Trade Mark

trade

Benefits of Trade Mark

  • Trade Mark :
    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.
  • "A trade-mark is a word, design, number, two-dimensional or three-dimensional form, sound or color, or a combination of two or more of these elements which a trader uses to distinguish his/her products or services from those of his/her competitors and serves to establish goodwill with the consumer."
  • Essential Requirements of a Trade Mark:
    A trade mark is a visual symbol used in relation to any goods or services to indicate some kind of trade connection between the goods or services and the person using the mark.
  • In order to bring it within the scope of the statutory definition, a trade mark should satisfy the following essential requirements:
    1. it must be a mark, that is, a device, brand, heading, label, ticket, name or an abbreviation of a name, signature, word, letter or numeral shape of goods, packaging or combination of colours or any combination thereof;
    2. it must be capable of being represented graphically;
    3. it must be capable of distinguishing the goods or services of one person from those of others;
    4. it must be used of proposed to be used in relation to goods or services;
    5. the use must be of a printed or other visual representation of the mark;
    6. such use in relation to goods must be upon, or in any physical or in any other relation whatsoever to the goods; and in relation to services must be use of the mark as or as part of any statement about the availability, provision or performance of such services,
    7. the use must be for the purpose of indication or as to indicate a connection in the course of trade between the goods or services, and some person having the right to use the mark either as proprietor or by way of permitted user as the case may be user. It is not necessary that the person using the mark should reveal his identity.

  • Function of a Trade Mark:
    1. To give an indication to the purchaser or possible purchaser as to the manufacture or quality of the goods.
    2. To give an indication to his eye of the trade source from which the goods come, or the trade hands through which they pass on their way to the market.
    3. To tell the person who is about to buy that what is presented to him is either what he has known before under the similar name as coming from a source with which he is acquainted, or that it is what he has heard of before as coming from that similar source.
    4. To give the purchaser a satisfactory assurance of the make and quality of the article he is buying.
    5. To indicate not only that the goods are of a particular maker but are goods of that maker of a particular quality or kind.

  • Under Modern Business conditions a trade mark performs three functions:
    1. It identifies the product and its origin;
    2. It guarantees its unchanged quality;
    3. It advertises the product. It is also a symbol representing the goodwill of business.

  • Trade Mark Brand:
    Trade Mark Brand refers to those kinds of symbols which are branded on the goods, in which case the symbols themselves would constitute the trade mark, the branding being only a process of applying the mark upon the goods.
  • Use of a Trade Mark:
    The mark may be used “upon, or in any physical or in any other relation whatsoever, to such goods” which shows that a mark need not necessary be depicted or represented and separately applied to an existing article. The mark must be visible at the time of purchase of the goods.
  • A mark would be in physical relation to goods if it were stamped on a container holding the goods which themselves might possibly be incapable of being stamped. When the goods are in liquid or powder form, the only way in which the mark could be used in physical relation to the goods is by attaching or stamping it on the container. A trade mark need not necessarily be used physically upon the goods. It can be used in any other relation whatsoever to the goods. Use of the mark in catalogues and trade literature is also recognized as use in relation to goods. Use of the mark in advertisements would constitute use in relation to goods provided the goods are also offered for sale in the market. A trade mark must always be used in relation to some goods, which presupposes the existence of the goods in the market. Where there are no goods offered for sale, there can be no trade mark use.
  • Where a mark registered for some goods is used on goods derived from the former, the use of the mark on the later is not used in relation to flour. It is not a matter of incorporating the goods into a composite article of some kind. It is a matter of converting the goods i.e. the flour mixed with other ingredients into something different, namely a loaf of bread.

  • In case of a trade mark consisting of a number of features it is not necessary that all of them should be visible at the same time to constitute user as one trade mark. If labels are put at different ends or on different sides of packages, or if a portion of a mark is stamped or impressed on one side of any article and the other portion on the other side, the whole mark cannot be seen at the same time. The goods may have to e turned over or round, yet the mark so used as trade mark.

  • Register of Trade Mark:
    All registered trademarks are entered in a record called the Register of Trade Marks which is kept at the head office of the Trade Marks Registry, at Mumbai. The provisions relating to the entries to be made in the Register are contained in section 6 of the Act.
  • For convenience the register is divided into various classed following the classification of goods and services and the registered marks relation to each class arranged serially according to the official numbers allotted to the corresponding applications for registration. The entries in respect of each mark is made on a separate sheet of paper and inserted in loose leaf binders of convenient size.

