TRADEMARKS


THE LAW : TRADE MARKS ACT, 1999

SALIENT FEATURES:

  • International Classification 7th edition followed.
  • Multiclass application permitted.
  • Term 10 years, renewable every 10 years.
  • Extra fees payable for number of character in the  specification of goods exceeding 500 (e.g. the word 'computer' has 8 character).
  • Convention priority available.
  • Trademark/Service mark registrable.
  • Evidence of use required for registration of trademark which is not inherently distinctive, e.g., Surname, Geographical name, three letter marks, etc.
  • Descriptive and laudatory words not registrable.
  • Assignment of registered trademark possible with or without goodwill of business.
  • Licensing not recognized by trademark law, although licensing under common law is approved by Courts.
  • First to use prevails over first to register.
  • Well known trademarks protected accordingly goods.
  • Transborder reputation recognized.
  • Registration liable to be cancelled due to non-use of trademark for continuous period of 5 years.
  • Passing off action analogous to unfair competition also applies to trade names.
  • Both civil and criminal actions lie.


REQUIREMENTS FOR FILING

  • Full name, address and nationality of applicant(s).
  • Description of the mark (in case of label 20 prints of the mark).
  • List of goods.
  • Date of first use in India.
  • Power of Attorney (may be filed later).
  • Priority document (if priority claimed).
PROCEDURE
Click here to view the schematic diagram of Trademark Registration Procedure
 

 
ENFORCEMENT
JUDICIAL RELIEF
CIVIL
In a civil action, the remedies available are injunction and damages.
The civil laws also provide for interim injunction. If the plaintiff has a strong prima facie case, the Courts are inclined to restrain the defendant even at the inception of the proceedings.
Passing off action possible in a Civil Court against unauthorized use of a registered or unregistered trademark. The reliefs available are injunction and damages.

CRIMINAL
Infringement of a trademark is a criminal offence punishable with fine upto Rs. 2 lac (approximately 5000 USD) and imprisonment upto 3 years.

JURISDICTION (CIVIL)
Any suit for infringement, injunction and damages should be instituted in any Court not below the Court of the District Judge. It can also be instituted in a High Court having original jurisdiction.