About IPR : Trademarks
A TRADEMARK is a word, phrase, symbol or design. or combination of words, phrases, symbols or designs is used in the course of trade which identifies and distinguishes the source of the goods or services of one enterprise from those of others.
A SERVICE MARK is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services
Trademark would 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 colors [As per section 2(zb) of Trademarks Act. 1999]
A mark essentially includes a device, brand. heading, label, ticket. name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof [As per section 2(m) of Trademarks Act, 1999]
Some of the examples of trade marks are:
Advantages of Registration of a Trademark
The advantages/rights that are conferred upon the owner of the registered trademark can be summarized as:
- Rights to the owner for exclusive usage of the registered mark in relation to goods or services (service marks) in respect of which the mark is registered
- Exclusive right to obtain relief in a court of law on any kind of infringement of his/her registered mark by any third party.
- The owner of the registered trademark can assign the registered mark and give effectual receipts for any consideration of said assignment thereof.
- The owner is also bestowed upon the right to provide for any addition or alteration of the registered mark but such addition and alteration should not affect or effect the substantial identity of the mark.
Penalty & Action against Infringement of Trademark
The Trademarks Act; 1999 provides for penalty and action for any infringement of a registered trademark. Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party. These remedies are: – ‘an action for infringement in case of a registered trademark and ‘an action for passing off in the case of an unregistered trademark.
Difference between Action for Infringement & Action for Passing Off
| Action for Infringement | Action for Passing Off |
|---|---|
| A statutory remedy | A common law remedy |
| Necessary to establish that infringing mark is identically or deceptively similar to the registered mark and no further proof is required | Proving that marks are identically or deceptively similar is not sufficient The use of the mark should be likely to deceive or cause confusion. |
| It is not necessary to prove that the use of the mark by the defendant need not cause any injury to the plaintiff | Necessary to prove that the use of the trademark by the defendant is likely to cause injury or damage to the plaintiffs goodwill. |
Safeguards to be taken by the Proprietor of a Registered Mark
- The proprietor should use and renew the trademark regularly and in time. If the trademark is misused by others he should file a suit for infringement and passing off and also take criminal action; and
- The proprietor should keep a watch in respect of trademarks published in the Trade Marks Journal and institute opposition proceedings if identical or deceptively similar trademarks are advertised. He should initiate rectification proceedings if an identical or deceptively similar trademark is registered
Duration of a Trademark
The term of a trademark registration is for a period of ten years. The renewal is possible for further period of 10 years each. Unlike patents, copyrights or industrial design trademark rights can last indefinitely if the owner continues to use the mark. However, if a registered trademark is not renewed, it is liable to be removed from the register.