The Law pertaining to Trade Marks in India is governed by Trade Marks Act 1999. The Trade Marks Act 1999 came into operation in India since the year 15th September 2003. Prior to Trade Marks Act 1999, the law pertaining to Trade Mark in India was governed by Trade and Merchandise Marks Act 1958.
A Trade Mark is a mark, which may be in the form of a word, phrase, symbol or design, or combination of words, phrases or symbols .
THE BASIC FUNCTION OF A TRADE MARK
The basic function of Trade Mark is to identify or distinguish the product/services of one person from that of other, during the course of Trade. In other words , the Trade Mark signifies the origin of a product form one individual , during the course of Trade.
WHY OWNER OF A TRADE MARK SHOULD BE VIGILANT ABOUT PROTECTING THE TRADE MARK.
After maintaining the high quality of a product and after investing the huge amount on the advertisement, a Trade Mark got recognition in the Market. Because of the effort of the owner of a Trade Mark, people at large start purchasing a good because of its name. Normally for promoting a Trade Mark in Market lots of effort , resources and skill is required, which a small business do not possess. So in order to make easy money , even the small scale business man tempts to sell their inferior quality products under the well accepted brands . Because of sell of inferior quality products under the accepted Trade Mark/Brand, the reputation of the same badly tarnishes. In most cases , a well known Trade Mark/Brand dies because of piracy/pirated products. Hence it becomes imperative on the part of brand owner to protect their well known Trade Marks/brands against the pirates from getting the goodwill/reputation of the same being damaged/eroded.
HOW A PERSON CAN CLAIM TO BE OWNER OF A TRADE MARK
A person acquire the right in Trade Mark, either by user or by registration. The government of India has provided a machinery for felicitating the registration of a Trade Mark.
HOW THE RIGHTS IN TRADE MARK CAN BE PROTECTED
The owner of a Trade Mark/Brand can seek recourse of either civil remedy or criminal remedy.
CIVIL REMEDY: The owner of a Trade Mark can file a civil Suit , seeking to stop the pirates from using the Trade Mark. In case the Trade Mark is registered , then Suit for infringement can be filed. In case the Trade Mark is not registered, then the common law remedy of passing off , is available. In civil Suits, the local commissioners can be appointed and the counterfeits (fake ) products of the pirates can be seized.
DIFFERENCE BETWEEN THE INFRINGEMENT AND PASSING OFF REMEDY
The Trade Mark owner can sue for infringement of a Trade Mark against the pirated use by the third party, in case the Trade Mark is registered. In case the Trade Mark is not registered , then the Trade Mark owner can sue for the common law remedy of passing off. Infringement is a statutory remedy and passing off is a common law remedy.
CRIMINAL REMEDY: The owner of a Trade Mark can file a criminal complaints against the pirates. In criminal complaints, the search and seizure orders are issued counterfeits (fake) products of the pirates can be seized. The criminal remedy is more effective in nature as because of the same, the pirates may put behind the bars, besides seizure of the fake products.
The punishment for selling/providing services by using a falsified trademark is minimum of six months and maximum of three years. The Court can also impose a fine not less than Rupees fifty thousand, which may be may extend up to Rupees two lakh.
RIGHTS CONFERRED BY REGISTRATION
In case a person gets a Trade Mark registered, then the same get the exclusive right to use the registered Trade Mark in relation to the goods or services in respect of which the trademark is registered. Though registration of a trademark is not compulsory, however it offers better legal protection for action for infringement. On the basis of the registered Trade Mark, the registered proprietor may sue for infringement. In case of unregistered Trade Mark, the owner is having common law remedy of passing off, which is relatively inconvenient remedy. In case of passing off, the owner has to establish prior, continuous user , tremendous goodwill and reputation of the Trade Mark/brand, while in case of infringement, mere production of registration certificate is sufficient. Registration certificate it self is prima facie evidence of its validity and production of the registration certificate is sufficient enough to obtain the injunction order in cases of infringement. This is the reason, why it is always advisable to go for registration.
WHO CAN APLY FOR OBTAINING A TRADE MARK REGISTRATION
Any person, claiming to be owner of a Trade Mark , may file Trade Mark application in relation to good or services.
LOCUS OF TRADE MARK REGISTRY FOR FILING THE TRADE MARK APPLICATION.
The government of India has established five Trade Mark Registry in India, located at Delhi, Mumbai, Kolkatta, Chennai and Ahmedabad. The government of India has conferred upon each registry particular areas in India, and a person carrying out its business activity in that particular area, may apply for registration of Trade Mark in respective Trade Marks Registry.
In case, the principal place of business is outside India, then the it is normal practice that the application can be filed in the Trademark office, under whose jurisdiction the office of the lawyer is situated( by treating the office of advocate as address for service in India).
In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company's favor.
PRECAUTIONS, ADVISABLE TO BE TAKEN, PRIOR TO FILING OF TRADE MARK APPLICATION.
Prior to making an application for registration before the Trade Marks registry, it is advisable to take search report from Trademark office in order to ensure that a same/similar Trade Mark in relation to same/similar goods/service does not exist in the name of other person. Obtaining a search report from the Trade Marks registry also establishes the bonafide and honest adoption of a Trade Mark by the person.
