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TRADEMARKS |
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A Trademark is a distinctive sign, which identifies certain goods or services as those produced or provided by a specific person or enterprise. The system helps consumers to identity and purchase a product or service because of its nature and quality, indicated by its unique trademark, meets their needs. A Trademark is a visual symbol or sign in the form of words, letters, numbers, drawings or pictures, emblems, colors or combination of colors, or the form or other special presentation of containers or packages for the product. Trademark is valuable intellectual property, which can be protected forever as long as its registration is renewed for every 10 years, unlike any other intellectual property. The law relating to the trademark is governed by the Trademark Act, 1999. |
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| FREQUENTLY ASKED QUESTIONS |
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| FREQUENTLY ASKED QUESTIONS -II |
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| FAQ - I Solutions |
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What is a trade mark? |
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A trade mark (popularly known as brand name) in laymans language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking.
The legal requirements to register a trade mark under the Act are:
- The selected mark should be capable of being represented graphically (that is in the paper form).
- It should be capable of distinguishing the goods or services of one undertaking from those of others.
It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person |
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How to select a trade mark? |
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- If it is a word it should be easy to speak, spell and remember.
- The best trade marks are invented words or coined words.
- Please avoid selection of a geographical name. No one can have monopoly right on it.
- Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc)
- It is advisable to conduct a market survey to ascertain if same/similar mark is used in market.
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What trademarks can be registered? |
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Under modern business condition a trade mark performs four functions
- It identifies the goods / or services and its origin.
- It guarantees its unchanged quality
- It advertises the goods/services
It creates an image for the goods/ services. |
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Who can apply for a trade mark and how? |
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Any person claiming to be the proprietor of a trade mark used or proposed to be used by him may apply in writing in prescribed manner for registration. The application should contain the trade mark, the goods/services, name and address of applicant and agent (if any) with power of attorney, period of use of the mark and signature. The application should be in English or Hindi. It should be filed at the appropriate office. |
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How to apply for a trade mark in respect of particular goods or services? |
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It is provided under the Trade Marks Act, 1999 that goods and services are classified according to the International Classification of goods and services. Currently schedule IV of the Act provides a summary of list of such goods and services falling in different classes which is merely indicative. The Registrar is the final authority in the determination of the class in which particular goods or services fall. The Schedule IV of the Act is annexed at the end of this questionnaire on trade marks. For detailed description of other goods and services please refer to the International Classification published by WIPO or contact the local office for assistance. |
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What are different types of trade marks available for adoption? |
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- Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.
- An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
- Letters or numerals or any combination thereof.
- The right to proprietorship of a trade mark may be acquired by either registration under the Act or by use in relation to particular goods or service.
- Devices, including fancy devices or symbols
- Monograms
- Combination of colors or even a single color in combination with a word or device
- Shape of goods or their packaging
- Marks constituting a 3- dimensional sign.
- Sound marks when represented in conventional notation or described in words by being graphically represented.
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What purpose the trade mark system serves? |
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It identifies the actual physical origin of goods and services. The brand itself is the seal of authenticity.
- It guarantees the identity of the origin of goods and services.
- It stimulates further purchase.
- It serves as a badge of loyalty and affiliation.
- It may enable consumer to make a life style or fashion statement.
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Who benefits from a trade mark? |
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The Regd.Proprietor: The Regd.Proprietor of a trade mark can stop other traders from unlawfully using his trade mark, sue for damages and secure destruction of infringing goods and or labels.
The Government: The Trade Marks Registry is expected to earn a revenue of nearly Rs.40 crores during the current year and which is perpetually on the rise.
The Legal professionals: The Trade Marks Registration system is driven by professionals and legal and Para legal advisors(Agents) who act for the clients in the processing of the trade marks application.
The Purchaser and ultimately Consumers of trade marks goods and services. |
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What are the benefits of registering a trade mark? |
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The registration of a trade mark confers upon the owner the exclusive right to the use of the registered trade mark and indicates so by using the symbol (R) in relation to the goods or services in respect of which the mark is registered and seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc. Also, where two or more persons have registered identical or nearly similar mark due to special circumstances such exclusive right does not operate against each other. |
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What are the formalities and government fees for major trade mark Transaction? |
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- For filing new applications there are prescribed forms depending on the nature of application such as Form TM-1, TM-2, TM-3, TM-8, TM-51 etc.
