unit 2 introduction to trade mark

7/31/2019 Unit 2 Introduction to Trade Mark

1/33

IPR & PATENTS

Unit 2 Introduction to Trade mark Trade mark Registration Process Post registrationprocedures Trade mark maintenance - Transfer of Rights - Inter partes Proceeding

Infringement - Dilution Ownership of Trade mark Likelihood of confusion - Trademarks

claimsTrade marks LitigationsInternational Trade mark Law

TRADEMARKS: Any sign, or any combination of signs, capable of distinguishing the goods or servicesof one undertaking from those of other undertakings, shall be capable of constituting a

trademark. Such signs, in particular words including personal names, letters, numerals, figurative

elements and combinations of colors as well as any combination of such signs, shall be eligible forregistration as trademarks (TRIPS Article 15.1). Most countries require that trademarks for which

protection is desired be registered with a government authority. The protection that laws give to a

trademark consists essentially of making it illegal for any entity other than the owner of the trademark to

use the trademark or a sign similar to it, at least in connection with goods for which the trademark wasregistered or with goods similar to such goods without the authorization of the owner. The TRIPS

Agreement sets out, in its Article 16, the rights conferred on the owner of a trademark and the protection

to be given in respect of well-known marks.

Trade Mark Law in India: Trademark Application : A Trademark is any sign which can distinguishthe 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.

Changes In The Indian Trade Mark Law

A new Trademark regime has been introduced in India since September 15, 2003. The new Trade

Marks Act, 1999 has many innovative features:

[1] Service Marks:

A mechanism is now available to protect marks used in the service industry. Thus businesses providingservices like computer hardware and software assembly and maintenance, restaurant and hotel services,

courier and transport, beauty and health care, advertising, publishing, educational and the like are now in

a position to protect their names and marks.

[2] Collective Marks:

Marks being used by a group of companies can now be protected by the group collectively.

[3] Well-known marks:

Marks, which are deemed to be well known, are defined. Such marks will enjoy greater protection.Persons will not be able to register or use marks, which are imitations of well-known trademarks.


2/33

IPR & PATENTS

[4] Enlarged scope of registration:

Persons who get their marks registered for particular goods in a particular class and commence usingtheir marks can sue and prevent other persons from

(i) Using the same or similar marks even for different goods falling in other classes;

(ii) Using the same or similar marks even only as part of their firm name or company name;

(iii) Using the same or similar mark only in advertising or on business papers;(iv) Importing or exporting goods under the said trade mark;

(v) Unauthorized oral use of the said trademark.

[5] Stringent punishment:

Punishment for violating a trademark right has been enhanced. The offence has now been madecognizable 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.

[6] Appellate Board:

An appellate board (IPAB) has been constituted based in Chennai for speedy disposal of Appeals and

rectification applications.

[7] Expedited procedure:

Mechanisms have been set in place for expediting search and registration by paying five times the normal

fee.

[8] Enhanced renewal period:

Registered trademarks need to be renewed every ten years.

[9] License agreements do not need to be compulsorily registered.

[10] Marks may include the shape of goods.

[11] Marks may include a combination of colors.


3/33

IPR & PATENTS


4/33

IPR & PATENTS


5/33

IPR & PATENTS

Stage One Classification and Pre-Filing Search

Trademark 42 Classes (including 7 Classes for Service Marks) TM 54 (Search application) three copies TM 55 (Registrars Preliminary Advice)

Public Search at Trademark Office Stage Two Involves the registration Process itself

Trademark Application Issuance of Official Receipt ( TM No will be issued)

Examination Report Within three months from application Response within one months from the date of the Examination report Response by filing an Affidavit

Response by hearing Response by Interview ( In case the agent has 100+ pending cases)

Trademark application amendment TM 16

Acceptance before advertisement Publication

Wait for Opposition for Three months Opposition Proceedings

Registration Initially for 10 years from the date of the application

Renewal


6/33

IPR & PATENTS


7/33

IPR & PATENTS

Trade Marks Registry, Mumbai(Head Office) (JURSIDICTION IN INDIA )

101, Maharshi Karve Road,

Pratishta Bhavan, Mumbai-400 020

Tel. 22030924/22081315, Fax: 22013694

Jurisdiction: State of Maharashtra, Madhya Pradesh and GoaTrade Marks Registry, Delhi

Intellectual Property Bhavan, Plot NO.32, Section 14, Dwarka, Delhi

Tel. 011-28082915/ 16/17 Fax:

Jurisdiction: State of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, HimachalPradesh, Union Territory of Delhi and Chandigarh

Trade Marks Registry, Kolkata,

CP-2, Sector V, 5th floor, I.P.Bhavan, Salt Lake,

Kolkata-700091 (Telfax. 033-23677311

Jurisdiction: State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur,Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andamar &Nicobar Island.

Trade Marks Registry, Ahmedabad,

15/27 National Chambers, 1st floor,

Ashram road,

Ahmedabad-380 009.

Tel: 079-26580567

Jurisdiction: The state of Gujarat and Rajasthan and Union Territory of Damman, Diu,Dadra and Nagar Haveli

Trade Marks Registry, Chennai

IPR building, GST Road,

Chennai-31 Tel : 044-23222441

Jurisdiction: The state of Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and UnionTerritory of Pondicherry and Lakshadweep Island.


8/33

IPR & PATENTS

Documents & Information Required for Filing a Trademark Application

Logo Soft copy in JPEG Format TM 48 (Form of Authorization) Date of first use of the mark. Name and address of the proprietor of the mark. Required fee

1. Legal Basis

The Trade Marks Act, 1999 The Trade Marks Rules, 1959. The law is based mainly on the United Kingdom Trade Marks law

and provides for the registration of trademarks 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.

2. Filing a Trademark Registration in India

Application for registration: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 service in respect of which he/she is using or proposingto 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.

Foreigners and nationals not living in the country:May be recorded as being registered proprietors of trademarks but they must provide the Registrywith an address for service in India, otherwise, they must appoint a registered agent orrepresentative.

Kind of marks:The law provides for association trademarks, the registration of certification marks, defensive

marks and collective marks.

