Trademark act, Trademark registration procedure in India, Trademark search, Benefits, Relevant case studies

1. TRADEMARK
P r e s e n t e d B y : S h u b h i P a m e c h a
M P h a r m R e g u l a t o r y A f f a i r s
1 9 m p h 8 0 9
R e g u l a t i o n s & L e g i s l a t i o n s
G u i d e d b y : R a j v i P a t e l

2. CONTENT
• IPR
• What is trademark?
• Indian Trademark Law & its History
• Characteristics of Trademark
• Classification of Trademark
• Registration Procedure
• Fees and Forms
• Benefits of Trademark
• Trademark Infringement & its Cases

3. INTELLECTUAL PROPERTY RIGHT
• Intellectual property is property that arises from human
intellect.
• The right of an individual not to have his new product or
process of making a product copied by others is known as
intellectual property right as his invention is treated as his
intellectual property.
• IPRs are statutory rights and allow the creator(s) or owner(s)
of the Intellectual Property to exclude others from exploiting
the same commercially for a given period of time.

4. CLASSES OF IPR
• Patent: It is made for invention like new process, product,
technology etc. Patent is a “contract” between the inventor
and the government (Patent Office).
• Copyright: Copyright is a right given by the law to creators
of literary, dramatic, musical and artistic works and
of cinematograph films and sound recordings. An exclusive
legal right granted to the creator’s original work for use and
distribution.
• Trademark

5. WHAT IS TRADEMARK?
• A trademark or trade mark is a distinctive sign or indicator of some kind
which is used by an individual, business organization or other legal
entity to uniquely identify the source of its products and/or services to
consumers, and to distinguish its products or services from those of
other entities. A trademark is capable of identifying and distinguishing
specific goods or services.
• A trademark is typically a name, word, phrase, logo, symbol, design,
image, sound or a combination of these elements. There is also a range
of non-conventional trademark comprising marks which do not fall into
these standard categories, may therefore be visible signs (e.g. colors,
shapes, moving images, holograms, positions), or non-visible signs (e.g.
sounds, scents, tastes, textures).

6. • The mark which distinguishes the goods and services of one manufacturer
or provider from the other. This is one of the intellectual property rights
that restores the right to protect the identity of the product.
• The designed distinct trademark marked on the products for selling can be
subjected for copying or duplicating, unless it undergoes proper
registration procedure before using on the products. This registration of
the mark prevents the others from using it as it leads to judiciary
proceedings.
DESIGN
WORD

7. • Trademarks can be owned by individuals or companies and should be
registered at a governmental agency, which is usually referred to as the
Trademarks Office. When a trademark is used in connection with services,
it is sometimes referred to as a “service mark”.
• The main purpose of a trademark is to identify the source of a product
and to distinguish that product from products coming from other
sources.
SYMBOLS
PHRASES

8. TM for an
Unregistered
Trademark, that is, a
mark used to promote
or brand goods
SM for an
unregistered Service
mark, that is, mark
used to promote or
brand services.
® for a registered

9. INDIAN TRADEMARK LAW
• Indian trademark law provides protection to trademarks statutorily under the Trademark Act,
1999.
• Statutory protection of trademark is administered by the Controller General Of Patents,
Designs and Trade Marks, a government agency which reports to the Department of
Industrial Policy and Promotion(DIPP), under the Ministry of Commerce and Industry.
• The law of trademark deals with :
the mechanism of registration,
protection of trademark and
prevention of fraudulent trademark.
• The law also provides for :
the rights acquired by registration of trademark,
modes of transfer and assignment of the rights,
nature of infringements,
penalties for such infringement

10. HISTORY OF TRADEMARK ACT
Trade marks Act, 1875. Trademarks Act, 1940.
Trade and Merchandise
Marks Act, 1958.
Trade Marks Act, 1999
(current)
The 1999 Act was enacted to comply with the provisions of the TRIPS
(Agreement on Trade Related Aspects of Intellectual Property
Rights).

11. CHARACTERISTICS OF TRADEMARK
• Distinctive and descriptive.
• Preferably be an invented word.
• Easy to pronounce and remember.
• Easy to spell and write legibly.
• Short
• Appeal to eye as well as ear.
• Satisfy the requirements of registration.
• Not belong to the class of marks prohibited for registration.

12. CLASSIFICATION OF TRADEMARK
PRODUCTS
• Class 1 – Chemicals
• Class 2 – Paints
• Class 3 – Cosmetics and Cleaning Preparations
• Class 4 – Lubricants and Fuels
• Class 5 – Pharmaceuticals
• Class 6 – Metal goods
• Class 7 – Machinery
• Class 8 – Hand Tools
• Class 9 – Electrical and Scientific Apparatus
• Class 10 – Medical Apparatus
• Class 11 – Environment Control Apparatus
• Class 12 – Vehicles
• Class 13 – Firearms
• Class 14 – Jewellery
• Class 15 – Musical Instruments
• Class 16 – Paper Goods and Printed Matter
• Class 17 – Rubber Goods
• Class 18 – Leather Goods
• Class 19 – Non-metallic Building Materials
• Class 20 – Furniture and Articles Not Otherwise
Classified
• Class 21– Housewares and Glass
• Class 22 – Cordage and Fibres
• Class 23 – Yarns and Threads
• Class 24 – Fabrics
• Class 25 – Clothing
• Class 26 – Fancy Goods
• Class 27 – Floor Coverings
• Class 28 – Toys and Sporting Goods
• Class 29 – Meats and Processed Foods
• Class 30 – Staple Foods
• Class 31 – Natural Agricultural Products
• Class 32 – Light Beverages
• Class 33 – Wines and Spirits

