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Trademark

What is Trade Mark?

Trade Mark is a mark or symbol used by a trader in association with specific goods manufactured and or sold; mark may be a symbol of reputation of some kind in the goods for its origin or quality or both.
The Brand name, Label or Logo of a company can be registered as a Trade Mark. Once it is registered then it is protected against misuse by the third parties. The Registered Trade Mark is a valuable property, which can be transferred or sold or licensed to third parties.
In India, The Trade Marks Act, 1999 governs this and the law encourages registration of Trade Marks, as registration confers on the owner an exclusive right to use the mark

 

What is Service Mark?

The Trade Marks Act provided the facility to register marks for services as well as goods. " Services " has been defined to mean a service of any description which is made available to potential users and includes the provision of services in connection with the business in any industrial or commercial matter, such as banking, communication, education, finance, insurance, real estate, transport, storage, material treatment, processing, supply of energy, lodging, entertainment, construction, repair, conveyance of news and advertising.

What is a good Trade Mark?

 

Any Device or Word, which has no direct reference to the quality or character of the goods or services.Invented words or original artistic devices are very good Trade Marks. The best marks are invented words, non-descriptive words and distinctive devices.The Trade Mark should be capable of being registered. 

 

What Trade Marks are not registrable?

No Trade Mark shall be registered in respect of any goods, descriptive of goods or services which is identical with or deceptively similar to a Trade Mark which is already registered. Descriptive words, surnames and geographical names are not able to register.

Why Should you go through a lawyer for registration ?

The Trade Mark registration involves lots of legal process. At every stage lawyer's opinion and preparation of documents become necessary and the interaction between the lawyer and the client is established from the beginning. Procedure for registration of TradeMark

Stage 1

All Trade Marks must be searched to determine their availability before they are used... If a word, design or symbol is not to be featured in an advertising programme or on a label, it should be searched even if you plan to use it for a short time. If you do so, the cost of the search can save your investment on advertising and other promotional material and also it will avoid an injunction or an award of damages in a suit. Before making an application for registration, the applicant can apply for search to know whether his TradeMark resembled any other mark already on record. 

Stage 2

After searching is made, according to the report the applicant can decide whether to apply for the mark or not. Once he decides to apply, he has to fill up basic details based on which the attorney or agent will prepare documents for registration. Once the application is filed with the Trade Marks Registry, they will accept the application and subsequently the number will be allotted to the applicant. You can start using TM.

Stage 3

The scrutinization of the application will be done at this stage. If the Registrar has any objections to the acceptance of the application, he will communicate his objections to the applicant or attorney.

Stage 4

If the applicant or attorney requests for personal hearing of the case, the Registrar can fix a date for hearing.

Stage 5

The Registrar may after hearing the Attorney, consider the submissions made by the attorney pass such orders he may deem fit.

Stage 6

Under Section 20 of the act, when an application for registration of Trade Mark has been accepted, whether absolutely or subject to conditions, the Registrar shall pass an order for advertising in the prescribed manner in the Trade Marks Journal in order to give third parties an opportunity for the opposition. The applicant has to pay the prescribed fee and may be required to supply the printing block for the TradeMark satisfactory to the Registrar and furnish such other information as may be necessary relating to series of Trade Mark differing from one another in respect of the particulars. If there is no opposition filed for the mark applied, it will be through for registration. The registration certificate will be issued at this stage, which is the final stage. You can start using ®

The Requirements for making an application:

  • Ten representations of the Trade Mark
  • The name, constitution (e.g. Proprietorship, Partnership or Limited liability company)
  • List of goods or services in respect of which the registration is sought
  • If the mark has been used in India, the date since the mark is used.
  • An authorization of agent on Form TM - 48 (on Stamp Paper of requisite value) if an application is to make through an authorized Trade Mark Attorney.

Renewal

The registration of Trade Mark is valid for 10 years. An application for the renewal of registration of a Trade Mark shall be made on the form along with prescribed fee at any time not more than 6 months before the expiration of the last registration.Jurisdiction of the officer of the Trade Mark Registry.The states of Andhra Pradesh, Kerala, Tamilnadu, Karnataka and Union Territories of Pondicherry and Lakshadweep Islands fall under the office of the Trade Mark Registration at CHENNAI.

 

Legal Benefits ( Infringement and passing off)

 

