salient features of the trade mark act-leb ppt group 3

7/23/2019 Salient Features of the Trade Mark Act-LEB PPT Group 3

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Salient Features o

the Trade Mark Act1999

Pre

Aayu

Anu

Bha

Mahe

Shanta



Background

•

With the globalization of trade, brand names, trade names, marks, attained an immense value.

• Requires minimum standard of protection and ecient procedures enforcement as ere recognized under the !R"P# $!he %greement oRelated %spects of "ntellectual Property Rights'.

• !he !rade (arks %ct provides, inter alia, for registration of service mof multiclass applications, increasing the term of registration of a trten years as ell as recognition of the concept of ell&knon marks



Denition

•

% *!rademark+ has been de)ned in section $zb' of the !rademarks

• *!rademark+ means a mark a capable of being represented graphichich is capable of distinguishing the goods or services of one persthose of others and may include shape of goods, their packaging ancombination of colors.

• % /(ark0 includes a device, brand, heading, label, ticket, name $inclabbreviations', signature, ord, letter, numerals, shape of goods, pcombination of colors and any combination thereof.



!ha"ter ##$ T%& '&(#ST&' A)D !*)D#TF*' '&(#ST'AT#*)+ Section +11

•

1entral 2ovt. appoints a controller& 2eneral of Patents, 3esigns and(ark ho is knon as the 'egistrar of Trade Marks

• % record is maintained by the Registrar at the Trade Marks 'egistcalled the 'egister of Trade Marks

•

!he Registrar classies goods or services in accordance ith the#nternational !lassication of goods and services published b#ntellectual Pro"erty *rgani.ation /-#P*0



Dis2ualications• 4nder section 9/30 a mark shall not 4e registered as a trade mark if:

• it is of such nature as to deceive the public or cause confusion

• it contains or comprises of any matter likely to hurt the religious susceof any class or section of the citizens of "ndia

• it comprises or contains scandalous or o4scene matter

• its use is prohibited under the &54le5s and )a5es /Prevention of #56se0 Act, 1978

• 4nder section 9/0 a mark shall not 4e registered as a trade mark if it ce5clusively of:

• the shape of goods hich results from the nature of the goods themselve

• the shape of goods hich is necessary to obtain a technical result



Protection of ell+knon trade5arks+ Section 11•

% ell+knon Trade5ark in relation to any goods or servicesmark that has become so to the su4stantial seg5ent of the "u4uses such goods or receives such services such that the use of sucrelation to other goods and services is likely to be taken as indicatinconnection 4eteen the to 5arks.

• !he proprietor of ell&knon mark ill be entitled to prevent use ofor similar trade mark in connection ith goods or services hich in lead to unfair advantage or detrimental to the reputation of the etrademark.



APP:#!AT#*) F*''&(#ST'AT#*)

• %ny person ho claims to be the proprietor of the trademark proposed shariting in the prescribed manner.

• #ingle registration maybe done for registration of di7erent classes of goodsPayment of the fee in that case ill be ith respect to it.

• #ub8ect to the provisions provided by this act the registrar may re8ect the aaccept it or may refer it for further modi)cations, limitations as it may be r

• "n such a scenario the registrar has to provide a sound ground for the such

reasons for it.

• Whether after the acceptance of application for registration but before regregistrar might ithdra the application if he feels some errors are there. $

• 9e may also ithdra the acceptance of the application if he feels so.



• /Sec31'!he Registrar shall serve a copy of the notice on the applicant

Registration and, ithin to months from the receipt by the applicant of

of the notice of opposition, the applicant shall send to the Registrar, in th

manner a counter statement of the grounds on hich he relies for his app

• n doing so the registrar shall send the copy to opposition.

• 4pon producing the evidences the registrar may provide opportunity to

opposition to be heard of.• !orrection and a5end5ent: can be made as stated in sec heth

the acceptance of an application.

• ;ointly oned trademarks: no one is authorized to use the trademarkindependently and thus ill only be issued by to used 8ointly.



• /sec+3;0<o action for infringement of unregistered trademarks: no person is entitle

any proceeding against a person for use of unregistered trade mark.