Registrability:To be registrable, a trademark application must contain or consist of the following essentialparticulars:

o The name of a company, individual or firm represented in a special or particular manner;o The signature of the applicant for registration or some predecessor in his/her business;o One or more invented words;o 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


9/33

IPR & PATENTS

personal name, or any common abbreviation thereof, or the name of a sect, caste or tribe inIndia;

o Any other distinctive mark. No trademark shall be registered in respect of analgin, aspirin,chloropromazine, ferrous sulphate, piperazine and its salts such as adipate, citrate and

phosphate or for a new single ingredient drug first introduced in India. The Indian nationalflag, the name or pictorial representation of Mahatma Gandhi, Jawahar Lal Nehru,

Chatrapati Shivaji, or the Prime Minister of India and the names and emblems of certaininternational organizations may not be registered as trade marks. In the case of portraits,the name of the person depicted must be stated.

Service marks:Registerable in India in eight classes

Priority:Can be claimed from the earliest corresponding application in a Convention country provided thatapplication is filed in India within six months of the priority date. Multiple and partial priorities

are allowed.

Classification:The international classification of goods is used and separate applications must be filed for goodsfalling in different classes. Classes 1 to 42 are available.

Territory Covered:The trademark legislation covers the whole of the territory of India as at present constituted,

including the States of Jammu and Kashmir and the territories of Goa, Daman, Diu, Dadra, Nagar

Haveli and Pondicherry.

3. Examination

Applications are examined to ensure that they comply with the requirements of the law and thatthey do not conflict with marks which are already registered, or which are the subjects of earlier

pending applications.

Amendments:An application may be amended provided the amendment does not constitute a major alteration of

the mark.

Ground for refusal: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 thelaw 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


10/33

IPR & PATENTS

of goods. In the case of identical marks, registration may, however, be allowed upon proof thatthe mark was being used concurrently and in good faith.

Hearing:Hearing may be sought with regard to applications which the Registrar proposes to refuse and an

appeal may be made to the High Court against any orders issued at a hearing.

4. Granting, Protection

Opposition:Applications which have been accepted are advertised in the Trade Marks Journal and oppositionmay be filed within three months of the date of advertisement; an extension of time of one month

for filing opposition may be obtained upon application. The Register was formerly divided into

two parts. Part A contained the marks already registered under the Trade Marks Act 1940 and allmarks which were distinctive or had acquired distinctiveness (satisfactory evidence to this effect

must be produced) could be registered in Part A of the Register. Part B contained marks which

could not be registered in Part A or which were not distinctive but were capable of distinguishingthe goods of the applicants. Since 2003 this distinction is removed. There is now only a single

register.

Duration of registration:Ten years, renewable for further periods of ten years each.

Renewal fees:Must be paid before but not more than six months before the date of expiry of the last registration;a mark may be restored within one year from the last date of renewal upon application to the

Registrar, either completely or subject to such conditions and limitations as he/she may think fit to

impose. A trademark which has been removed from the Register for non-payment of renewal feescan be cited against an application for registration during a period of one year as from the date of

removal.

Assignment:A registered trademark can be assigned with or without the goodwill of the business concerned.

An unregistered trade mark is not assignable without the goodwill of the business concernedexcept if it is used in the same business as a registered trademark and assigned to the same personand along with a registered trademark covering the same goods.

Registered user:The Central Government can refuse the registration of a registered user if it is against the public

interest or the development of industry, trade or commerce in India. Before doing so the Central


11/33

IPR & PATENTS

Government must disclose the facts and circumstances on the basis of which it proposes to refusethe registration of a registered user and give the applicant an opportunity of a hearing.

Marking of goods:The law does not prescribe that a registered trademark, when used by its proprietor, be described

as such on the goods to which it is applied nor does it require that the proprietor identity bedisclosed. Where a mark is used by a registered user, however, goods must be marked in such away as to disclose the identity of the registered proprietor and the fact that the mark is being used

by the registered user by permission of the registered proprietor. All goods imported into or

manufactured or assembled in India may be required to be marked in such a way as to indicatetheir country of origin. Under Section 117 of the Act, the Indian Government will, from time to

time, issue notifications specifying the manner in which the goods are to be marked.

Rectification for non-use:The Register may be rectified (removal of a mark) in respect of a registered mark and one of the

grounds for applying for rectification is the non-use of a mark for a period exceeding five yearsand one month before filing of the rectification application unless there are special circumstancesexcusing non-use.

Infringement:Suits may be filed against the infringement of registered marks and in any suit, registration may

be regarded as valid in all respects even years from the date of registration. Unregistered

trademarks with reputation in India or internationally well-known trademarks, can be protectedagainst misuse in a passing off action.

TRADEMARK LITIGATION

For a common man litigation means fighting a case in the court of law. Litigation often takes place when

a person, organisation, body or entity feels that his right has been infringed. There are various types of

litigation such as Civil, Criminal, Labour, Tax, Excise and so on. One such type of litigation is

Trademark litigation. Before filing a trademark it is highly recommended to search it, as search clarifies

the availability of a mark. If a mark is not available it is advised not to proceed with the filing of the

same. However, if the owner is still interested in the mark than it has to be filed with considerable

modifications and uniqueness. If none of the above circumstances is taken into consideration at the time

of filing the trademark than there is a possibility that it may be objected or opposed by the owner of

similar mark. Opposition gives rise to trademark litigation.

As soon as a trademark gets opposed, it is the duty of the applicant to file counter statement as early as

possible. It is to be noted that a counter statement is required to be filed within two months from the date

of receipt of opposition. The counter-statement is mainly drafted on the basis of facts. Once both


12/33

IPR & PATENTS

opposition notice and counter statement has been filed with the Trademarks Registry, the Registrar calls

for evidences. When the case is not decided on the basis of evidence than the Examiner calls both the

parties for hearing. Hearing is the stage which decides the outcome of the matter. It is to be noted that one

can appeal before court of law in case he fees that justice has been denied from Registrar of Trademarks.

Global Jurix is committed to tackle the above mentioned problems with ease and at a very reasonable

rate.

Trademark Litigation India

Trademark litigation in India involves an argument over whether one party has encroached on the othertrademark rights. Trade dress litigation involves disputes over whether the distinctive configuration of a

product line has been infringed. Sometimes, unfair competition claims asserted in concert with trademark

claims, can be made when a defendant product is likely to confuse the public in India as to the affiliation

between services, goods, or companies.

The India Trademark Litigation considers the statutes, set of rules, regulations and decisional law in India

relating to or arising from litigation that involves trademarks, trade names or unfair competition affectingtrade identity, as well as statutes, rules, regulations and decisional law relating to/ arising from such

litigation. Trademark protection can cover more than immediately a name associated with a

service/product.

