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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