of Trademarks Act, 1999
FAQ's on Trademark
• What are trademarks?
Trademarks are words, names, symbols, or devices
used by manufacturers of goods to identify their
goods, and to distinguish their goods from goods
manufactured and sold by others. A person who
sells his goods under a particulate trademark
acquires a sort of limited exclusive right to
use the mark in relation those goods. Trademark
law protects this right of the owner of a mark
to use marks that distinguish his goods from others
and to prevent others from using marks that are
likely to cause confusion. Trademark law protects
the goodwill of a business and also protects the
consumers' ability to accurately ascertain the
source of goods and services.
• What is classification
As per the Trademarks Act, 1999, all goods and
services have been classified in 42 different
here for full classification.
• How do I protect my
By ensuring that the mark is registered on a
national trade mark register. In the main, trade
mark owners use the services of a Registered Trade
Mark Agents to achieve registration.
• Why should I protect
Primarily to ensure that the only persons who
are able to exploit it are you or your company.
Your reputation is represented by your trade mark.
Others may seek to use your trade mark or something
akin to your trade mark for their own use and
thus take advantage of the reputation you have
earned. Registration of your trade mark is the
surest and quickest means of seeking redress in
these circumstances. Furthermore, registration
establishes your exclusive rights to use that
trade mark for your goods or services.
• Where can I protect
my Trade Mark?
Trade marks can be registered in nearly every
country in the world. You should aim to protect
your trade mark wherever your goods are sold or
your services provided now or in the future.
Makhija & Associates provides services for
the registration of trade marks world-wide.
• What is my Trade Mark
worth and how can I exploit it?
Your trade mark is a tangible and marketable
asset. It can be sold as a separate commodity
and can be licensed out for use by others. The
value you place on your trade mark is normally
based on the success of your product, turnover
and other factors. Your trade mark is a valuable
asset which grows in value as your business grows.
You should protect this asset by trade mark registration.
To control its exploitation you need trade mark
• What does constitute
infringement of a trademark?
A registered trademark is infringed if a person
uses the same/deceptively similar mark in the
course of trade, in respect to the same goods.
The test for deceptive similarity is whether the
defendant's use of a mark is likely to cause confusion,
i.e., whether an appreciable number of reasonably
prudent consumers are likely to be confused or
deceived as to the source, affiliation or sponsorship
of the parties and their goods and services. The
plaintiff need not demonstrate actual confusion
or intent to confuse. The 'likelihood of confusion'
analysis encompasses an evaluation of a variety
of interconnected market factors, relating to
the likely expectation, perception and memory
• Where should I
file an infringement suit?
A suit for infringement of registered trademark
must be filed in the District Court having jurisdiction
or in the High Court that has original jurisdiction
to try such suits. The jurisdiction and procedure
are governed by the Civil Procedure Code. The
period of limitation for filing the suit is three
years from the date of infringement.
• What are relieves
that the court may grant in an infringement suit?
The relieves in a suit for infringement include:
- Injunction, restraining the further use of the
trademark; - Damages or an account of profits;
and - An order for delivery of the infringing
labels and marks for destruction. If the infringement
committed was innocent only nominal damages will
be awarded. However, criminal action is possible
if fraudulent intention on the part of the infringer
• What are service
marks and are they protected in India?
Service marks are trademarks used by business
rendering various kinds of services, for eg: travel
agents, finance companies etc.
• What forms of
protection are available for trademarks?
There are two forms of legal protection that
are available for trademarks. Under the Trade
and Merchandise Marks Act, 1958, the procedure
for registration of trademarks is prescribed in
order to afford protection for the same. The most
effective trademark protection is obtained by
filing a trademark registration application in
the Registrar of Trademarks. Once the trademark
is registered, infringement can be easily established.
In case of unregistered marks and marks which
are not registerable, the only form of protection
is the common law remedy of passing off. The plaintiff
would have to prove sufficient use of the mark
so as to create valuable goodwill of the business
connected with the goods bearing the mark.
• What is the procedure
to be followed for the registration of a trademark?
Any person/entity who claims to be the proprietor
of a trademark can apply for registration. Before
applying for registration, the applicant may apply
for a report from the Registrar of Trademarks,
as to whether the mark or one similar to it has
already been registered or applied for. The applicant
can also conduct private searches using the records
maintained in the Registry. Thereafter, the application
for registration should be filed in Form TM-1,
under the Trade and Merchandise Marks Rules, 1959
("Rules"). The Rules also prescribe
the classes of goods with respect to which registration
can be applied for (in the Fourth Schedule). If
applications are made for registration of the
mark in respect of more than one class of goods,
then separate applications should be filed for
each class. The application should be accompanied
by the prescribed fee. After the application is
received, the Registrar of Trademarks will examine
the same and communicate any objections to the
applicant. The objections will mainly be with
regard to distinctiveness and similarity with
already registered trademarks. The applicant can
put forward his case in writing or at a hearing.
If the submissions are accepted, the application
will be advertised in the Trademarks Journal.
In case any objections are received, the Registrar
will conduct a hearing and give a decision regarding
the same. If no objections are received, the Registrar
will enter the mark in the Register of Trademarks
and issue a certificate of registration to the
applicant. The certificate of registration is
valid from the date of application for registration.
• What is the duration
The first registration is valid for a period
of ten years and can be renewed for further periods
of ten years each by paying the renewal fee. If
the mark is not renewed, it will be removed from
the Register but it can be restored if a request
is made to that effect within one year from the
date of expiry of registration or last renewal.
• Is assignment of a trademark possible?
The assignment/licensing of trademarks is restricted,
because unrestricted licensing has been considered
as trafficking in the mark which is against public
interest. This is because, a trademark indicates
the origin of the goods to the consumer and unrestricted
licensing can lead to confusion and deception
among the public as to the nature of the goods.
According to the law, the assignment of a trademark
should not result in the creation of concurrent
exclusive rights in more than one person with
respect to the use of the same/similar mark in
respect of same/similar goods. Confusion or deception
can be avoided by territorial limitation or limitation
of the goods.
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