trademark act 2009

8/13/2019 trademark act 2009

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INTELLECTUAL PROPERTY ACT TRADE MARKS ACT, 1999

1. What is trad !ar"# Stat its $%&'ti(& a&d O)*'t#

1.

I&tr(d%'ti(& + Ma&i&

A trade mark is a visual symbol in the form of a word, a device, or a label applied to articles of

commerce with a view to indicate to the purchasing public that they are the goods

manufactured or otherwise dealt in by a particular person as distinguished from similar goods

manufactured or dealt in by other persons. A person who sells his goods under a particular

trade mark acquires sort goods. Such a right acquired by use is recognized as a form of

property in the trade mark.

Stat%t(r- di&iti(& ( trad !ar"/s'ti(& 012 ( th 1999 a't

Trade mark must be a mark which includes a device, brand, shape of goods, packaging

or combination of colors or any combination thereof s. !"# !m#.

The mark must be capable of being represented graphically. $t must be capable of distinguishing the goods or services of one person from those of

others.

$t may include shape of goods, their packaging and combination of colours.

$t must be used or proposed to be used in relation to goods or services.

The use must be for the purpose of indicating a connection in the course of trade

between the goods or services and some persons having the right as proprietor to use the

mark.

The right to proprietorship of a trade mark may be acquired by registration under the

Act or by use in relation to particular goods or services. The right of proprietorship acquired by registration is a statutory right whichrequires no

actual user but only an intention to use the mark.

$%&'ti(& ( a trad !ar"

%nder modern business conditions a trade mark performs four functions& !"# it identifies the

product and its origin, !# it guarantees its unchanged quality, !'# it advertises the product, and

!(# it creates an image for the product.

Th ()*'t ( trad !ar" 3a4

The ob)ect of trade mark law is to deal with the precise nature of the rights which a person can

acquire in respect of trade marks, the mode of acquisition of such rights, the method of transferof those rights to others, the precise nature of infringement of such rights, and the remedies

available in respect thereof.

0. What is a ((d trad !ar"#

0. Apart from distinctiveness or capable of distinguishing a good trade mark should possess the

following attributes&

$t should be easy to pronounce and remember, if the mark is a word.

$n the case of device mark the device should be capable of being described by a single

word. *.


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$t must be easy to spell correctly and write legible.

$t should not be descriptive but may be suggestive of the quality of the goods,

$t should be short,

$t should appeal to the eye as well as to the ear.

$t should satisfy the requirements of registration.

$t should not belong to the class of marks prohibited for registration. $n general a

manufacturer of goods is free to adopt any mark to distinguish his goods.5. E673ai& th 7r('d%r (r Ristrati(& ( Trad Mar"s#

5.

Trad !ar"s ristr-/ s'ti(&s 8 a&d

An office called the Trade +arks. egistry has been established for the purpose of registration

of trade marks, maintenance of the register and matters incidental thereto. The -ead ffice of

The egistry is at +umbai. $t has branch office at /olkata, 0elhi, 1hennai and Ahmedabad.

The Trade +ark egistry has a seal.

The Trade +ark egistry is under the charge of the egistrar of Trade +arks who is also the

1ontroller * 2eneral of 3atents, and 0esigns. -e is assisted by a )oint egister, 0eputy

egisters, Assistant egistrars, 45aminers of Trade +arks and a 1omplement of 1lerical staff.Pr('d%r (r ristrati(&

The procedure for registration of trade marks is contained in sec. "6*( of the Trade +ark Act

"777.

St7 1: Pr3i!i&ar- ad;i' a&d sar'h

8efore or after applying for registration he may also request for the egistrar9s opinion as to

the distinctive*character of the mark. The egistrar9s search report or opinion is not, however,

binding on him.

St7 0: E6a!i&ati(& a&d ()*'ti(&s

The egistrar will cause the application to be e5amined and communicate to the applicant anyob)ection to the mark which mainly relates to distinctive character and similarity with already

registered marks. The applicant can put forward his case either in writing or at a hearing. $f the

application is accepted, it will be advertised in the Trade +arks :ournal. $f refused, the

applicant may go on appeal to the Appellate 8oard.