Our vast trademark litigation occurrence makes our attorneys well versed in the best ways to approach

cases, whether large/small, complex or straightforward. We assess the potential risks and rewards of

disputes and provide creative solutions for customers of all sizes. Our experienced trademark attorneysregularly advise clients on protecting their trademarks &service marks from infringement and dilution

and have significant experience with trademark litigation in civil courts as well as before the PTO in

opposition and cancellation proceedings. Our attorneys are experienced in seeking & resisting temporary

restraining orders and preliminary injunctions in state and federal courts.

India Trademark Litigation

India Trademark litigation occupies a dispute over whether one party has encroached on the othertrademark rights. Trade dress litigation involves disputes over whether the distinctive configuration or

packaging of a product line has been infringed. Unfair competition claims, sometimes asserted together

with trademark claims, can be made when a defendant product is likely to confuse the public in India asto the affiliation between services, goods or companies. It can also include false advertising.

The India Trademark Litigation considers the statutes, rules, regulations, and decisional law in India

relating to or arising from litigation that involves trademarks, trade names, or unfair competition affectingtrade identity, as well as statutes, rules, regulations, and decisional law relating to or arising from such

litigation. Trademark protection can cover more than just a name associated with a service orproduct.

India Trademark litigation cost varies significantly based on the case and the opposing party. Mosttrademark litigation matters, conversely, are settled at a much earlier stage and at far lower cost. Though,

like any other lawsuit, can be disruptive of business, the disruption to technical personnel tends to be less

than in patent or trade-secret cases. To protect business assets and well worth it in appropriate conditionstrademark litigation is worth it.


13/33

IPR & PATENTS

Our vast trademark litigation experience makes our attorneys well versed in the best ways to approach

cases, whether large or small, complex or straightforward. We assess the potential risks and rewards of

disputes and provide creative solutions for customers of all sizes. Our experienced trademark attorneys

regularly advise clients on protecting their trademarks and service marks from infringement and dilutionand have significant experience with trademark litigation in civil courts as well as before the PTO in

opposition and cancellation proceedings. Our attorneys are experienced in seeking and resistingtemporary restraining orders and preliminary injunctions in state and federal courts.

DILUTION OF TRADEMARK: THE CONCEPT UNDERSTOOD

In a recent decision the Delhi High Court, tracing the origin and expansion of the concept of 'Dilution of

Trademark' has explained in no uncertain terms the meaning and ambit of the expression as understood in

the Indian context. Taking note of the internationally understood meaning of the expression 'Dilution of

Trademark', the High Court proficiently explained the concept in the following terms;

Trademark dilution

Trademark dilution is a trademark law concept giving the owner of a famous trademark standing to

forbid others from using that mark in a way that would lessen its uniqueness. In most cases, trademark

dilution involves an unauthorized use of another's trademark on products that do not compete with, and

have little connection with, those of the trademark owner. For example, a famous trademark used by one

company to refer to hair care products might be diluted if another company began using a similar mark to

refer to breakfast cereals or spark plugs. Dilution is a basis of trademark infringement that only applies to

famous marks. With non-famous marks, the owner of the mark must show that the allegedly infringing

use creates a likelihood of confusion as to the source of the product or service being identified by the

allegedly infringing use. With non-famous marks, it is highly unlikely a likelihood of confusion will be

found if the products or services are in unrelated markets. However, with famous marks, any use by

another person of the mark has the potential for confusion since a famous mark is so well-known among

the consuming public that people will assume affiliation with the owner of the mark regardless of the

product or service being sold under the infringing use.

Background

Trademark law is generally focused on the need for consumer protection. Consequently, trademark lawtraditionally concerned itself with situations where an unauthorized party sold goods that are directly

competitive with or at least related to those sold by the trademark owner. A trademark is diluted when theuse of similar or identical trademarks in other non-competing markets means that the trademark in and ofitself will lose its capacity to signify a single source. In other words, unlike ordinary trademark law,

dilution protection extends to trademark uses that do not confuse consumers regarding who has made a

product. Instead, dilution protection law aims to protect sufficiently strong trademarks from losing their

singular association in the public mind with a particular product, perhaps imagined if the trademark wereto be encountered independently of any product (e.g., just the word Pepsi spoken, or on a billboard).
http://legalperspectives.blogspot.in/2010/01/dilutation-of-trademark-concept.htmlhttp://en.wikipedia.org/wiki/Trademarkhttp://en.wikipedia.org/wiki/Standing_%28law%29http://en.wikipedia.org/wiki/Breakfast_cerealhttp://en.wikipedia.org/wiki/Spark_plughttp://en.wikipedia.org/wiki/Consumer_protectionhttp://en.wikipedia.org/wiki/Pepsi-Colahttp://en.wikipedia.org/wiki/Billboard_%28advertising%29http://en.wikipedia.org/wiki/Billboard_%28advertising%29http://en.wikipedia.org/wiki/Pepsi-Colahttp://en.wikipedia.org/wiki/Consumer_protectionhttp://en.wikipedia.org/wiki/Spark_plughttp://en.wikipedia.org/wiki/Breakfast_cerealhttp://en.wikipedia.org/wiki/Standing_%28law%29http://en.wikipedia.org/wiki/Trademarkhttp://legalperspectives.blogspot.in/2010/01/dilutation-of-trademark-concept.html


14/33

IPR & PATENTS

Trademark Dilution

1. What is trademark dilution?

Trademark dilution is defined as the lessening of the capacity of a famous mark to identify anddistinguish goods or services, regardless of the presence or absence of competition between the owner of

the famous mark and other parties or of likelihood of confusion. This typically occurs as the result of

blurring or tarnishment of the famous mark.

The law protects marks from the existence of subsequent confusingly similar marks. Claiming alikelihood of confusion requires a showing of similarity of the marks in sight, sound or meaning,

combined with evidence that the marks being compared are associated with identical, competing, similaror related goods/services. Under this analysis, similar and possibly even identical marks used with

distinguishable goods/services or goods/services traveling in different channels of trade may coexist in

the same market.

Dilution developed from the concept that some marks are so well known and famous that they deservean extra level of protection beyond the likelihood of confusion analysis. Dilution theory seeks to prevent

the coexistence of marks that are sufficiently similar to a famous mark regardless of the goods/servicesassociated with the allegedly diluting mark.

2. Which jurisdictions recognize the concept of dilution?

Most countries recognize some form of trademark dilution and a need for businesses to have some

recourse to thwart related activities. However, the definition, the elements and the resulting penalties or

forms of compensation imposed upon a trademark diluter can vary across jurisdictions. This fact sheetexplains the general concept of dilution with principles that can be applied to many jurisdictions.

