TRADEMARK ACT,1999
CONTENTS
1. Introduction of intellectual property
2. Meaning of trademark
3. Examples of trade marks
4.Who may apply for trademark ?
5. Documents required for trademark in india
6. Trademark procedures in india
7. Grounds for rectification of registration
8. Cancellation of registration of trademark
9. Precautions of trademark
10. Advantages of trademark
11. Infringement of trademark
12. Licensing of trademark
INTRODUCTION OF INTELLECTUAL PROPERTY
Intellectual property (ip) refers to the creation of the human mind like inventions, literary and artistics works, and symbols, names, images and designs used in commerce. Intellectual property is divided into two categories : industrial property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source; and copyright, which includes literary and artistics work such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectual designs. Rights related to copyrights includes include those of performing artists in their performances, producers of phonograms in their recordings, and those of broadcasters in their radio and televisions programs. Intellectual property rights protect the interests of creators by givinng them property rights over their creations.
MEANING OF TRADEMARK
A trade mark (popularly known as brands name in layman’s language) is a visual symbol which may be a word to indicate the source of the goods, a signature, name, device, label, numerals, or combination of colours used, or services, or other articles of commerce to distinguish it from other similar goods or services originated from another. A trade mark provides protection to the owner of the mark by ensuring the exclusive right to use it or to authorize another to use the same in return of payment. Trade mark protection enforced by the courts, which in most systems have the authority to block the trademark infringement. Trade marks promote initiative and enterprise world wide by rewarding the owners of trade marks with recognition and financial profit.
EXAMPLES OF TRADEMARK
WHO MAY APPLY FOR TRADEMARK?
Any person which can be individual, company, proprietor or legal entity claiming to be owner of the trademark can apply. The application for trademark can be filed within few days and you can start using “tm” symbol. And the time required for trademark registry to complete formalities is 18 to 24 months. You may use the ® (registered symbol) next to your trademark once your trademark is registered and registration certificate is issued. Once registered a trademark is valid for 10 years from the date of filing, which can be renewed time to time. The application for renewal can be filed six months before the expiry of the validity period of the trade mark.
DOCUMENTS REQUIRED FOR TRADEMARK IN INDIA
> Trademark or logo copy
>Applicants details like name, address and nationality and for the company: the state of incorporation
> Goods or services to registers
> Class iii digital signature certificate is required
> Date of fifrst use of the trademark in india, if used by you prior to applying
> Power of attorney to be singned by the applicant
TRADEMARK PROCEDURES
There are few steps of trademark registration in india are as follows :-
I. TRADE MARK SEARCH
The following tips are useful while selecting a trademark:
I) It should be easy to speak, spell, and remember.
II) Invented words or coined words are advisable.
III) Avoid selection of a geographical name.
IV) Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super, etc).
V) It is advisable to conduct a survey to ascertain if same/similar mark is used in market.
II. FILING TRADEMARK APPLICATION IN INDIA:
After you are sure that your chosen brand name or logo is not listed in the trademark registry india, you can opt for registering the same. The first step is to file a trademark application form at the trademark office, india. Further, you can see the trademark status of your application immediately online. Three completed copies of the form are submitted along with ten additional representations of the trademark. In addition to details of the applicant, the application must also indicate the class of goods/services to which it would apply. The following information should be mentioned in the form:
(A) The class of goods for which the mark is sought should be specified. Classes can be textiles, food and confectionery, machine tools, etc. Separate applications are required for applying in different classes.
(B) Definition of goods that is sought to be registered should be given.
(C) Details of the applicant including name, age, occupation, address, and nationality should be given.
(D) Whether the trademark is in use or is proposed to be used. If it is in use, then applicant must specify by whom it is being used and for what period.
III. RECEIPT AND EXAMINATION:
Receipt of the application is acknowledged by returning a copy of the application along with a representation of the mark. An official number is given to the application. The date of receipt of application can become very important in possible infringement proceedings later.
The office considers all documents and evidences and searches among existing trademarks. After such searching, the registrar can respond in the following ways:
1. Absolute acceptance
2. Acceptance subject to modifications in the mark
3. Refusal
In case modifications have been asked for, the applicant must comply with them within the stipulated period of three months.
IV. PUBLICATION:-
The step of publication is incorporated in the trademark registration procedure so that anyone who objects to the registering of the trademark has the opportunity to oppose the same. If, after 4 months from publication there is no opposition, the trademark proceeds for registration. In case there is opposition; there is a fair hearing and a decision is given by the registrar.
V. REGISTRATION CERTIFICATE:-
Once the application proceeds for trademark registration, following publication in trademark journal, a registration certificate under the seal of the trademark office is issued. If the registrar of trade marks is satisfied with the reason, the examination of the application is expedited and the examination report is issued within three months of the date of the request. If such a request is rejected after the hearing, the fee paid is refunded.
The registration is valid for ten years and is renewable for subsequent consecutive periods of ten years. Non-renewal leads to a lapse of registration. However, a lapsed registration can be easily restored.
The courts in india have recognized the international reputation of foreign trademarks and trade names and the significance of their protection. Marks such as those of amway, whirlpool, and ferrari have received protection through judicial decisions in india.
