Frequently Asked Questions on Trade Marks

What is meant by trade mark?
A trade mark means a mark used or proposed to be used or proposed to be used in relation to goods for the purpose to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use the mark.
A trademark is anything that indicates source, sponsorship, affiliation or other business relationship of the goods or services. Start with the notion that an indicator must be perceived through one of the five senses. This includes taste, touch, smell, sight and sound. Some senses lend themselves to interaction with trademarks better than others, but all are capable of doing so.
Currently, the following have been registered as trademarks:
· Sight - Single words, word strings, slogans, logos, letters (e.g. initials), numbers, drawings/pictures, devices,
product configurations, single colors, and multiple colors
· Sound - Chimes, many of the items listed under sight are also spoken
· Smell - Fragrance
· Taste - None known to the authors of this material
· Touch - Product configurations
The types of indicators that can function and be protected as trademarks are very much in development. The true test is whether "it" is capable of indicating a single source, sponsorship, affiliation or other business relationship, regardless of whether or not the exact entity(ies) is(are) known.

What is meant by associated trade mark?
Associated trade mark means trade marks deemed to be or required to be, registered as associated trade mark under this Act.

What is meant by certification trade mark?
Certification trade mark means a mark adapted in relation to any goods to distinguish in the course of trade.

What is meant by deceptive similarity?
A mark shall be deemed to be deceptively similar to another mark if it is so nearly resembles that other mark as to be likely to deceive or cause confusion.

What is the meaning of the word mark?
Mark means a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof.

What is the difference between a trademark and a service mark?
Trademarks and service marks are distinct in whether the mark is used with goods or services. The manner of fixing the mark is of significance in seeking a federal registration. There is some difference on how the mark is associated with the goods or services. Goods commonly have labels, where services have no place to put a label. For nearly all other practical purposes trademarks and service marks are treated the same

What is the strength of different marks?
The strength of a trademark is its ability to distinguish the goods or services of one from the goods or services of another. Generic marks have no strength as trademarks. The strength of all other trademarks is a function of the uniqueness of the mark compared to the goods or service coupled with the level of consumer recognition of the trademark.

What is acquired distinctiveness or secondary meaning?
Acquired distinctiveness and secondary meaning are different terms for the same thing. To be treated as a trademark a mark must have a certain quantum of distinctiveness. That distinctiveness can be inherent in the mark, i.e. inherent distinctiveness, or be developed in the minds of the consumers, i.e. acquired distinctiveness. Acquired distinctiveness may be thought of as consumer recognition of the trademark as an identifier of source, sponsorship, affiliation or other business relationship.

Do trademarks need acquired distinctiveness before a registration may be sought?
No. Trademarks do not even have to be used before a trademark registration may be sought. To be registered on the principal register all trademarks must have a certain quantum of distinctiveness. Marks that are neither generic nor descriptive of the goods or services are said to have enough "inherent distinctiveness" to be registered without proof of "acquired distinctiveness".
Descriptive and special case trademarks can be registered on the supplemental register without proof of acquired distinctiveness, although the rights offered are nominal. Descriptive and special case trademarks can be registered on the principal register upon proof of acquired distinctiveness (which is presumed after the trademark has been on the supplemental register for five years).

What marks need to have acquired distinctiveness before they are considered trademarks?
The following marks need proof of acquired distinctiveness before they are considered trademarks: 1) marks that describe the goods or services, 2) foreign terms that translated are descriptive in nature, 3) single colors, 4) surnames, 5) misspellings of descriptive terms, 6) product configurations (usually) and 7) geographically descriptive marks.
How can acquired distinctiveness be proven?
Acquired distinctiveness can be proven either directly or indirectly by any evidence that would be admissible in court.

The Register and condition for registration

What is the geographic scope of protection of a trademark?
Common law trademarks, i.e., unregistered, exist in the area in which the mark is being used or is known. State registrations exist throughout the state. Federal registrations exist throughout the country. First in time is first in right. Thus, two or more users may all have the same rights in different locations if the first user did not promptly obtain a federal registration.

How important is federal trademark registration?
Federal registration is a must to avoid future expansion problems due to geographic scope issues.

What are common law, state registered, and federally registered trademarks?
A common law trademark is a trademark that has not been registered with the state or the federal government. Common law rights arise upon use or recognition. Such trademarks are at a distinct disadvantage. See question 0.4 in the previous section:

"What is the geographic scope of protection of a trademark?"
A state registered trademark is a trademark that has been registered at the state level.
A federally registered trademark has been registered with the federal government. To obtain a federal registration the applicant must use or intend to use the trademark in interstate commerce.

What is the procedure for registering a trade mark?
A record called the register of trade mark is kept at the head office of the Trade Mark Registry, wherein all registered trade marks are entered in by the concerned authority. There is a provision under section 7 of the act to divide register into two parts, i.e. part A and part B.

What is the difference between part A and part B of the register?
According to section 7, The Register of Trade Marks existing at the commencement of this Act, shall be incorporated with and form part A of the register.
Part B of the register shall comprise all trade mark which after the commencement may be entered in part B of the register.