13. SERVICES
• Class 35 – Advertising and Business
• Class 36 – Insurance and Financial
• Class 37 – Building, Construction and Repair
• Class 38 – Telecommunication
• Class 39 – Transportation and Storage
• Class 40 – Treatment of Materials
• Class 41 – Education and Entertainment
• Class 42 – Computer, Scientific and Legal
• Class 43 – Hotels and Restaurants
• Class 44 – Medical, Beauty, and Agricultural
• Class 45 – Personal and Social Services

14. IS IT NECESSARY TO REGISTER A
TRADEMARK?
• Registration of a trademark is not compulsory.
However registered trademarks have additional
benefits when compared to unregistered trademarks.
Registration of trademarks allows the owner of the
trademarks to file infringement suits for violation of
his rights whereas the unregistered user has to search
remedies in common law.

15. WHO MAY APPLY TO REGISTER?
•Any person claiming to be the proprietor of the
trademark used or proposed to be used by him
can apply. The application may be made in the
name of an individual, partners of a firm, a
Corporation, any Government Department, a
Trust or joint applicants.

16. REGISTRATION PROCEDURE
Trademark search
Trademark application in the relevant
international class
Filling of the application
Obtaining acknowledgment
TRADEMARK SEARCH
• First step in determining the uniqueness of your mark.
• Without which there may be:
 Greater risk of being sued for trademark infringement
 Rejection of your trademark application
 Third party challenging your trademark

17. Flowchart Showing The Trademark Registration Procedure In India

18. TERM/DURATION OF A TRADEMARK
IN INDIA
• The term of registration of trademark is 10 (Ten) years, but
may be renewed subject to the payment of the prescribed fee,
in accordance with the provisions of the Trademarks Act,1999.
An application for renewal of a trademark can be filed within
six months from Constantia (Body) the expiry of the last
registration of trademark.

19. FEES AND FORM
Sr.
No.
On what payable
(Form for/ Application for)
Amount in INR Form
numberFor Physical filing For E-filing
1. Application for registration of trademark
specification of goods and services
included in one or more classes.
TM-A
Applicant is an individual/ start-up / small
enterprise
5,000 4,500
In all other cases 10,000 9,000
2. Notice for opposition to oppose an
application
3,000 2,700 TM-O
3. For renewal of registration 10,000 9,000 TM-R
4. Application to register a subsequent
proprietor in case of assignment or
for each trademark.
10,000 9,000 TM-P
5. Request for search and issue of certificate 10,000 9.000 TM-C

20. BENEFITS OF TRADEMARK
• Increases the company’s brand image in the market.
• Other companies will not be able to register similar trademark.
• Helps the company in case of domain name disputes.
• Gives greater credibility to the company.
• Allows the company to stop others from using marks that are similar to
the trademark.
• Becomes a part of company’s valuation as Intellectual Property Asset.
• Allows the company to sue any party for infringement and claim
compensation.

21. TRADEMARK INFRINGEMENT
• Trademark Infringement is a violation of exclusive rights attaching to a
trademark without the authorization of the trademark owner or any licensee.
• Trademark infringement mostly occurs when a person uses a trademark
which may be either a symbol or a design, which resembles to the products
owned by the other party. The trademark owner may begin a legal
proceeding against a party, which infringes its registration.
• Offences shall be punishable with imprisonment for a term of minimum of
six months but which may extend to three years and with a minimum fine of
fifty thousand rupees but which may extend to two lakh rupees or more.
• Under the Trademarks Act, a person infringes a registered trademark if the
person “uses as a trademark” a sign which is :- “substantially identical” with
or “deceptively similar” to the registered trademark on goods or services
covered by the trademark registration.

22. TRADEMARK
SEARCH

23. TRADEMARK
INFRINGEMENT
CASES

24. Amul Wins Trade Mark Case In
Gujarat Highcourt, (Sep 24,
2007)• Amul has won the trade mark case in Gujarat High Court and no one
else can use it.The Kaira District Co-operative Milk Producers? Union Ltd.
and GCMMF had filed trade mark infringement cases, against two local
shop owners ? Amul Chasmaghar and its partners and Amul Cut Piece
Stores in the District Court, Anand. The District Court, Anand passed an
order dated 25 April 2007, ruling that it was a clear case of infringement
and restrained the two from using the Amul trademark. Amul
Chasmaghar had challenged this interim injunction in the Gujarat High
Court. The Gujarat High Court ruled the decision in favor of Amul,
terming the order passed by the trial court as true, correct, legal and in
consonance with the facts of the case, as well as in accordance with the
provisions of the Trade Marks Act 1999.

25. REFERENCE
• www.ipindia.nic.in
• www.wto.org
• www.copyright.gov.in
• https://www.southeastasia-iprhelpdesk.eu/en/node/311
• Slideshare.net

26. THANK YOU