Some representative jurisdictions that expressly recognize forms of dilution include: the United States,the European Union (EU), several countries of Central and South America, South Africa, India and

Japan.

The recognition of dilution is sometimes the result of harmonization efforts. For instance, within the EU,

the Trade Mark Directive, which establishes rules that must be implemented in the national legislation of

all member states, includes provisions against dilution. Likewise, WIPO's Joint Recommendation

concerning provisions on the protection of well-known marks also includes a provision on dilution. The

Joint Recommendation has a binding effect upon the Contracting Parties to the Dominican Republic Central America Free Trade Agreement (United States, Costa Rica, El Salvador, Guatemala, Honduras,

Nicaragua, and the Dominican Republic).

It is important to note that there may be other jurisdictions that do not recognize trademark dilution per se

but may have their own similar concept. Canada, for example, recognizes the concept of depreciation of

goodwill, which provides remedy against depreciation of the value of the goodwill attached to aregistered trademark. Australia is another jurisdiction that does not use the term dilution. However, well-

known marks are granted added protection by allowing their owners to oppose (even if the well-known


15/33

IPR & PATENTS

mark is not registered), seek defensive registration (even if there is no real intention to use the mark inconnection to those goods or services) or initiate an infringement action if a person uses the same or

similar mark in relation to unrelated goods or services and it is likely to be taken as to indicate a

connection with the well-known mark.

3. What are the common elements of dilution?

FameA mark that enjoys a certain degree of reputation or recognition. Also related to this is aWell-Known Mark, which is a mark that in view of its widespread reputation may enjoy

broader protection than ordinary marks. In the U.S., the 2006 Trademark Dilution Revision Act

requires a well-known mark be widely recognized by the general consuming public. There can beno claim of dilution if the mark is not at least well known. In the EU, this is also a required

element but it is left up to the courts to determine the notion of reputation as the Community

Trade Mark (CTM) Regulation does not determine the meaning of reputation. Certain

jurisdictions, such as China and Mexico, maintain well-known marks registries. In mostjurisdictions, though, the courts and trademark offices decide whether a mark is famous or well-

known on a case-by-case basis. Contrastingly, there are some countries that do not require a mark

to be well-known for dilution protection. For example, in Andean Community Countries such asColombia, Peru, Ecuador and Bolivia, the Andean Court indicates that protection against dilutionis not only recognized regarding well-known marks but should also be extended to trademarks in

the same content and commercial category.

Protects the Strength of a Mark for the Owner Instead of protecting consumers fromconfusing the source of competing, similar or related goods because of the similarity of the marks,

dilution protects the owner of an unusually strong or well-known mark from experiencing a

decrease in the strength or value of its mark because of another allegedly similar mark regardlessof how that allegedly similar mark is used.

Necessary ShowingIn the United States, case law had developed in many states that a plaintiffhad to show actual dilution of its mark before being granted relief. This carried over to the

interpretation of the federal Lanham Act when it was amended to include a dilution cause ofaction. In 2006, U.S. Congress passed the Trademark Dilution Revision Act in response to that

case law to modify the federal statute to codify that only a likelihood of dilution need be shown

by the plaintiff to be awarded relief. It is expected to be easier to have evidence that dilution islikely occurring rather than actually occurring. In South America, evidence is also required by the

plaintiff to show that the trademark is well known, and specifically in Andean Community

countries, the court stipulates that the risk of dilution of the trademark must be proven. InAustralia, the owner must prove that its trademark is well known and that use of a similar mark by

others is likely to indicate a connection and/or deceive or cause confusion. In South Africa,

according to the South African Constitutional Court, the detriment to a marks distinctive

character or reputation, which is required in section 34(1)(c) of the South African Trade MarksAct, must be proven to cause substantial harm to the uniqueness and reputation of the mark in

light of established facts, not mere allegations.

4. What are the forms of dilution?

Blurring - Weakening the distinctiveness of a famous mark. This is the traditional notion ofdilution using an identical or virtually identical mark on goods or services that may be

completely different and unrelated to the plaintiffs product/service. The belief is that a mark that


16/33

IPR & PATENTS

is highly similar or identical to the plaintiffs unique, distinctive and well-known mark can detract

from consumers strong association of the plaintiffs mark with the plaintiffs goods and servicestherefore lessening the strength or value of the plaintiffs mark as an identifier of itsgoods/services. In the U.S., the parties tend to debate how unique, distinctive and well-known a

plaintiffs mark must be in order to have sufficient strength or value as a source-identifier that amark used in a different trade channel can diminish that strength. In the EU, the CTM Regulation

also recognizes dilution in the form of blurring if it is detrimental to the distinctive character of anearlier trademark. In South America, blurring of a mark diminishes the value of the trademark inthe market and can also be considered unfair competition.

Tarnishment - Weakening the distinctiveness of a famous mark, usually through inappropriate orunflattering associations. Examples include using a similar mark, or a term that plays on ones

mark, in association with sexual or offensive content, with subject matter contrary to or critical of

the mark owner and its beliefs or philosophies or to attract the mark owners customers to directlycriticize or attack the mark owner or its product/service. This form of dilution can conflict with

free speech rights protected in the U.S. Constitution and can be considered a fair use exception

to liability. Examples of uses that are sometimes permissible under a fair use exception include

referring to a competitors product, and parodies and criticisms of a product. This fair use

exception is typically asserted as a defense to dilution by tarnishment in U.S. courts. In the EU,CTM Regulation also sees dilution in the form of tarnishment if it is detrimental to the reputationof an earlier trademark. In South America and South Africa, tarnishment of a mark diminishes the

value of the trademark in the market and can also fall within the realm of unfair competition.

TRADEMARK MAINTENANCE

After you have applied for your trademark, there will be a waiting period of approximately 18 months

before your name is actually registered with the United States Patent & Trademark Office. Until then, it

will be listed as "Pending." Sometimes there are hold-ups, the USPTO may not allow you to use the name

you've chosen to apply for because there is a similar name already trademarked. In this case, you willreceive an "office action", which is a notification from the USPTO. If you do receive an office action, it

might be due to the USPTO simply needing more information in order to complete your trademarkapplication. However, it also may be because your name is blocked by another name, which is the worst

case scenario, and another reason why it is incredibly important to purchase comprehensive research

before you file for your name.

