Trademark Act 1999, Trademark Rules 2002

Trademark Act 1999 Trademark Rules 2002

Trademark Act 1999, Trademark Rules 2002 Concept of Trade Mark___________

The Trade Marks Act, 1999 is an Act to amend and consolidate the law relating to trade marks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the
use of fraudulent marks.

It extends to the whole of India.

A Trade Mark distinguishes the goods of one manufacturer or trader from similar goods of others and therefore, it seeks to protect the interest of the consumer as well as the trader.

A trade mark may consist of a device depicting the picture of animals, human beings etc.,
words,
letters,
numerals,
signatures or any
combination thereof.

Since a trade mark indicates relationship in the course of trade,
between trader and goods,

it serves as a useful medium of advertisement for the goods and their quality.

The current law of Trade Marks contained in the Trade Marks Act, 1999 is in harmony with two major international treaties on the subject, namely The Paris Convention for Protection of Industrial Property and TRIPS Agreement to both of which India is a signatory.

The Trade Marks Act, 1999 and the Trade Marks Rules, 2002 govern the law relating to Trade Marks in India.
Object of trademark law is to permit an enterprise by registering its trademark to obtain an exclusive right to
use,
share, or
assign a mark.

Closely related to trademarks are service marks which distinguish the services of an enterprise from the services of other enterprise.

A Trade Mark distinguishes the goods of one manufacturer or trader from similar goods of others and therefore, it seeks to protect the interest of the consumer as well as the trader.

A trade mark may consist of a device depicting the picture of animals, human beings etc., words, letters, numerals, signatures or any combination thereof.

Since a trade mark indicates relationship in the course of trade, between trader and
goods, it serves as a useful medium of advertisement for the goods and their quality.

Object of trademark:-_

The object of trademark law is to permit an enterprise by registering its trademark to obtain an exclusive right to use, share, or assign a mark.

Closely related to trademarks are service marks which distinguish the services of an enterprise from the services of other enterprise.

Trademarks are not a creation of our times, even though their current nature and omnipresence is of rather recent origin.

Trademark, a word created only in the 19th century continued to play a significant role in the trade and commerce throughout the major part of history, including medieval times and the centuries beyond.

The guilds, one of the mainstays of economies in earlier times, often even required their members, the masters of the various crafts, to affix marks on their products in order to exercise control over their production.

History of Trademark in the world,_

In the course of time, remedies were developed by the Courts, or the legislations to stop the infringement of trademark rights. One of the first countries to enact a comprehensive law on trademarks, was France in 1857, a law which remained in force for more than 100 years.

United Kingdom enacted its Trademarks Registration Act, 1875 providing for the
registration of trademarks.

Subsequently, various amendments were introduced in the Act of 1857 and finally the Trade Marks Act, 1938 was enacted.

As far as the recognition of modern ways of exploiting trademark is concerned, the Trade Marks Act, 1938, since its inception, recognised the assignment of trademarks without the simultaneous transfer of the respective business.

The national developments were influenced to a substantial degree by developments in international field, particularly Paris Convention for the Protection of Industrial Property, 1883, including trademarks which is supplement by the Madrid Agreement on Registration of trademarks; signed in 1891.

In India, the law relating to Trademarks is contained in the Trade and Merchandise Marks Act, 1958, which has now been replaced by the Trade Mark Act, 1999.

The Act also simplified the procedure for registration of registered user, enlarged the scope of permitted use and allowed the registration of Collective Marks owned by associations, etc.

The Act also provides for establishment of an Appellate Board for speedy disposal of appeals and rectification applications. The Act empowers the Registrar to register certification trade marks.

So far this power was vested with the Central Government. Provision for enhanced punishment for the offences relating to trade marks on the lines of Copyright Act, 1957; restriction on sale of spurious goods; and use of some one elses trade marks as part of corporate names, or name of business concern have also been made in the Act.

The new Act amended the definition of trade marks, provides for filing a single application for registration in more than one class and extension of period of registration and renewal from 7 to 10 years.

Trademark Act 1999, Trademark Rules 2002 Trademark Act 1999, Trademark Rules 2002

INTRODUCTION________

A trade mark is a visual symbol which may be a
word
signature,
name,
device,
label,
numerals or
combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking.

