Trademark Act
Contents
The term trademark refers to the protection available for certain names, symbols, devices, or words that are used in connection with a good or services. So, any mark associated with any service is known as “service mark.” On the other hand, the trademark is basically used to denote the associated marks with goods and services. The only motive behind using the trademark is to make free both the companies as well as individual to indicate the sources of their goods and services and create a separate identity from others in the industry. In this article, we will let you about the Trademark Act and its various laws in India. You can take our help to file trademark registration form. Our experts are here available to guide you the best way.
Having some exclusive right to use a specific mark as a Register logo and restrict others from using a similar mark that may baffle the general public become the first step to the doorway of a successful business life. However, a trademark can not restrict another individual or company from making or selling the same goods or services under a totally different mark. Therefore, every restriction and entitlement has some specific rules and regulations.
On claiming the right to use a particular mark, he/she can use the sign “TM”(for a trademark) and “SM”(for a service mark) to reveal that this mark is already trademarked. In addition, the symbol “®” denotes the federal registration which can be used by following all the laws as per the Indian Trademarks Act 1999. That means this symbol cannot be used if an application is being pending. With parallel to this, symbol ® can only be used in case of goods and services which are listed in the federal trademark application. Otherwise, it cannot be used.
Prior to 1940, The trademark law in India was based on the common law system which was mainly followed in England before the enactment of the first Registration Act, 1875. Trademark Act, 1940 was the first statutory law dealing with a trademark in India who has introduced a machinery for the registration and statutory protection of trademarks in India.
Further, the act of 1940 was soon replaced by the Trade and Merchandise Marks Act, 1958 which was consolidated the provisions related to trademarks contained in other statues like the Indian Penal Code, 1860, the Criminal Procedure Code, 1973 and the sea customs Act, 1878.
Later, at the end Trademark Act, 1999 repealed the Trade and Merchandise Marks Act, 1958. And now, it is the current governing law for the registered Trademarks. This Trademark Act came into existence w.e.f. 15 September 2003 with having a notification in the official gazette. As there was a need to comply with the provisions of the TRIPS (Trade-Related Aspects of Intellectual Property Rights) Agreement, 1995.
Although It is true that some provisions for unregistered trademarks have been also enacted into the 1999 Act, they are primarily governed by the common law rules and regulations which are based on certain principles evolved out of the judgments of courts.
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Read more: Documents for Trademark Registration, and Cost of Trademark Registration
As India has made a step forward towards fulfilling its international obligations, so now it has been successfully laid down in the TRIPS Agreement. Following are the salient features of the New Act:
The Trademark is described as the mark which is capable of distinguishing the goods and services of one, from the goods and services of another and may include any mark capable of graphical representation including aspects of the shape of goods, packaging, and a combination of colors. Ultimately, well-known designs can now avail protection under trademark law.
The provision for service mark registrations is one of the most significant additions in the New Act. Now, it is possible for business houses and individuals offering any kind of service to register their mark. Therefore, entities providing services of any description in connection with a business, industrial or commercial matters can get their services marks registered.
A new concept is brought into the Act makes it possible for any “Association” to get registration for its mark. Collective Mark is a trademark or service mark used or intended to be used by the members of an association indicating their membership in such association. For eg: advertising club of India can register its name and logo as collective marks and prohibit non-members from using or associating with the mark.
A well known Trademark is a mark used over particular goods or services that have obtained sufficient recognition among the consumers using such goods and services. The conditions laid down for the determination of a well-known trademark are:
The most important thing that must be noted that a trademark may be considered as a well-known trademark even if it is not registered in India or used in India if in case, an application remains pending in India or the trademark is not well known in India to the public at large. There is a remarkable provision in Indian Trademark law, setting out a detailed criterion for the identification of a well-known trademark in an area where the international consensus is lacking.
Maintaining trademark registration of trademarks in part A and B is omitted. The only single register is enough to be maintained. Hence, all applicants are now given equal rights and opportunities.
Now, it can be possible to file one single application for registration of a mark in different classes of goods or services, instead of filing separate applications. This is happened to shorten the process of search of similar marks during registration.
It has been continuing from previous 7 years to 10 years. Renewal can also be possible before completion of 10 years in perpetuity.
An Appellate Board has its national headquarters in Chennai. It is meant to hear appeals from the decisions of the Registrar and decide on rectification applications and facilitates speedy disposal of matters in addition to reducing the existing burden on the High Court, before which appeals used to lie under the old Act. It is important to note that the board shall not be bound by the Civil Procedure Code; until and unless it shall be guided by the principles of natural justice.
This new act facilitates the registered proprietor who has a trademark over goods, a pre-emptive right over associated services and vice versa. It restricts any other trader from using the mark even over “similar” goods or services. So, this new act is quite different from the old act which only provided protection from imitation of the “same” goods effectively enhancing the protection given to a mark.
The protection of a trademark is described to prevent any “corporate” or “business concern” from using someone else mark as its trade name or name of its “business concern”, dealing in goods and services in respect of which the mark is registered.
There is a punishment which is incorporated to prevent the sale of spurious goods and falsification of trademarks. The minimum punishment will be of 6 months and can be extended to 3 years and a fine of rupees 50000 to 3 lakhs. It can be proved a deterrent to the infringers. Moreover, this new act has made these offenses cognizable in nature, meaning; the law enforcement agencies like the police can arrest the violators without a warrant as they come to know of such activities as these are considered serious offenses.
The jurisdiction of courts has been enlarged empowering them to give them the permission to grant ex parte injunction or other interlocutory orders relating to:
The assignment of the trademark with the goodwill of the business has now been removed. The current act permits the unregistered trademark owners to assign and transmit their marks even without the goodwill of the business.
The previous act enabled a trademark owner to register a mark in other classes as a defensive mechanism which is omitted. With parallel to this, the advent of the complementary concept of well-known trademark and the inherent right to secure registration in associated goods and services being recognized in the New Act, so the need for this type of registration is no longer felt.
To represent any mark in an advertisement by an unauthorized user constitutes infringement then in such a case it is provided that such advertising takes unfair advantage or is contrary to the honest practice of industrial or commercial matters, or it is detrimental to its distinctive character or is against the reputation of the trademark. Any oral use of a word mark also constitutes infringement. You can use Trademark search to find out the already trademark filing.
The final authority which is related to the registration of certification marks is shifted to the registrar from the central government. Besides, the act also extends the applicability of convention countries to include members of a group or union of countries and Inter-governmental organizations such as members of the WTO.
The entire Trademarks Act, 1999 eliminates the inconvenient provisions of the old act and of course has fostered the rights of the traders and other service providers significantly. It is a kind of a warning to the infringers. Positively, this new Indian Trademarks act caters to the developments in trading and commercial practices, increasing globalization of trade and industry, the need to encourage investment flows and transfers of technology, need for simplification and harmonization of trademark management systems which further gives effect to relevant judicial decisions. It was the much-awaited legislation by the legal as well as the business community. Ultimately, the long lingering desire has been satiated.
For further information related to trademark registration online, trademark search or Classes of Trademark Goods and Services, you can visit our website: LegalRaatsa. Give us a call at 8750008585 and send your query on Email: contact@legalraasta.com.
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