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TRADE MARK PRESENATION
BY HILAL AHMAD MALLA
STUDENT OF LL.M, 3RD SEMESTER,HIDAYATULLAH NATIONAL LAW UNIVERSITY RAIPUR
CHHATTISGARH
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INTELLECTUAL PROPERTY RIGHTS
INDUSTRIAL COPYRIGHT
PROPERTY
PATENT
DESIGN
TRADE MARKGEOGRAPHICAL INDICATIONS
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TRADE MARK
A trade mark is any sign which can distinguish the goods of one
trader from those of another. Sign includes, words, logos,
pictures, or a combination of these.
A trade mark is used as a marketing tool so that
customers can recognize the product of a particulartrader.
To register a trade mark , the mark must be:-distinctive, and, not deceptive, or contrary to law or
morality, and, not identical or similar to any earliermarks for the same or similar goods..
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How to select a Trade Mark ?
A word, letter or any combination thereof
and simple in design.
If it is a word it should be easy to speak,spell and remember.
The ideal word for a trade mark is an
invented or coined word
Words which are laudatory or which directly
describes the character or quality of the
goods should not be adopted.
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Geographical names connected with the reputation or
quality of the goods for which registration is sought
should not be adopted.
Are all Trade Marks registrable ?
Not possible to register a mark which is confusing with
a trade mark of another trader or a trade mark which
describes the character or quality of the goods. The
mark should not conflict with a trade mark already
registered or pending registration in respect of similar
goods.
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TRADE NAMES
Trade names are names, terms or designations that serveto identify and distinguish an enterprise and its businessactivities from those of other ent
erprise and its businessactivities
Whereas the trademark distinguishes the goods or servicesof an enterprise, a trade name identifies the entireenterprise and symbolizes the reputation and goodwill of
the business as a whole.
The main reason for protecting trademark and trade
names against infringement is that the public might bemisled into thinking that two separate enterprises usingsame or confusingly similar trademarkor a trade nameconstitute one and the same enterprise
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It is not only harmful to the consumers but it also
permits the infringing enterprise to benefit unfairly.
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SERVICE MARKS
Where a trademark is used in connection with services,
it may be called service mark.
Service marks are used by hotels, restaurants, airlines,
tourist agencies, laundries and cleaners etc.
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TRADE MARKS ACT, 1999
INTRODUCTION
Patents, designs and copyright are protected only for alimited period. On the other hand, in general, a registeredtrade mark can be protected in perpetuitysubject only to
the following conditions It is used and renewed periodically and
The registered proprietor takes prompt action againstinfringers.
First TM registered in UK under No. 1 of 1876 consistingof red equilateral triangle in respect of alcoholic beverageis still in force.
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The present Trade Marks Act, 1999 has replaced theTrade and Merchandise Marks Act, 1958. And the Trade
Marks Act, 1999 has been brought into force only on
15th September 2003. The Trade Mark Rules, 2002 are
passed under the Trade Marks Act, 1999.
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OBJECTIVES OF THE TM ACT, 1999
A co prehensive revie of TM La as required in vieof
evelop ents in trading and co ercial practices
Increasing globalization of trade and industry
The need to encourage invest ent flo s and transfer oftechnology
eed for si plification & har onization of trade ark anage ent syste s and
To give effect to i portant judicial decisions
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TM Act, 1999 was passed with objectives
To provide for registration of trade mark for services, inaddition to goods;
b) Registration of trade marks, which are imitation of wellknown trade marks, not to be permitted, besides
enlarging the grounds for refusal of registration;c) Amplification of factors to be considered for defining a
well known mark;
d) To provide only a single register with simplified procedure for registration and with equal rights.
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MEANINGAND DEFINITION OF TM
At times the consumers are duped when they buy commodities presumingthem to have originated from a certain identified source, when actually they
have not, and after buying such commodity it is found to be substandard.
Examples: Parachute Oil, Fair and Lovely cream, Lifebuoy soap etc. have
many look-a-likes in the market.
In such case, the reputation of the trader/manufacturer suffers if
spurious goods are sold as those originating from him.
Therefore, the interest of consumer and the trader can be saved ifa definite symbol which marks out the origin of goods from a
definite trade source is attached. Such symbol is called a trade
mark.
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Trade Mark is a visual symbol in the form of- A word, device or label
Applied to articles of commerce
With a view to indicate to the purchasing public that
They are goods manufactured orOtherwise dealt in by a particular person or particular
organization
As distinguished from similar goods manufactured ordealt by others
TM is a visual representation attached to goods forthe purpose of indicating their trade origin.