$f the application is refused on the ground of lack of distinctive character, the applicant may,

after some years of use, make a fresh application.

St7 5: O77(siti(& t( ristrati(& s'ti(& 01

4very application accepted will be advertised in the Trade +arks :ournal !an official

publication.# any person may ob)ect to the registration by following the procedure for the

prescribed purpose. The egistrar may either accept*the application; with or without conditionor limitations or refuse the application. 1onditions are in the form of disclaimer of certain

parts of the mark or as to mode of use.


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registration. The first registration is for a period of ten years which can be renewed from time

to time by paying the renewal fee. Although registration is antedated to the date of application,

no infringement action can be instituted before the mark is actually entered on the register. $f

the mark is not renewed, it will be removed from the register but can be restored if a request is

made to that effect within one year from the date of e5piry of registration or last renewal.

St7 : Crtii'ati(& trad !ar"/ s'ti(&s 9/=>

Trade marks indicate trade sources or trade connection. There is a class of marks the purpose

of which is to indicate that the goods on which it is impressed have been certified by somecompetent person in respect of some characteristic of the goods like origin, composition, mode

of manufacture or quality.


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a. Affi5es it to goods or to the packaging thereof;

). ffers or e5poses goods for sale, puts them on the market, or stocks them for there

purposes under the registered trade mark;

'. $mports or e5ports goods under the mark; or

d. %ses the registered trade mark on business papers or in advertising.

$t would appear that this sub*section will apply to all kinds of infringement where the marks

are similar and@or the goods are similar.

S'ti(& 09=2%nauthorized application of the registered trade mark to a material intended to be used for

labeling packaging goods as a business paper, or for advertising goods or services, provided

that such person when he applied the trade mark knew or had reason to believe that the

application of the mark was not duly authorized by the proprietor or a licensee.

S'ti(& 09>2

Any unauthorized advertisement of the registered trade mark if such advertisement.

a. takes unfair advantage of and is contrary to honest practices in industrial or commercial

matters, or

). is detrimental to its distinctive character; or'. $s against the reputation of the trade mark. This refers to comparative advertisement.

S'ti(& 0992

%nauthorized spoken !oral# use of words, which constitute distinctive elements of a registered

trade mark.

The various types of infringement listed under s.7!# to !7# involves e5pressions like similar

mark, similar goods or services, use of the mark without de cause, taking unfair advantage,

detrimental to distinctive character or repute, contrary to honest practices in industrial or

commercial matters, against the reputation of a trade mark, and distinctive elements of a

registered trade mark.

8. E673ai& th 3a4 r3ati& t( th 7assi& ( Pr(7rt- %&dr I&t33't%a3 7r(7rt- A't#

8.

C3assi'a3 (r!%3ati(& ( 7assi& (

9o man is entitled to represent his goods as being the goods of another man, and no man is

permitted to use any mark, sign or symbol, devise, or other means, whereby, without making a

direct false representation himself to a purchaser who purchases from him, he enables such

purchaser to tell a lie or to make a false representation to somebody else who is the ultimate

customer. This principle also applies to business share no goods are involved. $t is an

actionable wrong for any person to pass off his goods or business as and for the goods orbusiness of another person by whatever means that result may be achieved.

Passi& ( is a (r! ( t(rt

The law of passing off, based on common law, has remained substantially the same over more

than a century though its formulation has changed over the time. The ob)ect of this law is to

protect the goodwill and reputation of a business from encroachment by dishonest competitors.

Passi& ( )- !isr7rs&ti& '(&&'ti(&


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$n certain circumstances passing off action will lie when there is a representation to the effect

that the defendants9 goods or business is connected or associated with the goods or business of

the plaintiff.

M(dr& (r!%3ati(& ( th 3a4 ( 7assi& (

The essential characteristics which must be present in order to create a valid cause of action

for passing off ahs been stared as follows&

a. misrepresentation,

). made by a person in the course of trade,'. to prospective customers of his or ultimate customers of goods or services supplied by

him,

d. which is calculated to in)ure the business or the goodwill of another trader !in the sense

that is reasonably foreseeable consequence#.

trademark act 2009

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