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A trade mark is a visual symbol in the form of a word, a device, or a
label applied to goods with a view to indicate to the purchasing public
that they are the goods manufactured by a
particular company. The value of a trade mark is wholly depends on the usage of it in respect of the category of goods in which it is registered. The more it is used the better protection it will receive. |
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CONTENTS - Application- Examination - Advertisement - Opposition - Registration - Renewal - Infringement - Assignment - Licensed User |
Application for a trade mark can be made at any point of time. The following points
must be considered for making an application.
1. Search should be made to find whether any similar trade mark is already pending
in the Trademarks Registry. Search should be made for each class of goods separately.
3. The period of Use since which the trade mark has been in use should
also be mentioned. If the mark was not used before filing the application, it
is to be mentioned as "Proposed to be used".
4. The Trademarks Registry will allot an application number to the
trade mark. The allotment of number is only provisional. When registered
the application number will become registration number.
5. Where the trade mark applied for is not distinctive the Registrar may require
direct the applicant to convert the application into that of Part B. The difference
between Registration in Part A and and Registration in Part B is that, in an action
for infringement of a trade mark registered in Part B, an injunction or other
relief shall not be granted if the defendant establishes to the satisfaction of
the Court that the use of the mark is not likely to deceive or cause confusion
in the manner laid down therein. That defence is not open to the defendant
when registration is in Part A of the Act.
2. The Class of goods in which the trade mark is to be applied for should
be selected properly. For example Hair Oil falls under Class 3 whereas Edible
Oil Falls under Class 29. Registration in one class does not give right
in other classes. It is advisable to go for registration in more than one class.
6. It is very essential to collect first invoice, publicity materials and other
relevant documents immediately after the launch of product under the applied trade mark.
It helps in defending the trade mark in future.
The application will be examined by the Trademarks registry to find whether any similar mark is already registered or pending. Normally it takes anywhere between 3 to 5 years to register a trade marks. The Registrar may require the applicant to disclaim any words or symbols which are not distinctive. He may also consider it to be associated with any other similar trade mark already registered or applied for by the applicant. Reply to the examination report should be given within 3 months from the date of examination report. Otherwise, the application will be treated as abandoned.
After completion of examination process the Registrar of Trademarks will cause
the trade mark to be published in the Trademarks Journal.
Subscription Trademarks journal can be made before February 28. It comes every fortnight.
The cost is Rs.2400/- including Supplemental Journal.
Any person/Company
can file an opposition to the advertisement within the time prescribed. If no
opposition is filed within the prescribed period the trademark will be registered.
Any person can file an opposition to the application within 3 months from the
date of advertisement. The period may be extended by another 1 month on an
application made in this behalf.
A copy of the opposition will be served on the applicant by the Trademarks Registry.
Counter Statement to the opposition should be filed within 2 months from the date
of receipt of Opposition. This period may be extended by another 1 month on an
application made in this behalf.
A copy of the counter statement will be sent to the Opponents for filing evidence
in the form of an affidavit. The affidavit should be filed within 2 months from
the date of receipt of counter statement. This period may be extended by another
1 month on an application made in this behalf.
A copy of the affidavit will be sent to the applicants for filing evidence in the
form of an affidavit. This should be filed within 2 months from the date of receipt
of affidavit of the opponents. This period may be extended by 1 month on an application
made in this behalf.
The evidence is basically to establish the fact of user claim by both the parties.
This will include Sales figures, Advertisement and Sales Promotion expenses of the goods
in respect of which the trade mark under opposition is applied.
After submission of evidence, hearing will take place before the Registrar
of Trade marks. The Registrar after hearing to the both the parties and on the
basis of evidence submitted allow or reject the opposition.
After completion of all the procedures the Registrar of Trademarks will issue
a certificate of Registration. Initial Registration is valid for a period of
SEVEN years. The registration certificate prima facie evidence of the
ownership of trade mark.
The Registration Certificate cannot be used as an evidence in legal proceedings.
For producing evidence in any legal proceedings, a separate application should
be made to the Trademarks Registry for issue of title to the ownership of trademark
under the seal of the Trademarks Registry.
A registered trade mark is initially valid for a period of 7 years. After whcih
it can be renewed for a further period of 7 years. There is no limit as to the
number of renewals. Thus a trade mark can be renewed any number of times.
Application for renewal should be made atleast 6 months before the trade mark is
due for renewal. If the trade mark is not renewed the Trade marks Registry may
remove it from the Register. In such case application for restoration can be made
for revival of the trade mark. However, such an application can be made within One
year from the date of removal of the trade mark.
Where any person other the owner of a trade mark applies the same or similar
mark in respect of same category of goods in which the trade mark is registered
the owner of trade mark or the registered user can take both civil and criminal
action against the infringer.
The right under criminal is available only when the mark is registered. If there
is an infringement of an unregistered mark action will lie under Common Law as a
suit for passing off.
A Registered trade mark can be assigned to any person by an instrument in writing signed
by the owner of the trade mark and the purchaser.
It can be with or without the good will of the business. Where it is without good will
the trade mark can be assigned only with any other trade mark in the SAME CLASS (not other classes even if it
is regsitered). In such cases, the assignment deed should be filed within 18 months from the date of execution.
The owner of a trade mark may licence to any person by an instrument in writing.
The mark may be a registered or unregistered. The licence can be in respect of
only a limited number of goods or in respect of any specified area.
The Act provides for registration of licensed user agreement with the Central
Government. This provision is optional and need not be exercised. The advantage
being, the Registered User can initiate any infringement action where as
a licensed user cannot.
