How Does One Acquire Trade Mark Rights
- By use
- By registration of the mark
A person who uses the mark first can prevent subsequent users from using the mark in respect of the same goods. He acquires common law rights in the mark and can sue for Passing Off.
By virtue of the use of the trade mark the person gets a sort of exclusive right to use the trade mark in relation to the product. Similar rights can also be acquired by registration of the trade mark even if the mark is proposed to be used and is not currently used by the person. A trade mark is a form of property and enjoys protection either under the Trade Marks Act, 1999 if it is registered or under the common law if it is unregistered.
Property rights obtained by use of the mark are superior to the rights acquired by registration if the use is prior to the registration. Prior users are protected even under the Trade & Merchandise Marks Act, 1958. Registration, thus, does not give the proprietor an absolute monopoly to the use of the mark. The Act also protects those who have for several years honestly and concurrently used the mark although the mark had been registered by some other person.
Why Do You Need A Trade Mark
- It identifies the source of the goods
- It gives the brand recognition
- It guarantees the quality of the product
- It enables brand extensions to other products
- It avoids confusion between two similar products of different manufacturers
- It becomes a valuable asset.
Selecting A Good Trade Mark
Choose a mark that is not suggestive, generic or descriptive of the product. It should not be a dictionary word, geographic name or the name of some place. The main object should be to ensure that it is distinctive of the product. The mark should be such that it does not identify or describe the product.
An Invented Word, which has no meaning is the most ideal mark e.g. PANADOL for pharmaceutical or medicinal products.
The mark should not be descriptive e.g. cellophane is descriptive
It should not praise the product or its quality e.g. Best or Perfect are laudatory and are not registerable.
Names although registrable are permitted only after they have become distinctive of the goods by use for a considerable time.
Geographical names are generally not permitted registration since the traders from that region may want to use it to indicate that their products are from that region.
Words with 1 to 3 alphabets are generally non-distinctive and are not allowed. Some exceptions are made if the word is pronounceable and if it has been used for some length of time.
One should keep in mind that the purpose of having a trade mark is to generate goodwill and increase the value of your business. Separate the name from the logo. Do not use the trade mark as a verb. Do not copy another person’s mark or derive your mark from his however catchy or famous it may be. If you do, then it is possible that after you have spent huge amounts on developing the trade mark, you may be faced with an infringement action by that person and lose all the money and effort that you have put in to develop the mark.
Before a trade mark is adopted and used, it is advisable to get a search conducted at the office of the Registrar of Trade Marks to ascertain whether any similar mark is already registered. This reduces the risk of the mark conflicting with a registered mark.
Who Should Register A Trade Mark
A manufacturer or a merchant of goods or services who wishes to distinguish his goods or services from those of others can apply for registration. Even those proposing to use the mark at a later date can apply for registration.
Why Should You Register A Trade Mark
It serves as a notice to the public that you claim ownership in the mark
It is evidence of ownership of the mark
It gives one the exclusive right to use the mark on or in connection with the goods or services set forth in the registration
It gives the owner the right to sue for infringement. For this to succeed he has only to show that someone else has used a mark which is the same as (or similar to) his own registered mark on goods which are the same as (or similar to) the goods or services for which his mark is registered. If the mark is not registered, the person has a common law right to sue for Passing Off. For this to succeed he must persuade the court, first that the mark used by someone else is associated in the public mind with his own product or service, and secondly that the other person’s goods have been mistaken for his.
Registration in India can be used as a basis for obtaining registration in foreign countries
Different Classes of Goods
India follows the International Classification of Goods and has introduced 45 classes, which include 11 service classes. Goods or services are categorised depending upon the type of goods or services. Eg. Chemicals would fall in Class 1, Paints will fall in Class2, and so on. Multi Class applications can also be made for the same mark.
Procedure And Duration Of Registration Of A Trade Mark
Convention Countries: In case of convention countries, a 6 month priority is allowed. Where an applicant has filed an application in any of the convention countries, he may file an application in India, within 6 months from the date of filing of the home country application and claim priority in India from that date. Where the applications have been made in more than one convention country, the period is to be considered from the date of the first application in the convention country.
Application: Any person claiming to be the proprietor of a mark used or proposed to be used by him, may apply in the prescribed form along with the prescribed fees to the Registrar for registration of the mark. The application shall be made to the Registrar where the applicant carries on business. However, before filing an application, it is prudent to obtain a search to establish that no one has applied for an identical or a deceptively similar mark in respect of the same goods.
Examination: The application is scrutinized by the Registrar and is either accepted or rejected. If accepted, the application is advertised in the Trade Mark journal. Before acceptance a hearing may be fixed if the Registrar feels it necessary.
Opposition to Registration: Any person may, within 3 months from the date of advertisement or such further period (not exceeding 1 month) as the Registrar may permit, file an opposition to the registration. The registrar after hearing the parties and considering the evidence, decides whether to permit the registration or not.
Registration: Where the mark has not been opposed and the time for notice of opposition has elapsed or the application has been opposed and the opposition has been rejected in favor of the applicant, the mark will proceed for registration. The registration shall relate back to the date of the application. On registration the Registrar issues a certificate to the applicant bearing the seal of the Registry.
Duration of the Registration: The registration of a trade mark is valid for a period of 10 years and can be renewed from time to time for further periods of 10 years. If the mark is not renewed it will be removed from the register. A mark that has been removed can be restored by filing an application within 1 year from the expiration of the last renewal. By renewing it the mark can be kept alive indefinitely.
Protection of Trade Marks
Three types of remedies are available for protection of trade marks.
Civil: The competent courts can be moved for grant of relief against infringement and passing off. The competent court is the District Court having territorial jurisdiction where the Plaintiff resides or carries on business or works for gain or where the infringing articles are available.
Criminal: Criminal Complaints can also be filed against persons who have infringed the mark in addition to a Civil action.
Administrative: Opposition proceedings can be filed within 4 months from the date of advertisement of the offending mark in the Trade Mark Journal. If the offending mark is registered, any person aggrieved by the same can file proceedings for cancellation of the said mark.