Trademarks

are words, names, symbols, brands, devices, headings,

labels, t
ickets, signatures, letters or numerals or any combination thereof, used
or
proposed to be used by manufacturers of goods to identify and to
distinguish their goods from goods manufactured and sold by others.
A person who sells his goods under a particular trademark acquires a
sort of limited exclusive right to use the mark in relation to those goods.
Services have also been included.

Trade marks may be used in stationary , packaging, body of

the product, stickers, tags, advertisements etc of goods and
services.
Well known Trademarks: Concept of well known
trademarks and marks which have gained sufficient
recognition among the consumers, even if not registered in
India and even when no products are there in the market.
Purpose:
identification of the product/services
quality
advertisement-brand building

Trade mark which consists of at least one of the following

essential particulars :
(a) The name of a company, individual or firm represented in a
particular or special manner;
(b) distinctiveness: distinct from other goods
(c ) one or more invented words
(d) non descriptive: one or more words having no direct reference
to the character or quality of the goods and not being according
to its
ordinary signification 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
use of word saafo considered descriptive as close to saaf- not
accepted( HLL v Kilts)1982
(e ) not similar to any other distinctive trade mark;
(f ) a trade mark which has acquired distinctiveness by use over a
prolonged period of time, may be registered.

Well known trademarks and marks which have gained

sufficient recognition among the consumers, even if not
registered in India.
The mark is not capable of distinguishing the applicants
goods or services.
The mark is scandalous or its use is contrary to law.
If it is likely to deceive or cause confusion.
Whether the trademark is identical to any prior
registered mark or earlier application for registration of a
trademark in respect of similar goods or closely related
services.

Trademark registration protects the goodwill of a business and

also helps to identify and distinguish the source of the goods or
services of one party from those of others. Trademark
registration is an evidence of ownership of the trademark and
also constructive notice nationwide are issued of the
trademark owner's claim.
Trademark registration in India can also be used as a basis for
obtaining registration in foreign countries. In e-commerce
where chances of inspecting the goods will be less, companys
mark or brand becomes a vital identity to assess the goods.

The proprietor of a trade mark has the following rights:

Assign the trade mark to any other person either partially or
fully
register any other person as the registered user of the trade
mark
apply for registration of certification of trade mark
Institute a suit for infringement of the trade mark

institute a suit for criminal proceeding for punishment to the

infringer.
institute a suit for passing off, provided the proprietor will
have to prove that the defendants mark is likely to cause
confusion and deception among public.

Authorities
The Registrar of Trade Marks
registration
settling opposition
rectification of the register
discretionary powers
power to review earlier decisions

Duration of registered trade mark is 10 years, and can be

renewed on payment of prescribed fees.

Application for renewal to be made before six months of

expiry of the registration, On expiry of the registration,
Registrar to send notice of expiry. Registrar shall not remove
the mark from the register if the fee and surcharge is paid
within six months of grace period.

restoration possible even after expiry one year, Subject to

conditions and limitations by the Registrar. The marks shall
be deemed to be registered mark for the purpose
acceptance any application otherwise.

The application must be filed in the name of the owner of the

trademark; usually an individual, corporation or partnership.
Generally, the person who uses or controls the use of the
mark, and controls the nature and quality of the goods to
which it is affixed, or the services for which it is used, is the
owner of the mark.

Conduct a market research to ascertain whether any

identical or deceptively similar mark is used for the same
goods by any other person. It is advisable not to imitate
other persons trade mark or any other well known trade
mark even if the goods are different.
Before applying for registration it is desirable to obtain
preliminary advice regarding the distinctiveness of your
mark from the Registrar.
Single application may be made for different classes of
goods or services but separate fees has to be paid.
Application to be made to the Registrar under whose
jurisdiction the principal place of business in India is
situated.

In order to determine whether any person or

company is using a particular trademark, a
trademark search can be conducted.
A trademark search is designed to identify
pre-existing trademarks that have the
potential to conflict with your name. Without
the benefit of a trademark search, you run
the risk of being sued for trademark
infringement and losing the right to use your
new business name, product name, domain
name or slogan after you have invested in
that name.

