trademark registration

1
Features of the Trademarks Act
2
Registration of Trademark for services

• It is mentioned in preamble and Section
  2(1)(z) of the Trademarks Act, 1999. As set out
  in the preamble, the new law provides features
  for registration of trademarks for services, in
  addition to goods, the need for which was greatly
  felt with the growth of the service sector in
  this country. Further, it is obligatory on India
  to provide facility for protection of
  trademarks in respect of services under the Paris
  Convention Article 1(2), read with Article 6
  and for registration under the TRIPS agreement
  Article 15(4) of which India has since become a
  member. Consequently, the law contains a
  comprehensive definition of the expression
  services and provides for registration
  of trademarks for services in addition to goods.

3
Trademark Registration
4
Enlargement of definition of trademarks

• The definition of Trademarks has been
  enlarged, so as to bring the law in conformity
  with the current trend all over the world. Being
  an inclusive definition, it is only illustrative
  features and it follows that even something not
  falling into one of these categories may be
  regarded as a trademark for the purpose of the
  Act.

5
Registrability of trademarks simplified

• For registrability, the mark will have to be
  capable of distinguishing the goods or services
  of the applicant from those of the others. Thus
  the test of registrability of trademarks under
  the new act will generally be similar to what was
  necessary to secure a registration in Part B of
  the register under the old Act. Any mark which is
  revealed to be distinctive in fact by usability
  will eligible for registration under the law,
  since it does not considered being necessary as
  under the old law that the mark must also be
  changed to differentiate a concept eliminated in
  the current law.

6
Enhanced protection for well-known trademarks

• With a view to significantly enhance
  protection to well-known trademarks, the Act
  incorporates a definition of the
  expression well-known trademark (in section
  2(1)(zg). Further, the law seeks features to
  prevent registration of trademark, which are
  imitations of well-known marks, by enlarging the
  grounds for refusal of registration under
  Sections 9 and 11 of the Act. The proprietor of
  well-known mark will be entitle to prevent use of
  identical or similar trademark in connection with
  goods or services, though not similar to those
  for which the mark is registered, where such use
  is without due cause, would take unfair advantage
  of or to be detrimental to the distinctive
  character or reputation of the well-known trademar
  k.

7
Trademark Registration
8
Defensive registration system in 1958 Act omitted

• Now that the law provides enhanced
  protection to well-known trademarks, the system
  of defensive registration as under the 1958 Act,
  which was in any case limited only to invented
  words became redundant. The present Act,
  therefore omits the provision relating to
  defensive registration, while amplifying the
  features to be considered for determining a
  well-known mark. Section 159 enacts that a
  defensive registration effected under section 47
  of the Trade and Merchandise Marks Act, 1958 will
  cease to have effect on the date suddenly after
  the expiry of five years of the commencement of
  the new Act or after the expiry of the period for
  which it was registered or renewed, whichever
  have priority.

9
Part A and Part B registration system abolished

• Under the 1958 Act, the law provided
  for Trademark registration in Part A or Part B.
  In Part A were registered marks which were
  distinctive, namely, those which were considered
  to be adapted to distinguish and Part B
  Consisted of marks which were considered as
  capable of distinguishing the goods. The new
  Act has terminated the system of carrying the
  two-part registration of trademarks in Part A and
  Part b within the various different legal rights,
  and to give only a single register with brief
  procedure for registration of marks and with
  equal rights. With the merger of Part A and Part
  B of the register into a single register, the
  provision for presumption of conclusive validity
  of a trademark after 7 years as contained in
  former section 32 has been omitted, as being
  redundant.

10
Period of renewal modified

• Under the 1958 Act, trademark registration was
  required to be renewed for successive periods of
  7 years for its maintenance. Under the Trademarks
  Act, 1999, the registration is for a period of 10
  years and so the renewal of registration is also
  provided accordingly

11
Trademark Registration
12
Filing Multi class applications permitted

• Unlike under the earlier law, which required
  that an application to register a trademark must
  be in respect of goods falling only one class of
  the 34 classes of goods, the new legislation
  enables an applicant to file a single application
  for registration of the same mark in respect of
  goods or services falling in more than one class.
  Now goods and services are classified in 45
  classes. In other words, the law facilities and
  features for registration of the same mark in
  several classes by means of a single application.
  However, the fee payable will be in respect of
  each class of goods or service.

13
Law concerning registration of registered users
simplified

• The definition of permitted user has been
  substantially changed to cover use of the mark
  both by registered user and unregistered common
  law licensee, who is in any case entitled to use
  the mark by virtue of the agreement with the
  registered proprietor. Consequently, the
  procedure for registration of registered user has
  been greatly simplified to encourage and
  facilitate such registration. Since the official
  scrutiny of such applications will be confined
  only to matters directly related to such
  registration and not extended to extraneous
  considerations, such as development of industry.
  Trade or commerce as under the 1958 Act, the
  authority to register such licensing agreement is
  transferred from Central Government to the
  legitimate authority, viz the Registrar
  of Trademarks.