Examples: Lakme distinguishes the goods of LakmeCompany from that of Revlon.
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A person who sells his goods under a particular trademark acquires limited exclusive rightto use of the markin relation to those goods.
A trade markmay be registered or unregistered. Anunregistered trade mark is called common law mark.
A trade markwhen registered gets a stable existence.Aregistered trade mark can be in relation not only to itsexisting use but also for a proposed use.
The proprietor of an unregistered trade mark shall notbe entitled to institute any proceeding to prevent, or torecover damages for, the infringement of anunregistered trademark.
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However, such proprietor of unregistered trade markshall have common law remedy to take action againstanother person, forpassing offgoods as goods of theproprietor, or passing off services as services provided
by proprietor.
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STATUTORY DEFINITIONS
MARK: Section 2(1) (m) of TM Act, 1999 defines
Mark as Mark includes a Device, brand,
heading, label, ticket, name, signature, word, letter,
numeral, shape of goods, packing or combination ofcolours or any combination thereof.
Example M written in a particular style with
yellow colour for MacDonald's; 555/777 numerical
used for detergent soaps; signature used as a
mark for alcohol.
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TRADE MARK: Section 2 (1) (zb)
Trade mark is defined as a mark capable of beingrepresented graphically and that is capable of distinguishing the goods or services of one person fromthose of others and may include shape of goods, their
packing and other combination of colours.E.g. Colgate, Bata, Pantene etc.
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SERVICE MARK: Section 2 (1) (z)
It means service of any description that is made
available to any potential users and includes the
provision of service in connection with business of any
industrial or commercial matters such as banking,communications, education, financing, insurance, chit
funds, real estate, transport, storage, material
treatment, processing, supply of electrical or other
energy, boarding, loading entertainment amusement,construction, repair, conveying of news or information
and advertising.
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WELL KNOWN TRADE MARK: Section 2(1) (zg)
Well known trade mark in relation to any goods or services, means a mark which has become so to thesubstantial segment of the public which uses suchgoods or receives such services that the use of such
mark in relation to other goods or services would belikely to be taken as indicating a connection in thecourse of trade or rendering of services between thosegoods or services and a person using the mark in
relation to the first-mentioned goods or services.Example: Coco Cola, Frooti, Bata.
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COLLECTIVE MARK: Section 2(1) (g)
A Trade mark distinguishing the goods or services ofmembers of an association of persons not beingpartnership firm from those of others
The proprietor of the mark is the association.
The goods and services of a company or group of companies like GODREJ or H INDUSTAN UNILEVERLTD. may be the subject matter of collective Trademark. It is not to be registered if it is likely to deceive orcause confusion to the public.
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CERTIFICATION TRADE MARK
Section 2 (1) (e)There is a species of trade mark called as CertificationTrade mark. Its function is to indicate that the proprietorof the mark has certified the goods bearing the mark asto certain characteristics of the goods.
e.g. Geographical origin, ingredients and so on such asISI, AGMARK, FPO
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Section 479 ofIndian Penal Code, 1860 providesSection 479 ofIndian Penal Code, 1860 provides
that A mark used for denoting that moveablethat A mark used for denoting that moveable
property belongs to a particular person is called aproperty belongs to a particular person is called a
property mark.property mark. The distinction between trade mark and propertyThe distinction between trade mark and property
mark is not recognized in English Law.mark is not recognized in English Law.
However in
India, the distinction between a tradeHowever inIndia, the distinction between a trademark and a property mark is as follows:mark and a property mark is as follows:
PROPERTY MARKSPROPERTY MARKS
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FUNCTI NS FTRADE ARK
As per modern business conditions a TM performsfollowing functions:
It identifies the product and origin.
It guarantees its unchanged quality.
It advertises the product.
It creates an image for the product.
e.g. Zip Drive associated with Santro Car; Taj Mahalfor a particular quality of tea which will be different inquality from Brooke Bond; SONY is associated withelectronic items etc.
The functions of service marks in relation to servicesare similar to that of a TM in relation to goods. E.g.Courier services such as DHL, DTDC, GATIetc.
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Advantages of trade mark The Regd.Proprietor: The Regd.Proprietor of a trade
mark can stop other traders from unlawfully using histrade mark, sue for damages and secure destruction ofinfringing goods and or labels.
