Intellectual Property Rights

Chapter - 4

Trademark - Introduction

Different kinds of marks

Non Registrable Trademarks

Registration of Trademarks

Rights of holder

Assignment and licensing of marks

Infringement, Remedies & Penalties

Trademarks registry and appellate board

What we are going to discuss

Trademark - Introduction

A trademark is a mark which is unique, distinctive, made up of

names, symbols, signs etc., and capable of distinguishing one

product from another used by manufacturer or vendor

in connection with a product or service

Term of protection of a trademark is ten years, which may

be renewed for a further period of ten years on payment of

prescribed renewal fees

Examples

1860

1940

Development of Trademark law in India

India's statutory Trademarks Law

Indian Trademarks Act in corresponded

with the English Trademarks Act

1999

Trademark and Merchandise Act

Trademark Act

1958

Amendment : 2010

Different kinds of marks

SERVICE MARK COLLECTIVE MARK

CERTIFICATION MARK

TRADE DRESS

A service Mark is any word, name, symbol, device, or any

combination used or intended to be used in commerce to identify and

distinguish the services of one provider by others and to indicate the

source of services

Service Mark

Service Marks do not cover physical goods but only the provision of

services

It plays a crucial role in referring to a particular quality or standard

for which the service mark is used and for marketing, promoting and

sales of a product or service

Examples for Service Mark

Collective Mark

A collective Mark is one used by members of a cooperative

association, union or other collective group or other group or

organization to identify source of the goods or services.

1. Collective Membership Mark: These marks are not used to indicate

source of goods or services, but they indicate that the seller is part of a

defined group

2. Collective Trademarks and Collective Service marks: These are used

to indicate the source. Such collective marks are used by a group to

indicate that the goods or services offered by each individual member of

the group are products or services of the collective

Examples for Collective Mark

Certification Mark

A certification Mark is a mark which indicates that certain qualities of

goods or services in connection with which the mark are used is

certified.

An important requirement for registration of certification mark is that

entity which applies for registration is competent to certify the

products concerned

Thus, owner of certification mark must be representative of products

to which certification mark applies

Examples for Certification Mark

Trade Dress

Trade dress refers to combination of elements that make up the look,

feel, or environment of a product or business; the term can refer to

individual elements of a product or business image as well as to the

image the combination of those elements creates as a whole

Trade Dress may include a few important features like Packaging,

Size, Shape, Colour, Colour Combination, Texture, Graphics Design,

Placement of words and decorations on a product and Particular Sale

Technique

Examples for Trade dress

It is of such nature as to deceive the public or cause confusion

It contains or comprises of any matter likely to hurt the religious susceptibilities of any class of section of the citizens of India

It comprises or contains scandalous or obscene matter

Its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).

Non-registerable Trademarks

EXCLUSIVELY OF THE SHAPE OF GOODS WHICH RESULTS FROM THE NATURE OF

THE GOODS THEMSELVES

THE SHAPE OF GOOD WHICH IS NECESSARY TO OBTAIN A TECHNICAL RESULT

THE SHAPE WHICH GIVES SUBSTANTIAL VALUE OF THE GOODS

Non-registerable Trademarks

Procedure for registration of Trademark

Any person claiming to be the proprietor of a trade mark used or

proposed to be used, who is desirous of registering it, shall apply in

writing to the Registrar in the prescribed manner for the registration of

trade mark

A single application may be made for registration of a trade mark for

different classes of goods and services and fee payable therefore

shall be in respect of each such class of goods or services

Every application shall be filed in the office of the Trade Mark

Registry within whose territorial limits the principal place of business

in India

Filing of Application

Examination

of Application

Publication in Trademark

Journal

Registration

Approved

1

2

3

4

Trademark Registration Process

Registration of a trade mark could be completed within twelve months from the date of application

