Intro to Trade Mark Registration

A trademark is a sign or combination of signs that distinguish goods or services of one person or enterprise from those of another[1]. Its origin dates back to ancient times, when craftsmen reproduced their signatures, or "marks" on their artistic or utilitarian products.

The first trademark law in India was passed in the year 1940 and was known as the Trade Marks Act, 1940. This law was subsequently replaced by the Trade and Merchandise Act, 1958. Thereafter the Government of India amended this Act in order to bring the Indian trademark law in compliance with its TRIPS obligations. The new Act that was passed was the Trade Marks Act, 1999. This Act came into force in the year 2003. The Trade Marks Act, 1999 and the Trade Marks Rules, 2002, presently govern the trademark law in India.

The trademark law in India is a ‘first-to-file’ system that requires no evidence of prior use of the mark in commerce. A trademark application can be filed on a ‘proposed to be used or intent-to-use’ basis or based on use of the mark in commerce. The term ‘use’ under The Trade Marks Act, 1999 has acquired a broad meaning and does not necessarily mean the physical presence of the goods in India. Presence of the trademark on the Internet and publication in international magazines and journals having circulation in India are also considered as use in India. One of the first landmark judgments in this regard is the “Whirlpool case” [N. R. Dongre v. Whirlpool Corporation 1996 (16) PTC 583] in which the Court held that a rights holder can maintain a passing off action against an infringer on the basis of the trans-border reputation of its trademarks and that the actual presence of the goods or the actual use of the mark in India is not mandatory. It would suffice if the rights holder has attained reputation and goodwill in respect of the mark in India through advertisements or other means. Another judgment in this regard by the Supreme Court of India is of Milmet Oftho Industries & Ors. v. Allergan, Inc. (2006 (32) PTC 495), in which the court confirmed an order of interlocutory injunction restraining an Indian company from using the trademark Ocuflox and stating that “the mere fact that the Respondents have not been using the mark in India is irrelevant if they were first in the world market”. The interim injunction was therefore not vacated by the Court despite the fact that Allergan, Inc. neither made any use of the mark Ocuflox in India nor was their trademark registered in India. Subsequently, the Calcutta High Court decreed the suit in favor of Allergan, Inc. and against Milmet Oftho Industries who was restrained from using the trademark Ocuflox.

A trademark registration in India gives exclusive proprietary rights to the rights holder for protection of their trademark in India. However as the Indian legal system is based on the common law system, even an unregistered trademark is entitled to protection and the rights holder of the unregistered trademark can initiate action against a third party under the law of passing off.

Daniel & Boaz
Chennai Trademark Law firm
Trademark registration for Tamilnadu, Andhra Pradesh, Kerala, Karnataka, Pondicherry & Lakshadeep is done in the Chennai Trade Mark Registry. We offers free trademark search.
TEL:- 9840787702
Email: trademarkchennai@yahoo.in

Registering Trade Mark

A mark can be protected even before filing an application. As soon as you use your mark anywhere (such as on a diskette), put the “tm”, or in the case of services, the “sm” insignia immediately after your mark. You can find examples of this almost anywhere, such as on the cover of this magazine. By using the “tm” or “sm”, you put the world on notice that you are using this mark in your trade, and that unauthorized use of this mark can lead to infringement liability.
If you have a mark, it is probably time to think about registering it as soon as possible. Registering a trademark is not a very cumbersome task. Usually, just filing a trademark application is all that is required. The application process consists of a few steps. Filling out the application is fairly easy, but it is very important to specify, as accurately as possible, the nature of the goods or services. Since the Trademark Registry will use this description in determining the extent of your mark’s protection, as well as what class or classes the mark will be placed in, it is necessary to describe your goods or services definitively, since the description can not be added to after it’s submitted. The failure to accurately describe your goods or services will limit the protection the Trademark Registry affords you.
In determining what class your program should belong in, you may choose from the list of classes, or you may let the Trademark Registry choose for you (which would probably be easier). Another consideration is the fee. The fee is Rs.3,500/- per class, so you should be careful how many classes you choose to seek protection under. You must include at least Rs.3,500/- with the application, and if the Trademark Registry determines that your work should be included in more than one class, they will inform you and give you the option of paying the additional fee for the other classes. Finally, you will need to send samples of the mark to the Trademark Registry, which will be used as proof for your mark.
After you have submitted the application, it could take over a year before the Trademark Registry approves your trademark. When your application is received, the Trademark Registry will first look to see if someone else is using your mark in the same class in which your program will be classified. Since fees are non refundable, it might be a wise investment to have a trademark search done first, before spending the additional time and money trying to register your mark, only to find out that it is already being used. Next, the Trademark Registry will publish your application in their gazette, which allows anyone to file a claim against your mark. Whether there is a claim against your mark will determine the length of the registration period.
What do you do if your not ready to sell your program even though you have a name for it? The trademark laws will still allow you to file an application based on an intent to use your mark later. The application and fees are basically the same, however there is no need to submit the examples until your ready to actually put your program on the market. The process at the Trademark Registry is also the same, but instead of getting a certificate of registration, you will receive a notice which allows you six months to use the mark in commerce, or file for an extension of time. Once you have been given your trademark registration, you may then replace the “tm” or “sm” with the “®”. Finally, trademarks are renewable indefinitely in ten year increments if the owner certifies that the mark is still being used in commerce, or at least it has not been abandoned. During the first ten year period, the owner will have to file an affidavit showing his or her continued use of the mark. Of course, there is a fee for this as well.
Daniel & Boaz
Chennai Trademark Law firm
Trademark registration for Tamilnadu, Andhra Pradesh, Kerala, Karnataka, Pondicherry & Lakshadeep is done in the Chennai Trade Mark Registry. We offers free seach for Trademark in India.
TEL:- 9840787702
Email: trademarkchennai@yahoo.in