Professional Documents
Culture Documents
INTRODUCTION
Customers recognise the product by its “ TRADE MARK ”. As the business grows, the
importance of the Trade Mark grows. It’s a valuable property of any business. Some Trade
Marks like “Coca Cola”, “Pepsi”, “Phillips” and “Microsoft” have worldwide recognition. It is
necessary for business that the trade mark is NOT used by an unauthorised person. Trade and
Merchandise Marks Act, 1958 was enacted with an intention to PROTECT the rights in trade
marks of business. However, after liberalisation and opening of Indian economy -need has been
felt to change the law. Trade Marks Act, 1999 has replaced the earlier 1958 enactment.
The major CHANGES incorporated in the NEW enactment are as under :-
- Registration of service marks allowed.
- Collective marks owned by associations provided (eg. Darjeeling Tea or Benares Sarees)
- Appellate Board, for speedy disposal of matters, provided
- Procedure for registration simplified.
- Expansion of ground for refusal of registration
- Well known trade marks are protected though NOT registered.
- Registrar is empowered to register certification trade marks. ( Earlier it was with Central
Govt.)
- Offences made cognizable.
- Courts have been empowered to grant ex- parte injunctions.
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. DEFINITIONS - SEC. 2
C/1 Sec. 2(1)(e) - “ CERTIFICATION TRADE MARK ” :- means a mark capable of
DISTINGUISHING the goods or services in connection with which it is used in the course of
trade - which are CERTIFIED by the proprietor of the - mark in respect of origin, material, mode
of manufacture of goods or performance of services, quality, accuracy or other characteristics
from goods or services not so certified and registrable as such under Chapter IX in respect of
those goods or services - in the name, as PROPRIETOR of the certification trade mark, of that
person.
C/2 Sec. 2(1)(m) - “ MARK ” :- includes a device, brand, heading, label, ticket, name, signature,
word, letter, numeral, shape of goods, packaging or combination of colours or any combination
thereof.
C/3 Sec. 2(1)(q) - “ PACKAGE ” :- includes any Case, box, container, covering, folder, receptacle,
vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper and
cork.
C/4 Sec. 2(1)(r) - “ PERMITTED USE” :- in relation to a REGISTERED trade mark, MEANS the
USE of Trade Mark-
1) By REGISTERED user of the trade mark - in relation to GOODS or SERVICES : -
a) With which he is connected in the course of trade; and
b) In respect of which the trade mark remains registered for the time being; and
c) For which he is registered as registered user; and
d) Which complies with any conditions or limitations to which the registration of registered
user is subject;
OR
2) By the person OTHER THAN the registered proprietor and registered user -in relation to
GOODS or SERVICES-
a) With which he is connected in the course of trade; and
b) In respect of which the trade mark remains registered for the time being; and
c) By CONSENT of such registered proprietor in a written agreement ; and
d) Which complies with any CONDITIONS or LIMITATIONS - to which such user is subject
and to which the registration of the trade mark is subject.
C/5 Sec. 2(1)(z) - “ SERVICE ” :- means SERVICE of any description which is made available to
potential users and INCLUDES the provision of services in connection with business of any
industrial or commercial matters such as banking, communication, education, financing,
insurance, chit funds, real estate, transport, storage, material treatment, processing, supply of
electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair,
conveying of news or information and advertising.
C/6 Sec. 2(1)(zb) - “ TRADE MARK ” :- 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 and may INCLUDE shape of goods, their packaging and combination of
colours; and
1. in relation to Chapter XII ( other than Section 107 ), a REGISTERED trade mark or a mark used
in relation to goods or services for the purpose of indicating or so as to indicate a connection in
the course of trade between the goods or services, as the case may be and some person
having the RIGHT as PROPRIETOR to use the mark ; AND
2. in relation to OTHER provisions of this Act, a mark used or proposed to be used in relation to
GOODS or SERVICES for the purpose of indicating or so to indicate a connection in the course
of trade between the goods or services, as the case may be and some person having the
RIGHT, either as proprietor or by way of PERMITTED user, to use the mark whether with or
without any indication of the identity of that person, and INCLUDES a certification trade mark or
collective mark.