The Government: The Trade Marks Registry isexpected to earn a revenue of nearlyRs.40 crores during the current year and which isperpetually on the rise.
The Legal professionals: The Trade Marks Registrationsystem is driven by professionals and legaland para legal advisors(Agents) who act for the clientsin the processing of the trade marks application.
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The Purchaser and ultimately Consumers of
trade marks goods and services.
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Formalities And GovernmentFeesFor Major Trade Mark
For filing ne applications there are prescribed for sdepending on the nature of application such as For T -1,T -2, T -3, T -8, T -51 etc.
To file a otice of pposition to oppose an applicationpublished in the Trade
arks Journal (For T 5). Fees: s.2,500/- For ene al of a egd.trade ark (For T -12 ).
Fees: s.5,000/-
urcharge for belated rene al (For -10).Fees: s.3,000/-
estoration of re oved ark (For T -13)Fees:5,000/-
pplication for rectification of a registered tradeark (For T -26) Fees: s.3,000/-
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Legal Certificate (Form TM-46) (Providing details of entries in the
Register) Fees:Rs.500/ Official search request (FormTM-54). Fees:Rs.500/-
Preliminary advise of the Registrar as tothe registrability of a mark(Form TM-55).Fees: Rs.500/
Copyright search request and issuance ofcertificate (Form TM-60) Fees: Rs,5,000/-.
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TRADEMARK REGISTRATION PROCESS FLOW
SEARCH
TRADE MARK APPLICATION
ISSUANCE OF OFFICIAL RESULT
OFFICIAL
ACTION
EARING
RESPONSE
RESPONSE
ACCEPTED
ACCEPTANCE PUBLICATION
APPLICATION 3 MONT
S
REGISTRATION
RENEWAL
10 YEARS FROM T
E
DATE OF APPLICATION
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DETAILED PROCEDURE OF REGISTRATION
Two StagesClassification and Pre-Filing Search
STAGE ONE
Trademark 42 Classes (including 7 Classes for Service Marks)
for Service Marks)
TM 54 (Search application) three copies
TM 55 (Registrars Preliminary Advice)
Public Search at Trademark Office
STAGE TWO Involves the registration Process itself
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Trademark Applicationssuance of Official Issuance of Official Receipt ( TM No will be issued).
Examination Report
Within three months from application. Response within one month from the date of the
examination report.
Response by filing an affidavit.
Response by hearing.
Response by interview (in case the agent has 100+
pending cases.
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Jurisdiction
TRADE MARKS REGISTRY, MUMBAI(HEAD OFFICE)
101, MAHARSHIKARVE ROAD,
101, MAHARSHIKARVE ROAD,
PRATISHTA BHAWAN, MUMBAI-400 020
PRATISHTA BHAWAN, MUMBAI-400 020
TEL. 22030924/22081315, FAX: 22013694.
Jurisdiction: State of Maharashtra, Madhya Pradesh andGoa
Trade Marks Registry, Delhi
Trade Marks Registry, Delhi
Intellectual Property Bhawan, Plot NO.32, Section 14, Dwarka, Delhi
Intellectual Property Bhawan, Plot NO.32, Section 14, Dwarka, Delhi
Tel. 011-28082915/ 16/17 Fax:
Tel. 011-28082915/ 16/17 Fax
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Jurisdiction: State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur,
Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, AndamanNicobar
Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, AndamanNicobar
Island.
Island.
Trade Marks Registry, Ahmadabad,
Trade Marks Registry, Ahmadabad,
15/27 National Chambers, 1st floor,
15/27 National Chambers, 1st floor,
Ashram road,
Ashram road,
Ahmedabad-380 009.
Ahmedabad-380 009.
Tel: 079-26580567
Tel: 079-265
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Jurisdiction: The state ofGujarat and Rajasthan and Union
Territory of Damman, Diu, Dadra and Nagar Haveli
and Nagar Haveli
Trade Marks Registry, Chennai
Trade Marks Registry, Chennai IPR building, GST Road,
IPR building, GST Road,
Chennai-31 Tel : 044-23222441
Chennai-31 Tel : 044-23222441
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Documents Information Required for Filing trademark
Application.
Logo soft copy in JPEG FORM
TM 48 (FORM OF AUTHORIZATION)
DATE OF FIRST USE OF THE MARK
.
NAME AND ADRESS OF THE PROPRIETOR
OF THE MARK.
REQUIRED FEE.
Thank you
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