Trademark, its registration procedure & infringement

1. ADV. PARIKSHIT RAO
# 9892 693 359
UnderstandingTrademarks Law

2. Trademark
 A trademark is a sign or indicator used by an
individual, business organization or other legal
entity which is capable of distinguishing the
goods and services produced or provided by one
from those of others.
 Any distinctive words, letters, numerals,
drawings, pictures, shapes, colors, logotypes,
labels or combinations used to distinguish goods
or services may be considered a trademark.
 A trademark is typically a name, word, phrase,
logo, symbol, design, image, sound or a
combination of these elements.

3. Symbols used for trademark
 TM- For unregistered trademark used to
promote or brand goods.
 SM- For unregistered service mark used to
promote brand or services.
 ®- For a registered trademark.

4. The Trade Marks Act, 1999
 The present Trade Marks Act, 1999 has replaced the
Trade and Merchandise Marks Act, 1958. And the
Trade Marks Act, 1999 has been brought into force
on 15th September 2003. The Trade Mark Rules, 2002
are passed under theTrade Marks Act, 1999.
 The law of trademark deals with the mechanism of
registration, protection of trademark and prevention
of fraudulent trademark.
 The law also provides for the rights acquired by
registration of trademark, modes of transfer and
assignment of the rights, nature of infringements,
penalties for such infringement and remedies
available to the owner in case of such infringement.

5. Functions of a Trademark
 Ensure that consumers can distinguish between
products.
 Enable companies to differentiate their products.
 Are a marketing tool and the base for building a
brand image and reputation.
 Are licensed and provide a direct source of revenue
through royalties.
 Are a crucial component of franchising agreements.
 May be a valuable business asset.
 Encourage companies to invest in maintaining or
improving product quality.
 May be useful for obtaining financing.

6. Selection & Registration of
Trademark
 A word, letter or any combination thereof and simple in
design. It should be easy to speak, spell and remember.
Best if it is an invented or coined word. Words which
directly describes the character or quality of the goods
should not be adopted.
 Application for registration may be made in the name of an
individual, partners of a firm, a Corporation, any
Government Department, aTrust or joint applicants.
 ADVICE- File it in personal name. Incase things do not
workout, one can always use the mark for his/her next
venture. If the mark is in the name of the company, it
usually dies with the company.

7. Step by step registration
procedure
 1. SEARCH in Trademark registry to check
whether a proposed mark is available for use in
connection with certain goods or services & also
to check whether your proposed mark or highly
similar one is already adopted by someone.
 2. Application in Form TM-1 to be filed before the
Registrar of Trademarks corresponding to the
principal place of business or correspondence
address. (Current fees for application Rs.4,000/-)

8.  3. Examination by Registrar on the basis of the data
it possesses concerning the earlier registered mark
or pending applications. Objections may be raised by
the registrar u/s 9 and/or 11 of the Trade Marks Act,
1999. If there is no objection raised by the Registrar,
the mark gets published in the Trade Marks Journal
for Public information & for objections.
 4. Reply to Examination Report within 1 month from
the date of receipt of the Examination Report,
applicant must file their reply a/w supporting
documents or may apply for hearing.
 5. Publication of Trademark- After satisfying the
Registrar once the application is accepted, the
registrar sends the mark for publication in
Trademark Journal.(Section 20)

9.  6. Opposition- Any person, may within 3 months
from the date of publication can file opposition
to the Registrar. (1 month grace period)
If no opposition is filed the trade mark will get
registered and a certificate will be issued to the
applicant.
Registrar shall serve notice on the applicant
about the opposition & within 2 months from the
receipt thereof by the applicant, the applicant
needs to send a copy of counter statement with
the grounds on which he relies in support of his
application. (section 21)

10. Whether Registration is
Compulsory?
 Registration of a trademark is not
compulsory. However registered trademarks
have additional benefits when compared to
unregistered trademarks. Registration of
trademarks allows the owner of the
trademarks to file infringement suits for
violation of his rights.Whereas the
unregistered user has to file suit for Passing-
off.

11. Different Classes & Forms in
Trademarks
 Trademark classification is the process of defining the goods and
services while registration of trademark. It is very important to
state your goods and services under the exact category
otherwise registrar may reject your application for registration.
Trademark classification in India refers to 34 categories for goods
and 11 for services. While filing an application for trademark
registration, it is very essential to mark your goods and services
under the correct category.
 Forms for registration
TM-1 Registration ofTrademark
TM-3 Registration of CollectiveTrademark
TM-4 Registration of CertificationTrademark
TM-51 Single application for registration of a trademark for different
classes of goods or services.

12.  Other Forms
 TM-5 for filing Opposition
 TM-6 for filling Counterstatement
 TM-12 for renewal of registration of
trademark
 TM-16 for correction of clerical error or for
amendment
 TM-63 for expedited examination form the
registrar for the registration of trademark

13. Documents for filing trade
mark applications
 Complete address of the person or entity on
whose name the application is made.
 Image of the trademark (be it a word, logo,
label or combination thereof)
 Evidence for any prior use.

14. Trademark Infringement &
Passing-off
 Trademark Infringement is a violation of exclusive rights in
using the trademark without the authorization of the
trademark owner or any licensee. When a person uses a
trademark which may be either a symbol or a design which
resembles to the products and mark owned by the other
party, in such cases the trademark owner may begin a legal
proceeding against a party, which infringes its registration.
 Offence is punishable with imprisonment for a term which
shall not be less than 6 months but which may extend to 3
years and with fine which shall not be less than Rs.50,000/-
but which may extend to Rs.2,00,000/-.

15. Passing-off action arises when an unregistered
trademark is used by a person who is not the
proprietor of the said trademark in relation to
the goods or services of the trademark owner.
Passing-off in India is a tort actionable under
common law and mainly used to protect the
goodwill attached with the unregistered
trademarks. It is founded on the basic tenet of
law that one should not benefit from the labor
of another. Section 27 of the Trade Marks Act,
1999 provides that no infringement action will
lie in respect of an unregistered trademark but
recognizes the common law rights of the
trademark owner to take action against any
person for passing-off their goods/services as
the goods of another person or as services

16. Life of Registered Trademark
 Initial registration and each subsequent
renewal is for a period of 10 years.
 Non use of registered trademark for a
continuous period of 5 years is a ground for
cancelation of registered mark.

17. ThankYou