• /sec+3<'#ub8ect to the other provisions of this %ct, the registration of a trademark sgive to the registered proprietor of the trade mark the e5clusive right to the use of tmark in relation to the goods or services in respect of hich the trade mark is Regisobtain relief in respect of infringement of trade mark in the manner provided by this

• $' !he e5clusive right to the use of a trade mark given under sub&section

• $-' shall be sub8ect to any conditions and limitations to hich the registration is sub

:i5its on the e=ect or registered trade5arks$ /390• % registered trademark is infringed by a person ho, not be being a registered prop

person using by ay of permitted use, uses in the course of trade a mark hich bec

$a' its identity ith the registered trade mark and the similarity of the goods or servicby such registered trade mark : or

$b' its similarity to the registered trade mark and the identity or #imilarity of the goodcovered by such registered trade mark.



• /sec+10"n all the legal proceeding the registration of trade mark and ttransactions and assignments should be the prime evidence of validity.

• /sec+;0 Poer of the registered person. !he registered person has theassign the trademark or pass on the receipt to any person.

• /Sec+90 an unregistered trade mark can pe assigned or transmitted goodill of the business.

• /Sec+>10 the assignment or transferability of the trademark certi)catedone ithout the consent of the registrar.

!%APT&' ?# 6S& *F T'AD&



!%APT&' ?#$6S& *F T'AD&MA'KS A)D '&(#ST&'&D 6S&'

Pro"osed use of trade 5ark 4y co5"any to 4e for5ed, etc Sec

• "t is regarding the registration and use of a trademark. !he registrar ill grant

% company is about to be formed and the trademark ill be used in relation ior services

!he proprietor intends it to be used by a person, as a registered user.

'e5oval fro5 register and i5"osition of li5itations on ground of no u

• % registered trademark may be taken o7 the register in the folloing cases

When the trademark registered by the company as not taken for any bona )e 4nless a similar trademark has been registered by the company.

"f the trademark is restricted in "ndia.

'egistered users Section ><

• !he trademark ill be used by the proprietor or a registered person only.

'egistration as registered user Section >9

• !he registration of user ill take place through an agreement duly signed and

!%APT&' ?#$6S& *F T'AD&




Poer of registrar for variation or cancellation of registration as regiSection 78

• !he registration of the registered user may be canceled hen&

%n application in riting is given in prescribed manner by the proprietor to can

!he registered user has used the trademark in a manner not prescribed in the

!he registered user has given false or incomplete information in the agreemen

!he registrar or any other person )nds that any stipulation in the agreement requantity of goods or services is not being enforced or complied ith.

!he trade mark for a particular good or service is no longer registered.

Poer of registrar to call for infor5ation relating to agree5ent in res"euser Section 71

• !he registrar can ask the proprietor to con)rm eather the trademark continuesnot.

• "f the proprietor fails to do so the registrar can cancel the registration.

'ights of registered user to take "roceedings against infringe5ent

!%APT&' ?#$6S& *F T'AD&




'egistered user not to have right of assign5ent or trans5ission S

• When the registered user enters into a partnership ith any other person. !he )

trademark as long as the user is part of the )rm.

6se of one of associated or su4stantially identical trade5arks e2uivaanother Section 77

• "f the )rm is required to prove something regarding the trademark, it can use thidentical trademark for veri)cation

• !he registration of this trademark ill also e5tend to any identical trademark als

6se of trade5ark for e"ort trade and use hen for5 of trade connecSection 7@

• !he trademark can ne used by the )rm for carrying out any businesses outside

!%APT&' ?##$ '&!T#F#!AT#*) A)



!%APT&' ?##$ '&!T#F#!AT#*) A)!*''&!T#*) *F T%& '&(#ST&'

Poer to cancel or vary registration and to rectify the register Sect

• !he registrar can cancel or vary the registration hen&• %n application by an aggrieved person due to failure to observe a condition

agreement

• %ny person is a7ected by any entry made in the agreement.

• "= an application is made to rectify the registration.

!orrection of register Section 7<

• n the basis of an application the registrar may correct any error in the regany changes.

Alteration of registered trade5ark Section 79

• !he registered proprietor can apply to alter or change the registration.

