FAQS-TRADE MARKS

FAQS-TRADE MARKS

A Trade Mark or a brand name is a word, device, logo, sound, smell or a combination thereof that is used to distinguish the goods and services of one manufacturer or service provider from another manufacturer or service provider.
Registering your Trade Mark provides important statutory benefits that enhance any rights you may have acquired under common law through your use of the Trade Mark. A registered Trade Mark gives its proprietor the exclusive right to use the mark in relation to goods and services for which it is registered. A registered proprietor can enforce his rights against any person who uses an identical or deceptively similar mark in connection with the same or similar goods and services by instituting a suit for infringement and recovery of damages. A suit for infringement cannot be instituted for unregistered Trade Marks. The burden of proof on the Plaintiff is much lower in an infringement proceeding than in a passing off action.
Yes. Use of a mark in commerce is not a necessary pre-condition for filing an application for registration of a trademark in India. An application for registration of a mark can be made on 'proposed to be used' basis. It is also not necessary to demonstrate use in commerce prior to registration. However, if a mark is not used for a continuous period of five years and three months after registration, it may become vulnerable to a cancellation action.
We always recommend conducting pre-filing searches in order to ascertain whether any third person(s) has applied for/registered an identical/similar mark to the one you intend to register. Knowing what the landscape looks like prior to filing can be of great assistance in mitigating your risk and strategising on your options. A pre-filing search can help avoid expensive pitfalls later.
Yes. Sound, smell or 3D representation is eligible for registration in India. For registering smell, the exact chemical combination/ formula along with a sample will have to be submitted to the Trade Mark Office. For registering a sound mark, the musical notes of the sound along with a sample of the sound recording will have to be given to the Trade Mark office.
Any person claiming to be the proprietor of a Trade Mark can apply for registration by filing an application in the prescribed form. The application must contain the following elements:
1. The name, address and state of incorporation/nationality of the applicant;
2. A graphical representation of the mark in question along with any claim as to colour , 3D aspects of the mark, description of the mark, etc. if necessary;
3. Specification of the goods/services for which the mark is used/proposed to be used along with the class(es) under which those goods/services fall as per the classification of goods/services provided in the Act;
4. use claim or a statement that the mark is going to be used in future;
5. Address for service in India;
6. If it is a convention application then the details of the priority application must be provided.
The above said points are highlights of the necessary details which must be provided in the new Application.
A Trade Mark application goes through several phases before the mark is finally registered on the Register of Trade Marks. Briefly: 1. Once an application is filed, it is taken on record and assigned a filing number and date. The Registry confirms the filing of new application by issuing a duly endorsed representation sheet with the filing date and number stamped on it. An application for registration of a trade mark can also be filed electronically. 2. Thereafter, the application is examined to determine whether the mark in question is eligible for registration. The Registry issues an examination report that communicates any objection to registration it may have. Within one month from the date of receipt, the Applicant is required to submit reply to the examination report (that may be substantiated with evidence) traversing the Registry's objections. If the examiner is satisfied with the submissions made in the reply to examination report then the mark is allowed to proceed to advertisement stage. Alternatively, a hearing is appointed for the Applicant to make appropriate representation in person. Generally, a single hearing is sufficient for the Registry to either allow the mark to proceed for advertisement or refuse it. However, in some cases, the Registry may appoint two or more hearings before issuing its final decision. 3. If the Applicant's representations are successful then the mark proceeds to advertisement in the Trade Marks Journal where it is open for opposition for a period of four months. Otherwise, the order conveying the Registry's refusal is sent to the Applicant, who may appeal the decision before the Intellectual Property Appellate Board (IPAB). 4. Upon advertisement of the mark, any person may oppose its registration on grounds enumerated in the Trade Marks Act, 1999. Once an opposition is lodged, the Registry must dispose of the opposition judicially before it can take any further action on the application. In case, the opposition is decided in Applicant's favor, then the opposition is dismissed and the mark will proceed to registration. Alternatively, the opposition is sustained and the mark will be refused registration. Either party has the right to appeal the Registry's decision before the IPAB. 5. Once all these stages have been cleared, the Trade Marks Registry issues a registration certificate for the said Trade Mark and the same stands valid for a period of 10 years. Thereafter, it can be renewed further for a period of 10 years at a time.
No. If an Applicant has asked for a hearing, then the application cannot be refused registration without a hearing. As per usual practice, a hearing will be appointed whether or not the Applicant has asked for one, unless the mark is accepted for advertisement.
The Examiner primarily considers whether a mark is liable to be refused registration on absolute grounds and/or relative grounds for refusal as enumerated in Sections 9 and 11 respectively of the Trade Marks Act, 1999.
A mark is liable to be refused registration under section 9 of the Trade Marks Act i.e. absolute grounds of refusal if:
1. It is devoid of distinctive character i.e. incapable of distinguishing the goods of one person from another;
