Salient Features Of The Trade Mark Act-leb Ppt Group 3 106b4g

Salient Features of the Trade Mark Act, 1999 Prepared by: Aayushi Pathak Anurag Sarkar Bharat Khosla Mahender Konda Shantanu Srivastava

Background • With the globalization of trade, brand names, trade names, marks, etc. have attained an immense value. • Requires minimum standard of protection and efficient procedures for enforcement as were recognized under the TRIPS (The Agreement on TradeRelated Aspects of Intellectual Property Rights). • The Trade Marks Act provides, inter alia, for registration of service marks, filing of multiclass applications, increasing the term of registration of a trademark to ten years as well as recognition of the concept of well-known marks, etc.

Definition • A “Trademark” has been defined in section 2(zb) of the Trademarks Act, 1999

• “Trademark” means a mark a capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colors. • A ‘Mark’ includes a device, brand, heading, label, ticket, name (including abbreviations), signature, word, letter, numerals, shape of goods, packaging or combination of colors and any combination thereof.

Chapter II: THE AND CONDITIONS FOR REGISTRATION- Section 3-11 • Central Govt. appoints a controller- General of Patents, Designs and Trade Mark who is known as the Registrar of Trade Marks • A record is maintained by the Registrar at the Trade Marks Registry which is called the of Trade Marks • The Registrar classifies goods or services in accordance with the International Classification of goods and services published by World Intellectual Property Organization (WIPO).

Disqualifications • Under section 9(2) a mark shall not be ed as a trade mark if: • it is of such nature as to deceive the public or cause confusion • it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India • it comprises or contains scandalous or obscene matter • its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 • Under section 9(3) a mark shall not be ed as a trade mark if it consists exclusively of: • the shape of goods which results from the nature of the goods themselves • the shape of goods which is necessary to obtain a technical result

Protection of well-known trade marks- Section 11 • A well-known Trademark in relation to any goods or services means a mark that has become so to the substantial segment of the public, which uses such goods or receives such services such that the use of such a mark in relation to other goods and services is likely to be taken as indicating a connection between the two marks.

• The proprietor of well-known mark will be entitled to prevent use of identical or similar trade mark in connection with goods or services which in future may lead to unfair advantage or detrimental to the reputation of the well-known trademark.

APPLICATION FOR REGISTRATION • Any person who claims to be the proprietor of the trademark proposed shall give in writing in the prescribed manner. • Single registration maybe done for registration of different classes of goods. Payment of the fee in that case will be with respect to it. • Subject to the provisions provided by this act the registrar may reject the application or accept it or may refer it for further modifications, limitations as it may be required. • In such a scenario the registrar has to provide a sound ground for the such an act and reasons for it. • Whether after the acceptance of application for registration but before registration the registrar might withdraw the application if he feels some errors are there. (sec19). • He may also withdraw the acceptance of the application if he feels so.

• (Sec21)The Registrar shall serve a copy of the notice on the applicant for Registration and, within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar, in the prescribed manner a counter statement of the grounds on which he relies for his application. • On doing so the registrar shall send the copy to opposition. • Upon producing the evidences the registrar may provide opportunity to the opposition to be heard of. • Correction and amendment: can be made as stated in sec 22 whether or before the acceptance of an application. • tly owned trademarks: no one is authorized to use the trademark independently and thus will only be issued by to used tly.

• (sec-27)No action for infringement of uned trademarks: no person is entitled to pursue any proceeding against a person for use of uned trade mark. • (sec-28)Subject to the other provisions of this Act, the registration of a trademark shall, if valid, give to the ed proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is ed and to obtain relief in respect of infringement of trade mark in the manner provided by this Act. • (2) The exclusive right to the use of a trade mark given under sub-section • (1) shall be subject to any conditions and limitations to which the registration is subject. Limits on the effect or ed trademarks: (29) • A ed trademark is infringed by a person who, not be being a ed proprietor or a person using by way of permitted use, uses in the course of trade a mark which because of -(a) its identity with the ed trade mark and the similarity of the goods or services covered by such ed trade mark : or (b) its similarity to the ed trade mark and the identity or Similarity of the goods or services covered by such ed trade mark.

• (sec-31)In all the legal proceeding the registration of trade mark and the following transactions and assignments should be the prime evidence of validity. • (sec-37) Power of the ed person. The ed person has the power to assign the trademark or on the receipt to any person. • (Sec-39) an uned trade mark can pe assigned or transmitted without any goodwill of the business. • (Sec-41) the assignment or transferability of the trademark certificate will not be done without the consent of the registrar.

