Intellectual Property Rights

Chapter - 4
 What we are going to discuss
Trademark - Introduction

Different kinds of marks

Non Registrable Trademarks

Registration of Trademarks

Rights of holder

Assignment and licensing of marks

Infringement, Remedies & Penalties

Trademarks registry and appellate board

 Trademark - Introduction

 A trademark is a mark which is unique, distinctive, made up of

names, symbols, signs etc., and capable of distinguishing one
product from another used by manufacturer or vendor
in connection with a product or service

 Term of protection of a trademark is ten years, which may

be renewed for a further period of ten years on payment of
prescribed renewal fees
Examples
 Development of Trademark law in India

India's statutory Trademarks Law

1860
1940 Indian Trademarks Act in corresponded
with the English Trademarks Act
Trademark and Merchandise Act
1958

1999 Trademark Act

Amendment : 2010
 Different kinds of marks

SERVICE MARK COLLECTIVE CERTIFICATION TRADE DRESS

MARK MARK
 Service Mark
A service Mark is any word, name, symbol, device, or any
combination used or intended to be used in commerce to identify and
distinguish the services of one provider by others and to indicate the
source of services

Service Marks do not cover physical goods but only the provision of
services

It plays a crucial role in referring to a particular quality or standard

for which the service mark is used and for marketing, promoting and
sales of a product or service
Examples for Service Mark
 Collective Mark
A collective Mark is one used by members of a cooperative
association, union or other collective group or other group or
organization to identify source of the goods or services.

1. Collective Membership Mark: These marks are not used to indicate

source of goods or services, but they indicate that the seller is part of a
defined group

2. Collective Trademarks and Collective Service marks: These are used

to indicate the source. Such collective marks are used by a group to
indicate that the goods or services offered by each individual member of
the group are products or services of the collective
Examples for Collective Mark
 Certification Mark
A certification Mark is a mark which indicates that certain qualities of
goods or services in connection with which the mark are used is
certified.

An important requirement for registration of certification mark is that

entity which applies for registration is competent to certify the
products concerned

Thus, owner of certification mark must be representative of products

to which certification mark applies
Examples for Certification Mark
 Trade Dress

Trade dress refers to combination of elements that make up the look,

feel, or environment of a product or business; the term can refer to
individual elements of a product or business image as well as to the
image the combination of those elements creates as a whole

Trade Dress may include a few important features like Packaging,

Size, Shape, Colour, Colour Combination, Texture, Graphics Design,
Placement of words and decorations on a product and Particular Sale
Technique
Examples for Trade dress
 Non-registerable Trademarks

It contains or comprises of any

It is of such nature as to deceive matter likely to hurt the religious
the public or cause confusion susceptibilities of any class of
section of the citizens of India

Its use is prohibited under the

It comprises or contains Emblems and Names (Prevention
scandalous or obscene matter of Improper Use) Act, 1950 (12 of
1950).
 Non-registerable Trademarks

EXCLUSIVELY OF THE SHAPE OF GOODS THE SHAPE OF GOOD WHICH IS NECESSARY THE SHAPE WHICH GIVES SUBSTANTIAL
WHICH RESULTS FROM THE NATURE OF TO OBTAIN A TECHNICAL RESULT VALUE OF THE GOODS
THE GOODS THEMSELVES
 Procedure for registration of Trademark
Any person claiming to be the proprietor of a trade mark used or
proposed to be used, who is desirous of registering it, shall apply in
writing to the Registrar in the prescribed manner for the registration of
trade mark

A single application may be made for registration of a trade mark for

different classes of goods and services and fee payable therefore
shall be in respect of each such class of goods or services

Every application shall be filed in the office of the Trade Mark

Registry within whose territorial limits the principal place of business
in India
 Trademark Registration Process
Registration of a trade mark could be completed within twelve months from the date of application

Publication in Trademark
Filing of Application Journal

1 3
Form TM-A 4
2
Examination
of Application
Registration
Approved
 Madrid Protocol

The Protocol allows

you to obtain and Single Filing to seek Centralized
maintain protection protection in various Management of
for your brand around Territories your Trade Marks
the world
 Registration of Trademarks - International