  • Under the new Act of 1999 the registrar is authorized to keep the records wholly or partly in computer floppies diskettes or in any other electronic form subject to such safeguards as may be prescribed. Any reference under the Act to entry in the register will be construed as the reference to any entry as maintained on computer or in any other electronic form

  • Who May Apply to Register a Trade Mark:
  • (1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.

  • (2) A single application may be made for registration of a trade mark for different classes of goods and services and fee payable therefore shall be in respect of each such class of goods or services.

  • Every application should be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business of the applicant is situate. In the case of applicants who does not carry of business in India the application should be filed in the office within whose jurisdiction his address of service is situate.

  • Any person who claims to be the proprietor of a trade mark used or proposed to be used by him may apply to register the mark. The essential requirement is that he should have a legitimate claim to the proprietorship of the mark. This claim may be based on use of the ark in relation to particular goods by the applicant himself or his predecessors in title; or it may be based on his intention to use the mark. Where the mark is proposed to be used, the proposal to use must be by the applicant himself or by a registered user. The only exception to this is that contained in Sec. 46 under which a person may make an application even I he has himself no intention to use the mark provided he intends to assign the trade mark, within the prescribed time, to a company to be formed with a view to the use thereof by that company.

  • An application can be made in the name of an individual, or partners of a firm, or a corporation. A minor represented by the guardian can also apply. Two or more persons may apply to a register a mark as joint proprietors provided the conditions laid down in sec. 24 are satisfied.

  • Person. Under the General Clauses Act 1897 the word “Person” shall include any company or association or body of individuals, whether incorporated or not.

  • Company. Section 147 of the Companies Act 1956 requires that the registered name of the company should be used conspicuously on all business premises bills etc. It does not prohibit the use of any other trading name b the company. Thus a company may carry on business in other names while not concealing its own name as the owner thereof. When a company purchases a business along with the goodwill and name of the vendor’s business it may trade under the business name purchased in order to reap the benefit of the goodwill associated with the name. If the company uses or progress to use a trade mark in connection with that corporate name trading as the business name.

  • Firm. Application by a firm should be made in the name of the partners.

  • HUF. A Hindu Undivided Family may make an application under the name of the members.

  • Government. The Union Government or any state government can make an application. This applies to Government undertakings. The application should be in the name of the Government of ……./Union of India/trading as…….

  • Minor. In the case of a minor the application should be in the name of "A(minor) represented by the guardian ……" or "A, being a minor represented by his father and guardian B, trading as C & Co.

  • Trust. An application can be made in the name of a trust. Under Sec. 3(42) of the General Clauses Act a 'trust' can be included within the meaning of the definition of a 'person'.

  • Foreigners. A foreign national, company or corporation can make application for registration of trade mark. In the case of a company or corporation it should be made in the name as registered in the country of incorporation.

  • Joint Applications. Two or more persons who use or propose to use a trade mark independently cannot apply for registration of a mark as joint proprietors thereof. If, however, the mark is used or proposed to be used in relation to goods connected in the course of trade with all of them they may apply for registration in the joint names. In such a case the applicants will be required to agree to the condition that the mark shall be used only in relation to goods connected in the course of trade with all of them. This should be distinguished from a partnership firm.

  • How to select a trade mark?:
    1. If it is a word it should be easy to speak, spell and remember.
    2. The best trade marks are invented words or coined words.
    3. Please avoid selection of a geographical name. No one can have monopoly right on it.
    4. Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc)
    5. It is advisable to conduct a market survey to ascertain if same/similar mark is used in market.

  • What are different types of trade marks available for adoption?:
    1. Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.
    2. An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
    3. Letters or numerals or any combination thereof.
    4. The right to proprietorship of a trade mark may be acquired by either registration under the Act or by use in relation to particular goods or service.
    5. Devices, including fancy devices or symbols.
    6. Monograms
    7. Combination of colors or even a single color in combination with a word or device.
    8. Shape of goods or their packaging.
    9. Marks constituting a 3- dimensional sign.
    10. Sound marks when represented in conventional notation or described in words by being graphically represented.
  • What purpose the trade mark system serves?:
    1. It identifies the actual physical origin of goods and services. The brand itself is the seal of authenticity.
    2. It guarantees the identity of the origin of goods and services.
    3. It stimulates further purchase.
    4. It serves as a badge of loyalty and affiliation.
    5. It may enable consumer to make a life style or fashion statement