In view of developments in trading and commercial practices, increasing globalisation of trade and industry,
the need to encourage investment flows and transfer of technology, need for simplification and harmonization of trade mark management systems and to give effect to important judicial decisions, a new
Trade Marks Act, 1999 have been enacted to provide for registration of trade mark for goods as well as services including prohibition to the registration of imitation of well known trade marks, and expansion of
grounds for refusal of registration.

See Also :- https://itohg.com/foreign-exchange-management-act-fema1999/

“Certification Trade Mark”_

Section 2(1)(e) defines the term certification trade mark as to mean 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 registerable as such in respect of those goods or services in the name, as proprietor of the certification trade mark, of that person.

‘Mark’__

The term mark under Section 2(1)(m) has been defined to include a
device,
brand,
heading,
label,
ticket,
name,
signature,
word,
letter,
numeral,
shape of goods,
packaging or
combination of colours or any combination thereof.

‘Permitted Use’_

Section 2(1)(r) defines the term permitted use, in relation to a registered trade mark, as to mean the use of trade mark-

(i) by a 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

(ii) by a 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.

‘Service’_

The term “service” under clause (z) of Sub-section (1) of Section (2) has been defined as to mean…….

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.

‘Trade mark’__

The term trade mark has been defined under Section 2(1)(zb) of the Act as to mean 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

(i) 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

(ii) 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.

Appointment of Registrar and Trade Mark Registry______________

Section 3 provides for appointment of the Registrar and other officers and Section 4 empowers the Registrar to withdraw any matter pending before an officer and deal with such matter himself or transfer it to another officer with reasons for such transfer to be recorded therein.

Section 5 deals with the establishment of the Trade Marks Registry and branch offices and provides that the Trade Marks Registry established under the Trade and Merchandise Marks Act, 1958 shall continue to be the Trade Marks Registry for the purposes of this Act.

Deceptive Similarity___________

Case study :

Mahendra and Mahendra Paper Mills Ltd. Vs. Mahindra and Mahindra Ltd.
[AIR 2002 SC117]

In Mahendra and Mahendra Paper Mills Ltd. Vs. Mahindra and Mahindra Ltd.
[AIR 2002 SC117]

Supreme Court broadly stated, in an action for passing – off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered—

• The nature of the marks i.e. whether the marks are word marks or labels marks or composite marks i.e. both words and label works.

• The degree of resembleness between the marks, phonetically similar and hence similar in idea.

• The nature of the goods in respect of which they are used as trade marks.

• The similarity in nature, character and performance of the goods of the rival traders.

• Class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and /or using the goods.

• The mode of purchasing the goods or placing orders for the goods.

• Any other surrounding circumstances which may be relevant in the extant of dissimilarity between the competing marks.

Weightage to be given to each of the aforesaid factors depending upon facts of each case and the same weightage cannot be given to each factor in every case.

Who benefits from a trade mark?__

Registered Proprietor: The Registered
Proprietor of a trade
mark can stop other
traders from unlawfully using his trade mark, sue for damages and secure destruction
of infringing goods and or labels.

Government: The Trade Marks Registry is
earning revenue.

Professionals: The Trade Marks Registration
system is driven by
professionals like Company Secretaries who act as trademark agents for the clients in the processing of the trade marks application.

Purchaser and ultimately Consumers of trade marks goods and services.

Penalty for Applying False Trade Marks, Trade Descriptions etc._

Section 103 deals with the penalty for applying false trade mark, trade description, etc.. Accordingly, the penalty for applying false trade mark or false trade description, etc.
shall be imprisonment for a term which
shall not be less than six months but which may extend to three years and with fine which shall not be less than fifty thousand rupees but which may extend to two lakh rupees.

However, the court has been empowered, for adequate and special reasons to be mentioned in the judgement, to impose a sentence lower than the normal punishment.

Trade Mark Agent__________

Section 145 deals with agents and provide that if any act is required to be done before the Registrar by any person, this may be done by a person duly authorised in the prescribed manner who is a legal practitioner, a trade marks agent or by his employee if he is duly authorised by him.

Trademark Act 1999, Trademark Rules 2002

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