A trade mark (popularly
known as brand name) in laymans language is a visual
symbol which may be a word signature,
name, device, label, numerals or
combination of colours 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:
v The selected mark should be capable
of being represented graphically (that is in the paper form).
v It should be capable of
distinguishing the goods or services of one undertaking from those of others.
v 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.
·
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.
Under modern business condition a
trade mark performs four functions
Ø It identifies the goods / or
services and its origin.
Ø It guarantees its unchanged quality
Ø It advertises the goods/services
Ø It creates an image for the goods/
services.
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 th appropriate office.
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.
-
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.
7. What
purpose the trade mark system serves ?
Ø It identifies the actual physical
origin of goods and services. The brand itself is the seal of authenticity.
Ø It guarantees the identity of the
origin of goods and services.
Ø It stimulates further purchase.
Ø It serves as a badge of loyalty and
affiliation.
Ø It may enable consumer to make a
life style or fashion statement.
8. Who benefits from a
trade mark?
The Regd.Proprietor: The Regd.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 a 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 para legal 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.
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.
transaction ?
Ans:
ü 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.
ü To file a Notice of Opposition to
oppose an application published in the Trade Marks Journal (FormTM-5). Fees:Rs.2,500/-
ü For Renewal of a Regd.trade
mark (Form TM-12 ).
Fees: Rs.5,000/-
ü Surcharge for belated renewal (Form
-10).Fees:Rs.3,000/-
ü Restoration of removed mark (Form TM-13) Fees:5,000/-
ü Application for rectification of a
registered trade mark (Form TM-26)
Fees:Rs.3,000/-
ü Legal Certificate (Form TM-46)
(Providing details of
entries in the Register) Fees:Rs.500/-
ü Official search request (Form TM-54). Fees:Rs.500/-
ü Preliminary advise of the Registrar
as to the registrability of a mark(Form TM-55).Fees: Rs.500/-.
ü Copyright search request and issuance of certificate (Form TM-60) Fees: Rs,5,000/-.
11. What
are the sources of trade
mark laws?
Ans: (1) The national statue i.e., the Trade
Marks Act,1999 and rules thereunder
.
(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.
12. What does the Register
of trade mark contain ?
Ans: The register of trade mark
currently maintained in electronic form contains interalia
the trade mark the class and 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.
13. Can any correction be
made in the
application or register?
Ans: 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.
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?