Ada"tion of entries in register to a5ended or su4stituted classicatiservices Section @8

• !he registrar can make entries in the register regarding the trademark afteor substitution by duly informing the proprietor and registered user.



!%APT&' ?###$ !*::&!T#?& MA'K

S"ecial "rovision for collective 5arks Section @1

• % collective mark may be made for goods and services of the proprietor to dist

other similar goods and services.

!ollective 5ark not to 4e 5isleading as to character or signicance

• !he collective mark should not be misleading to the public as something else ahas to be made by the registrar to indicate it0s a collective mark

A""lication to 4e acco5"anied 4y regulations governing use of colleSection @

• %n application should accompany the trademark specifying the registered useruse.

Acce"tance of a""lication and regulations 4y registrar Sectio

• "f it appears to the registrar that the requirements for registration of collective then he may accept the application of it.

'egulations to 4e o"en for ins"ection Section @7

• !he regulations shall be open for inspection by the public.



!%APT&' ?###$ !*::&!T#?& MA'K

A5end5ent of regulation Section @@

• "! deals ith the amendment of the regulation pertaining to collective marks .

#nfringe5ent "roceedings 4y registered "ro"rietor of collective 5ark

• !he proprietor can )le an infringement suit in relation to the collective marks thapplication.

Additional grounds for re5oval of registration of collective 5ark

• !he registration of a collective mark can be removed hen&

!he ay in hich the collective mark has been used b the registered users hasto the public.

!he proprietor has failed to observe any regulation of the registration.

!ha"ter # !ertication Trade



!ha"ter #+ !ertication TradeMarks

•Section /@90 1ertain provision of this %ct are not applicable to certi)cation trademarks.

$clauses $a' and $c' of sub & section $-' of section

sections ->, ?, -, >, , @?, A-, A, AB, A>, A, C?, C, CA and sub&section $' of

section CD.

•Section /;80 % mark shall not be registrable as a certi)cation trade mark in the name of a person ho carries on a trade in gothe kind certi)ed or a trade of that provision of services of the kind certi)ed.

•Section /;10 %pplications for registration of certi)cation trade marks to be to be made to the Registrar in a prescribed manner.

•Section /;30 1onsideration of application for registration by Registrar.

•Section /;0 pposition to registration of certi)cation trade marks. $#ection ->'.

•Section /;>' =iling of regulations governing use of a certi)cation trade mark.

•Section /;70 "nfringement of certi)cation trademarks. $#ection BA'

•Section /;@0 %cts not constituting "nfringement of certi)cation trade marks.

•Section /;;0 1ancellation or varying of registration of certi)cation trade marks.

•Section /;<0 Rights conferred by registration of certi)cation trade marks.•



!ha"ter + SP&!#A: P'*?#S#*)F*' T&T#:& (**DS

•Section /;90 !e5tile goods

•Section /<80 Restriction on registration of te5tile goods.

•Section /<10 #tamping of piece goods, cotton yarn and thre

•Section /<30 3etermination of character of te5tile goods bysampling.



!ha"ter #+ APP&::AT& B*A'D•Section /<' Establishment of %ppellate Foard.

•Section /<>0 1omposition of %ppellate Foard.

•Section /<70 Guali)cations for appointment as 1hairman, Hice&1hairman or other (embers.

•Section /<@0 !erms of oce of 1hairman Hice&1hairman and other (embers.

•Section /<;0 Hice&1hairman or senior&most (ember to act as 1hairman of discharge his function incircumstances.

•Section /<<0 #alaries alloance and other terms and conditions of service of 1hairman, Hice&1hairother (embers

•Section /<90 Resignation and removal.

•Section /980 #ta7 of %ppellate Foard.

•Section /910 %ppeals to %ppellate Foard.



%ppellate Foard $cont.'

•Section /930 Procedures and Poer of %ppellate Foard.

•Section /90 Far of 8urisdiction of courts etc.

•Section /9>0 Far to appear before %ppellate Foard

•Section /970 1onditions as to making of interim orders.

•Section /9@0 Poer of chairman to transfer cases from one bench to another.

•Section /9;0 Procedure for application for recti)cation etc. before %ppellate Foard

•Section /9<0 %ppearance of Registrar in legal proceedings

•Section /990 1osts of Registrar in proceedings before %ppellate Foard.

