TRADE MARK - What is it?

The Definition under the TRADE & MERCHANDISE MARKS ACT, 1958

"Mark" includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof; A trade mark would represent a mark used or proposed to be used in relation to goods [#] for the purpose of indicating or so as to indicate a connection in the course of trade or business between the goods and some person having the right to use the mark whether with or without any indication of the identity of that person.

[#] service marks are not registerable under the present Act in force.

REGISTERABLE TRADEMARKS:

The Provisions of the TRADE & MERCHANDISE MARKS ACT, 1958

Requisites for registration in Parts A # and B@ of the Register.

A trade mark shall not be registered in Part A# of the register unless it contains or consists of at least one of the following essential particulars, namely,-

a] the name of a company, individual or firm represented
    in a special or particular manner; the signature of the
    applicant for registration or some predecessor in his
    business;
b] one or more invented words;
c] one or more words having no direct reference to the
    character or quality of the goods and not being,
    name or a according to its ordinary signification a
    geographical surname or a personal name or any
    common abbreviation thereof or the name of a sect,
    caste or tribe in India;
d] any other distinctive mark.
e] A name, signature or word, other than such as fall
    within the descriptions in clauses (a), (b), (c) and (d) of
    sub-section (1) shall not be registerable in Part A# of
    the register except upon evidence of its distinctiveness.

For the purposes of this Act, the expression "distinctive" in relation to the goods in respect of which a trade mark is proposed to be registered, means adapted to distinguish goods with which the proprietor of the trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration.

A trade mark shall not be registered in Part B@ of the register unless the trade mark in relation to the goods in respect of which it is proposed to be registered is distinctive, or is not distinctive but is capable of distinguishing goods with which the proprietor of a trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists, either generally or, where the trade mark is proposed to be registered subject to limitations, in relation to use within the extent of the registration.

In determining whether a trade mark is distinctive or is capable of distinguishing as aforesaid, the tribunal may have regard to the extent to which- a trade mark is inherently distinctive or is inherently capable of distinguishing as aforesaid; and by reason of the use of the trade mark or of any other circumstances, the trade mark is in fact so adapted to distinguish or is in fact capable of distinguishing as aforesaid.

Subject to the other provisions of this section, a trade mark in respect of any goods- registered in Part A# of the register may be registered in Part B@ of the register; and registered in Part B@ of the register may be registered in Part A# of the register; in the name of the same proprietor of the same trade mark or any part or parts thereof.

Thus a trade mark ought to consist of at least one of the following
a. the name of a company, individual or firm represented
    in a particular or special manner;
b. one or more words bearing no direct reference to the
    character or quality of the goods and not being
    according to its ordinary signification a geographical
    or a surname or a personal name or any common
    abbreviation name thereof or the name of a sect, caste
    or tribe in India;
c. one or more invented words;
d. the signature of the applicant for registration;
e. a trade mark which has acquired distinctiveness by
    reason of usage
f. any other distinctive trade mark;

# @ The benefits conferred to #Part A & @Part B registration are almost the same. Part A registration has better protection in an infringement/cancellation actions. Whereas Part B registration is weaker especially in a Cancellation action.

TRADE MARKS THAT OUGHT TO BE AVOIDED:

Provisions of The Trade & Merchandise Marks Act, 1958

Prohibition of registration of certain marks.

A mark-

the use of which would be likely to deceive or cause confusion; or the use of which could be contrary to any law for the time being in force; or which comprises or contains scandalous or obscene matter; or which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or which would otherwise be disentitled to protection in a court; shall not be registered as a trade mark.

No trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods.

Thus

a] Trade marks which are identical
    to or deceptively similar to a trade mark which is
    already registered or has already been applied for in
    the name of a different proprietor in respect of the
    same goods or description of goods;

b] trade mark

i. the use of which would be likely to deceive or cause
   confusion;
ii. the use of which would be contrary to any law for the
    time being in force;
iii. which comprises or contains scandalous or obscene
    matter;
iv. which comprises or contains any matter likely to hurt
    the religions susceptibilities of any class or section of
    the citizens of India; are not registerable & ought to be
    avoided

Once the mark is registered the registered proprietor thereof has the exclusive right to the use of trade mark in relation to the goods in respect of which the trade mark is registered implying that the registration gives the proprietor statutory right to stop any misuse by an action of infringement. It may be noted that the Indian Law takes into account either the Use of the mark or "proposed to be use" connotation while accepting the application for registration Proprietorship of a trade mark, therefore, can be claimed by its registration or by reason of its use.