2. It is descriptive i.e. it consists of marks or indications that refer to the kind, character, quality, quantity, intended purpose, Geographical origin, etc of the goods or services for which the mark is sought to be registered;
3. It is/has become common to the Trade or is a part of a customary language provided that if the Applicant establishes that the mark has acquired distinctiveness or has become a well-known mark then it cannot be refused registration.
4. It is of such nature as to deceive or cause confusion;
5. It consists of scandalous or obscene matter, or is liable to hurt religious sentiments;
6. It is an emblem or name whose use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950;1.
7. It is functional in nature i.e. consists of the shape of goods resulting from the nature of the goods themselves, shape that is necessary to obtain a technical result or is a shape that adds value to the goods.
1. The mark is identical/similar to an already existing Trade Mark and/or is to be used in connection with same/similar goods or services and there exists a likelihood of confusion;
2. The mark is identical/similar to an already existing Trade Mark that is a well-known Trade Mark and its use would cause dilution i.e. without due cause would take unfair advantage of or be detrimental to the distinctive character or reputation of the well known Trade Mark;
3. The mark's use is liable to be prevented by the laws of passing off or Copyright;
4. The mark was adopted in bad faith.
There is a statutory presumption of likelihood of confusion on the part of the public if a third party adopts a mark identical to a previously registered Trade Mark in respect of identical goods or services.
After the examination of a mark the application proceeds to advertisement. Once an application is advertised in the Trade Marks Journal it is left open for opposition by third parties for a period of 90 + 30 days. The purpose of advertisement of the Trade Mark in the Trade Marks Journal is twin fold:
1. The advertisement of a mark also gives third parties an opportunity to oppose the application if they believe that the mark is confusingly or identically similar/ identical to their already existing Trade Mark.
2. Also to apprise everyone of the fact that particular marks have applied for registration and members of the Trade and general public is warned not to use similar marks in relation to goods and services.
The filing of an opposition involves the following:
1. Once the opposition is filed it is taken on record and served on the Applicant's representative by the TMO.
2. The Applicant is then required to file a counterstatement within two months of the receipt of the Notice of Opposition from the TMO. Failure to file the counterstatement within the prescribed period will result in an order abandoning the application.
3. The TMO then serves the Counter-statement to the Opponent. The opponent then is required to file his evidence in support of opposition within two months of the receipt of the Counter-statement. This period is extendible by one month on request.
4. Thereafter the Applicant is required to file its evidence within two months of receipt of the Opponent's evidence in support of opposition. This time period is extendible by one month on request.
5. Finally, the Opponent is provided one last opportunity to file evidence in reply within one month of receipt of the Evidence from the Applicant. This time period is also extendible by one month.
6. After this pleadings are complete and the Registrar appoints a hearing for parties to make oral submissions. Post hearing, the Registrar will pass an order on merits.
Once the registration certificate in the mark is generated it remains valid for a period of ten years from the date of original filing of the application for registration of the mark. A registration may be renewed for a further period of ten years. There is no absolute duration for the existence of a Trade Mark registration, and one may maintain a registration for as long as she/he wants by timely renewing it.
Yes, a third party can apply for cancellation/ rectification of a registered mark on the ground of non use of the registered mark, if after five years and three months since the registration of the mark, it has never been used. As per settled law in India, a registered mark has to be used in commerce within five years and three months from the date of registration failing which, the said registered Trade Mark shall be vulnerable to cancellation action by a third party. A rectification application can also filed for cancellation of a registered Trade Mark on the ground of similarity with an earlier mark or registration was obtained by fraud etc.
The principles of Brand Protection form the basis of Trade Mark Law. Maintaining a Trade Marks Journal watch system is important is important for the purpose of awareness regardin any new offending mark that might have been applied for the purpose of registration.
The Patents and Trade Mark Office publishes on an average two journals in a month. It is especially advisable for companies and corporations to maintain a system of journal watch in order to safeguard their interests in their Trade Marks. Further, the party must oppose any mark which is similar or identical to the Trade Mark owned by them within the prescribed time helps in keeping a check on any offending Trade Mark from being registered.
Trade Mark infringement is a violation of the exclusive statutory rights obtained by the proprietor of a registered Trade Mark. Use of the registered Trade Mark without the authorisation of the Trade Mark owner or any licensees (provided that such authorization was within the scope of the license) amounts to infringement. Infringement may also occur when one party, the "infringer", uses a Trade Mark which is identical or confusingly similar to the registered Trade Mark, in relation to products or services which are identical or similar to the products or services which the registration covers.
The owner of the registered Trade Mark is entitled to a permanent injunction and may also seek damages.
Yes a Trade Mark can be assigned /licensed to another person.
Passing off is a common law tort which can be used to enforce unregistered Trade Mark rights. The tort of passing off protects the goodwill of a Trader from a misrepresentation that causes damage to goodwill.