STEPS FOR REGISTRATION OF A TRADE MARK
A person may file Trade Mark application after filing the form TM-1 along with the prescribed fee. The application is filed in triplicate. Along with the form 1, five copies of representation sheet is also required to be filed. In representation sheet name of owner of the Trade Mark, class of the goods, description of the goods, user claimed and nature of business has to be mentioned.
In Trade Marks Act 1999, the legislature has provided for classification system in which goods and services have been grouped into different classes of goods and services. In the earlier act , i.e. Trade and Merchandise Marks Act 1958, the classification for service sector was not there. Now in the Trade Mark Act 1999, the service class has also been taken care of. Depending upon the nature of goods and services, the applicant may choose the respective goods and class.
The registrar of Trade Marks provides the Trade Marks application number.
The Examiner of Trade Mark issues the objection regarding the Trade Mark application filed. Normally a hearing is appointed and the Applicant is granted the opportunity to meet the objection raised by the Examiner of Trade Mark.
In case the Applicant satisfy the Examiner of Trade Mark , then the Trade Mark application is ordered to be advertised in the Trade Mark Journal.
In case some error has been crept in the advertisement of the Trade Mark, then the applicant can get the error in the advertisement amended/corrected. The corrected Trade Mark has to be advertised again , in case the amendment is substantial.
Within 3 months (plus one month extended period) of advertisement of the Trade Mark in Trade Mark Journal (from the time the Trade Mark Journal is made available to the public), any person may file objection to the Trade Mark application filed by the Applicant. The grounds of opposition normally are that the Trade Mark application filed is not distinctive, nor capable of distinguishing the Trade Mark in respect of the goods applied for, or that it is descriptive and has a direct reference to the character and quality of the goods , or that it is similar to earlier existing trade marks, or that the applicant is not the proprietor of the Trade Mark applied for etc. In case the no opposition is filed within the prescribed period, then the Trade Mark application of the Applicant got registered in his favour. In case the Opposition is filed within the stipulated period, ex explained hereinabove, then the following process has to ensue.
After completion of pleading and evidence, a hearing is appointed in the opposition proceeding and either the application is allowed or the application is refused for registration. In the application is allowed then the Trade Mark application of the Applicant gets registered in his name. In case the application is refused, then the Applicant is having liberty to file an appeal against the refusal order before the Intellectual Property Appellate Board.
Before the Intellectual Property Appellate Board, after completion of pleadings and evidence, the judgment is pronounced. In case the appeal of the applicant is allowed then the applicant got its trade mark registered. In case of adverse order, the applicant is having remedy to file appropriate writ petition before the High Court.
THE IMPORTANT TRADE MARKS FORMS
Form TM-1, TM-2, TM-3, TM-8, TM-51 for filing the Trade Mark application, depending upon the nature of the Trade Mark application.
Form TM-5 , for filing Notice of Opposition
Form TM-12 for Renewal of a Registered
Form TM-10 for payment of surcharge for belated renewal of registered Trade Mark.
Form TM-13 for restoration of removed mark
Form TM-26 for filing petition for rectification of a registered trade mark before the Registrar of Trade Mark
Form TM-46 for issuance of Legal proceeding Certificate
Form TM-54 for obtaining Official search request
Form TM-55 for obtaining the Preliminary advise of the Registrar as to the registrability of a Trade Mark
Form TM-60 for obtaining the non objection certificate by Registrar of Trade Mark in relation to a Copyright application filed before the Registrar of Copyright.
DURATION OF A REGISTERED TRADE MARK
Once a Trade Mark got registered, then it remain valid and effective for a period of ten years. The Applicant may get its registered Trade Mark renewed after 10 years after payment of requisite renewal fee. In case the Trade Mark is not renewed within the prescribed time, then the Registrar of Trade Mark may remove the same from the register on account of non payment of the renewal fee.
USE OF SYMBOLS ON THE TRADE MARK , AS PERMISSIBLE BY THE LAW.
An applicant may use the symbol “TM” on the Trade Mark , in case the same file the Trade Mark application and that the same is pending adjudication before the registrar of Trade Mark. In case the Trade Mark application got registered , then the Applicant may use the symbol “R” on the Trade Mark. In case the Applicant has applied for the service mark , then it may use the symbol “SM” on the Trade Mark.
PROTECTION OF USER OF TRADE MARK IN FOREIGN COUNTRIES
In case the Applicant gets the Trade Mark registered in India, then the same gets the exclusive right to use the Trade Mark in India only. In case the Applicant is having user out side of the Indian Territory, then in order the obtain the statutory right in the foreign country, the applicant must have file application for Trade Mark registration in respective foreign country.
By getting the Trade Mark registration in a country, one gets the Trade Marks right in that particular country. Till today there is no any system available across the world that by filing a single Trade Mark application, the Applicant gets the right to protect the Trade Mark internationally. However at some places in the world , the multinational trade mark filing system has been adopted. Foe example, The European Union, comprising of 15 countries, has adopted the Community Trademark system. Another example is The African Organization for Intellectual Property (OAPI), a group of African nations, have also adopted the multinational Trade Mark application filing system, in other words , in these countries the national trademark offices has been replaced by their common trademark office, where by a system has been provided for a single trademark registration to be valid in all of the member countries.