14
Features for registration of collective marks

• The new Act has introduced a set of provisions
  and features for registration of collective
  mark which belongs to a group or association of
  persons, whose use is reserved for members of the
  group or association of persons. Collective
  marks would serve to distinguish characteristic
  features of the products or services offered by
  those enterprises.

15
Trademark Registration
16
Appeals from Registrar to lie to Appellate Board,
instead of High Court

• Appeals from orders or decisions of
  Registrar which had to be filed before the high
  Court having the jurisdiction as defined under
  the old Act, would no longer lie to such High
  Courts, but would lie before the Intellectual
  Property Appellate Board, constituted by
  Trademarks Act, 1999. The Act explicitly bars any
  court or authority from exercising jurisdiction,
  powers or authority in relation to appeals vide
  section 93. Further, in terms of section 100,
  all the cases of appeals and rectification
  proceedings pending before any High Court will be
  transferred to the Appellate Board from such date
  as may be notified in the Official Gazette.

17
Scope of infringement of trademarks widened

• Pursuant to the enlarged grounds for refusal
  of registration on relative grounds, the scope
  of the law governing infringement
  of trademarks has been enlarged to include where
  the infringing use is likely to cause confusion
  or is likely to be taken to have an association
  with an registered trademark. In keeping with the
  legislative intent to protect well-known marks,
  the law enacts that the use of an identical or
  similar mark on goods or services which are not
  similar will constitute infringement, where the
  registered trademark has a reputation in India
  and the use without due cause will take unfair
  advantage or features of or is detrimental to the
  distinctive character or repute of the registered
  mark. Further the law, as contained in section
  29, specifies the circumstances and types of uses
  which constitute infringement of a registered
  trademark.

18
Enhanced punishment for trademark offences

• With a view to provide deterrent punishment
  to discourage sale of spurious goods, penalty for
  applying false trademark, trade description,
  etc., and for selling goods or providing services
  to which false trademark or false trade
  description is applied, has been enhanced,
  removing the distinction between offences in
  relation to drugs or food, on the one hand,
  and other categories of goods, on the other.
  Further, the law provides for further enhanced
  punishment of second and subsequent convictions.
  The offences are explicitly declared as
  cognizable.

19
Trademark Registration
20
Forum for institution of infringement proceedings

• Suit for infringement will have to be filed
  before a court not inferior to that of a District
  Court, as under the old law. But a significant
  change in the new law is that the term District
  Court having jurisdiction will include a
  district court within the local limits of whose
  jurisdiction, the plaintiff actually or
  voluntarily resides or carries on business or
  personally works for gain. The amendment features
  the law of trademark in this respect in
  conformity with the Copyright Act, as very often
  an artistic work in as trademark label is also
  registered under the optional provision
  concerning registration of copyright.

21
Removal of mark on ground of non-use

• The period of 5 years within which a mark
  must be used under the old Act, was determined
  from the date of trademark registration, which
  related back to the date of application for all
  purposes. Since there is considerable time lag
  between date of application and date of
  registration, such a law was causing hardship to
  registrants. The new Act, therefore, explicitly
  provides that the period of 5 years non-use will
  be reckoned from the date of actual registration
  and not from the application date. Further, use
  by not only a registered user, but also an
  unregistered permitted user, will accrue to the
  benefit of the registered proprietor for any
  purpose for which use is material under the
  Act. Another change is that any use started
  during the period of three months before the
  filing of an application for removal for non-use
  will be disregarded, as against a period of one
  month stipulated in the old law. The Special
  circumstances which would excuse non-use, would
  henceforth include restrictions imposed by any
  law or regulation on the use of trademark in
  India.

22
Assignment of unregistered trademarks

• Under the ole law, an unregistered trademark wa
  s not assignable or transmissible except along
  with the goodwill of the business concerned,
  except in certain specified circumstances. This
  has been abolished. It will be thus permissible
  under the new law to assign an unregistered tradem
  ark with or without the goodwill of the business
  concerned.

23
Trademark Registration
24
Amendment of companies Act

•   With a view to prohibit the use of someone
  elses trademark as part of corporate name or
  name of a business concern, the Companies Act was
  amended suitably as indicated in the Schedule
  under the features of section 158 of
  the Trademarks Act, 1999. It may be noted in the
  companies act, 1956 has been replaced by the
  Companies Act, 2013. In this connection, see
  section 16 of the new companies Act, 2013 which
  is similar to section 22 of the companies Act,
  1956.