Trademark Maintenance Services:

Our trademark maintenance services provide a centralized source to manage a disparate array of

requirements and obligations imposed by country-specific regulations. Tm-India provides unparalleled

service in the critical quest to create and maintain brand based goodwill and value. We customize ourservice for you so that you do not need to repackage data and invest your organization's time developing

this foundation-level knowledge. Our analytical and requirements predicts work hand in hand with ourcentralized knowledge of global maintenance requirements. We prepare all necessary supporting

documentation so that your organization is assured that its identity, brands and marks are effectively

managed with a high-level of dedication and respect.

Our trademark renewal and maintenance services include:

1. Computer generated renewal reminders/notifications


17/33

IPR & PATENTS

2. Preparation of required renewal documentation3. Preparation and advice, when compulsory, of use requirements

4. Preparation and filing of renewal applications

5. Prosecution of renewal applications to issuance of renewal certificates

6. Computer generated maintenance reminders for Proof of Use, Affidavit of Use, Declaration ofIntent to Use, Tax Payments, Cautionary Notices, etc.

7. Preparation and filing of required maintenance actions.8. Prosecution of maintenance actions to issuance of maintenance certificates.

THE FOURTH SCHEDULE TO TRADE MARKS RULES, 2002

Classification of goods and servicesName of the classes

(Parts of an article or apparatus are, in general, classified with the actual article or apparatus, except where suc

parts constitute articles included in other classes).

Class 1. Chemical used in industry, science, photography, agriculture, horticulture and forestry; unprocesse

artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and solderinpreparations; chemical substances for preserving foodstuffs; tanning substances; adhesive used in industry

Class 2 . Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorantmordents; raw natural resins; metals in foil and powder form for painters; decorators; printers and artists

Class 3 . Bleaching preparations and other substances for laundry use; cleaning; polishing; scouring and abrasivpreparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices

Class 4 . Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels(includinmotor spirit) and illuminants; candles, wicks

Class 5 . Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, foofor babies; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparation fo

destroying vermin; fungicides, herbicides

Class 6. Common metals and their alloys; metal building materials;

transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of commo

metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal no

included in other classes; ores

Class 7 . Machines and machine tools; motors and engines (except for land vehicles); machine coupling antransmission components (except for land vehicles); agricultural implements other than hand-operated; incubator

for eggs

Class 8 . Hand tools and implements (hand-operated); cutlery; side arms; razors

Class 9 . Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring

signalling, checking (supervision), life saving and teaching apparatus and instruments; apparatus for recordingtransmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vendin


18/33

IPR & PATENTS

machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processinequipment and computers; fire extinguishing apparatus

Class 10 . Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teethorthopaedic articles; suture materials

Class 11 . Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying ventilating, watesupply and sanitary purposes

Class 12 . Vehicles; apparatus for locomotion by land, air or water

Class 13 . Firearms; ammunition and projectiles; explosives; fire works

Class 14 . Precious metals and their alloys and goods in precious metals or coated therewith, not included in othe

classes; jewellery, precious stones; horological and other chronometric instruments

Class 15. Musical instruments

Class 16 . Paper, cardboard and goods made from these materials, not included in other classes; printed matter

bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' material

paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (excepapparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printin

blocks

Class 17 . Rubber, gutta percha, gum, asbestos, mica and goods made from these materials and not included i

other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexibl

pipes, not of metal

Class 18 . Leather and imitations of leather, and goods made of these materials and not included in other classeanimal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness ansaddlery

Class 19 . Building materials, (non-metallic), non-metallic rigid pipes for building; asphalt, pitch and bitumennon-metallic transportable buildings; monuments, not of metal.

Class 20 . Furniture, mirrors, picture frames; goods(not included in other classes) of wood, cork, reed, canewicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl, meerschaum and substitutes for all thes

materials, or of plastics

Class 21 . Household or kitchen utensils and containers(not of precious metal or coated therewith); combs ansponges; brushes(except paints brushes); brush making materials; articles for cleaning purposes; steelwoo

unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not includein other classes

Class 22 . Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classespadding and stuffing materials(except of rubber or plastics); raw fibrous textile materials

Class 23 . Yarns and threads, for textile use


19/33

IPR & PATENTS

Class 24 . Textiles and textile goods, not included in other classes; bed and table covers.

Class 25 . Clothing, footwear, headgear

Class 26 . Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers

Class 27 . Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wahangings(non-textile)

Class 28 . Games and playthings, gymnastic and sporting articles not included in other classes; decorations fo

Christmas trees

Class 29 . Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellie

jams, fruit sauces; eggs, milk and milk products; edible oils and fats

Class 30 . Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereal

bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauce

(condiments); spices; ice

Class 31. Agricultural, horticultural and forestry products and grains not included in other classes; live animals

fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt

Class 32 . Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and fruit juices; syrup

and other preparations for making beverages

Class 33 .Alcoholic beverages(except beers)

Class 34 . Tobacco, smokers' articles, matches

SERVICES

Class 35 .Advertising, business management, business administration, office functions.

Class 36 .Insurance, financial affairs; monetary affairs; real estate affairs.

Class 37 . Building construction; repair; installation services.

Class 38. Telecommunications.

Class 39. Transport; packaging and storage of goods; travel arrangement.

Class 40. Treatment of materials.

Class 41. Education; providing of training; entertainment; sporting and cultural activities.

Class 42. Providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinar

and agricultural services, legal services, scientific and industrial research; computer programming; services tha

cannot be classified in other classes


20/33

IPR & PATENTS

What are trademarks?

Trademarks are words, names, symbols, or devices used by manufacturers of goods to identify theirgoods, and to distinguish their goods from goods manufactured and sold by others. A person who sells his

goods under a particulate trademark acquires a sort of limited exclusive right to use the mark in relationthose goods. Trademark law protects this right of the owner of a mark to use marks that distinguish hisgoods from others and to prevent others from using marks that are likely to cause confusion. Trademark

law protects the goodwill of a business and also protects the consumers' ability to accurately ascertain the

source of goods and services.

How do I protect my Trade Mark?

By ensuring that the mark is registered on a national trade mark register. In the main, trade mark owners

use the services of a Registered Trade Mark Agents to achieve registration.

Why should I protect it?

Primarily to ensure that the only persons who are able to exploit it are you or your company. Yourreputation is represented by your trade mark. Others may seek to use your trade mark or something akin

to your trade mark for their own use and thus take advantage of the reputation you have earned.

Registration of your trade mark is the surest and quickest means of seeking redress in thesecircumstances. Furthermore, registration establishes your exclusive rights to use that trade mark for your

goods or services.

