TRADE MARKS

• The Trade Marks Act, 1999 has been enacted to amend and consolidate the law relating to trade marks, but the said Act has not come into force yet, thus the Trade and Merchandise Marks Act, 1958 remains the Act currently in force. The Trade Marks Act, 1999 is more compliant with the Trade Related Intellectual Property Rights (TRIPS) Agreement. The new Act will bring many changes, some of which are as below
   
  • providing for registration of trade marks for services, in addition to goods
  • providing an Appellate board for speedy disposal of appeals
  • providing enhanced punishment for the offences relating to trade marks
  • filing of a single application for registration in more than one class of goods or services
  • increasing the period of registration and renewal from 7 to 10 years
  
   
• The person claiming to be the owner of the trade mark must apply to the Registrar in the prescribed manner. The application has to be made to the Trade Mark Registry within whose territorial limits the principal place of business of the applicant is located.

 
• An application shall not be made in respect of goods comprised in more than one prescribed class of goods.

 
• On filing of the application, the authorities conduct a search to ensure that the proposed trademark is not similar or deceptively similar to existing and registered trademarks.
  
  Thereafter, the Registrar may refuse the application or may accept it, subject to any amendment / modification / condition / limitation, as the Registrar may deem necessary.
   
• Upon receipt and acceptance of the registration application, the Registrar shall cause the application advertised in the prescribed manner.

 
• If no opposition to the application is received (within generally three months from the date of the application), or if the opposition is decided in favour of the applicant, the Registrar shall register the Trade mark.

 
• Registration of the Trade mark is not compulsory. However, without the registration the owner of the Trade mark cannot bring an action for infringement of trade mark if its is copied by others.

The registration of a trade mark is for a period of 7 years from the date of the application. It can be renewed for successive periods of 7 years each.

Infringement of Trade mark

Application of any false trade mark or trade description to any goods or the act of sale or possession of such falsely applied or used trade mark constitutes a criminal offence. The punishment for various offences can be in the form of imprisonment for a period of six months to three years along with penalty at the prescribed rates.

The law also provides for enhanced penalty for repetitive conviction.