Fees: Rs.2,500/-
- To file a Notice of Opposition to oppose an application published in the Trade Marks Journal (FormTM-5). Fees:Rs.2,500/-
- For Renewal of a Regd.trade mark (Form TM-12 ). Fees: Rs.5,000/-
- Surcharge for belated renewal (Form -10).Fees:Rs.3,000/-
- Restoration of removed mark (Form TM-13) Fees:5,000/-
- Application for rectification of a registered trade mark (Form TM-26) Fees:Rs.3,000/-
- Legal Certificate (Form TM-46)
(Providing details of entries in the Register) Fees:Rs.500/-
- Official search request (Form TM-54). Fees:Rs.500/-
- Preliminary advise of the Registrar as to the registrability of a mark(Form TM-55).Fees: Rs.500/-.
- Copyright search request and issuance of certificate (Form TM-60) Fees: Rs,5,000/-.
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What are the sources of trade mark laws? |
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- The national statue i.e., the Trade Marks Act, 1999 and rules thereunder .
- International multilateral convention.
- National bilateral treaty.
- Regional treaty.
- Decision of the courts.
- Office practice and rulings
- Decision of Intellectual Property Appellate Board.
- Text books written by academician and professional experts.
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What does the Register of trade mark contain? |
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The register of trade mark currently maintained in electronic form contains interalia the trade mark the class and goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred; the address of the proprietors; particulars of trade or other description of the proprietor; the convention application date (if applicable); where a trade mark has been registered with the consent of proprietor of an earlier mark or earlier rights, that fact. |
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Can any correction be made in the application or register? |
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Yes. But the basic principle is that the trade mark applied for should not be substantially altered affecting its identity. Subject to this changes are permissible according to rules detailed in the subordinate legislation. |
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Can a registered trade mark be removed from the register? |
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Yes. It can be removed on application to the Registrar on prescribed form on the ground that the mark is wrongly remaining on the register. The Registrar also can sue moto issue Notice for removal of a registered trade mark? |
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| FAQ-II Solutions |
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What are the benefits of trademark registration? |
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Trademark registration protects the goodwill of a business and also helps to identify and distinguish the source of the goods or services of one party from those of others. Trademark registration is an evidence of ownership of the trademark and also constructive notice nationwide are issued of the trademark owner's claim. Trademark registration in India can also be used as a basis for obtaining registration in foreign countries |
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Who can file an application for trademark registration? |
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The application must be filed in the name of the owner of the trademark; usually an individual, corporation or partnership. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark. |
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What trademarks can be registered? |
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A trade mark which consists of at least one of the following essential particulars the name of a company, individual or firm represented in a particular or special manner; the signature of the applicant for registration;
one or more invented words; one or more words having no direct reference to the character or quality of the goods and not being according to its ordinary signification a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India;
any other distinctive trade mark; a trade mark which has acquired distinctiveness by use over a prolonged period of time, may be registered. |
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What trademarks may not be registered? |
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Trademark which is identical to or deceptively similar to a trademark which is already registered or has already been applied for in the name of a different proprietor in respect of the same goods or description of goods, may not be registered. Also trademark the use of which would be likely to deceive or cause confusion; the use of which would be contrary to any law in force; which comprises or contains scandalous or obscene matter or any matter likely to hurt the religions susceptibilities of any class or section of the citizens of India; may not be registered. |
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What is the procedure to be followed before applying for registration? |
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Conduct a market research to ascertain whether any identical or deceptively similar mark is used for the same goods by any other person. It is advisable not to imitate other person’s trade mark or any other well known trade mark even if the goods are different. Before applying for registration it is desirable to obtain preliminary advice regarding the distinctiveness of your mark from the Registrar |
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How do I find out whether a mark is already registered? |
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In order to determine whether any person or company is using a particular trademark, a trademark search can be conducted. |
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What is a trademark search? |
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A trademark search is designed to identify pre-existing trademarks that have the potential to conflict with your name. Without the benefit of a trademark search, you run the risk of being sued for trademark infringement and losing the right to use your new business name, product name, domain name or slogan after you have invested in that name. Uncovering and avoiding trademark conflicts with your name can often mean the difference between the success and failure of your business venture. |
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Is it advisable to conduct an official search of the govt. records before filing an application? |