In a suit alleging trademark infringement or passing off, a court may grant an injunction; award damages; direct an account of profits to be produced; or issue an order requiring delivery of the infringing labels and marks of destruction or erasure. Additionally, in respect of an infringement or passing off action, a court can grant an expert injunction along with an interim order for discovery of documents, preservation of infringing goods or other evidence. Furthermore, the court can restrain the defendant from disposing of or dealing with assets in a manner which may adversely affect the plaintiff's ability to recover damages or avail any other pecuniary remedies that may be finally awarded to the plaintiff in the suit.
The TM Act has brought in criminal remedies over and above the civil remedies that were previously available. It has also given more powers to the courts. As a result, applying false trademarks, or trade descriptions and selling goods or providing services with such descriptions is a cognizable offense under the TM Act. Any police officer, not below the rank of a Deputy Superintendent of Police or his equivalent, can search and seize the articles bearing infringing trademarks, labels, etc., without warrant. Further, the TM Act has enhanced the punishment for these offenses.
An offender can be imprisoned for a term of not less than six months up to a maximum of three years. Moreover, a fine between Rs.50, 000 (US $ 1,111) and Rs.200, 000 (US$4, 444) can be levied. In respect of subsequent offenses, the imprisonment term can be increased to not less than one year and up to three years, and the fine can be increased to not less than Rs.100, 000 (US$2, 222) and up to Rs.200, 000 (US$4, 444). However, the court has the discretion to reduce the punishment below the prescribed minimum.

 

Available remedies for a Foreign Trade Mark owner.

 

Defined under Indian Trademark law. However, Indian courts have laid down certain criteria that have to be proved to establish a prima facie case for grant of an injunction in a passing off action. These are:If a trademark is not registered in India, a foreign trademark owner can initiate a passing off action against the potential infringer. Passing off is not
 ?     There is no delay in initiating action;
 ?     The goods of the foreign trademark owner are distinct from those of the infringer;
 ?     The nature of the activity of both parties is similar;
 ?     The goods being dealt with by both parties are similar;
 ?     The use of the trademark or trade name by the infringe is likely to deceive and cause confusion in the minds of the people and harm the business reputation of the foreign trademark owner;
 ?     The sphere of activity and the market of consumption of the goods of both parties is the same; and The customers of the plaintiff, inter alia include, uneducated, illiterate and unwary customers who are capable of being deceived, confused or misled

General guidance for trademark owners

1. Ensure clearance:

Internationally, where appropriate. Some countries acknowledge unregistered rights, so where possible, conduct unregistered trademark searches. Be aware that even the most extensive searches can give no guarantee that the trademark is wholly free for use and registration, without conflict. Check within your own business that no one knows of existing use of the same or a similar mark by a competitor.

2. Do an internal IP audit:

Is your house in order? a). Identify the marks you use. Does your current portfolio extend to both (a) and (b)? Audit marks that are both commercially viable and capable of protection as registered trademarks. It is important to evaluate what is actually in your trademark portfolio against the brands you use. Identify marks that are both commercially viable and capable of protection as registered trademarks. Identify whether you current trademark protection extends to these marks.

3. Review the extent of trademark protection:

Are your trademarks protected for your international market? Regular trademark reviews can assess whether new trademark applications in additional countries and classes are necessary. Ring fence and extend your trademark protection. Where practical, consider protecting stylized trademarks in both a stylized form and block capitals. Check the whole of your business regularly for used but unregistered trademarks.

4. Restrict infringement:

 Watch for third party registration or unlicensed use of your trademarks. If your trademark has a wide reputation and the unlicensed use takes advantage of that reputation, action may be possible for unapproved uses, even if it's used on goods or services that are different from your registration. Be prepared to oppose new trademarks with marks or goods and services that are either the same or similar. Keep a particular watch on your competitors.

5. Use it 

Ensure that your trademark is in continuous use in the form registered. Trademarks are often modified over the course of time and use of a modified mark may be unable to support a registration of the unmodified mark. In some countries, nominal use of the trademark is sufficient to maintain the validity of your registration. If you stop using your registered trademark, the registration may be vulnerable to cancellation. Consider re-filing important trademarks for registration once the existing registration becomes vulnerable to cancellation for non-use.

6. Keep it covered

Make sure your system for renewing trademark registration is reliable. Ensure the registered protection for your trademark continues. Rights & Marks offer renewals service & Trade Marks Registrations.

7. A trademark is a sign of success! Announce its status with ? and ®

Indicating, as extensively as possible that your word or a device is a trademark will help to ensure it does not become generic. You will highlight the marks as your property and place emphasis on the importance of IP rights to your business and your investors. It is illegal to indicate a trademark is registered when it isn't, but there is not a prohibition on the use of the words " Trademark " or the letters "TM " to indicate a trademark. 

8. Pursue profits

Negotiable licensing agreements for licensed use of your trademarks for potential sources of revenue.

9. Consult an expert

 

Get Well-qualified advice from Attorneys in your jurisdiction because laws change frequently and you need to ensure your trademark portfolio is up-to-date. This is a general guide, written with particular attention to trademarks and brands. It does not constitute legal advice. A trademark agent can give advice tailored to your circumstances. Are you stuck with your existing application under trade mark? Don't worry, we will take up such applications and do the needful. Connected Services of Trade Marks offered by Rights & Marks
 ?     Preparing documents for filing
 ?     Change of name
 ?     Change of Company
 ?     License agreements
 ?     Opposition
 ?     Defense Counter Statement
 ?     Appeals
 ?     Infringement Suits (Civil & Criminal)
 ?     Raids, arrest of counterfeiters of Brands
 ?     Conducting Trade Mark search

Other Services Offered
 All Civil and Criminal Matters.
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