Topic 1: Trade Mark - Procedure for registration of Trade Mark

TRADEMARK 

Trademarks are an integrated component of modern business. A trademark is a symbol which indicates the source of particular goods. Trademark means “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. Marks include brand, heading, label, name, signature, word, letter, numeral, packaging or combination of colours etc. In simple words, a trademark is an identification symbol which enables the public to identify goods and services and distinguish them from similar goods and services.
Definitions (Section – 2): Important definition of Trade Mark Act, 1999.



1. Assignment: Assignment means an act of the party concerned that the assignment must be in writings.
2. Associated trademarks: Trademark deemed to be or required to be registered as associated trademarks.
3. Certification trademark: It means a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which is certified by the proprietor.
4. Deceptively similar: A mark shall be deemed to be similar to another trademark or it’s a course of confusion.
5. False trade description: A trade description which is untrue or misleading in a material respect as regards the goods to which it is applied.
6. Registered proprietor: It means the person for the time being entered in the registrar as the proprietor of trademark.
7. Service: Service means any description which is made available to potential users and includes the provision of services in connection with the business of any industrial or commercial matters.
8. Trade Description:  It means any description regarding number, strength, measure, the standard of quality, performance or behaviour etc., of any goods.

Procedure for registration of Trade Mark

The Central Government may, by notification in the Official Gazette, appoint a person to be known as the Controller – General of patents, designs and trademarks, who shall be the registrar.
The procedure for registration prescribed by the Act and the Rules is as follows:

1. Application for search: Any person desiring to get a mark registered as a trademark must apply in Form TM-54 to cause a ‘search’ to ascertain whether any other trademark similar to the desired one is already registered. If search report reveals that the desired mark does not resemble an existing mark, an application for registration may be made by the applicant.
2. Application for registration (Sec. 18): Any person claiming to be the proprietor of a trademark used or proposed to be used him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trademark.
3. Withdrawal of acceptance (Sec. 19):  Where after the acceptance of an application of trademark but before its registration, the registrar is satisfied that the application has been accepted in error or subject to conditions or limitation by the proprietor. If the application has not been accepted, the registrar may (after hearing the applicant) withdraw the acceptance.



4. Advertisement of application (Sec.20): After acceptance, the application to be advertised as accepted together with condition or limitations, if any subject to which it has been accepted. The advertisement is made in the Trade Marks Journal published by Government.
5. Opposition to registration (Sec. 21):  Any person can make an application within 3 months from the date of advertisement along with prescribed fees. The register shall serve a copy of the notice to the applicant to seek his reply. If no reply is sent within 2 months’ application for registration is deemed to be withdrawn.
6. Correction and amendment (Sec. 22): Registrar may permit correction of any error in application or modification of the same, whether before or after acceptance of such terms as he thinks fit.
7.



Registration (Sec. 23): When an application for registration of trademark has been accepted and either
(a) the application has not been opposed and the time for notice of opposition has expired; or
(b) the application has been opposed and the opposition has been decided in favour of the applicant; the registrar shall unless the Central Government otherwise directs register toe said trademark.

On the registration of a trademark, the registrar shall issue to the applicant a certificate in the prescribed form of the registration there to sealed with the seal of the Trade Mark Registry.