Where can I protect my Trade Mark?

Trade marks can be registered in nearly every country in the world. You should aim to protect your trademark wherever your goods are sold or your services provided now or in the future.

Makhija & Associates provides services for the registration of trade marks world-wide.

What is my Trade Mark worth and how can I exploit it?

Your trade mark is a tangible and marketable asset. It can be sold as a separate commodity and can be

licensed out for use by others. The value you place on your trade mark is normally based on the success

of your product, turnover and other factors. Your trade mark is a valuable asset which grows in value asyour business grows. You should protect this asset by trade mark registration. To control its exploitation

you need trade mark registration.

What does constitute infringement of a trademark?

A registered trademark is infringed if a person uses the same/deceptively similar mark in the course oftrade, in respect to the same goods. The test for deceptive similarity is whether the defendant's use of a

mark is likely to cause confusion, i.e., whether an appreciable number of reasonably prudent consumers

are likely to be confused or deceived as to the source, affiliation or sponsorship of the parties and theirgoods and services. The plaintiff need not demonstrate actual confusion or intent to confuse. The


21/33

IPR & PATENTS

'likelihood of confusion' analysis encompasses an evaluation of a variety of interconnected marketfactors, relating to the likely expectation, perception and memory of consumers.

Where should I file an infringement suit?

A suit for infringement of registered trademark must be filed in the District Court having jurisdiction orin the High Court that has original jurisdiction to try such suits. The jurisdiction and procedure are

governed by the Civil Procedure Code. The period of limitation for filing the suit is three years from the

date of infringement.

What are relieves that the court may grant in an infringement suit?

The relieves in a suit for infringement include: - Injunction, restraining the further use of the trademark; -

Damages or an account of profits; and - An order for delivery of the infringing labels and marks fordestruction. If the infringement committed was innocent only nominal damages will be awarded.

However, criminal action is possible if fraudulent intention on the part of the infringer is proved.

What are service marks and are they protected in India?

Service marks are trademarks used by business rendering various kinds of services, for eg: travel agents,

finance companies etc.

What forms of protection are available for trademarks?

There are two forms of legal protection that are available for trademarks. Under the Trade andMerchandise Marks Act, 1958, the procedure for registration of trademarks is prescribed in order to

afford protection for the same. The most effective trademark protection is obtained by filing a trademarkregistration application in the Registrar of Trademarks. 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. The plaintiff would have to prove sufficientuse of the mark so as to create valuable goodwill of the business connected with the goods bearing the

mark.

What is the procedure to be followed for the registration of a trademark?

Any person/entity who claims to be the proprietor of a trademark can apply for registration. Before

applying for registration, the applicant may apply for a report from the Registrar of Trademarks, as to

whether the mark or one similar to it has already been registered or applied for. The applicant can also

conduct private searches using the records maintained in the Registry. Thereafter, the application forregistration should be filed in Form TM-1, under the Trade and Merchandise Marks Rules, 1959

("Rules"). The Rules also prescribe the classes of goods with respect to which registration can be applied

for (in the Fourth Schedule). If applications are made for registration of the mark in respect of more thanone class of goods, then separate applications should be filed for each class. The application should be


22/33

IPR & PATENTS

accompanied by the prescribed fee. After the application is received, the Registrar of Trademarks willexamine the same and communicate any objections to the applicant. The objections will mainly be with

regard to distinctiveness and similarity with already registered trademarks. The applicant can put forward

his case in writing or at a hearing. If the submissions are accepted, the application will be advertised in

the Trademarks Journal. In case any objections are received, the Registrar will conduct a hearing and givea decision regarding the same. If no objections are received, the Registrar will enter the mark in the

Register of Trademarks and issue a certificate of registration to the applicant. The certificate ofregistration is valid from the date of application for registration.

What is the duration of registration?

The first registration is valid for a period of ten years and can be renewed for further periods of ten years

each by paying the renewal fee. If the mark is not renewed, it will be removed from the Register but itcan be restored if a request is made to that effect within one year from the date of expiry of registration or

last renewal.

Is assignment of a trademark possible?

The assignment/licensing of trademarks is restricted, because unrestricted licensing has been considered

as trafficking in the mark which is against public interest. This is because, a trademark indicates theorigin of the goods to the consumer and unrestricted licensing can lead to confusion and deception amongthe public as to the nature of the goods. According to the law, the assignment of a trademark should not

result in the creation of concurrent exclusive rights in more than one person with respect to the use of the

same/similar mark in respect of same/similar goods. Confusion or deception can be avoided by territorial

limitation or limitation of the goods.


23/33

IPR & PATENTS

Trademark Online Form

Name of the Applicant/ Company /

Firm/ Individual (In Block Letters)

:

Address :

Form of Organisation :

Proprietorship

Partnership

Registered Co.

Trust

Association

H.U.F.

Full Name(s) of Proprietor / All

Partners / All Directors / Chairman

/ Karta / Authorised Signatory *

:

Nationality of the Proprietor /Partners / Directors

:

Fathers / Husbands Name ofSignatory*

:

Residence Address of Signatory :

Age of the Signatory :

Mark /Brand Name to be registered :

Significance of the Mark :


24/33

IPR & PATENTS

Goods (exact Product Details) /

Exact Services:

Trade Description

If the mark already in use (Please

Specify with Evidence the exactdate, month & year) Or

Proposed to be used from when

DD MM

YYYY

:

Watching Details : Yes No

DATE : :

PLACE : :

_____________________________(SIGNATURE)

Please Specify the Designation & Nationality of the AuthorisedSignatory.


25/33

IPR & PATENTS

.

Trademark in India: Registering Procedures & Laws and ChallengingTrademarks

Intellectual Property Laws in India

LEGISLATION (INDIA TRADEMARK LAW)

The Indian law of trademarks is enshrined the new Trade Marks Act, 1999 came into force with effectfrom September 15, 2003. The old Trade and Merchandise Marks Act, 1958 was repealed at the same

time. The new Trademarks Act of 1999 is in line with the WTO recommendations and is in conformitywith the TRIPS Agreement to which India is a signatory.

MAIN FEATURES OF NEW LEGISLATION IN INDIA

Under the new Trademarks Act of 1999:

Registration of Service Marks allowed in addition to Trademarks for goods. No separate application necessary for each category/class of goods or services; a single

application would do, however filing fee will be charged separately for each class of

goods/services.

The term of registration of trademark is ten years, subject to renewal thereafter.

The system of maintaining registration of trademark in Part A and Part B with differentlegal rights, dispensed away.

