Intellectual Property...

During the British regime in India the big merchants and businessmen who had established their mark in the market in respect of certain goods under the particular brand name, style or design felt they should continue to be sold or traded under the same brand name, style or design and no other person shall be allowed to adopt that brand name, style or design.

The Government then enacted the Indian Merchandise Marks Act, 1889 and with development and changes, on 25th November 1958 The Trade And Merchandise Marks Act came into force.

WHAT IS A TRADEMARK?

• A trademark is a mark used in relation to goods for the purpose of indicating a connection between the goods and some person having the right as proprietor to use the mark

• It is a visual symbol in the form of a word, device or a label applied to articles of commerce with a view to indicate to the purchasing public that they are goods manufactured or otherwise dealt in by a particular person or a particular organisation as distinguished from similar goods manufactured or dealt in by others

FUNCTIONS OF A TRADEMARK

A trademark serves the purpose of identifying the source or the origin of goods. Trademark performs the following four functions.

• It identifies the product and it’s origin.

• It proposes to guarantee its quality.

• It advertises the product. The trademark represents the product.

• It creates an image of the product in the minds of the public particularly the consumers or the prospective consumers of such goods.

MARKS NOT REGISTERABLE

1. The use of which would be likely to deceive or cause confusion.

2. A mark the use of which would be contrary to any law for the time being in force

3. A mark comprising or containing scandalous or obscene matter

4. A mark comprising or containing any matter likely to hurt the religious susceptibilities of any class or section

5. A mark which would be disentitled to protection in court of law

6. A mark which is identical with or deceptively similar to a trademark already registered in respect of the same goods or goods of the same description

7. A word which is the accepted name of any single chemical name or chemical compound in respect of chemical substances.

8. A geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India.

9. Besides others

REGISTRATION

WHO CAN APPLY

Any person who claims to be a proprietor of a trademark and is desirous of registration of the mark can apply. The application may be made in the name of an individual, partners of a firm, a Corporation, any Government Department, a trust or joint applicants.

APPLICATION

1. After completing all specifications on the prescribed application form, an application shall be filed in the office of the trademark Registrar "within whose territorial limits the principle place of business in India of the applicant or in the case of the joint applicants the principal place of business in India of the applicant whose name is the first mentioned in the application, as having the place of business is situated.

2. Every application for registration of a trademark shall contain a representation of the mark in the place provided in the form for the purpose. Ten additional representations of the mark have to be supplied with the application.

3. Upon submission of an application for registration of a trademark, there can be four outcomes:

   a. The application is accepted as it is.

   b. The application is accepted subject to certain amendment.

   c. The application is accepted but latter it is found to have been accepted in error.

   d. The application stands rejected.

   The application is thus either accepted completely or is accepted subject to amendments.

ADVERTISEMENT

1. Soon after acceptance of the application, the application is advertised in the Trademarks Journal.

2. Any person may, within three months from the date of the advertisement or readvertisement of the application for registration or within such further period not exceeding one month, give notice in writing to the Registrar of opposition to the registration. If such an opposition does not arise then the mark is deemed to be registered.

TIME PERIOD

The registration of a trademark shall be for a period of seven years, but it may be renewed from time to time.

INFRINGEMENT

Infringement of a trademark occurs if a person other than the registered proprietor in the course of trade, in relation to the same goods or services for which the mark is registered, uses the same mark or deceptively similar mark.

ESSENTIALS OF INFRINGEMENT

1) The taking of any essential feature of the mark or taking the whole of the mark a few additions and alterations would constitute infringement.

2) The infringing mark must be used in the course of trade, that is, in a regular trade wherein the proprietor of the mark is engaged.

3) The use of the infringing mark must be printed or usual representation of the mark in advertisements, Invoices or bills. Any oral use of the trademark is not infringement.

4) Any or all of the above acts would constitute infringement.

The proprietor of a trademark has a right to file a suit for infringement of his right and obtain

1. Injunction- an injunction restrains the defendant from using the offending mark pending the trial of the suit or until further orders.

2. Damages in assessing the damages the important question is what is the loss sustained by the plaintiff. The loss must be the natural and direct consequence of the defendant’s acts. The object of damages is to compensate for loss or injury.

3. Accounts of profits. Where a plaintiff claims the profits made by the unauthorised use of his trademark, it is important to ascertain to what extent he trademark was used, in order to determine what proportion of the net profits realised by the infringer was attributable to its use.

NO ACTION FOR INFRINGEMENT OF UNREGISTERED TRADE MARK

No person shall be entitled to institute any proceeding to prevent, or recover damages for, the infringement of an unregistered of an unregistered

JURISDICTION

A suit for infringement of registered trademark is filed in District Court having jurisdiction or in a High Court having original jurisdiction to entertain such suits. The infringement must have taken place within the territorial jurisdiction of the Court.

LIMITATION

The period of limitation for filing the suit is three years from the date of infringement.