What are the requisite for getting the trade mark registered in part A of the register?
For this, trade mark should contain or consist of atleast one of the essential particulars:
1. The name of a company, individual, firm, represented in a special or particular manner.
2. The signature of the applicant for registration or some predecessor in his business.
3. One or more invented words.
4. One or more words having no direct reference to the character or quality of goods and not being according to its ordinary signification, a geographical name, a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India.
5. Any other distinctive mark.
Any name, signature or word other than such as full written in clauses (a), (b) and (c), (d) of sub-section(1) shall not be registerable in part A, except upon evidence of its distinctiveness.

What are the essential requisites for getting trade mark registered in part B of the register?
A trade mark cannot be registered in part B of the register, unless the trade mark in relation to the goods in respect of which it is proposed to be registered is distinctive. The trade mark must be capable of distinguishing goods with which proprietor of a trade mark is or may be connected in the course of trade from goods in the case of which no such connection subsists.

Is any limitation as to colour applicable to Trade Mark?
Yes. A trade mark may be limited wholly or in part to one or more specified colours and any such limitation shall be taken into consideration by the tribunal having power to decide on the distinctive character of the trade mark. If a trade mark is registered without limitation of colours, it is deemed to be registered under colours section 10(2).

On what kind of marks act impose prohibition regarding registration?
Section11 provides a mark
1. The use of which would likely to deceive or cause confusion or
2. The use of which would be contrary to any law for the time being in force, or
3. Which contain scandalous or obscene matters, or
4. which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizen of India, or
5. Which would otherwise be disentitled to protection in a court should not be registered as a trade mark.

Is registration of names of chemical elements possible?
No. As section 13 provides, no word which is commonly used and accepted name of any single element or single chemical element or single chemical compound shall be registered as a trade mark in respect of chemical substance or preparation. However, this section shall not apply to a word which is used to denote only a brand or make of the element or compound as made by the proprietor or a registered user of the trade mark, distinguished from the element or compound as made by others and in association with a suitable name or description open to public use.

Can a person apply for the registration of a trade mark which suggest a connection with any living person or a person who died twenty year prior to such application?
A person can apply for this but he will have to submit the consent in writing of the living person, incase of deceased person the legal representative must have given his consent about such using of name.

Under what circumstances, registration of trade mark is made as associated trade mark?
Where a registered trade mark is identical with another registered trade mark or for the registration of which an application has been made, by the same proprietor in respect of the same subject matter or descriptively similar goods then the registrar may order for the registration of trade mark as associated trade mark.
Procedure and Duration of Registration

Who can file an application for registration of trade mark?
Any person claiming to be the proprietor of a trade mark, used or proposed to be used b him and who is desirous of registering it can apply to the registrar for registration.
Where should one file an application for registration of trade mark?
Every application should be made in the office of trade mark registry within whose territorial limits the principal office of business in India is situated.
In case, business is not carried on in India, the application should be made in the office of Trade Marks Registry within whose territorial limits the place mentioned in the address for service in India is situated.

Can the registrar withdraw, acceptance given to an application for registration?
Yes. If registrar is satisfied, that the application has been made in error or that in the provided circumstances trade mark should not be registered or should be registered subject to certain conditions then he can withdraw the acceptance of an application for registration.

What procedure is followed by registrar after having an application for registration of trade mark?
If registrar accept an application absolutely or subject to certain conditions, then he will cause the application to be advertised. In
exceptional case register may cause the advertisement of the application before acceptance.

Is opposition to registration possible?
Any person may within three months from the date of advertisement or re-advertisement may state his opposition in an application to the registrar.
The Registrar shall serve a copy of the notice on the applicant and applicant shall file within two months of receiving such objection a counter statement. After hearing from both the parties the registrar will take action regarding registration of trade mark.
If applicant does not file a counter statement his application shall be deemed to have abandoned.

Offences, Penalties and Procedures

What is the punishment for applying false trade marks, trade description etc?
A person who is guilty of applying false trade marks or trade description shall be punishable with imprisonment for a term which may extend to two years or with a fine or with both. In case the offence is related with food or drugs the offender shall be punishable for a term which may extend to three years or with fine or with both.

What is the penalty for selling goods to which a false trade mark or false trade description is applied?
A person guilty of selling to which a false trade mark or false trade description is applied shall be punishable with imprisonment which may extend to two years or with fine or both. In case the offence is committed by selling food or drugs, the wrong doer shall be punishable with imprisonment which may extend to three years or with fine or with both.

What is the punishment for falsely representing a trade mark as registered?
If any person does so, he shall be punishable with imprisonment for a term which may extend to six months or with fine which may extend to Rs.500 or both.

What is the procedure for dealing offences by companies?
If the person committing an offence under this act is company, the company as well as every person in charge of and responsible to the company for the conduct of its business at the time of the commission of the offence shall be guilty of the offence. However if a person proves that the offence was committed without his knowledge or that he exercised all due diligence to prevent the commission of such offence.

Where should one institute a suit, for the infringement of a trade mark?
Ans. Suit
a. For the infringement of a registered trade mark or
b. relating to any right in a registered trade mark or
c. Passing off arising out of the use by the defendant of any trade mark which is identical with or deceptively similar to the plaintiff's trade mark, should be instituted in any court inferior to a district court having jurisdiction to try the suit. It does not make any difference whether the trade mark is registered or unregistered.

What kind of relief is granted by the court for infringement of trade mark?
The relief which a court may grant in any suit for infringement or of passing off, include an injunction damages together with delivery together with delivery of the infringing labels and marks for destruction or erasure.
infringement action.

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