Registration of trademarks which are imitations of well known trademarks not permitted. Registration of Collective Marks owned by associations allowed. Offences relating to trademark made cognizable. Filing Fees enhanced by more than 8 times. Extension of application of convention countries.

TRADEMARKS IN INDIA - FAQ'S

WHAT IS A TRADEMARK

A Mark` may consist of a word or invented word, signature, device, letter, numeral, brand, heading,label, name written in a particular style, the shape of goods other than those for which a mark is proposed

to be used, or any combination thereof or a combination of colors and so forth. Subject to certain

conditions, a trademark may also be symbolized by the name of a person, living or dead.

For the purpose of registration, a mark chosen should be capable of distinguishing goods or services of

one person from those of the others. Further it should not be deceptively similar to an existing mark ofanother person and not the one expressly prohibited under the Act.


26/33

IPR & PATENTS

The marks devoid of any distinctive character, or which are only indicative of the kind, quality, quantity,

purpose, value or geographical origin of the goods, or which are marks already in vogue in the trade due

to their customary use may not be registered. But these disqualifications do not apply to marks, which

have already acquired distinction due to their popularity and consistent use. Internationally acclaimedbrand names are freely available for use in India.

WHAT IS COVERED UNDER TRADEMARKS

A trademark is a mark used in relation to goods or services so as to indicate a connection in the course of

trade between the goods or services and some person having the right as proprietor to use the mark.

WHAT IS THE FUNCTION OF A TRADEMARK

Under modern business condition a trade mark performs four functions:

It identifies the goods / or services and its origin. It guarantees its unchanged quality It advertises the goods/services It creates an image for the goods/ services.

HOW TO SELECT A TRADEMARK

If it is a word it should be easy to speak, spell and remember. The best trade marks are invented words or coined words. Please avoid selection of a geographical name. No one can have monopoly right on it. Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super

etc)

It is advisable to conduct a market survey and a search at Trademark office to ascertain if same/similarmark is used in market.

WHAT ARE THE TYPES OF TRADEMARKS THAT CAN BE REGISTERED

Under the Indian trademark law the following are the types of trademarks that can be registered:

Product trademarks: are those that are affixed to identify goods. Service trademarks: are used to identify the services of an entity, such as the trademark for a

broadcasting service, retails outlet, etc. They are used in advertising for services.


27/33

IPR & PATENTS

Certification trademarks: are those that are capable of distinguishing the goods or services in connectionwith which it is used in the course of trade and which are certified by the proprietor with regard to their

origin, material, the method of manufacture, the quality or other specific features

Collective trademarks: are registered in the name of groups, associations or other organizations for theuse of members of the group in their commercial activities to indicate their membership of the group.

WHAT ARE DIFFERENT TYPES OF TRADEMARKS AVAILABLE FOR ADOPTION

Any name (including personal or surname of the applicant or predecessor in business or the signature ofthe person), which is not unusual for trade to adopt as a mark.

An invented word or any arbitrary dictionary word or words, not being directly descriptive of thecharacter or quality of the goods/service.

Letters or numerals or any combination thereof. The right to proprietorship of a trade mark may be acquired by either registration under the Legislation

or by use in relation to particular goods or service.

Devices, including fancy devices or symbols Monograms Combination of colors or even a single color in combination with a word or device Shape of goods or their packaging Marks constituting a 3- dimensional sign. Sound marks when represented in conventional notation or described in words by being graphically

represented.

WHO CAN APPLY FOR A TRADEMARK

A person who claims to be the proprietor of the trademark can apply for the registration of its mark forgoods as well services.A person may apply for registration of a trade mark to the Trademark office under whose jurisdiction the

principal place of the business of the applicant in India falls.

In case, the principal place of business is outside India, then the application can be filed in the Trademark

office under whose jurisdiction the office of the lawyer appointed by you is located.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.

Before making an application for registration it is prudent to conduct a trademark search in theTrademark office in context 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.

WHO CAN USE A TRADEMARK

The right to use a mark can be exercised either by the registered proprietor or a registered user.

WHAT ARE LEGAL REQUIREMENTS FOR REGISTRATION OF TRADEMARK IN INDIA

The legal requirements to register a trade mark under the Legislation are:


28/33

IPR & PATENTS

The selected mark should be capable of being represented graphically (that is 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 mark in relation to goods or services for the purpose ofindicating or so as to indicate a connection in the course of trade between the goods or servicesand some person have the right to use the mark with or without identity of that person.

WHAT IS THE DURATION OF A TRADEMARK IN INDIA?

Term of registration of a trademark is ten years, which may be renewed for a further period of ten years

on payment of prescribed renewal fees.

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.

CONVENTION APPLICATION AND INTERNATIONAL TREATIES

India has declared certain countries as convention countries, which afford to citizens of India similar

privileges as granted to its own citizens. A person or company from a convention country, may within six

months of making an application in the home country, apply for registration of the trademark in India. Ifsuch a trademark is accepted for registration, such foreign national will be deemed to have registered his

or her trademark in India, from the same date on which he or she made application in the home country.

Where the applications have been made for the registration of trademark in two or more convention

countries, the period of six months would be reckoned from the date on which the earlier or earliest ofthose applications was made.

Although the recovery of damages for infringement of a trademark is possible only if the infringement

takes place after the date of filing application for registration with the concerned trademark office inIndia, yet the deemed seniority in making application in home country may entitle the applicant to initiate

an action in India for injunction, delivery of impugned labels and so on.

WHAT ARE BENEFITS OF TRADEMARK REGISTRATION

The 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 whichthe mark is registered and seek the relief of infringement in appropriate courts in the country. The

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 specialcircumstances such exclusive right does not operate against each other.


29/33

IPR & PATENTS

REMEDIES FOR INFRINGEMENT OF TRADEMARK IN INDIA AND PASSING-OFF

Two types of remedies are available to the owner of a trademark for unauthorized use of his or her markor 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

While former is a statutory remedy, the latter is a common law remedy. In an action involving

infringement or passing off, a court may grant relief of injunction and/or monetary compensation for

damages for loss of business and/or confiscation/destruction of infringing labels and tags etc.

Although registration of trademark is prima facie an evidence of validity of a trademark, yet theregistration can not upstage a prior consistent user of trademark, for the rule is priority in adoption

prevails over priority in registration`.

