Trade Marks Act,1999

TRADE MARKS

Key Areas KEY AREAS

Introduction

Qualities of Good Trade Mark

Registration Process

Class Search

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KEY AREAS

Public Search

TM Applications and it’s fee

Examination Report and Responses

Acceptance and Advertising

Certificate of Trade Marks

INTRODUCTION

� A trademark is a visual symbol which may be

� a word - Har Din Fashion Karo

� name - Athreya

� Device -� Device -

� Label -

� Numerals -

� combination of color -

� Easy to pronounce, spell, remember.

� Should be distinctive and should not have deceptive similarity.

� Should not be descriptive.

QUALITIES OF A GOOD TRADEMARK

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� Should not be descriptive.

� Laudatory words such as best , perfect etc., to be avoided.

Definitions

Trademark

•Trademark is a distinctive sign or indicator used by an individual or anorganization and is applied to the articles of commerce so as to identify theproducts of one trader from those of another. Simply, a trademark is a warden oftrader.

•A collective trademark or collective mark is trademark owned by anorganization (such as an association), whose members use it to identify

Collective Mark

organization (such as an association), whose members use it to identifythemselves with a level of quality or accuracy, geographical origins, or othercharacteristics set by the organization. Example “CS” device used by theInstitute of Company Secretaries of India .

Service Mark

•A Service mark is same as a trademark except that it identifies anddistinguishes the source of a service rather than a product

HOW IS A TRADEMARK DESIGNATED IN INDIA ?

TM

- For an unregistered trademark, - For a registered trademark.

A trademark is designated by the following

-that is, a mark used to promote

or brand goods.

Registration Process

Application in TM-1 Form

Issue of Examination Report

Accepted Objections raised

Publication in Journal for public opposition

If no objections, Accepted

Issuance of Certificate of Registration

Reply to ER

Hearing date will be fixed

AcceptedRefused/Withdrawn/

Abandoned

INFORMATION REQUIRED FOR REGISTRATION OF TRADE

MARK/SERVICE MARK IN INDIA

1. Name of the Company (Applicant)

2. Constitution of the Applicant

(Individual/ Sole Proprietorship/ Partnership / Society / Limited Company/ Trust )

3. Name(s) of Proprietor/Partners/

6. Nationality of the Applicant

7. Mention the Trade Mark to be

registered

8. Mention Goods / Services in respect of which the Trade Mark is to be registered

Managing Director

4. Address

5. Name of the Contact Person With Designation /Telephone/Mobile/Fax/Email

9. Date of first use of the Mark by you in India, if any

10. Previous owners and other particulars, if any

CLASS SEARCH

THE FOURTH SCHEDULE TO TRADE

MARKS RULES, 2002

NICE CLASSIFICATION OF

TRADEMARK

1. Brief Classification of Goods and

Services

1. Lengthy Classification of Goods and

Services

2. Goods - Class 01 to Class 34

Services - Class 35 to Class 45

2. List of Good & Services in Class Order

List of Good & Services in Alphabetical

Order

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3. Under Trade Marks Rules 2002 _ Only

India

3. Under World Intellectual Property

Organization (WIPO)- 83 Countries

TRADE MARKS WEBSITE

TRADEMARK OFFICIAL WEBSITE - www.ipindia.nic..in

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HOW TO DO PUBLIC SEARCH ?

1. Search Type :-Word Mark

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2. Search Type: Phonetic

TM APPLICATIONS - FIRST SCHEDULE OF TRADE MARK RULE

Sl.N

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Particulars Statutory

Fee

Corresponding

Form Number

1. Application to register a

trade mark for a

specification of goods or

services included in one class

[Section 18(1)]

4000 TM-1

2. On a single application 4000 – per TM-512. On a single application

under section 18(2) for the

registration of a trade mark

for different classes of goods

or services.

4000 – per

class

TM-51

3. Form of Authorization of

Agent in a matter or

proceeding under the Act

[Sec 145 and rule 21

NA TM-48

Sl.NO Particulars Statutory

Fee

Corresponding Form

Number

4 Correction of a clerical error or for

amendment under section 18(4), 22

and 58

500 TM-16

5. On request for a duplicate or

further copy of certificate rule

500 TM-59

further copy of certificate rule

62(3)

6 For renewal under section 25 of

the registration of a trade mark at

the expiration of the last

registration

5000 TM-12

7. On a request under rule 40(1) to

state grounds of decision

10000 TM-15

EXAMINATION REPORT AND THEIR REPLIES

�The objections

When a trademark application is received by an examiner, it has to be

verified whether the application can be allowed to be registered. In

general, examiners would look into the following aspects

Information and Format – They will check if the application has beenInformation and Format – They will check if the application has been

filed in the correct form, whether all the relevant details are included and

the specification of goods/services mentioned fall under the appropriate

class.

Absolute Grounds – The next aspect examiners look into, is to see

whether the trademark is distinct and it does not describe the goods.

Example

If a baker got the trademark “bakery” or “baker” registered, no other baker

would be able to operate.)

Once the Application has been made to the trade mark authorities, the

applicant must wait for a minimum period of 6-8 months to get the

Examination Report from the trade mark office.

�Response to Examination Report�Response to Examination Report

If the examiner has any objection as mentioned above, an Examination

report will be uploaded in the website of the trademark registry specifying

the grounds for objection.

The trademark applicant or the attorney of the applicant has to file a

response to the objections raised in the examination report within 30 days

from the date of ER. While there is no fixed format or requirement to be

complied with, there are certain factors that need to be kept in mind while

drafting and filing a reply.

�Hearing

After the filing of Response to Examination Report, a show cause notice for

hearing will be sent to the applicant or Authorized person to appear for hearing.

�Acceptance and Advertising in the TM Journal

After hearing, if our logo or mark is allowed by the trade mark authorities then

“Acceptance of Trade mark” will be published in Trade Mark Journal and the

Hearing/Acceptance/Certificate of Registration

“Acceptance of Trade mark” will be published in Trade Mark Journal and the

trade mark authorities will wait for 30 days from the date of publication to note

if any public opposition is raised.

�Certificate of Registration of Trademark

If no objection is filed, or if the objection is dismissed by the Registrar, he shall

enter the trademark in the register and a Registration Certificate shall be

issued.

Note:

�If, a trademark is rejected, then the decision of the Trademark Registry is

appealable to the Intellectual Property Appellate Board.

�A Trademark is valid for ten years,

�It shall be renewed after the expiry of the time period on payment of requisite fees.

Certificate of Registration of Trade Mark, Section 23 (2), Rule 62 (1) of

Trade Mark Act, 1999

Thank you for your kind attention