Form TM-A

The Protocol allows you to obtain and

maintain protection for your brand around

the world

Single Filing to seek protection in various

Territories

Centralized Management of

your Trade Marks

Madrid Protocol

File International Application form

(MM2) through online

Certification by India TM Registry

Registration of Trademarks - International

• National of India

• Natural person or legal entity domiciled in

India

• “Basic mark” in India

Check • The applicant details• Mark in application is identical to basic mark• Goods and services are covered by those basic

mark

Transmission of International

Application

International Trademark Registration

ISSUE OF INTERNATIONAL REGISTRATION CERTIFICATE

Amount of fee in Swiss Francs pay directly to WIPO

Publish the international registration in the WIPO

Gazette of International Marks

Notify it to the Offices of the designated

Contracting Parties (DCPs)

Assignment of Trademarks

Assignment is the transfer of ownership which simply means any act

of parties by which interest or rights associated with property of any

kind can be transferred from one party to another party

Trade mark can be assignable or transmissible by three Modes

• By legal operation

• Inheritance

• Giving authority to other party

The assignee will become the subsequent proprietor of the trademark

assigned whether in part or in full based on the conditions agreed

between the parties

Transfer of Trademark along with goodwill

All the rights vested in trademark with rights

to use, sell, assign, transfer, modify, delete or

stop such or any kind of products or services

in respect of that trademark are completely

transferred to assignee with no reservation

Transfer of Trademark without goodwill

Assignor has reserved their rights in respect of such trademark in

particular goods or services & has not absolutely transferred the

trademark in all goods or services. This means that assignor & assignee

both can use the same trademark but in dissimilar goods or services

The licensee of a trademark will enjoy the same rights as that enjoyed by a registered trademark proprietor.

Thus, the benefit of use of the mark by an unregistered user also accrues to the registered proprietor

License of Trademarks

Franchise of Trademarks

Right to sell goods/services supplied by seller with the usage of trademark and also franchiser teaches entire business format

Trademark Infringement

A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade

• which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered

• cause confusion on the part of the public

• use as their trade name or part of their trade name, or name is their business concern or part of the name, of their business concern dealing in goods or services

• used for labeling or packaging goods, as a business paper, or for advertising goods or services

Examples

1. Interim Injunctions - During the pendency of the case before

a full-fledged trial

2. Permanent Injunctions - Full-fledged trial

Remedies

The penalty that a court may grant in any suit for infringement for

applying false trademarks, trade descriptions includes an injunction and

at the option of Plantiff, either damages or an account of profits

Penalties

Enhanced penalty on second or subsequent conviction

• Imprisonment for a term of one year may extend to 3 years

• Fine of one lakh rupees may extend to two lakh rupees

Registrar of Trademark and Trademark Registry

Trademark Registry contains Names, addresses and description of the proprietors, notifications of assignment and transmissions, the name, addresses and description of registered users, conditions, limitations and such other matters relating to registered trade mark

There shall be kept at each branch office of the Trade Marks Registry

The Register shall be kept under the control and management of the Registrar

The Appellate Board shall consist of a Chairman, Vice –Chairman and such number of other Members, as the Central Government may, deem fit and the jurisdiction, powers and authority of the Appellate Board may be exercised by Benches

A bench shall consist of one Judicial Member and one Technical Member and shall sit at such place as the Central Government may, by notification in the Official Gazette

Intellectual Property Appellate Board

(15th September 2003)

Links for Reference

World Intellectual Property Organisation

https://www.wipo.int/trademarks/en/

Controller General of Patents, Designs and Trademarks

http://www.ipindia.nic.in/trade-marks.htm

Cell for IPR promotion and Management (CIPAM)

http://cipam.gov.in/know-your-ip-2/trademark/

To know more...

Visit : http://www.bdu.ac.in/cells/ipr/

E-Books on IPR :

http://www.bdu.ac.in/cells/ipr/docs/ipr-tamil-ebook.pdf (Tamil)

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E-mail: iprcell@bdu.ac.in

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