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Trademark Law

 

Sometimes a brand name can be more valuable than the actual product the brand name refers to. Inexperienced entrepreneurs often overlook the importance of properly securing rights to their business and product names until it is too late. Unfortunately, mistakes at these early stages of choosing and protecting names can end up being very costly.

We at Marks & Rights specialize in obtaining, maintaining, and litigating trademarks in India and abroad. When a client desires to use and/or register a new company or product name or brand identity in India, we assist in evaluating the registrability of the mark as well as the potential risk involved using that mark. We also provide trademark search service, as well as offer professional opinion on other relevant issues.
 

Click here to request more information regarding Trademark Law

 

FREQUENTLY ASKED QUESTIONS

This FAQ contains the following questions and answers:

1.   What is a trade mark?
2.   How to select a trade mark?
3.   What is the function of a trade mark?
4.   Who can apply for a trade mark and how?
5.   How to apply for a trade mark in respect of particular goods or services?
6.   What are different types of trade marks available for adoption?
7.   What purpose the trade mark system serves?
8.   Who benefits from a trade mark?
9.   What are the benefits of registering a trade mark?
10. What are the formalities and Government Fees for major trademark

      transactions?
11. What are the sources of trade mark laws?
12. What does the Register of trade mark contain?
13. Can any correction be made in the application or Register?
14. Can a registered trade mark be removed from the register?
 

 

1. What is a trade mark?

A trade mark (popularly known as brand name) in layman's language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colors used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking.

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

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 of indicating or so as to indicate a connection in the course of

   trade between the goods or services and some person have the right to use the

   mark with or without identity of that person.
 

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2. How to select a trade mark?

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 to ascertain if same/similar mark is

   used in market.
 

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3. What is the function of a trade mark?

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.


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4. Who can apply for a trade mark and how?

Any person claiming to be the proprietor of a trade mark used or proposed to be used by him may apply in writing in prescribed manner for registration. The application should contain the trade mark, the goods/services, name and address of applicant and agent (if any) with power of attorney, period of use of the mark and signature. The application should be in English or Hindi. It should be filed at the appropriate office.
 

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5. How to apply for a trade mark in respect of particular goods or

    services?

It is provided under the Trade Marks Act, 1999 that goods and services are classified according to the International Classification of goods and services. Currently schedule IV of the Act 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 Act is annexed at the end of this questionnaire on trade marks. For detailed description of other goods and services please refer to the International Classification published by WIPO or contact the local office for assistance.

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6. What are different types of trade marks available for adoption?

Any name (including personal or surname of the applicant or predecessor in

   business or the signature of the 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 the character 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 Act 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.
 

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7. What purpose the trade mark 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.
 

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8. Who benefits from a trade mark?

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 labels.
The Government: The Trade Marks Registry is expected to earn revenue of nearly Rs.40 crores during the current year and which is perpetually on the rise.

The Legal professionals: The Trade Marks Registration system is driven by professionals and legal and paralegal advisors (Agents) who act for the clients in the processing of the trade marks application.

The Purchaser and ultimately Consumers of trade marks goods and services.
 

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9. What are the benefits of registering a trade mark?

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 which the 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 special circumstances such exclusive right does not operate against each other.
 

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10. What are the formalities and Government Fees for major trade mark

       transaction ?

For filing new applications there are prescribed forms depending on the nature
of application such as Form TM-1, TM-2, TM-3, TM-8, TM-51 etc.
Fees: Rs.2,500/-

To file a Notice of Opposition to oppose an application published in the Trade

    Marks Journal (FormTM-5). Fees:Rs.2,500/-
For Renewal of a Registered Trade Mark (Form TM-12). Fees: Rs.5,000/-
Surcharge for belated renewal (Form -10).Fees:Rs.3,000/-
Restoration of removed mark (Form TM-13) Fees:5,000/-
Application for rectification of a registered trade mark (Form TM-26)

    Fees:Rs.3,000/-
Legal Certificate (Form TM-46)
   (Providing details of entries in the Register) Fees:Rs.500/-
Official search request (Form TM-54). Fees:Rs.500/-
Preliminary advise of the Registrar as to the registrability of a mark

   (Form TM-  55).Fees: Rs.500/-.
Copyright search request and issuance of certificate (Form TM-60)

   Fees: Rs. 5,000/-
 

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11. What are the sources of trade mark laws?

(1) The national statue i.e., the Trade Marks Act,1999 and rules 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.
 

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12. What does the Register of trade mark contain?

The register of trade mark currently maintained in electronic form contains, inter alia, the trade mark and the class of goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred; the address of the proprietors; particulars of trade or other 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.
 

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13. Can any correction be made in the application or Register?

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

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14. Can a registered trade mark be removed from the register?

Yes. 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 a registered trade mark.
 

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Marks & Rights

Marks & Rights (Attorneys and Legal Consultants)

India Office

42/2421, Thaliyath Buildings,
St. Benedict Road, Kacheripady,

Kochi, Kerala, India.Tel: +91-484-2395676, 2398676

E Mail: info@marksandrights.in

United Kingdom Office

N Ramdas , MA, MPhil, LLM, MCIArb,

Advocate (Supreme Court of India), Solicitor (England & Wales)

3 Brookfield Court, Woodside Grange Road, London N12 8TW

E-mail: nramdas@marksandrights.in

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