C/7 Sec. 2(1)(zg) - “ WELL KNOWN TRADE MARK ” :- in relation to any goods or services,
means a mark which has become so to the SUBSTANTIAL segment of the public - which uses
such Goods or receives such services - that the use of such mark in relation to other goods or
services would be likely to be taken as indicating a connection in the course of trade or
rendering of services between those goods or services and a person using the mark in relation
to the first-mentioned goods or services.
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REGISTRAR AND TRADE MARK REGISTRY
Appointment of Registrar :- Under Section 3 of the Act, The Central Govt. is empowered, by
notification in the official gazette, to appoint a person to be known as the Controller General of
Patent, Designs and Trade Marks, who shall be the REGISTRAR of Trade Marks - for the
purpose of Trade Marks Act and such other officers as it may deem fit.
Under Section 4 of the Act, the REGISTRAR may, by order in writing along - with the
reasons thereof, with - draw any matter pending before any officer and deal with such matter
himself or transfer the same to such other officer as he may deem fit.
According to Section 5 of the Act, the Trade Mark Registry established under the Trade
and Merchandise Marks Act, 1958, shall be the Trade Mark Registry under the new Act. The
Central Govt. may define the JURISDICTION of such trade mark registry.
SINGLE Register of Trade Marks :- According to SECTION 6 of the Act, a Register of Trade
Marks shall be kept at the had Office of the Trade Marks Registry, wherein the details, EXCEPT
the details of notice of trust, of all registered trade marks along with the names, addresses,
description of proprietors, assignment and transmissions etc, shall be entered. A copy of the
register shall be kept at each branch office. Further, the registrar is allowed to maintain the
above register in computer floppies or diskettes or in any other electronic form, subject to the
prescribed safeguards.
CLASSIFICATION of GOODS and SERVICES and PUBLICATION of INDEX :- In terms of
Section 7, the Registrar shall CLASSIFY the goods and services, in accordance with the
international classification of goods and services for the purposes of Registration of Trade
marks.
According to Section 8, the Registrar may PUBLISH an alphabetical index of
classification of goods and services.
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The knowledge about the trade mark in the relevant section of public
- Duration, extent and territorial area in which the trade mark is used.
- The record of successful enforcement of the rights in that trade mark, by the Court or the
Registrar.
Further the Registrar, while considering an application for the Registration of a Trade Mark,
shall :-
- Protect the well known trade mark against the use of identical or similar marks
- Take into consideration the bad faith on part of either the applicant or the opponent
affecting the rights relating to the trade mark.( Type Q.4(a) J 04 - 5 Marks, June 2006)
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“ COLLECTIVE ” MARKS
Section 61- 68 of the Act contain the provisions relating to registration of COLLECTIVE
trade marks. These provisions provide for the registration of a COLLECTIVE trade mark which
belongs to a group or association of persons and the use thereof is restricted to ONLY the
members of the group or association of persons.
The application made for the registration of the collective trade mark shall be
accompanied by the regulations governing the use thereof. The collective mark may be
OWNED by the an association which may NOT use the same but the members of such
association may use such collective mark. The primary function of a collective trade mark is to
indicate a trade CONNECTION with the association or the organisation.
The REGISTRATION of a COLLECTIVE Trade Mark may be REMOVED if :-
- The manner in which it is used by the owner or authorised users so as to MISLEAD the public
as to a collective mark,
- That the proprietor has FAILED to observe the regulations - governing the USE of such
collective trade mark.
Q.Explain the meaning of Collective trade mark.
( Dec.02 - 4 Marks)
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INTELLECTUAL PROPERTY APPELLATE BOARD ( SECTIONS 89 - 99
)
Constitution of the Board :- Under Section 83, the Central Govt. is empowered to establish
an Intellectual Property Appellate Board to exercise the jurisdiction, powers and authority
conferred on it. Section 84 provides that the Board shall consist of a Chairman, Vice- Chairman
and such number of other members as may be prescribed by the central govt. Section 85
provides for the qualifications for appointment as the Chairman, Vice- Chairman and members.
