Intellectual Property Rights
Chapter - 4
What we are going to discuss
Trademark - Introduction
Different kinds of marks
Non Registrable Trademarks
Registration of Trademarks
Rights of holder
Assignment and licensing of marks
Infringement, Remedies & Penalties
Trademarks registry and appellate board
Trademark - Introduction
A trademark is a mark which is unique, distinctive, made up of
names, symbols, signs etc., and capable of distinguishing one
product from another used by manufacturer or vendor
in connection with a product or service
Term of protection of a trademark is ten years, which may
be renewed for a further period of ten years on payment of
prescribed renewal fees
Examples
Development of Trademark law in India
India's statutory Trademarks Law
1860
1940 Indian Trademarks Act in corresponded
with the English Trademarks Act
Trademark and Merchandise Act
1958
1999 Trademark Act
Amendment : 2010
Different kinds of marks
SERVICE MARK COLLECTIVE CERTIFICATION TRADE DRESS
MARK MARK
Service Mark
A service Mark is any word, name, symbol, device, or any
combination used or intended to be used in commerce to identify and
distinguish the services of one provider by others and to indicate the
source of services
Service Marks do not cover physical goods but only the provision of
services
It plays a crucial role in referring to a particular quality or standard
for which the service mark is used and for marketing, promoting and
sales of a product or service
Examples for Service Mark
Collective Mark
A collective Mark is one used by members of a cooperative
association, union or other collective group or other group or
organization to identify source of the goods or services.
1. Collective Membership Mark: These marks are not used to indicate
source of goods or services, but they indicate that the seller is part of a
defined group
2. Collective Trademarks and Collective Service marks: These are used
to indicate the source. Such collective marks are used by a group to
indicate that the goods or services offered by each individual member of
the group are products or services of the collective
Examples for Collective Mark
Certification Mark
A certification Mark is a mark which indicates that certain qualities of
goods or services in connection with which the mark are used is
certified.
An important requirement for registration of certification mark is that
entity which applies for registration is competent to certify the
products concerned
Thus, owner of certification mark must be representative of products
to which certification mark applies
Examples for Certification Mark
Trade Dress
Trade dress refers to combination of elements that make up the look,
feel, or environment of a product or business; the term can refer to
individual elements of a product or business image as well as to the
image the combination of those elements creates as a whole
Trade Dress may include a few important features like Packaging,
Size, Shape, Colour, Colour Combination, Texture, Graphics Design,
Placement of words and decorations on a product and Particular Sale
Technique
Examples for Trade dress
Non-registerable Trademarks
It contains or comprises of any
It is of such nature as to deceive matter likely to hurt the religious
the public or cause confusion susceptibilities of any class of
section of the citizens of India
Its use is prohibited under the
It comprises or contains Emblems and Names (Prevention
scandalous or obscene matter of Improper Use) Act, 1950 (12 of
1950).