•Section /1880 !ransfer of pending proceedings to %ppellante Foard



*FF&)!&S, P&)A:T#&S A)D P'*!&D6'=alsifying and =alsely applying trademarks

• #ame or similar trade mark ithout the assent ofproprietor.

• 4sing the trade mark for packing, )lling or rappingtherein any goods other than the genuine goods.

• !ampering or altering or any false indication of the origi

• %ny trade mark falsi)ed as mentioned in sub&section $-'falsely applied as mentioned in sub&section $' is in this%ct referred to as a false trade mark

• a false indication of country, place, name in hich goodsare made.



Penalty:

• "mprisonment not less than si5 months and may e5ceed to thryears.

• =ine not less than )fty thousand and may e5tend to to lakh

rupees.• %mendment in case of any adequate and special reasons to be

mentioned .

• burden of proving the assent of the proprietor shall lie on the%ccused

• Penalty is also applicable to person ho sells, lets for hire or

e5poses for sale, or hires or has in his possession for sale, of fatrademark goods or services.

• not be less than si5 months but hich may e5tend to three yea

• =ine hich shall not be less than )fty thousand rupees but hicmay e5tend to to lakh rupees

• %mendments on adequate and special reasons.



• =alsely representing a trade mark asregistered

• <o person shall make any representation ith respect toa mark not being a registered as a registered

• Penalty:

• "mprisonment up to three years.

• =ine up to to lakh rupees.

• r both

• "mproper using place of business that it is ociallyconnected ith the !rade (arks ce.

• Penalty:

• "mprisonment up to three years

• or ith )ne. or ith both.



• E5emption of certain persons• "f a person accused under section -?@ proves that he

employed on behalf of other persons to apply trademarks or trade descriptions

• he shall be acquitted

• *=ences 4y co5"anies

• "f the person committing an o7ence under this act is

company

• !he company as ell as every person in charge of, anresponsible shall be liable to be proceeded against anpunished accordingly.



• %ny police ocer not belo the rank ofdeputy superintendent of police is eligible

to search and seize the ithout arrant• Every person appointed under this %ct shabe deemed to be a pubic servant ithin thmeaning of section -

• %pplication for recti)cation of register tobe made to %ppellate Foard in certaincases.



!he Registrar shall have all the poers of a civil cou

• receiving evidence, administering oaths, enforcing th

attendance of itnesses

• 3eath of party to a proceeding

• E5tension of time by registrar

•

!he proprietor of a registered grade mark may givenotice to the collector of 1ustoms to prohibit theimportation of any goods constitute infringement undclause $c' of sub&section $D' of section .



• !he importer should comply ithin fourteen days

• "f he fails to do so, he shall be punishable.

• Reports of Registrar to be placed before parliament

• 1entral government has complete Poer to make rule

Fa5ous and -ell knon



Fa5ous and -ell knontrade5ark cases

• PA)AD*: C PA)AD*: &T'A

• #mithIline Feecham Plc J %nother Hs. #unil #inghi J %nother

• ;udge0s 3ecision:

*"t is palpably evident, and incontestable, that the defendants have infringed the plainti70s ell knon mark namely P%<%3K andEL!R%M+

•

TATA• !ata #ons Ktd. Hs. !he %dvanced "nformation !echnology %ssociation


*=rom a reading of the complaint and the documents )led ith it, it isclear that the nameNmark !%!% is a Oell+knon 5ark +

Fa5ous and -ell knon



Fa5ous and -ell knontrade5ark casescontd• (:&)F#DD#!%

• William 2rant J #ons Ktd. Hs. (c3oell J 1ompany Ktd.


*What has to be considered in the case of the plainti7 is the trans+4order reputation of the plainti7 in its product.+

• D' '&DDES

• 3r. Reddy0s Kaboratories Kimited Hs. (anu Iosuri J %nother


*Mplainti70s trade mark is 3R. RE33Q# and the defendants trade marname is drreddyslab.com. Plainti7 is the proprietor of the trade mark

by virtue of priority in adoption, continuous and etensive use and adthe re"utationM+



!hank Qou

salient features of the trade mark act-leb ppt group 3

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