Thus even assuming the mark is not registered a common law right by use emanates in favour of the User. This Common law right is protected against misuse by a passing off action. This action is also generally combined with an infringement action. Generally the principle followed in a passing off action to ascertain the proprietor of a mar is "Who hit the market first" with perhaps the exclusion of World Renowned / Famous Trademarks where the adopter/copier of the same can be restrained and has been restrained by the Courts in India, even in case of goods which are substantially different or unconnected in the course of trade. A passing off action can also be initiated to restrain a user of a registered trade mark.

The Indian Statute also provides for recordal of Licensees as Registered users of the Registered Trademarks. At the present there is no provisions for recordal of Licensee as users of an unregistered trademark. However, an unregistered trademark can be validly licensed subject to the Licensee conforming to standards of quality and acknowledges wherever use of the mark occurs that the Licensor is the proprietor & the use is by way of License.

The Indian Statute provides for Criminal prosecution too when a person falsifies a trademark.

Although not stringent, the same has a deterrent effect.

THE CHRONOLOGY OF THE EVENTS, SUBSEQUENT TO AN APPLICATION:

A] Examination of Trade Mark Official Report issued.
     Objections raised by the Registrar or Acceptance.
     Period take upwards 4 years from the filing date.
B] Complying with the objections in the examination
     report. In the event of acceptance the mark proceeds
     to advertisement in the Trade Marks Journal. In the
     event of objections being raised arguments in writing to
     be presented to the Registrar. Based on the same the
     Registrar can accept the application or fix a hearing.
     Generally the Registrar tends to accept applications
     amendments or restrictions. In the event of acceptance
     with the mark proceeds to advertisement in the
    Trade Marks Journal. In the alternative the Registrar can
     refuse registration in which event written grounds
     can be called for & an Appeal to the High Court
     can be filed.
C] Assuming acceptance. The mark is advertised in The
     Trade Marks Journal. This would ordinarily take 3
     months to a year from the acceptance.
D] On the physical advertisement of the mark in the
     Trade Marks Journal the same is open to opposition by a
     third party for a period of three months extendible
     on application by a month.
E] In the event an Opposition is filed the same takes the
     form of a Civil litigation & statement evidence by way
     of declarations & affidavits are required to be filed
     before a hearing is fixed. This entire process would
     delay the application for a period in excess of 2-3
     years. The final order passed by the Registrar is
     Appealable to the High Court with possibility of further
     appeals to a Division Bench of the same Court &
     thereafter to the Supreme Court. The time frame in
     such case is unpredictable.
F] In the event of there being no Opposition after
     advertisement the mark proceeds to registration & the
     registration Certificate is issued which would take
     about 6 months to come to hand.
G] A registration is valid for 7 years & is renewable every
     7 years. The date of Application is the Date Of
     Registration.
H] There are provisions under the Indian Statute for
     removal of Marks from the Register for Non Payment
     of Renewal Fees as well as for non user for a period
     of 5 years & one month etc. which provisions will be
     elaborated on request.

REQUIREMENTS FOR FILING AN APPLICATION:-

1) Full Name, address, nationality (state or country of
     incorporation) of Applicant. In the event of the
     Applicant being a partnership or a proprietary firm
     complete details of the partners or proprietor with their
     residential address.

2) List of goods & international class if known.

3) Details of Mark or 30 labels if device mark/logo per
     class. Copies can be created on request.

4) Trade description of Applicant viz.
     Trader/Manufacturer/Merchant/Publisher etc.

5) Date of first use in India or whether mark is 'proposed
     to be used'. In the event mark is used by exporting
     from India of products marked with the mark or export
     to Embassies or Duty Free shops or Bonded Warehouses
     etc. in India the first date of use supported with
     documents may be mentioned.
     [ Documents need not be filed & can follow
     subsequently].

6) Power of Authority. Format will be furnished on request.
     The Power can be filed at a later date.

7) Details of Foreign Registrations especially in U K /
     Europe/ USA. This is not required at the time of filing
     & can follow subsequently.

8) Any Documents other than in English ought to be
     translated before despatch to us.