PARALLEL IMPOR6A6ION

j §SE ON PAR6S OR ACCESSORIES EY Ȃ CAR

AND CAR ACCESSORIES

j LAWF§L ACQ§ISI6ION OF YOODS WI6H

6RADEMARK
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MCDONALDS -RIYH6 CLAIMED OVER 6HE WORD DzMCdz

SIMILAR SERVICES- BO6H IN RES6A§RAN6 B§SINESS
MCC§RRY - DzMCdz / DzMACdz IS A COMMON NAME OF A
PERSON, §SED COMMONLY IN B§SINESS ACROSS
VARIO§S DOMAINS
INFRINYEMEN6
NO

CO§R6 HELD HONES6 PRAC6ICE. NO6 6AKINY §NFAIR

ADVAN6AYE.
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j NO 6I6LE 6O S§E
j INVALID REYIS6RA6ION OF 6RADEMARK
j AC6 DOES NO6 CONS6I6§6E INFRINYEMEN6
j CONC§RREN6 REYIS6RA6ION
j PRIOR §SER
j INNOCEN6 INFRINYEMEN6
j LONY DELAY, LACHES AND ACQ§IESCENCE
'(*(Õ
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+!!
j MISREPRESEN6A6ION
j CO§RSE OF 6RADE
j PROSPEC6IVE AND §L6IMA6E CONS§MERS
j INJ§RIO§S 6O B§SINESS OR YOODWILL
j AC6§AL DAMAYE 6O B§SINESS OR
YOODWILL
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j YOODWILL OR REP§6A6ION
DEPENDS ON NA6§RE OF YOODS, Q§AN6§M OF
SALES, EX6EN6 OF ADVER6ISEMEN6, AREA OF §SAYE

j DECEP6ION
DEPENDS ON NA6§RE AND EX6EN6 OF REP§6A6ION,
FIELDS OF AC6IVI6Y, SIMILARI6Y OF MARK,
CONS§MERS LIKELY 6O RECEIVE

j DAMAYE 6O YOODWILL OR REP§6A6ION

AC6§AL OR PROBABLE
DIVERSION OF SALES, INJ§RIO§S ASSOCIA6ION,
MISAPPROPRIA6ION OF B§SINESS REP§6A6ION
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#)*'p
PLAIN6IFF - DzHONDAdz FOR MO6ORS
DEFENDAN6 Ȃ DzHONDAdz FOR PRESS§RE COOKERS.
PASSINY OFF
YES

CO§R6 HELD S§CH §SE OF 6RADEMARK DzHONDAdz IS

CREA6INY DECEP6ION OR CONF§SION IN 6HE
MINDS OF 6HE P§BLIC A6 LARYE AND S§CH
CONF§SION IS CA§SINY DAMAYE OR INJ§RY 6O
6HE B§SINESS, REP§6A6ION, YOODWILL AND FAIR
NAME OF 6HE PLAIN6IFF.
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j DIREC6 FALSE REPRESEN6A6ION

j ADOP6ION OF OR COLORABLE IMI6A6ION OF
SAME 6RADEMARK
j ADOP6ION OF COMPLE6E OR ESSEN6IAL
PAR6 OF RIVAL 6RADERǯS NAME Ȃ D§NKIN
DON§6 V D§NKEN 6YRE
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"+ )*'+!'(, +"+
+,#"p((

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j NON DIS6INC6IVENESS
j DELAY, LACHES, ACQ§IESCENCE,
MISREPRESEN6A6ION OF FAC6S OR
FRA§D§LEN6 6RADE
j YOODS AND B§SINESSES 6O6ALLY
DIFFEREN6
j BONAFIDE §SE
j ISOLA6ED INS6ANCE
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j 6HREA6
j LIBEL
j S§I6 MAY BE FILED
j ONLY FOR 6HREA6 FOR INFRINYEMEN6 OF
REYIS6ERED MARK
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j CIVIL Ȃ INJ§NC6ION, DAMAYE, PROFI6

j CRIMINAL Ȃ IMPRISONMEN6,FINE, BO6H

j ADMINIS6RA6IVE Ȃ AN6ON PILLAR ORDER,

MAREVA INJ§NC6ION
 +!!(*"(#

j FALSIFYINY 6RADEMARK
j FALSELY APPLYINY A 6RADEMARK
j MAKINY OR POSSESSINY INS6R§MEN6S FOR FALSIFYINY
6RADEMARK
j APPLYINY FALSE 6RADE DESCRIP6ION
j APPLYINY FALSE INDICA6ION OF CO§N6RY OF ORIYIN
j 6AMPERINY WI6H AN INDICA6ION OF ORIYIN
j CA§SINY ANY OF ABOVE
j SELLINY YOODS OR POSSESSINY OR EXPOSINY FOR
SALE OF YOODS FALSELY MARKED
j REMOVINY PIECEYOODS
j FALSELY REPRESEN6INY 6RADEMARK AS
REYIS6ERED
j IMPROPERLY DESCRIBINY PLACE OF B§SINESS AS
CONNEC6ED WI6H 6RADEMARK OFFICE
j FALSIFICA6ION OF EN6ERIES IN REYIS6ER
  


j In due course 6MR intends to eliminate paper

based activities and switch to paperless working.
j Accession to International 6reaties to which India
is a signatory that would involve data exchange
with International IP offices.
j Introduce web conferencing facilities to conduct
hearing
j Introduce DzWork from Homedz culture for some
trade marks activities like examination etc
j Create a knowledge based/digital library for
6MR.
  
j 6he 6rade Marks Registry, Mumbai has floated a tender for
total I6 solution to implement e-governance in 6MR offices.
6he project would facilitate web enabled transaction by
6MR within a year.
j A meeting of the IP Practitioners was held 005 at Dwarka,
New Delhi. 6he decision taken at the meeting has been
circulated to interested parties.
j 6he ongoing digitisation of trade marks records is expected
to be completed by the end of current financial year.
j 6he revision of the 6rade Marks Rules, 2002 to simply the
rules, form is under consideration of the government.
j 6he IP building at Dwarka, New Delhi is scheduled to be
inaugurated by the Honǯble Minister for Commerce &
Industry Shri Kamal Nath on 29 th August, 2005.