CHAPTER VI:USE OF TRADE MARKS AND ED S Proposed use of trade mark by company to be formed, etc. Section 46 •

It is regarding the registration and use of a trademark. The registrar will grant permission if-

 A company is about to be formed and the trademark will be used in relation with the said goods or services  The proprietor intends it to be used by a person, as a ed . Removal from and imposition of limitations on ground of no use. Section 47 •

A ed trademark may be taken off the in the following cases

 When the trademark ed by the company was not taken for any bona fied uses.  Unless a similar trademark has been ed by the company.  If the trademark is restricted in India. ed s. Section 48 •

The trademark will be used by the proprietor or a ed person only. Registration as ed . Section 49

•

The registration of will take place through an agreement duly signed and an affidavit made

CHAPTER VI:USE OF TRADE MARKS AND ED S Power of registrar for variation or cancellation of registration as ed . Section 50 •

The registration of the ed may be canceled when-

 An application in writing is given in prescribed manner by the proprietor to cancel it.  The ed has used the trademark in a manner not prescribed in the registration.  The ed has given false or incomplete information in the agreement.  The registrar or any other person finds that any stipulation in the agreement regarding the quantity of goods or services is not being enforced or complied with.  The trade mark for a particular good or service is no longer ed. Power of registrar to call for information relating to agreement in respect of ed . Section 51 • The registrar can ask the proprietor to confirm weather the trademark continues to be in force or not. • If the proprietor fails to do so the registrar can cancel the registration. Rights of ed to take proceedings against infringement. Section 52

CHAPTER VI:USE OF TRADE MARKS AND ED S ed not to have right of assignment or transmission. Section 54 • When the ed enters into a partnership with any other person. The firm can use the trademark as long as the is part of the firm. Use of one of associated or substantially identical trademarks equivalent to use of another. Section 55 • If the firm is required to prove something regarding the trademark, it can use the same or identical trademark for verification • The registration of this trademark will also extend to any identical trademark also. Use of trademark for export trade and use when form of trade connection charges. Section 56 • The trademark can ne used by the firm for carrying out any businesses outside India.

CHAPTER VII: RECTIFICATION AND CORRECTION OF THE Power to cancel or vary registration and to rectify the . Section 57 • The registrar can cancel or vary the registration when• An application by an aggrieved person due to failure to observe a condition of the agreement • Any person is affected by any entry made in the agreement. • IF an application is made to rectify the registration. Correction of . Section 58 • On the basis of an application the registrar may correct any error in the registration or make any changes. Alteration of ed trademark. Section 59 • The ed proprietor can apply to alter or change the registration. Adaption of entries in to amended or substituted classification of goods or services. Section 60 • The registrar can make entries in the regarding the trademark after any amendment or substitution by duly informing the proprietor and ed .

CHAPTER VIII: COLLECTIVE MARKS Special provision for collective marks. Section 61 • A collective mark may be made for goods and services of the proprietor to distinguish it from other similar goods and services. Collective mark not to be misleading as to character or significance. Section 62 • The collective mark should not be misleading to the public as something else and an indication has to be made by the registrar to indicate it’s a collective mark Application to be accompanied by regulations governing use of collective marks. Section 63 • An application should accompany the trademark specifying the ed s and of use. Acceptance of application and regulations by registrar. Section 64 • If it appears to the registrar that the requirements for registration of collective mark is satisfied then he may accept the application of it. Regulations to be open for inspection. Section 65 • The regulations shall be open for inspection by the public.

CHAPTER VIII: COLLECTIVE MARKS Amendment of regulation. Section 66 • IT deals with the amendment of the regulation pertaining to collective marks . Infringement proceedings by ed proprietor of collective mark. Section 67 • The proprietor can file an infringement suit in relation to the collective marks though giving an application. Additional grounds for removal of registration of collective mark. Section 68 • The registration of a collective mark can be removed when The way in which the collective mark has been used b the ed s has been misleading to the public.  The proprietor has failed to observe any regulation of the registration.

Chapter IX- Certification Trade Marks •Section (69) Certain provision of this Act are not applicable to certification trademarks. (clauses (a) and (c) of sub - section (1) of section 9 sections 18, 20, 21, 28, 29, 30, 41, 42, 47, 48, 49, 50, 52, 54 and sub-section (2) of   section 56. •Section (70) A mark shall not be registrable as a certification trade mark in the name of a person who carries on a trade in goods of the kind certified or a trade of that provision of services of the kind certified. •Section (71) Applications for registration of certification trade marks to be to be made to the Registrar in a prescribed manner. •Section (72) Consideration of application for registration by Registrar. •Section (73) Opposition to registration of certification trade marks. (Section 18). •Section (74) Filing of regulations governing use of a certification trade mark. •Section (75) Infringement of certification trademarks. (Section 74) •Section (76) Acts not constituting Infringement of certification trade marks. •Section (77) Cancellation or varying of registration of certification trade marks. •Section (78) Rights conferred by registration of certification trade marks. •  

 

Chapter X- SPECIAL PROVISIONS FOR TEXTILE GOODS •Section (79) Textile goods •Section (80) Restriction on registration of textile goods. •Section (81) Stamping of piece goods, cotton yarn and thread. •Section (82) Determination of character of textile goods by sampling.