Non-registerable Trademarks
EXCLUSIVELY OF THE SHAPE OF GOODS THE SHAPE OF GOOD WHICH IS NECESSARY THE SHAPE WHICH GIVES SUBSTANTIAL
WHICH RESULTS FROM THE NATURE OF TO OBTAIN A TECHNICAL RESULT VALUE OF THE GOODS
THE GOODS THEMSELVES
Procedure for registration of Trademark
Any person claiming to be the proprietor of a trade mark used or
proposed to be used, who is desirous of registering it, shall apply in
writing to the Registrar in the prescribed manner for the registration of
trade mark
A single application may be made for registration of a trade mark for
different classes of goods and services and fee payable therefore
shall be in respect of each such class of goods or services
Every application shall be filed in the office of the Trade Mark
Registry within whose territorial limits the principal place of business
in India
Trademark Registration Process
Registration of a trade mark could be completed within twelve months from the date of application
Publication in Trademark
Filing of Application Journal
1 3
Form TM-A 4
2
Examination
of Application
Registration
Approved
Madrid Protocol
The Protocol allows
you to obtain and Single Filing to seek Centralized
maintain protection protection in various Management of
for your brand around Territories your Trade Marks
the world
Registration of Trademarks - International
• National of India
File International Application form • Natural person or legal entity domiciled in
(MM2) through online India
• “Basic mark” in India
Check
• The applicant details
• Mark in application is identical to basic mark
• Goods and services are covered by those basic
mark
Certification by India TM Registry
Transmission of International Amount of fee in Swiss Francs pay directly to WIPO
Application
Publish the international registration in the WIPO
Gazette of International Marks
International Trademark Registration
Notify it to the Offices of the designated
Contracting Parties (DCPs)
ISSUE OF INTERNATIONAL REGISTRATION CERTIFICATE
Assignment of Trademarks
Assignment is the transfer of ownership which simply means any act
of parties by which interest or rights associated with property of any
kind can be transferred from one party to another party
The assignee will become the subsequent proprietor of the trademark
assigned whether in part or in full based on the conditions agreed
between the parties
Trade mark can be assignable or transmissible by three Modes
• By legal operation
• Inheritance
• Giving authority to other party
Transfer of Trademark along with goodwill
All the rights vested in trademark with rights
to use, sell, assign, transfer, modify, delete or
stop such or any kind of products or services
in respect of that trademark are completely
transferred to assignee with no reservation
Transfer of Trademark without goodwill
Assignor has reserved their rights in respect of such trademark in
particular goods or services & has not absolutely transferred the
trademark in all goods or services. This means that assignor & assignee
both can use the same trademark but in dissimilar goods or services
License of Trademarks
The licensee of a trademark will enjoy
the same rights as that enjoyed by a
registered trademark proprietor.
Thus, the benefit of use of the mark by
an unregistered user also accrues to the
registered proprietor
Franchise of Trademarks
Right to sell goods/services supplied by seller with the usage of
trademark and also franchiser teaches entire business format
Trademark Infringement
A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of
trade
• which is identical with, or deceptively similar to, the trade mark in
relation to goods or services in respect of which the trade mark is
registered
• cause confusion on the part of the public
• use as their trade name or part of their trade name, or name is their
business concern or part of the name, of their business concern dealing
in goods or services
• used for labeling or packaging goods, as a business paper, or for
advertising goods or services
Examples
Remedies
1. Interim Injunctions - During the pendency of the case before
a full-fledged trial
2. Permanent Injunctions - Full-fledged trial
Penalties
The penalty that a court may grant in any suit for infringement for
applying false trademarks, trade descriptions includes an injunction and
at the option of Plantiff, either damages or an account of profits
Enhanced penalty on second or subsequent conviction
• Imprisonment for a term of one year may extend to 3 years
• Fine of one lakh rupees may extend to two lakh rupees
Trademark Registry contains Names, addresses and description of the
proprietors, notifications of assignment and transmissions, the name, addresses and
description of registered users, conditions, limitations and such other matters relating to
registered trade mark
There shall be kept at each branch office of the Trade Marks Registry
The Register shall be kept under the control and management of the Registrar
Registrar of Trademark and Trademark Registry
Intellectual Property Appellate Board
(15th September 2003)
The Appellate Board shall consist of a Chairman, Vice –Chairman and such
number of other Members, as the Central Government may, deem fit and the
jurisdiction, powers and authority of the Appellate Board may be exercised by
Benches
A bench shall consist of one Judicial Member and one Technical Member and
shall sit at such place as the Central Government may, by notification in the
Official Gazette
Links for Reference
World Intellectual Property Organisation
https://www.wipo.int/trademarks/en/
Controller General of Patents, Designs and Trademarks
http://www.ipindia.nic.in/trade-marks.htm
Cell for IPR promotion and Management (CIPAM)
http://cipam.gov.in/know-your-ip-2/trademark/
To know more...
Visit : http://www.bdu.ac.in/cells/ipr/
E-Books on IPR :
http://www.bdu.ac.in/cells/ipr/docs/ipr-tamil-ebook.pdf (Tamil)
http://www.bdu.ac.in/cells/ipr/docs/ipr-eng-ebook.pdf (English)
E-mail: iprcell@bdu.ac.in
Thanks for your Participation
