TRADE MARKS
SALIENT FEATURES:
- International Classification for goods is followed (1-34 Classes). Similarly Service marks
are also registrable (35-42) Classes with effect from Septemebr, 15th 2003.
- Provision for filing MULTIPLE CLASS applications.
- Provision for filing DIVISIONAL applications.
- Provision for filing COLLECTIVE TRADE MARKS applications.
- Provision for filing CERTIFICATION TRADE MARKS applications.
- Provision for filing CONVENTION applications.
- Protection of WELL KNOWN TRADE MARKS.
- Recognition of unregistered licenced user of the registered trade mark.
- Definition of Mark and Trade Mark to include 'SHAPE OF GOODS', their PACKAGING and
COMBINATION of COLORS.
- Provision of filing documents by Electronic mode including e-mail, Fascimile etc.
- Provision for publishing the trade marks journal in CD.
- Provision for EXPEDITED SEARCH.
- Provision for EXPEDITED EXAMINATION OF APPLICATION.
- First user of the mark prevails even over first adoption/registration.
- Trans border reputation is recognized.
- Registration liable to be cancelled due to non-use of trademark for continuous period of 5
years and three months after registration but before petition; non use of the mark up to the
period of three months from the registration with non intention to use the same;
registration wrongly made or wrongly remaining on the register etc.
- Passing off action applies to trade marks as well trade names.
- Both civil and criminal actions lie.
PERIOD OF REGISTRATION:
- Registration is for initially 10 years from the date of the original application, whenever
the registration is actually done. The mark is renewable after every 10 years till the
registered proprietor wants by filing an application. Renewal application has to be filed
before the expiry of the registration. However, with surcharge it can be renewed even
thereafter within six months and an application for the restoration by filing application
for restoration within six months-one year.
REQUIREMENTS FOR FILING REGISTRATION APPLICATION:
- Full name, address and nationality of applicant(s).
- Description of the mark (in case of device or any thing which is not to be simply
typewritten, then 10 prints of the mark).
- Details of the basic application in case any priority is claimed;
- Authority/Power of Attorney.
PROCEDURE OF REGISTRATION:
- Causing the search of the Index of the registered and pending applications.
- Filing of application for registration of the trade mark/service mark.
- Receipt of the application number.
- Receipt of the examination report (automatically on first come first serve basis).
- Removal of the objections in the examination report (if any) and acceptance of the
application for publication in the Trade Marks Journal.
- Publication in the Trade Marks Journal for inviting public objections if any.
- After the publication, if the opposition, then after disposal of the opposition in favor of
the applicant, receipt of the registration certificate.
OPPOSITION TO REGISTRATION:
- Filing of Notice of opposition to be filed within the period of three months from the date
of publication of the journal/date when the journal was made available to the public
whichever is later. The notice of opposition is to be verified.
- Filing of counter statement by the applicant within two months of the receipt of notice of
opposition.
- Filing of evidence by opponent in support of the opposition within two months of receipt of
counter statement.
- Filing of evidence by applicant within two months.
- Filing of evidence in reply by opponent within one month.
- Hearing and final decision.
APPEALS:
- Any order of the Registrar is appellable before the Intellectual Property Appellate Board
(IPAB) within the period of three months.
- The Board cannot pass any ex parte ad interim injunction order unless it has heard the party
appealed against.
- The Board will have Head Office in Chennai but branch offices in Mumbai, Delhi, Kolkatta and
Ahamedabad where the offices of the Registrar of Trade Marks is situated. The cases by the
Board will be taken up according to the jurisdiction of the parties. Thus one does not have
to go to Chennai in each case.
ASSIGNMENT/PERMITTED USE/LICENSING:
- Assignment of trade marks whether registered or unregistered is permitted.
- The trade mark/service mark may be assigned with or without the goodwill.
- Permitted use is also allowed.
- Licensing is also allowed.
ENFORCEMENT:
- Infringement action for unauthorized use of registered trademark.
- Passing off action against unregistered trademark/ trade name.
- The reliefs available include: Injunction order, Rendition of accounts of profits illegally
earned by the defendant, damages, delivery up, costs. Anton pillar orders are also issued.
Trans border reputation. Well Known Trade marks have been recognized.
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