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Yes, it is advisable to get the official search report from the registered and pending application records before filing the application |
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Do I need a trademark search? |
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Your trademark search results will help you save valuable time and money. Before you make a large investment in a name, you want to know whether it is secure. You would not like to promote a name that is confusingly similar to another company's trademark and subjects you to the risk of a lawsuit for trademark infringement Your search results will help you complete your own application by giving you numerous examples of completed registrations |
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How long does it take for a mark to be registered? |
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Due to a lot of back log and also since the applications are processed on "first come first serve" basis generally, it takes on an average about 5-6 years before the mark is registered provided no opposition is entered by any third party |
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How long does a trademark registration last? |
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A trademark registration is valid for ten years from the date of filing. You have to apply for renewal after this time-period. |
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May I cover more than one mark in a single application? |
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No. A separate application must be filed for each mark the applicant wishes to register. Likewise, if the applicant wishes to register the same mark in more than one class, a separate application must be filed for each class. |
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What are the documents needed for filing a trademark application? |
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Other than your particulars that you submit to us while requesting the document needed is power of attorney in favor of us. in our favor. |
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Can the office refuse to register a mark? |
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Yes, the Trademark office will refuse to register matter if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered. |
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Do I have to be an Indian citizen to obtain a trademark registration? |
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No. However, an applicant's citizenship must be set forth in the record. If an applicant is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, then the applicant must choose which citizenship will be printed in the Official Gazette and on the certificate of registration. |
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Is a trademark registration valid outside India as well? |
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No. Certain countries, however, do recognize a trademark registration in India as a basis for registering the mark in those countries. The laws of each country regarding registration must be consulted. |
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Is it possible for a foreign corporation to license a trade mark in India against payment of royalty in a foreign currency? |
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An agreement for payment of royalty to a non-resident requires the prior approval of the government. The government's policy statement makes it clear that in case of a use of a foreign brand name a payment of royalty shall not be allowed unless the products on which the mark is used are intended for export. |
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Can the ownership of a trademark be assigned or transferred from one person to another? |
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Yes. A registered mark, or a mark for which an application to register has been filed is assignable. |
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When is it proper to use the "TM" and the registration symbol "®" with the mark? |
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Once you have filed an application for registration of trademark, the "TM" symbol may be used with the mark. Anyone who claims rights in a mark may use the TM (trademark) designation with the mark to alert the public to the claim. However, the registration symbol, ®, may only be used once the mark is actually registered in the Trademark Registrar's Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered. |
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How can I check on the status of my pending trademark application? |
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Once you receive a filing receipt containing the serial number of your application, you may check on the status of a pending case by getting in touch with us |
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What forms of protection are available for trademarks? |
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There are two forms of legal protection that are available for trademarks. Under the Trade and Merchandise Marks Act, 1999, once the trademark is registered, infringement can be easily established. In case of unregistered marks and marks which are not registerable, the only form of protection is the common law remedy of passing off. Trademark law protects the right of the owner of a mark to use marks that distinguish his goods from others and to prevent others from using marks that are likely to cause confusion. |
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What is the difference between the protection available for registered trademarks (infringement action) and unregistered trademarks (action for passing off)? |
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The basic difference between an infringement action and an action for passing off is that the former is a statutory remedy and the latter 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. |
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How do I contest someone else using a trademark similar to mine? |
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There are several ways to dispute use of your trademark by a third party. Send us an e-mail and depending on the actual situation, we may assist you in contesting the trademark. |
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What are the costs involved for trademark registration? |
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Same are furnished in schedules. |
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