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Trademark Registration in India
Intellectual Property is the most important part of the modern business.
Intellectual property which is a combination of copyright, trademark,
design, geographical indication, patent, industrial design, integrated
circuit, is valuable assets of any company. IP can create healthy
competition in the market; consequently the manufacturer and traders can
develop their products more effectively.
About Trademark:Trade mark is a branch of Intellectual Property Right. A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. Trademark is a mark or symbol which is capable of distinguishing the goods or services of one from those of others.
Owner of Trademark:Trademark provides protection to the owner of the mark by ensuring the exclusive rights to use in to identify the goods or services or authorize another to use it in return of payment. It works like a weapon in the hand of registered proprietor or owner of the mark to stop other traders from unlawful use of the mark of the registered owner. Under section 28 of the Act, the registration of a trade mark shall give to the registered proprietor of the trademark, the exclusive right to the use of the mark in relation to the goods in respect of which the mark is registered and to obtain relief in respect of the trademark in the manner provided under the Act. The proprietor of a trade mark has a right to file a suit for infringement of his right and obtain:
3. Account of profits
Registration of Trademark:As per section 18 (1) of the Trade mark Act, 1999, any person claiming to be the proprietor of a trademark used or proposed to be used by him may apply in writing in prescribed manner fro registration. The application must contain the name of the mark, goods and services, class in which goods and services fall, name and address of the applicant, period of use of the mark.
“Any Person” means a Partnership firm, association of persons, a company, whether incorporated or not, a Trust, Central or State government.
Steps for registration of trademark-
1. Search for the name, device, logo, and mark intended to be applied as trademark.
2. Apply for registration of trademark.
3. Examination of application by the registry. Examination report issued by the registry raising objections under different sections of the Trademark Act, 1999.
4. Replying to the official objections and if required, ask for hearing. Applicant needs to file evidence in support of the trademark application.
5. Advertisement of trademark in official gazette/trademark journal for the purpose of opposition filed by the public within 3 months from the date of publication.
6. If no opposition is received, a certificate of registration is issued in favour of applicant. The validity period of registration certificate is for ten years and after that the same can be renewed subject to the payment of renewal fees.
Infringement of Trade Mark:Infringement is a breach or violation of another’s right.
As per Black’s Law Dictionary Infringement means an act that interferes with one of the exclusive rights of a patent, copyright and trademark owner”. According to the Trademark Act, ‘A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered. Infringement of trademark means use of such a mark by a person other than the registered proprietor of the mark.
As per Trademark Act, a mark shall be deemed to be infringed mark if:
1. it is found copy of whole registered mark with a few additions and alterations,
2. the infringed mark is used in the course of trade,
3. the use of the infringed mark is printed or usual representation of the mark in advertisement. Any oral use of the trademark is not infringement.
4. the mark used by the other person so nearly resembles the mark of the registered proprietor as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered.
Protection Against Infringement of Trade Mark:Under section 29 of the Trade mark Act, 1999, the use of a trade mark by a person who not being registered proprietor of the trade mark or a registered user thereof which is identical with, or deceptively similar to a registered trademark amounts to the infringement of trademark and the registered proprietor can take action or obtain relief in respect of infringement of trademark. In a matter Supreme Court has held that in an action for infringement if the two marks are identical, then the infringement made out, otherwise the Court has to compare the two marks, the degree of resemblance by phonetic, visual or in the basic ides represented by the registered proprietor, whether the essential features of the mark of the registered proprietor is to be found used by other person than only the Court may conclude the matter.
Case Law on Infringement:Hearst Corporation Vs Dalal Street Communication Ltd., 1996 PTR 1 (Cal)
The Court held that a trade mark is infringed when person in the course of trade uses a mark which is identical with or deceptively similar to the trademark in relation to the goods in respect of which the trademark is registered. Use of the mark by such person must be in a manner which is likely to be taken as being used as a trademark.
In an action for infringement of trademark:(a) the plaintiff must be the registered owner of a trademark
(b) the defendant must be use a mark deceptively similar to the plaintiff’s mark
(c) the use must be in relation to the goods in respect of which the plaintiff’s mark is registered,
(d) the use by the defendant must not be accidental but in the course of trade.
Amritdhara Pharmacy Vs Satya Deo Gupta, AIR 1963 SC 449
In the said case the test for determining the similarity in two words relevant to an infringement action was stated by Supreme Court that: You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact you must consider all the surrounding circumstances and you must further consider what is likely to happen if each of those trade marks is used in normal ways as a trade mark for the goods of the respective owners of the marks. If considering all those circumstances, you come to the conclusion that there will be a confusion- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods-then you may refuse the registration, or rather you must refuse the registration in that case
Differences Between Passing Off And Infringement:The action for passing off is different from an infringement action. The action for infringement is a statutory remedy whereas the action for passing off is a common law remedy. Accordingly, in order to establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required. In the case of a passing off action, proving that the marks are identical or deceptively similar alone is not sufficient. The use of the mark should be likely to deceive or cause confusion. Further, in a passing off action it is necessary to prove that the use of the trademark by the defendant is likely to cause injury or damage to the plaintiff’s goodwill, whereas in an infringement suit, the use of the mark by the defendant need not cause any injury to the plaintiff. However, when a trademark is registered, registration is given only with regard to a particular category of goods. Protection is, therefore, afforded only to these goods. In a passing off action, the defendant’s goods need not be the same; it may be allied or even different.
In, Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical laboratories, AIR 1965 SC 980, the Apex court held that there is certain differences between the action for passing off and action for infringement of a trademark. In American Home Products Corpn. Vs. Lupin Laboratories Ltd., 1996 PTR 7 (Bom), the Court held that it is well settled law that when considering the infringement of a registered trademark. It is important to bear in mind the difference between the test for infringement and the test in passing off action. In a passing off action, the courts look to see whether there is misrepresentation whereas in infringement matter, it is important to note that the Trademark Act gives to the proprietor an exclusive right to the use of the mark which will be infringed in the case of identical mark and in the case of similar marks, even though there is misrepresentation, infringement can still take place.
In Satyam Infoway Ltd. Vs Sifynet Solutions (P) Ltd. 2004 (6) SCC 145 it was held by the Court that to establish an action for passing off three elements are needed to be established, which are as follows:
(a) The first element in an action for Passing off, as the phrase “passing off” itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff’s. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its services in a manner which was deceived or would be likely to deceive the public into thinking that the defendant’s goods or services are the plaintiffs.
(b) That second element that must be established by the plaintiff is misrepresentation by the defendant to the public and what has to be established is the likelihood of confusion in the minds of the public that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such confusion the court must allow for the ‘imperfect recollection of a person or ordinary memory’.
(c) The third element of a passing off action is loss or the likelihood of it.
However, trade mark registration under the Act only has effect in India. To obtain trade mark rights and protection in other countries it is necessary to use and/or register the trade mark in those countries. Trade mark protection is territorial in nature. A separate registration will have to be made in each of the countries where protection is desired. To obtain protection outside India, it is necessary to file applications in the concerned countries individually. In addition you should be careful to apply for registration in a country before you commence use of your trade mark in that country. In some countries such as Continental Europe, China, Japan and Indonesia, the first person to apply for registration will be given the rights to a trade mark, rather than the person who first uses the trade mark. Therefore, another party could legitimately "steal" your trade mark by applying for registration even if you were the first person to use the trade mark.
The author can be reached at: firstname.lastname@example.org / Print This Article
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ISBN No: 978-81-928510-0-6