The main essentials of a passing off action are:

Misrepresentation made by a person
Such misrepresentation must be made by a person in the course of his Trade
Such misrepresentation must be made to consumers of goods and services supplied by him.
Such misrepresentation must be made with the intention to injure the business or goodwill of another Trader.
Such misrepresentation causes actual damage to the business or goodwill of the person by whom the action for passing off is brought or will probably be brought in due time.
In Bata India Ltd. Vs. Pyare Lal & Co., AIR 1986 ALL 242; it was held by the the court that whether the misrepresentation by the defendant amounting to passing off is also a question of fact. Each case would therefore depend on its own facts.

The factors to be considered in an action for passing off on the basis of unregistered Trade Mark are as follows:
The nature of the mark i.e., whether the marks are word marks or label marks or composite marks, i.e., both words and labels work.
The degree of resembleness between the marks, phonetically similar and hence similar in idea.
The nature of goods in respect of which they are used as Trade Marks.
The similarity in the nature, character and performance of the goods of the rival Traders.
The class of purchasers who are likely to buy the goods bearing the mark they require, on their education and intelligence and a degree of care they are likelyto exercise in purchasing and/ or using the goods.
The mode of purchasing the goods or placing orders for the goods.
Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
In Mahendra and Mahendra Paper Mills Ltd. vs. Mahindra and Mahindra Ltd., AIR 2002 SC 117; it was held by the court that weightage is to be given to each of the aforesaid factors depending upon facts of each case.
A Trade Mark license is a contract between the proprietor of a Trade Mark and another person establishing conditions to enable that person to use the proprietor's Trade Mark. The duration of the license and its terms of use are defined in the contract. A license does not transfer ownership in any manner.
An assignment of a Trade Mark is a transfer of ownership of the mark. Such transfer may be absolute or partial with/without the goodwill therein.
We assist our clients with the registration and enforcement of their Trade Mark in various countries around the world. We have a very strong network of associates in Nepal, Pakistan, Korea, Bangladesh, China, Sri Lanka, Bhutan and Maldives and provide un-paralleled service in these countries. We also have a wide network of associates we work with in almost every country around the world so we can assist our clients practically anywhere in the world.
Once the registration for a mark is secured we should maintain the same by timely renewing it. A Trade Mark registration in India is valid for a period of ten years from the date of application/registration and can be renewed anytime prior to six months from the expiry date.
Collective mark means a Trade Mark distinguishing the goods and services of members of an association of persons (not being a partnership firm) from those of others. The proprietor of a collective mark is the association of such members. The use of the mark by the members is governed by the regulations framed by the association.
The following are the requirements for filing an application for Collective mark:

The mark should be capable of being represented graphically and should be capable of distinguishing the goods or services of its users (members of the association) from those of others.
It should not be misleading as to its character or significance i.e a collective mark shall not be registered if it is likely to deceive or cause confusion on the part of public, in particular, if it is likely to be taken to be something other than a collective mark then the Registrar may require that the mark in respect of which application is made for registration comprise some indication that it is a collective mark.

Draft regulations governing the application of the mark are required to be submitted along with application for registration of the collective mark. The regulations governing the collective mark should specify and include the following:

The name of the association of persons and their respective office addresses.
The Object of the Association
The conditions for membership and relation of each member with the group.
The persons authorized to use the mark and the nature of the control the applicant exercise over the use of collective mark.
The details of the members
The conditions governing the use of the mark including sanctions against misuse of the mark.
The procedure for dealing with appeals against the use of collective mark
Such other relevant particulars as may be called for by the Registrar.
The Applicant shall also submit to the Registrar along with his application , a statement of case setting out the grounds on which he relies in support of his application.
Certification marks are usually given for compliance with defined standards, but are not confined to any membership. The may be used by anyone who can certify that the products involved meet certain established standards. The most commonly known certification marks may include WOOLmark which certifies that the goods covered by it are made of 100% wool. An important requirement for certification marks is that the entity which applies for registration is considered to be 'competent to certify' the products concerned.

Certification marks may be used together with the individual Trade Mark of the producer of a given product. The label used as a certification mark evidences that the company's products mee the specific standards required for the use of the certification mark.
The following are the requirements for filing an application for Collective mark.

The name and address of the applicant
Clear representation of the mark.
Exact description of goods/ services sought to be certified

A statement to the effect that the Applicant is not carrying any business in the goods or services of the kind for which registration of the said certification Trade Mark is sought. The application for registration of the certification mark will be accompanied by draft regulation in an appropriate form and statement of case. The draft regulation must include the following:

A description of the Applicant.
The nature of Applicants business.
The particulars of Infrastructure like R & D, technical manpower support;
The applicants competence to administer the certification scheme;
The applicants financial arrangement
The characteristic the mark will indicate in the certified goods or in relation to the rendering of certified services.
The manner of monitoring the use of the mark in India; and
Additionally we will require an undertaking from the Applicant that there will be no discrimination of any party if they meet the requirements set down in the regulations.