The Registrar may refuse the application, or accept it subject to amendment,

modification, or imposing certain conditions etc. In case of refusal the grounds of
refusal shall be recorded. Appeal can be made against such refusal.
Issue of advertisement of the application

Any person within 3 months from the advertise, Re-advertisement or

if an
extended period shall give a notice of opposition with a prescribe fees, which shal
be served to the applicant and the applicant shall within two months of receipts of
such notice make a counter statement, failing which is deemed that he has
abandoned the application.

The Registrar shall register the trademark when there is no opposition within th
prescribed time and even after opposition, the decision has gone in favour of the
applicant, unless there is any contrary direction from the Central Government.

Certain countries, do recognize a trademark

registration in India as a basis for
registering the mark in those countries. The
laws of each country regarding registration
must be consulted.

When the trade mark is not capable of

distinction.
When the trade mark consists of any work or,
indication which may serve in trade to
designate any kind/ quality/ quantity/ intended
purpose, geographical origin or time of
production etc.
Geographical names disallowed:
India(electrical
fan)
,simla(tobacco)Himalayan(tea/coffee),
Geographical names allowed:
Italia(motor car)magnolia(metal)
When the trade mark has become customary
in the current language other than well known
trade mark.

When the trade mark proposed to be

registered is of such nature so as to deceive
public or cause confusion.
If the trade mark contains any matter which
will hurt religious sentiment.
If the trade mark contains scandalous or
obscence matters.
If the trade mark is prohibited under Emblems
and Name (Prevention of Improper use) Act,
1950

There are two forms of legal protection that are

available for trademarks. Under the Trade and
Merchandise Marks Act, 1958, once the
trademark is registered, infringement can be
easily established. In case of unregistered marks
and marks which are not registerable, the only
form of protection is the common law remedy of
passing off.
Trademark law protects the right of the owner of
a mark to use marks that distinguish his goods
from others and to prevent others from using
marks that are likely to cause confusion

The basic difference between an infringement

action and an action for passing off is that
the former is a statutory remedy and the
latter is a common law remedy.
Accordingly,
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.
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 plaintiffs goodwill, whereas in an
infringement suit, the use of the mark by the defendant
need not cause any injury to the plaintiff.
When a trademark is registered, registration is given
only with regard to a particular category of goods.
Protection is, therefore, afforded only to these goods. In a
passing off action, the defendants goods need not be the
same; it may be allied or even different.

The following acts amount to infringement of a trade

mark:
Use of any mark, in course of trade which is identical
or deceptive to any other registered Trademark.
Deception as to goods
Deception as to trader
Deception as to trade connection
Lakme:like-me
Mitaso:metashow
Fevicol:fxacol
Colgate:collegiate
If any person uses a registered trademark of any
other person as his trade name or part of his trade
name.

Affixing of the concerned trade mark into

goods or packages.
Exhibiting any goods with such trademark.
Importing or exporting any goods with such
trademarks.
Using of the mark in office stationary,
merchandising items or advertisement in
case there is any damage to the reputation.

The use of a sign is in good faith and for the purpose of

indicating quality, quantity,
purpose, value or
geographic region of goods and services
The use is in respect of part of trademark that is
disclaimed
The use is for comparative advertising
Parallel importation
Where a court believes that the infringer would have
obtained registration of the mark that it uses had the
infringer applied for it and assuming that the infringers
mark is the same as the registered.

 The proprietor of a registered trade mark

The legal heirs or predecessor of the proprietor
of a registered trade mark
The registered user can bring a suit for
infringement.
A foreign proprietor can sue in India provided
the mark is registered in India.
An assignee of a registered trade mark can
bring a suit for infringement before the
registration of the assignment is effected
because registration of assignment is not a
condition precedent to suing.

The person who infringes the trade mark can

be sued.
If the infringement is committed by the
servant then the master can be sued
irrespective of the fact whether the servant
acted with / without the knowledge of the
master. Even if the servant acted against the
orders of the master then also the master
will be sued.
An agent of the principal who infringes can
also be sued. Therefore a person who prints
the infringing label can be sued.

In case of suit for infringement the Court can

grant the following reliefs:
Injunction restraining the use of the trade
mark
Damages or an account of profit
Order for destruction of the infringed marks
The reliefs granted by the Court are discretionary