Intellectual Property INDIA

. Trademark registration is an evidence of ownership of the trademark and also confirmation of the constructive notice nationwide issued of the trademark owner's claim on it. Trademark registration in India can also be used as a basis for obtaining registration in foreign countries. How to select a Trade Mark ? The trademark may be selected with following precautions:
• A trademark may be a word, letter a device or numeral or any combination thereof. It is better if it is simple in design.
• If it is a word, it should be easy to speak, spell and remember.
• The ideal word for a trademark is an invented or coined word.
• A word which are laudatory or which directly describes the character or quality of the goods or services should not be adopted.
• Geographical names connected with the reputation or quality of the goods for which registration is sought should not be adopted. Geographical Indications (GI's) have been enacted in India and GI's registry in Chennai interaction wef 15-09-2003 GI applications for again goods, natural products, food, industrial designs and handicrafts. Top
Are all Trade Marks registrable ? It is not possible to register a trademark which is confusable with a trademark of another trader who has been using the trademark earlier for the same goods or a trademark or which describes the character or quality of the goods which other traders may reasonably want to use in the course of their business. The mark should not conflict with a trademark already registered or pending registration in respect of similar goods. Also some marks are prohibited from registration under the directions of the Government. Who can file an application for trademark registration? The application must be filed in the name of the owner of the trademark; usually an individual, corporation or partnership. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark. What rights do registration of the mark bring ? The exclusive right to use the trade mark in relation to the goods for which it is registered and the right to take legal action against others who may infringe the registered trade mark or one resembling it in relation to similar goods. The registration of a trade mark confers on the registered proprietor of the trade mark the exclusive right to use the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain the relief in respect of infringement of the trade mark by others. The registration of a trade mark is not compulsory. However, without registration an owner of a trade mark cannot bring an action for infringement to protect the mark if it is copied by others. Is Registration of a Trade Mark compulsory ? Registration of a trade mark is not compulsory, but without registration the owner of a trade mark cannot bring an action for infringement to protect his mark if it is used by others. Suing for infringement of a registered trade mark is much simple than launching a common law action for passing off to protect an unregistered trade mark since the owner of a registered trade mark can base his case simply upon the fact that his mark has been registered. What trademarks can be registered? A trade mark which consists of at least one of the following essential particulars :
• the name of a company, individual or firm represented in a particular or special manner;
• the signature of the applicant for registration;
• one or more invented words;
• one or more words having no direct reference to the character or quality of the goods
• any other distinctive trade mark;
• a trade mark which has acquired distinctiveness by use over a prolonged period of time, may be registered by its owners;
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What trademarks may not be registered ? Trademark, which is identical to or deceptively similar to a trademark, which is already registered or has already been applied for in the name of a different proprietor in respect of the same goods or description of goods, may not be registered. Also trademark the use of which would be likely to deceive or cause confusion; the use of which would be contrary to any law in force; which comprises or contains scandalous or obscene matter or any matter likely to hurt the religions susceptibilities of any class or section of the citizens of India ; may not be registered. According to its ordinary signification, the words standing for geographical names or a surname or a personal name or any common abbreviation thereof or the name of a sect, cast or tribe in India will not be registered as trademarks. Domain name of there that of trademarks owner will also not be registered for trademark. How necessary is to get professional help ? As registration of a trade mark is a specialized area of work utilize it may be necessary to employ the services of a trade mark agent or attorney. However, this is not compulsory and the applicant may correspond directly with the Trade Marks Registry and handle the matter. What are common safeguards a trademark owner is supposed to take? Safeguards to be taken by the owner of a registered trade mark to protect his rights :-
• He should use and renew the trade mark regularly once in every decade wef date of registration.
• If his trademark is copied by others, he should file a suit for infringement and passing off and also take criminal action. In E&IT sector, detecting of infringers is easy by way of keeping constant watch of Internet Websites.
• He should keep a watch in respect of trademarks advertised in the Trademarks Journal and institute timely opposition proceedings if identical or deceptively similar trade marks are published.
• He should initiate rectification proceedings if an identical or deceptively similar trademark is registered. How do I find out whether a mark is already registered? In order to determine whether any person or company is using a particular trademark, a trademark search can be conducted either through the Trademark Registry Mumbay or some attorneys who have the requisite national database of Indian Trademarks. Top
What is a trademark search? A trademark search is designed to identify pre-existing trademarks that have the potential to conflict with your name. Without the benefit of a trademark search, you run the risk of being sued for trademark infringement and losing the right to use your new business name, product name, domain name or slogan after you have invested in that name. Uncovering and avoiding trademark conflicts with your name can often mean the difference between the success and failure of your business venture. How long does a trademark registration last? A trademark registration is valid for ten years from the date of filing if obtained. You have to apply for renewal during this time-period in every decade w.e.f. said date. May I cover more than one mark in a single application? A separate application must be filed for each mark the applicant wishes to register. Likewise, if the applicant wishes to register the same mark in more than one class, a separate application must be filed for each class and each type Black & White, and Colour. Do I have to be an Indian citizen to obtain a trademark registration? However, an applicant's citizenship must be set forth in the record. If an applicant is not a citizen of any country, then a Statement to that effect is sufficient. If an applicant has dual citizenship, then the applicant must choose which citizenship will be printed in the Official Gazette and on the certificate of registration. Is a trademark registration valid outside India as well? Certain countries, however, do recognize a trademark registration in India as a basis for registering the mark in those countries. The laws of each country regarding registration must be consulted. Top
Is it possible for a foreign corporation to license a trade mark in India against payment of royalty in a foreign currency? An agreement for payment of royalty to a non-resident requires the prior approval of the government. The government's policy Statement makes it clear that in case of a use of a foreign brand name a payment of royalty shall not be allowed unless the products on which the mark is used are intended for export. Can the ownership of a trademark be assigned or transferred from one person to another? A registered mark, or a mark for which an application to register has been filed is assignable
How do I contest someone else using a trademark similar to mine? There are several ways to dispute use of your trademark by a third party. It can be by way of filing a suit in a District Court where infringement has occurred or follow the path of arbitration proceedings or enter into an out of court settlement against some new contract / consideration.