The term of office shall be 5 years from the date of assuming office (or) the attaining of 65 years
for chairman & vice chairman and 62 years for members, whichever is EARLIER.
Powers :- Section 92 states that the Appellate Board shall NOT be bound by the procedures as
laid down in Code of Civil Procedure, but shall be governed by the principles of natural justice.
The appellate board can prescribe its own procedure including the fixing of time and places of
hearing.
The Appellate Board shall have the same powers as are vested in a civil court, for the
purpose of discharging its functions, in respect of the following matters, namely-
- Receiving evidence ;
- Issuing commissions for the examination of witnesses ;
- Requisitioning any public record ;
- Any other matter as may be prescribed by the Central Govt.
According to SECTION 95, NO interim order shall be given UNLESS the copies of the
appeal are furnished to the party against whom the appeal is made and an opportunity of
hearing is given to such parties. Further, the Chairman of the Appellate Board is empowered to
transfer any case PENDING BEFORE one Bench for disposal to any other Bench (Section 96).
Section 98 entitles the registrar to appear BEFORE the Appellate Board in certain
circumstances or in lieu of appearance, to file a statement in writing which shall be treated as
evidence in the proceedings. Section 99 EXEMPTS registrar from being ordered to pay costs to
the other parties.
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OFFENCES AND PENALTIES
Sections 101-121 heal with the matters relating to offences, penalties and procedure.
Section 103 deals with penalty for applying false trade marks, trade descriptions etc.
Section 104 deals with penalty for selling goods or providing services to which false trade mark
or false trade description is applied.
The penalty for applying false trade marks, trade descriptions etc and for selling goods or
providing services to which false trade mark or false trade description is applied shall be
imprisonment for a term which shall NOT be less than 6 months but which may extend to 3
years and with fine which shall not be less than Rs.50,000, but which may extend to Rs.
2,00,000.
However, the Court is empowered to impose a LESSER sentence in deserving cases.
ENHANCED penalty on SECOND or SUBSEQUENT conviction :- Section 105 provides that
whoever having already been convicted is again convicted of ANY such offence shall be
punishable for the second and for every subsequent offence with imprisonment which shall NOT
be less than one year but which may EXTEND to 3 years and with fine which shall NOT be less
than Rs. 1,00,000, but which may EXTEND to Rs. 2,00,000. However, the court is empowered
to impose a LESSER sentence in deserving cases.
PENALTY for REMOVING piece goods etc. contrary to Section. 81 :- Section 106 provides
that if any person removes or attempts to remove for sale the goods or cotton yarn or cotton
threads which are NOT marked in accordance with the provision of the Act, all such goods will
be FORFEITED to the Government and the person shall be punishable with fine which may
extend to Rs. 1000.
Penalty for FALSELY representing a Trade Mark as REGISTERED (Section 107) :- Section
107 provides that if any person falsely represent a trade mark as a registered trade mark, he
shall be punishable with imprisonment for a term which may extend to 3 years, or with fine, or
with both.
“ EXCEPTIONS ” :-
- However, where such word “registered” (or) any other expression or sign or symbol referring to
registration - is USED with OTHER words - with the same size in Characters and such
indication as to registration as a trade mark under the law of a Country OUTSIDE India - in
which it is in force.
- Where the word is used in relation to a mark registered as a Trade Mark under the law of a
Country OUTSIDE India and relation to goods to be exported to that country or in relation to
services for use in that country.
Penalty for IMPROPERLY DESCRIBING a Place of Business as CONNECTED with Trade
Mark office :- In terms of Section 108, the use of any words which would lead to the belief that
a person’s place of business is OFFICIALLY connected with the trade mark office shall be
treated as offence and punishable with imprisonment for a term which may extend to 2 years or
with fine or with both.