HOW TO APPLY FOR REGISTRATION OF A TRADEMARK IN RESPECT OF PARTICULAR

GOODS OR SERVICES

Goods and services are classified according to the International Classification of goods and services.Currently schedule IV of the Legislation provides a summary of list of such goods and services falling in

different classes which is merely indicative. The Registrar is the final authority in the determination of

the class in which particular goods or services fall. The Schedule IV of the Legislation is annexed at theend of this questionnaire on trade marks.

WHAT PURPOSE THE TRADEMARK SYSTEM SERVES

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

WHO BENEFITS FROM TRADEMARK REGISTRATION

The Registered Proprietor: The Registered 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


30/33

IPR & PATENTS

labels.The Purchaser and ultimately Consumers of trademarks goods and services.The Government: The Trademarks Registry is expected to earn a substantial annual revenue, which is

perpetually on the rise.

WHAT DOES THE REGISTER OF TRADEMARK CONTAIN

The 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 or disclaimers, if any; the address of the proprietors; particulars of trade orother 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.

CAN ANY CORRECTION BE MADE IN THE APPLICATION OR THE REGISTER OF

TRADEMARKS

Yes. But the basic principle is that the trade mark applied for should not be substantially altered affectingits identity. Subject to this changes are permissible according to rules detailed in the subordinatelegislation.

CAN A REGISTERED TRADEMARK BE REMOVED FROM THE REGISTER

It can be removed on application to the Registrar on prescribed form on the ground that the mark is

wrongly remaining on the register. The Registrar also can suo moto issue Notice for removal of aregistered trade mark. Non use of a registered trademark for continuous period of 5 years is also a ground

of removal.

CAN I APPLY FOR A DESIGN/LOGO REGISTRATION FOR SAME GOODS AND SERVICES

IN BLACK & WHITE AS WELL AS COLOR

Yes. You can do so in one application as India recognizes the system of series application.

WHAT RECOURSE I HAVE IF A COMPETITOR HAS ALREADY REGISTERED MY MARK IN

INDIA

The Indian trademark law provides for invalidation proceedings and you have the right to initiate a

cancellation action should a competitor have registered your trademark in India. You also have the right


31/33

IPR & PATENTS

to initiate either a civil or a criminal action against any party that is violating your mark in India.

WHO CAN USE SYMBOL IN INDIA

Only the proprietor of a trademark whose trademark has been registered in India can use the symbol inIndia. Using the symbol unless your mark has been registered in India is unlawful.

WHEN CAN THE SYMBOL BE USED IN INDIA

Using this symbol with your trademark simply implies that you claim to be the proprietor of the

trademark. There is no prohibition on the use of the symbol in India.

WHAT IS THE PENALTY PRESCRIBED UNDER CRIMINAL LAWS FOR INFRINGEMENT

OF A TRADEMARK IN INDIA

The 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 toRupees two lakh.

AS A FOREIGN INVESTOR HOW CAN I REGISTER MY TRADEMARK IN INDIA

Registration of trademarks is one of the important protections that businesses should avail in India. Manyforeign and domestic Applicants have been able to successfully register their marks in India. Indian

courts have upheld many of those registrations and granted favorable decisions to rights holders.

In addition to the registering of their trademarks in India, businesses need to adopt other strategies for

protecting their trademarks. Some of them are mentioned below:

Get trademark searches conducted in the Indian Trade Marks Registry in the classes that are of interest toyou including the ancillary classes.

Get common law searches (this includes the internet, market surveys, yellow pages and directories)conducted to ascertain whether third parties are using your trademarks and if so, the extent of such use. Based on this information and after seeking the local counsels opinion decide if the trademark is

available for use or not.

Should the trademark be available for use, immediately apply for the registration. The rights holder should also consider hiring a watching service to monitor the trademark journals in

order to alert them to any published, deceptively similar trademarks or descriptive trademarks that might

be of concern.


32/33

IPR & PATENTS

Should the rights holder own a trademark that has been used and has acquired goodwill and reputation,it is advisable that along with filing of the trademark application in India, they should also make press

releases, publish cautionary notices and advertise the mark to ensure that the relevant section of the

public is aware that they are entering the Indian market and are protecting their trademark from any kind

of third party violation.

The rights holder should also take immediate steps to register their domain names including countrycoded top level domain names in India, as there have been many instances of third parties registering

domains for certain well known marks with the intention of extracting money by selling these domain

names to the rights holders.

Should the rights holder discover that their trademark is being infringed, they should take immediatesteps to protect their trademark, either by the means of filing oppositions, cancellations, conducting

investigations, sending cease and desist notices or initiating appropriate civil and criminal actions.

AS A FOREIGN CORPORATION CAN I FILE A SINGLE APPLICATION FOR USE OF MY

MARK ON MORE THAN ONE GOOD OR IN ASSOCIATION WITH MORE THAN ONE

SERVICE IN INDIA

Yes. India recognizes the system of multi-class applications and follows the International Classification.There are 42 classes in which the goods and services have been divided in India and you can file for

multi-class applications both for goods and services.

BEING A FOREIGN CORPORATION, MUST I SELL MY PRODUCTS OR SERVICES IN INDIA

BEFORE SEEKING TRADEMARK REGISTRATION

No, Indian trademark law allows filing of a trademark application in India on an intent-to-use basis.However the registered proprietor of the trademark in India has to commence use of the mark within 5years and 3 months of the date of registration. Otherwise the registered trademark is open to invalidation

proceedings.

WHAT ARE THE SOURCES OF TRADEMARK LEGISLATION

(1) The national statute i.e., the Trade Marks Act,1999 and rules made there under . (2) International multilateral convention. (3) National bilateral treaty. (4) Regional treaty. (5) Decision of the courts. (6) Office practice and rulings (7) Decision of Intellectual Property Appellate Board. (8) Text books written by academician and professional experts.


33/33

WHAT ARE THE FORMALITIES FOR MAJOR TRADEMARK TRANSACTIONS

For filing new applications there are prescribed forms depending on the nature of application such asForm TM-1, TM-2, TM-3, TM-8, TM-51 etc.

To file a Notice of Opposition to oppose an application published in the Trade Marks Journal (FormTM-

5).For Renewal of a Regd. trademark (Form TM-12 ).

Surcharge for belated renewal (Form -10)

Restoration of removed mark (Form TM-13)

Application for rectification of a registered trade mark (Form TM-26)Legal Certificate (Form TM-46)

(Providing details of entries in the Register)

Official search request (Form TM-54).

Preliminary advise of the Registrar as to the registrability of a mark (Form TM-55).Copyright search request and issuance of certificate (Form TM-60)