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An Overview of Trademarks

Trade mark is a part of Intellectual Property Right. A trademark incorporates any word, name, symbol, or device, or any combination, utilized, or planned to be utilized, in commerce to recognize and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to demonstrate the source of the goods. Trademark is a mark or symbol which is capable of recognizing the goods or services of one from those of others.

Owner of Trademark:

Trademark gives protection to the owner of the mark by assuring the exclusive rights to use in to distinguish the goods or services or authorize another to utilize in return of payment. It works like a weapon in the hand of enlisted owner or registered proprietor of the mark to prevent different traders from unlawful utilization of the mark of the registered owner. Under section 28 of the Act, the registration of a trade mark will provide to the registered owner of the trademark, the exclusive right to the utilization of the mark according to the goods in regard of which the mark is registered and to get help in regard of the trademark as provided under the Act.

The owner of an trade mark has a privilege to file a suit for infringement of his right and obtain:

  1. Injunction,
  2. Damages,
  3. Account of profits

Registration of Trademark:

According to section 18 (1) of the Trade mark Act, 1999, any individual claiming to be the owner of a trademark utilized or proposed to be utilized by him may apply writing in hard copy in endorsed way for registration. The application must contain name of the mark, goods and services, class in which goods and services fall, name and address of the applicant, period of use of the mark.

Any Person means a Partnership firm, association of persons, an organization, regardless of incorporated or not, a Trust, Central or State government.

Steps for registration of trademark

  1. Search for the name, device, logo, and mark planned to be applied as trademark.
  2. To apply for registration of trademark.
  3. Assessment of application by the registry. Assessment report provided by the registry raising objections under various sections of the Trademark Act, 1999.
  4. Replying to the official objections and whenever required, ask for hearing. There is need to file evidence in support of the trademark application by the applicant.
  5. Advertisement of trademark in official gazette/trademark journal with the goal of opposition filed by the public within 3 months from the date of publication.
  6. In the event that no restriction is provided, a certificate of registration is issued for candidate. The validity period of registration certificate is for ten years and after that the same can be renewed subject to the payment of renewal fees.

Infringement of Trade Mark:

Infringement is a breach or violation of another's right.

According to Black's Law Dictionary Infringement implies a demonstration that meddles with one of the exclusive privileges of a patent, copyright and trademark proprietor. As per the Trademark Act, 'A registered trade mark is infringed by an individual in the event that he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in regard of which the exchange mark is enrolled. Infringement of trademark implies utilization of such a mark by an individual other than the enlisted owner of the mark.

According to Trademark Act, a mark will be regarded to be infringed mark if:

  1. it is discovered duplicate of entire registered mark with a few additions and alterations,
  2. the infringed mark is utilized over the course of trade,
  3. the utilization of the infringed mark is printed or usual representation of the mark in advertisement. Any oral utilization of the trademark isn't infringement.
  4. the mark utilized by the other individual which almost looks like the characteristic of the registered owner as is probably going to deceive or cause confusion and in relation to goods in respect of which it is registered.

Protection Against Infringement of Trade Mark:

Under section 29 of the Trade mark Act, 1999, the utilization of a trade mark by an individual who not being registered owner of the trade mark or an registered client thereof which is indistinguishable with, or misleadingly like an registered trademark amounts to the infringement of trademark and the registered owner can make a move or acquire relief in respect of infringement of trademark.

In a case Supreme Court has held that in an action for infringement if the two marks are indistinguishable, at that point the infringement made out, otherwise in the case the Court needs to look at the two marks, the degree of resemblance by phonetic, visual or in the basic ides as presented to the registered owner, regardless of whether the essential features of the mark of the registered proprietor is found to be used by other person the Court may conclude the matter.

In an action for infringement of trademark:

  1. the offended party must be the registered proprietor of a trademark
  2. the respondent must utilize a mark misleadingly similar with the offended party's mark.
  3. the utilization must be corresponding to the goods in regard of which the offended party's marks is registered,
  4. the utilization by the defendant must not be accidental however over the course of trade.

Differences Between Passing Off and Infringement:

The action for passing off is not quite the same as an infringement activity. The activity for infringement is a statutory remedy whereas the action for passing off is a common law remedy. Accordingly, so as to establish infringement with regard to a registered trademark, it is essential just to set up that the infringing mark is identical or deceptively similar to the registered mark and no additional evidence is required.

On account of a passing off action, demonstrating that the marks are indistinguishable or misleadingly similar alone isn't adequate. The utilization of the mark ought to probably misdirect or create confusion.

Further, in a passing off action it is important to demonstrate that the utilization of the trademark by the defendant is probably going to make injury or harm the offended party's goodwill, though in an infringement suit, the utilization of the marks by the respondent need not bring on any injury to the offended party. In any case, when a trademark is registered, registration is given only with regard to a particular category of goods.

Protection is, accordingly, provided distinctly to the goods. The defendant's goods need not be the same, in passing off action; it may be allied or even different.

In Satyam Infoway Ltd. Vs Sifynet Solutions (P) Ltd. 2004 (6) SCC 145 it was held by the Court that three elements are needed to be considered to establish an action for passing off, which are as follows:

  1. The first element in an action for Passing off, the term passing off itself alludes, that to restrain the defendant from passing off its goods and services to the public as that of the plaintiff's. It is an action to also safeguard the public but not only preserve the reputation of the plaintiff. The defendant should sell its goods and offer its services in a manner as laid down or as perceived to the public into thinking that the defendant's goods or services are for the plaintiffs.

  2. That second element that must be established by the plaintiff is misrepresentation by the defendant to the public and what has to be established is the likelihood of confusion in the minds of the public that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such confusion, the court must allow for the 'imperfect recollection of a person or ordinary memory.

  3. The third component of a passing off action is loss or its probability.

However, trade mark enrollment under the Act just has impact in India. To get trade mark rights and protection in different nations it is important to utilize and additionally register the trade mark in those nations. Trade mark protection is regional in nature.

A different registration should be made in each and every nation where insurance is desired. To acquire protection outside India, it is important to file applications in the concerned nations exclusively.

Furthermore, you ought to be mindful so as to apply for registration in a nation before you begin utilization of your trade mark that nation. In certain nations, for example, Continental Europe, China, Japan and Indonesia, the primary individual to apply for registration will be given the rights to an trade mark, as opposed to the individual who first uses the trade mark.

In this manner, another party could legally steal your trade mark by applying for registration regardless of whether you were the principal individual to utilize the trade mark.

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