• National of India
File International Application form • Natural person or legal entity domiciled in
(MM2) through online India
• “Basic mark” in India

Check
• The applicant details
• Mark in application is identical to basic mark
• Goods and services are covered by those basic
mark
Certification by India TM Registry
 Transmission of International Amount of fee in Swiss Francs pay directly to WIPO
Application

Publish the international registration in the WIPO

Gazette of International Marks
International Trademark Registration
Notify it to the Offices of the designated
Contracting Parties (DCPs)

ISSUE OF INTERNATIONAL REGISTRATION CERTIFICATE

 Assignment of Trademarks
Assignment is the transfer of ownership which simply means any act
of parties by which interest or rights associated with property of any
kind can be transferred from one party to another party

The assignee will become the subsequent proprietor of the trademark

assigned whether in part or in full based on the conditions agreed
between the parties

Trade mark can be assignable or transmissible by three Modes

• By legal operation
• Inheritance
• Giving authority to other party
 Transfer of Trademark along with goodwill

All the rights vested in trademark with rights

to use, sell, assign, transfer, modify, delete or
stop such or any kind of products or services
in respect of that trademark are completely
transferred to assignee with no reservation​
 Transfer of Trademark without goodwill

Assignor has reserved their rights in respect of such trademark in

particular goods or services & has not absolutely transferred the
trademark in all goods or services. This means that assignor & assignee
both can use the same trademark but in dissimilar goods or services
 License of Trademarks

The licensee of a trademark will enjoy

the same rights as that enjoyed by a
registered trademark proprietor.

Thus, the benefit of use of the mark by

an unregistered user also accrues to the
registered proprietor
 Franchise of Trademarks

Right to sell goods/services supplied by seller with the usage of

trademark and also franchiser teaches entire business format
 Trademark Infringement
A registered trade mark is infringed by a person who, not being a registered
proprietor or a person using by way of permitted use, uses in the course of
trade
• which is identical with, or deceptively similar to, the trade mark in
relation to goods or services in respect of which the trade mark is
registered
• cause confusion on the part of the public
• use as their trade name or part of their trade name, or name is their
business concern or part of the name, of their business concern dealing
in goods or services
• used for labeling or packaging goods, as a business paper, or for
advertising goods or services
Examples
 Remedies

1. Interim Injunctions - During the pendency of the case before

a full-fledged trial

2. Permanent Injunctions - Full-fledged trial

 Penalties

The penalty that a court may grant in any suit for infringement for
applying false trademarks, trade descriptions includes an injunction and
at the option of Plantiff, either damages or an account of profits

Enhanced penalty on second or subsequent conviction

• Imprisonment for a term of one year may extend to 3 years

• Fine of one lakh rupees may extend to two lakh rupees
 Trademark Registry contains Names, addresses and description of the
proprietors, notifications of assignment and transmissions, the name, addresses and
description of registered users, conditions, limitations and such other matters relating to
registered trade mark

There shall be kept at each branch office of the Trade Marks Registry

The Register shall be kept under the control and management of the Registrar

Registrar of Trademark and Trademark Registry

Intellectual Property Appellate Board
(15th September 2003)

The Appellate Board shall consist of a Chairman, Vice –Chairman and such
number of other Members, as the Central Government may, deem fit and the
jurisdiction, powers and authority of the Appellate Board may be exercised by
Benches

A bench shall consist of one Judicial Member and one Technical Member and
shall sit at such place as the Central Government may, by notification in the
Official Gazette
 Links for Reference

World Intellectual Property Organisation

https://www.wipo.int/trademarks/en/

Controller General of Patents, Designs and Trademarks

http://www.ipindia.nic.in/trade-marks.htm

Cell for IPR promotion and Management (CIPAM)

http://cipam.gov.in/know-your-ip-2/trademark/
 To know more...

Visit : http://www.bdu.ac.in/cells/ipr/

E-Books on IPR :
http://www.bdu.ac.in/cells/ipr/docs/ipr-tamil-ebook.pdf (Tamil)
http://www.bdu.ac.in/cells/ipr/docs/ipr-eng-ebook.pdf (English)

E-mail: iprcell@bdu.ac.in
Thanks for your Participation