FREQUENTLY
ASKED QUESTIONS
What is
a trademark?
A trademark popularly known
as brand name, is a visual symbol in the form of a word or a
device or a label applied to the commercial goods or service
to enable the consumer public to identify one trader's goods
from similar goods of other traders.
What is a
service mark?
Under the Trade and
Merchandise Marks Act , 1958 registration of 'service mark'
is not possible but under the new Trade Marks Act ,1999
registration of 'service mark' can be done. Such 'service
mark ' can be used as a trade mark but applied to services
rather than goods i.e. Banking , Communication ,Education
,Financing ,Insurance ,Chit Funds, Real Estate , Transport ,
Storage material treatment , Processing , Supply of
electrical or other energy , Boarding and Lodging ,
Entertainment , Amusement , Construction ,Repair , Conveying
of news or Information or Information and Advertising.
Whether
registration of Trade Mark is compulsory under the Act?
No. Registration of a trade
mark is not compulsory. But for better protection it is
advisable to register a trade mark.
How to acquire
a right of property in a trade mark?
A person may acquire a right
of property in a trade mark in the following modes:
a) By use of the mark in
relation to particular goods ;or
b) By registration under the
Act; or
c) By assignment or
transmission of the right from another person
How to file an
application for registration ?
- Registration of a trade
mark may be done by filing an application in the
prescribed from in FORM TM-1 along with the 10
additional representations (with the prescribed fee) in
any one of the five offices of the Trade Marks Registry
located at Mumbai (Head Office ) , Chennai , Delhi
,Calcutta and Ahmedabad (Branches ) depending on the
jurisdiction where the applicant resides or carries on
business.
- Application number will be
allotted to each and every application by Head Registry
at Mumbai and this number shall not be mistaken as if
the application is accepted or registered .After
registration only , it will be called as Registered
Number.
How many
years will it take for registration of a Trade Mark?
At present it takes five
years an average from the date of application .It may be
reduced in future due to computerization of the Trade Marks
Registry.
Is it
necessary to get professional help for registration ?
As registration of trade mark
is a specialized area , it may be necessary to employ the
services of a trade mark Agent or Attorney .However this is
not compulsory.
Whether '
user' is very important in trade mark?
Yes . A trade mark must be
used in relation to the goods for which the registration is
sought or obtained .If it is not used but merely renewed
from time to time , then it will be possible that a mark may
be removed on the ground of ' non-user' on a petition filed
by any 'aggrieved person'
Is it
possible to file trade mark application on the ground of '
proposed to be used ' ?
Yes . But the application
should have bonafide intention to use the mark at the time
of filing the application and further the applicant can
claim rights from the date to filing such application.
Is it
possible to get registration of a trade mark without any
intention to use?
No. It is well established
rule of law that to get a trade mark registered without any
intention to use it in relation to any goods or services but
merely to make money out of it by selling to others the
right to use, it would be " trafficking in trade marks
" .
What is
the advantage of 'prior user ' of a trade mark ?
'Prior user' of a trade mark
is in better position rather than the registered proprietor
of a mark. Hence the rule of law is -" priority
in adoption and use prevails over priority in registration
" .
Whether
the proprietor of an unregistered trade mark can initiate
legal action?
Yes. The proprietor of an
unregistered mark may bring legal action against the
subsequent user by filing a civil suit for ' passing off '
action on the basis of ' prior user '. Further he can lodge
criminal complaint also under the provisions of the
Trademarks Act.
What
about the Renewal of a Registered Trade Mark?
A registered trade mark
should be renewed for every seven years under the present
Act . The period of said seven years will be calculated from
the date of filing the application
Will
any rights be conferred upon the applicant on mere filing of
trade mark application ?
No Mere filing of trade mark
application will not confer any rights on the applicant. Proprietary
rights over a trade mark can be claimed only by continuous
use of the mark.
Whether
advertisement is sufficient to establish the 'User ' of a
trade mark ?
The advertisement of a mark
in any periodical or magazine or in electronic media may be
regarded as evidence to establish the 'prior user' of a
trade mark.
Is it
advisable to file trade mark applications in all the 34
classes for a simple mark but used in a particular type of
goods?
Normally it is not advisable
to file trade mark applications in all the 34 classes,m when
you are using the trade mark for particular type of goods
on;ly in a specific class.As it is rightly observed by the
Supreme Court of India in a case Vishnudas -Vs-
Vazir Sultan Tobacco Co Ltd , reported in
AIR 1996 SC 2275
i)
"…………..if a trader or manufacturer actually
trades in or manufactures only one or some of the articles
coming under a broad classification and such trader or
manufacturer has no bonafide intention to trade in or
manufacture other goods or articles which also fall under
the said broad classification, such trader or manufacturer
should not be permitted to enjoy monopoly in respect of all
the articles which may come under such broad classifications
and by that process preclude the other traders or
manufacturers to get registration of separate distinct goods
which may also be grouped under the broad classification.
ii)
If registration has been given generally in respect of all
the articles coming under the broad classifications and if
it is established that the trader or manufacturer who such registration
had not intended to use any other article except the
articles being used by such trader or manufacturer, the
registration of such trader is liable to be rectified by
limiting the ambit of registration and confining such
registration to the specific article or articles which
really concern the traders or manufacturer enjoying the
registration made in his favour.
iii)
In our view ,if rectification in such circumstances is not
allowed, the trader or manufacturer by virtue of earlier
registration will be permitted to enjoy the mischief of
trafficking in trade mark ……"
Therefore with such
observation made by the Apex Court , it is crystal clear
that a trader or manufacturer cannot be permitted to enjoy
monopoly in all the goods mentioned in all the classes in
the Fourth Schedule under the Trade Marks Rules ,1959.Under
New Trade Marks Act ,1999 a " well known trade
mark " seems to have been exempted from the said Rule
of law laid down by the Apex Court.
What are
the different stages involved for obtaining registration of
a trade mark?
a) EXAMINATION STAGE
:
Application will be examined
by the examiner of trade Marks at Mumbai Registry.
Examination report will be communicated to each Applicant or
Agent or Attorney by quoting objections , if any , for
acceptance of the application.
b)
ENQUIRY STAGE :
After receipt of
Examination Report , a personal hearing may be requested by
the applicant in order to overlook the objections by
producing documentary evidences during the hearing
.Thereafter order will be passed in the application by the
registrar.
c) ADVERTISEMENT
STAGE :
If the application is
found to be acceptable ,then it will be advertised in the
Trade Mark Journal (official Gazette of the Trade Marks
Registry ) to invite opposition ,if any , from the public
within the prescribed period of three months
d)
OPPOSITION STAGE: If any).
This stage will arise only in
cases when an opposition is filed against the registration
of a particular trade mark .If there is no opposition ,then
the mark will be registered.
