What is a trademark?
A trademark popularly known as brand name, is a visual symbol in the form of a word or a device or a label applied to the commercial goods or service to enable the consumer public to identify one trader’s goods from similar goods of other traders.
What is a service mark?
Under the Trade and Merchandise Marks Act , 1958 registration of ‘service mark’ is not possible but under the new Trade Marks Act ,1999 registration of ‘service mark’ can be done. Such ‘service mark ‘ can be used as a trade mark but applied to services rather than goods i.e. Banking , Communication ,Education ,Financing ,Insurance ,Chit Funds, Real Estate , Transport , Storage material treatment , Processing , Supply of electrical or other energy , Boarding and Lodging , Entertainment , Amusement , Construction ,Repair , Conveying of news or Information or Information and Advertising.
Whether registration of Trade Mark is compulsory under the Act?
No. Registration of a trade mark is not compulsory. But for better protection it is advisable to register a trade mark.
How to acquire a right of property in a trade mark?
A person may acquire a right of property in a trade mark in the following modes:
a) By use of the mark in relation to particular goods ;or
b) By registration under the Act; or
c) By assignment or transmission of the right from another person
How to file an application for registration ?
1. Registration of a trade mark may be done by filing an application in the prescribed from in FORM TM-1 along with the 10 additional representations (with the prescribed fee) in any one of the five offices of the Trade Marks Registry located at Mumbai (Head Office ) , Chennai , Delhi ,Calcutta and Ahmedabad (Branches ) depending on the jurisdiction where the applicant resides or carries on business.
2. Application number will be allotted to each and every application by Head Registry at Mumbai and this number shall not be mistaken as if the application is accepted or registered .After registration only , it will be called as Registered Number.
How many years will it take for registration of a Trade Mark?
At present it takes five years an average from the date of application .It may be reduced in future due to computerization of the Trade Marks Registry.
Is it necessary to get professional help for registration ?
As registration of trade mark is a specialized area , it may be necessary to employ the services of a trade mark Agent or Attorney .However this is not compulsory.
Whether ‘ user’ is very important in trade mark?
Yes . A trade mark must be used in relation to the goods for which the registration is sought or obtained .If it is not used but merely renewed from time to time , then it will be possible that a mark may be removed on the ground of ‘ non-user’ on a petition filed by any ‘aggrieved person’
Is it possible to file trade mark application on the ground of ‘ proposed to be used ‘ ?
Yes . But the application should have bonafide intention to use the mark at the time of filing the application and further the applicant can claim rights from the date to filing such application.
Is it possible to get registration of a trade mark without any intention to use?
No. It is well established rule of law that to get a trade mark registered without any intention to use it in relation to any goods or services but merely to make money out of it by selling to others the right to use, it would be ” trafficking in trade marks ” .
What is the advantage of ‘prior user ‘ of a trade mark ?
‘Prior user’ of a trade mark is in better position rather than the registered proprietor of a mark. Hence the rule of law is -” priority in adoption and use prevails over priority in registration ” .
Whether the proprietor of an unregistered trade mark can initiate legal action?
Yes. The proprietor of an unregistered mark may bring legal action against the subsequent user by filing a civil suit for ‘ passing off ‘ action on the basis of ‘ prior user ‘. Further he can lodge criminal complaint also under the provisions of the Trademarks Act.
What about the Renewal of a Registered Trade Mark?
A registered trade mark should be renewed for every seven years under the present Act . The period of said seven years will be calculated from the date of filing the application
Will any rights be conferred upon the applicant on mere filing of trade mark application ?
No Mere filing of trade mark application will not confer any rights on the applicant. Proprietary rights over a trade mark can be claimed only by continuous use of the mark.
Whether advertisement is sufficient to establish the ‘User ‘ of a trade mark ?
The advertisement of a mark in any periodical or magazine or in electronic media may be regarded as evidence to establish the ‘prior user’ of a trade mark.
Is it advisable to file trade mark applications in all the 34 classes for a simple mark but used in a particular type of goods?
Normally it is not advisable to file trade mark applications in all the 34 classes,m when you are using the trade mark for particular type of goods on;ly in a specific class.As it is rightly observed by the Supreme Court of India in a case Vishnudas -Vs- Vazir Sultan Tobacco Co Ltd , reported in AIR 1996 SC 2275
i) “…………..if a trader or manufacturer actually trades in or manufactures only one or some of the articles coming under a broad classification and such trader or manufacturer has no bonafide intention to trade in or manufacture other goods or articles which also fall under the said broad classification, such trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles which may come under such broad classifications and by that process preclude the other traders or manufacturers to get registration of separate distinct goods which may also be grouped under the broad classification.
ii) If registration has been given generally in respect of all the articles coming under the broad classifications and if it is established that the trader or manufacturer who such registration had not intended to use any other article except the articles being used by such trader or manufacturer, the registration of such trader is liable to be rectified by limiting the ambit of registration and confining such registration to the specific article or articles which really concern the traders or manufacturer enjoying the registration made in his favour.
iii) In our view ,if rectification in such circumstances is not allowed, the trader or manufacturer by virtue of earlier registration will be permitted to enjoy the mischief of trafficking in trade mark ……”
Therefore with such observation made by the Apex Court , it is crystal clear that a trader or manufacturer cannot be permitted to enjoy monopoly in all the goods mentioned in all the classes in the Fourth Schedule under the Trade Marks Rules ,1959.Under New Trade Marks Act ,1999 a ” well known trade mark ” seems to have been exempted from the said Rule of law laid down by the Apex Court.
What are the different stages involved for obtaining registration of a trade mark?
a) EXAMINATION STAGE :
Application will be examined by the examiner of trade Marks at Mumbai Registry. Examination report will be communicated to each Applicant or Agent or Attorney by quoting objections , if any , for acceptance of the application.
b) ENQUIRY STAGE :
After receipt of Examination Report , a personal hearing may be requested by the applicant in order to overlook the objections by producing documentary evidences during the hearing .Thereafter order will be passed in the application by the registrar.
c) ADVERTISEMENT STAGE :
If the application is found to be acceptable ,then it will be advertised in the Trade Mark Journal (official Gazette of the Trade Marks Registry ) to invite opposition ,if any , from the public within the prescribed period of three months
d) OPPOSITION STAGE: If any).
This stage will arise only in cases when an opposition is filed against the registration of a particular trade mark .If there is no opposition ,then the mark will be registered.