Chapter XI- APPELLATE BOARD •Section (83) Establishment of Appellate Board. •Section (84) Composition of Appellate Board. •Section (85) Qualifications for appointment as Chairman, Vice-Chairman or other . •Section (86) of office of Chairman Vice-Chairman and other . •Section (87)  Vice-Chairman or senior-most Member to act as Chairman of discharge his function in certain circumstances. •Section (88) Salaries allowance and other and conditions of service of Chairman, Vice-Chairman and other •Section (89) Resignation and removal.   •Section (90) Staff of Appellate Board. •Section (91) Appeals to Appellate Board.

Appellate Board (cont.) •Section (92) Procedures and Power of Appellate Board. •Section (93) Bar of jurisdiction of courts etc. •Section (94) Bar to appear before Appellate Board •Section (95) Conditions as to making of interim orders. •Section (96) Power of chairman to transfer cases from one bench to another. •Section (97) Procedure for application for rectification etc. before Appellate Board •Section (98) Appearance of Registrar in legal proceedings •Section (99) Costs of Registrar in proceedings before Appellate Board. •Section (100)Transfer of pending proceedings to Appellante Board   

OFFENCES, PENALTIES AND PROCEDURE Falsifying and Falsely applying trademarks

• Same or similar trade mark without the assent of proprietor. • Using the trade mark for packing, filling or wrapping therein any goods other than the genuine goods. • Tampering or altering or any false indication of the origin. • Any trade mark falsified as mentioned in sub-section (1) or falsely applied as mentioned in sub-section (2) is in this Act referred to as a false trade mark • a false indication of country, place, name in which goods are made.

Penalty: • Imprisonment not less than six months and may exceed to three years. • Fine not less than fifty thousand and may extend to two lakh rupees. • Amendment in case of any adequate and special reasons to be mentioned . • burden of proving the assent of the proprietor shall lie on the Accused • Penalty is also applicable to person who sells, lets for hire or exposes for sale, or hires or has in his possession for sale, of false trademark goods or services. • not be less than six months but which may extend to three years. • Fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees • Amendments on adequate and special reasons.

• Falsely representing a trade mark as ed • No person shall make any representation with respect to a mark not being a ed as a ed

• Penalty: • Imprisonment up to three years. • Fine up to two lakh rupees. • Or both • Improper using place of business that it is officially connected with the Trade Marks Office.

• Penalty: • Imprisonment up to three years • or with fine. or with both.

• Exemption of certain persons • If a person accused under section 103 proves that he is employed on behalf of other persons to apply trade marks or trade descriptions • he shall be acquitted

• Offences by companies • If the person committing an offence under this act is a company • The company as well as every person in charge of, and responsible shall be liable to be proceeded against and punished accordingly.

• Any police officer not below the rank of deputy superintendent of police is eligible to search and seize the without warrant • Every person appointed under this Act shall be deemed to be a pubic servant within the meaning of section 21 • Application for rectification of to be made to Appellate Board in certain cases.

The Registrar shall have all the powers of a civil court. • receiving evidence, istering oaths, enforcing the attendance of witnesses • Death of party to a proceeding • Extension of time by registrar • The proprietor of a ed grade mark may give notice to the collector of Customs to prohibit the importation of any goods constitute infringement under clause (c) of sub-section (6) of section 29.

• The importer should comply within fourteen days • If he fails to do so, he shall be punishable. • Reports of Registrar to be placed before parliament • Central government has complete Power to make rules.

Famous and Well known trademark cases • PANADOL & PANADOL EXTRA • SmithKline Beecham Plc & Another Vs. Sunil Singhi & Another • Judge’s Decision: “It is palpably evident, and incontestable, that the defendants have deliberately infringed the plaintiff’s well known mark namely PANADOL and PANADOL EXTRA…” • TATA • Tata Sons Ltd. Vs. The Advanced Information Technology Association • Judge’s Decision: “From a reading of the complaint and the documents filed with it, it is abundantly clear that the name/mark TATA is a "well-known mark”

Famous and Well known trademark cases contd… • GLENFIDDICH • William Grant & Sons Ltd. Vs. McDowell & Company Ltd. • Judge’s Decision: “What has to be considered in the case of the plaintiff is the transborder reputation of the plaintiff in its product.” • DR. REDDY’S • Dr. Reddy’s Laboratories Limited Vs. Manu Kosuri & Another • Judge’s Decision: “…plaintiff’s trade mark is 'DR. REDDY'S' and the defendants trade mark/domain name is 'drreddyslab.com'. Plaintiff is the proprietor of the trade mark 'DR. REDDY'S' by virtue of priority in adoption, continuous and extensive use and advertising and the reputation…”

Thank You