Trademark registration system in India
Legislation
The Indian law of trademarks is enshrined in the Trade Marks
Act, 1999. The Act seeks to provide for the registration of
trademarks relating to goods and services in India. The rights
granted under the Act, are operative in the whole of india.
What is a Trademark
A TRADEMARK is a word, phrase, symbol or design, or combination
of words, phrases, symbols or designs is used in the course of
trade which identifies and distinguishes the source of the goods
or services of one enterprise from those of others. A SERVICE
MARK is the same as a trademark except that it identifies and
distinguishes the source of a service rather than a product.
Normally, a mark for goods appears on the product or on its
packaging, while a service mark appears in advertising for the
services.
A trademark is different from a copyright or a patent or
geographical indication. A copyright protects an original
artistic or literary work; a patent protects an invention
whereas a geographical indication is used to identify goods
having special characteristics originating from a definite
territory.
Classification of Goods and Services*
Almost all jurisdictions including India employ a classification
system in which goods and services have been grouped into
classes for registration. Most countries follow the same
classification system, namely the International Classification
of Goods and Services, which consists of 34 classes of goods and
8 classes of services. (The WIPO recently revised the Nice
Classification, adding three service classes (43, 44, 45) and
restructuring Class 42, retaining certain services. This
provision has not yet been implemented in India).
For example, printed matter, newspaper and periodicals are
classified in Class 16 while services in the field of
publication comes under Class 41. Time Incorporated, USA is the
registered proprietor of the trademark "TIME" in about 150
countries.
Rights conferred by registration
The registration of a trademark confers on the registered
proprietor of the trademark the exclusive right to use the
trademark in relation to the goods or services in respect of
which the trademark is registered. While registration of a
trademark is not compulsory it offers better legal protection
for action for infringement.
Who Can Apply For A Trademark
Any person can apply for registration of a trademark to the
Trademark Registry under whose jurisdiction the principal place
of the business of the applicant in India falls. In case of a
company about to be formed, anyone may apply in his name for
subsequent assignment of the registration in the company's
favor.
Trademark Search
Before making an application for registration it is prudent to
make an inspection of the already registered trademarks to
ensure that registration may not be denied in view of
resemblance of the proposed mark to an existing one or
prohibited one.
Filing and Prosecuting Trademark Applications
An application for trademark may be made on Form TM-1 with
prescribed fee of Rs. 2500/- at one of the five office of the
Trade Marks Registry located at Mumbai, Delhi, Kolkata, Chennai
and Ahmedabad depending on the place where the applicant resides
or has his principle place of business. The application is
examined to ascertain whether it is distinctive and does not
conflict with existing registered or pending trademarks and
examination report issued. If it is found be acceptable then it
is advertised in the Trade Marks Journal to allow others to
oppose the registration. If there is no opposition or if the
opposition is decided in favour of the applicant then the mark
is registered and a certificate of registration is issued. If
the applicant's response does not overcome all objections, the
Registrar will issue a final refusal. The applicant may then
appeal to the Intellectual Property Appellate Board, an
administrative tribunal.
A common ground for refusal is likelihood of confusion between
the applicant's mark with registered mark or pending prior mark.
Marks, which are merely descriptive in relation to the
applicant's goods or services, or a feature of the goods or
services, may also be refused registration. Marks consisting of
geographic terms or surnames may also be refused. Marks may be
refused for other reasons as well.
Duration of a Trademark
The term of a trademark registration is for a period of ten
years. The renewal is possible for further period of 10 years
each. Unlike patents, copyrights or industrial design trademark
rights can last indefinitely if the owner continues to use the
mark. However, if a registered trademark is not renewed, it is
liable to be removed from the register.
Use of the "TM," "SM" and "(R)" Symbols
Anyone who claims rights in a mark can use the TM (trademark) or
SM (service mark) designation with the mark to alert the public
of the claim. It is not necessary to have a registration, or
even a pending application, to use these designations. The claim
may or may not be valid. The registration symbol, (R), may only
be used when the mark is registered.
Remedies For Infringement And Passing-Off
Two types of remedies are available to the owner of a trademark
for unauthorized use of his or her mark or its imitation by a
third party. These remedies are: - ‘an action for
infringement' in case of a registered trademark and ‘an
action for passing off*' in the case of an unregistered
trademark.
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. 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.
However, the registration cannot upstage a prior consistent user
of trademark in India, for the rule followed is ‘priority
in adoption prevails over priority in registration`. In many
other jurisdictions like Saudi Arabia, Nepal etc. where the
first party to register a trademark is considered the party to
own the mark, regardless of prior use of the mark.
*Passing off originated with the tort of deceit. The doctrine is
based on the principle that one trader is not to sell his goods
under the pretence that they are the goods of another trader.
Historically, marketplace has been concerned with guaranteeing
consumers the quality of goods that they had come to rely upon
in the course of trade. To further that guarantee, the common
law developed the tort of passing off, which helped to assure
that a person was representing his goods as being his and not
the goods of someone else.
Safeguards to be taken by the proprietor of a registered trade
mark to protect his rights: -
The proprietor should use and renew the trademark regularly and
in time. If the trademark is misused by others he should file a
suit for infringement and passing off and also take criminal
action. The proprietor should keep a watch in respect of
trademarks published in the Trade Marks Journal and institute
opposition proceedings if identical or deceptively similar
trademarks are advertised. He should initiate rectification
proceedings if an identical or deceptively similar trademark is
registered.
Use Of Trademarks In Foreign Countries
Trademark rights are granted on a country-by-country basis. An
Indian registration provides protection only in India and its
territories. If the owner of a mark wishes to protect a mark in
other countries, the owner must seek protection in each country
separately under the relevant laws.
International trademark protection
There is no system as yet wherein a single trademark application
is sufficient to protect the trademark right internationally.
However, Paris convention* provides certain privileges to member
countries in trademark registration. A party that files their
first trademark application in a member state of the Convention,
such as India, can within six months of that filing date file
applications in other member countries claiming the priority of
the first application. If such a trademark is accepted for
registration it will be deemed to have registered from the same
date on which the application is made in the home country.
It is also possible to utilize multinational filing systems in
certain regions in order to obtain trademark protection. For
example, Belgium, the Netherlands and Luxembourg have a single
trademark registry, commonly referred to as the Benelux
Trademark Register. The European Union consisting of 15
countries has adopted its own trademark system, known as the
Community Trademark. The African Organization for Intellectual
Property (OAPI), a group of African nations, have replaced their
national trademark offices with a common trademark office which
offers a single trademark registration valid in all of the
member states.
Almost all countries have trademark offices in which
applications may be filed. Therefore, when contemplating
trademark protection in various countries, it is most helpful to
start with a list of countries where registered trademark
protection is available. Deciding where to register a trademark
involves various considerations. Countries where a trademark is
currently in use, but prior use of trademark is not recognized,
should be the first to be considered for seeking registered
protection. If commencing use shortly or expanding use to other
countries within a few years, then such countries should also be
included. The last group of countries should be those have a
history of unauthorized registration of other's trademarks.
* Paris Convention is the most basic and important multilateral
convention relating to intellectual property, including
trademarks, of which India is a member. It defined the meaning
and scope of industrial property rights protection and
established basic principles and rules.
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About the author:
P.M.George Kutty, Attorney at Law of www.pmgip.com
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