Indian Law

Trade mark must be a mark which includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.

Pre-requisites of TM :

• represents graphically,
• capable of distinguishing the goods/ services of one person from those of others.
• Include shape, packaging & color combination.
• Must be used in relation to goods / service.

A registered TM can be protected against unauthorized use, it’s a statutory remedy.

An unregistered TM can be protected against unauthorized use by others, by an action for passing off which is common law remedy.

Functions of TM :

• identifies the product & its origin,
• grauntees its unchanged quality
• advertises & creates an image for the product.

Good TM :

• Easy to pronounce & remember, to spell correctly ,write legible & short
• Appeal to eye & ear
• Satisfy the requirements of registration
• Should not belong to prohibited class for registration.

Prohibited TM :

• Emblems & Names
• Official signs & Hallmarks
• if deceive public
• if scandalous or obscene
• hurt religious sentiments of any section of the people.

Types :

Generic, Descriptive, Arbitrary, Suggestive, Service, Certification, Collective, Trade dress.

Registration :

• Any person claiming to be proprietor of TM can make an application
• The preliminary advice & search (to check whether the TM is distinct or similar).
• Registrar will examine & if any objections then it shall communicate the same to the applicant.
• Then Applicant can put forward his case either in writing/hearing.
• If accepted, then – published in Trademarks Journal
• If refused – may appeal to the Appellate Board
• If refused on distinctive character, doubtful similarity with other mark, conflict with registered mark then after the use of the mark for some time, he can make a fresh application by making changes but  has to take risk of being sued for infringement by the owner.

Refusal for registration :

• If identical, similar.
• If descriptive.

Term: 10 years, renewed from time to time.

Infringement :

If the registered mark is:              

• Used without authority
• Applying false TM, for selling.
• Marks  identical/ similar to goods/service
• Taking undue advantage registered TM.

No infringement :

If uses with honest practice

Remedies :

• Civil remedies.
• Criminal remedies.
• Forfeiture of the goods.
• cost of defense

Author : Pradnya Pahurkar [lawyer]