GROUNDS FOR RECTIFICATION OF TRADEMARK
The register of the trademarks may be rectified by the order of the tribunal on the application of any person who is aggrieved by any entry or omission of any entry in the register.The trade marks act, 1999 provides for the rectification of the register of the trdemarks. The term ‘rectification’ is used in the context of rectification of an error or defect in any entry in the register for which an order for expunging or varinng the entry may be made. Thus, the entry may be corrected or cancelled.
The following grounds of rectification:
(i) The absence or omission of any entry from the register;
(ii) Any entry made without sufficient cause;
(iii) Any entry wrongfully remaining on the register;
(iv) Any error or defect in any entry in the register.
It may be noted that non-compliance with the conditions (subject to which the trade mark is granted) also makes the mark liable to be removed from the register. Further, if it is proved at any stage that the original registration was obtained by fraud, the trademark is liable to be removed from the register.
CANCELLATION OF REGISTRATION OF TRADEMARK
The following are some of the usual grounds on the basis of which the registration of a trademark can be removed or cancelled:
1. The applicant did not intend to use the trademark in the normal course or trade and there has been no bona fide use of the trademark for the time being up to the date three months before the date of the application for removal.
2. There has been no bona fide use of the trademark for a continuous period of five years from the date on which the trademark was actually entered on the register or longer, during which the trademark was registered.
3. The trademark was wrongly registered. Before this trademark came into being, there was an established trademark that was identical or deceptively similar.
PRECAUTIONS OF TRADEMARK
How can we be sure and opt for good trademark !
> Do good search
> Do not use the name of any geographic location
> Do not choose abandoned mark
> Do not make any clerical error
> Do not use very common words
> Do not try to take phonetically similar mark
> Do not just file for word mark also file for logo mark separately
> Do not file without affidavit of usage
ADVANTAGES OF TRADEMARK
- EXCLUSIVE RIGHTS:
The owner of registered trademark enjoys exclusive right over the trademark. The owner can also enjoy the sole ownership of the trademark. It gives the right to sue the unauthorized user of the trademark registered.
- BUILDS TRUST AND GOODWILL:
The established quality of your product and services are know by everyone through the trademark and which establishes trust and goodwill among the customers in market.
DIFFERENTIATES PRODUCT:
IT MAKES EASY FOR CUSTOMERS TP FIND YOUR PRODUCTS. IT MAKES YOUR PRODUCT AND FORESEEN COMPETITORS AND ACTS AS EFFICIENT COMMERCIAL TOOL.
- RECOGNITION TO PRODUCT QUALITY:
Customers attach the product’s quality with the brand name and this image is created in the market about the quality of a particular brand which helps in attracting new customers as they can differentiate the quality of a product by the logo/brand name.
- CREATION OF ASSETS:
Registration of trademark creates an intangible asset i.E. Intellectual property for an organisation. Assigned, franchised or commercially contracted.
- USE OF ‘SYMBOL’:
Once the trademark is registered you can use the symbol on your logo stating that it is a registered trademark and no one can use the same trademark.
- PROTECTION FOR YEARS AT LOWER COST:
Online trademark registration is done on a very low maintainability cost. Once you registered the trademark you have to just pay the maintenanace cost and renewal cost which is after years of registering the trdemark.
- ATTRACT HUMAN RESOURCES:
Young minds aspire to join big brands as it acts as a magnate. It inspires the positive image of the organisation and thus candidates are attracted towards them easily.
INGRINGEMENT OF TRADEMARK
Trademark infringement is a violation of the exclusive reights attached to a trademark without the authorization of the trademark owner or any licensees (provided that such authorization was within the scope of the licence). Infringement may occur when one party, the “infringer”, uses a trademark which is identical or confusingly similar to a trademark owned by another party. Offences shall be punishable with imprisonment for a term of minimum of six months but which may extend to three years and with a minimum fine of fifty thousand rupees but which may extend to two lakh rupees or more. For adequate and special reasons mentioned in the judgement, the court may impose a sentence of imprisonment for a terem of less than six months or fine of less than fifty thousands rupees.
TRADEMARK INFRINGEMENT EXAMPLE CASE
Adidas v. Forever21
Adidas very recently filed a lawsuit against clothing retailer forever21 alleging that the retailer’s product, which contain a “three stripe” design, constitute “ counterfeit products” to build and protect the three- stripe design as a trademark component of their brands and own “numerous” patents.
While representatives for adidas and forever21 have not released further comments in regards to the lawsuit since intial statements, it remains to be seen how the courts will respond to the lawsuit. Given the similarity of forever21 and adidas product and distribution channels, forever21 may have been able to avoid this lawsuit by evaluating their recent designs against adidas products and trademarks.
LICENSING OF TRADEMARK
Licensing involves permitted use by a person on his own goods or services of a trademark belonging to a proprietor, provided the proprietor exercises the quality control and authorizes the application of trademark on such goods or services. Licensing of trademarks allows trademarks originating anywhere in the world to be used in any country irrespective of whether it is registered or not in the country of its origin or in the country where it is sought to be used under license. A person owing the trademark in all the countries throughout the world, would not be able to produce goods and use the trademark by himself or though his own servants, agents, etc. In each of the countries.The licensing agreement for using the trademark with another person/firm/company (licensee) is the only answer.
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