The Trade Mark is a name mark, numeral, letter or a combination thereof either in the form of a symbol for a word which is used in the course of trade to enable the purchasing public to distinguish the product or the property or the goods from the goods of other manufacturers. The New Trade Mark Act 1999 is introduce on 15 September 2003

SELECTING TRADE MARK

· A Trade Mark may be a word, letter, a device or numeral or any combination thereof. It is better if it is simple in design.

· If it is a word it should be easy to speak, spell and remember.

· The ideal word for a trade mark is an invented or coined word.

· Words which are laudatory or which directly describes the character or quality of the goods should not be adopted.

· Geographical names connected with the reputation or quality of the goods for which registration is sought should not be adopted.

· It is advisable to conduct a market survey through an investigating agency etc to ascertain whether any identical or deceptively similar mark is used for the same goods by any other person in the market.

· It is advisable not to imitate another persons trade mark or any other well known trade mark even if the goods are different.

· Before applying for registration it is desirable to obtain preliminary advice and official report to ascertain whether any identical or deceptively similar trade mark exists on the Register or pending for registration for the same goods.

SALIENT FEATURES OF TRADE MARK ACT, 1999

Trade Mark is considered to be a valuable intellectual property and the value of such property is now-a-days recognized in the world. In the beginning trade mark right was considered in respect of or in relation to goods only. But as a result of vast industrial development in the world, services are also included in the definition of 'Trad Mark' in various countries. The Trade Mark Act, 1958 includes the marks used in respect of or in relation to goods only and not services. But after amendment Bill which was introduced in the year 1995, now notified as Trade Mark Act, 1999 and which extends to the whole of India, Services are included in the intellectual property. The Act has still not come in force and which is likely to be published within a short time as an ACT, because the rules as per requirements of the Act are still not finalised and the rules are likely to be notified within a short time. The SALIENT FEATURES of the new TRADE MARK ACT, 1999 are as follows :

(1) As per the provisions of Section 2(z), the definition of 'SERVICE MARK' is included and therefore by new Act, registration of a Trad Mark for 'SERVICE' in addition to the 'GOODS' is provided. Section 2(z) reads as...'Service' means a service of any description which is made available to potential user and includes the provision of service in connection with business of any industrial or commercial sector such as Banking, Insurance, Cheat Funds, Real Estate, Trasports, Storage, Material Treatment, Processing, Supply of Electrical or other energy, Boarding, Lodging, Entertainment, Amusement, Construction, Repairs, Conveying of news for information and advertising. Looking to the definition, the wide range of services are included for registering their name or brand to indicate the source of service supplied to the customers.

(2) The second feature is Registration of a Trade Mark which means imitation of well-known trad mark is not to be permitted, besides enlarging the amount for refusal of registration mentioned in Clause 9 and 11. The provisions of defensive registration of trade mark are proposed to be omitted. In the old Act, Section 47 for defensive registration is provided, while in the present Act, no such defensive registration is available. The effect of such section is that the registered proprietor will not be in a position to get monopoly right over the mark by obtaining registration of trade mark in various class of goods. In this regard the latest judgment of Hon'ble Supreme Court in the case of Vishnudas Trading V/s Vazir Sultan Tobaco Co.Ltd. 1997 4 SCC Pg.201. The Hon'ble Supreme Court has clarified that if the trader or a manufacturer, trading in or manufacturing in only one or some of the articles coming under the broad classifiction of goods, such a trader or manufacturer should not be permitted to enjoy monopoly in respect of all the articles that may come under such a broad classification and, therefore, the Hon'ble Supreme Court allowed the rectification of the mark CHAR MINAR from all goods cavered in Class 34 to the goods other than Cigarette for which registered property was using the mark.

(3) The new Act does away with the system of maintaining registration of Trade Marks in Part 'A' and Part'B' of the Register and it is decided to provide only single registration which will simplify the procedure of registration i.e. as per the provisions of Section 6 of the Act. Formerly in the Act of 1958, the marks which were registered prior to 1958 were kept in Part 'A' of the Register and marks inherently distinctive are also registered in Part 'A' of the Register, but when the mark is not inherently distinctive, but is capable to distinguish the goods of the applicant, are taken in Part 'B' of the Register and such distinction which was made in the Act of 1958 is now taken out.

(4) In the new Act, the registration of the registered user, procedures are simplified and enlarging the scope for permitted user. The said provision is made in Section 48 of the Act and Section 48(2) would clarify the procedure.

(5) Another feature of the new Act, provides registration of Trade Mark to a collective mark owned by association. As per provisions of Section 2(zb), certification of trade mark and collective mark are included in definition clause of trade mark and, therefore, a new scope of registration is provided and as per section 2(g) definition of collective mark mentioned that 'Collective Mark' means a trade mark distinguishing the goods or services of a member of association or persons (not being a partnership within the meaning or Partnership Act) which is a proprietor of the mark from those of others.

(6) In the Prisent Act, establishing an Appellate Board for speedy disposal of apeals and rectification applications is provided and, therefore, the definition of High Court provided in the old Act Section 2(h) is deleted and Section 3, the jurisdiction of the High Court is also deleted and instead of that in Sectio 2(1a), Appellate Board established under Section 83 of the Act is provided and powers of hearing of appeals from orders of the Registrar of Trade Mark and rectification applications are granted to the Appellate Board. By providing this as provided under Section 83 to Section 100, the functions of the Board, appointment of members of the board, chairman, vice chairman, members all are provided and by providing this the legislature has thought that appeal against the order of the Registrar and the rectification applications are required to be heard by technical expert members of the board to appreciate the facts and the provisions and give speedy disposal to the matters.

(7) In the new amendment the final authority relating to registration of certification of trad mark is given to the Registrar of Trade Marks and not to the Central Govt. as provided in the Act of 1958. This is provided under Section 71 of the new Act and by providing such amendment, powers of the Registrar are increased for speedy disposal of the matters. The new feature of the present Act is to provide heavy penalty in the offender is punishable for imprisonment for a term which shall not be less than 6 months, but which will be extended to 3 years and with fine which shall not be less than Rs.50,000/- but which may extend to Rs.2 lacs. By providing this, present Act have given more powers and effective relief against imitators of the registered trade marks. It is also further made clear that the offenses is made compoundable and, therefore, cognizance of the offence can be taken by the Police officer as provided in Sec. 115(3) of the Act which reads that an offence under Sec. 103, 104 or 105 shall be cognizable. Therefore, effective remedy will be available against imitator and infringer of the trade mark.

(8) A new provision under the Act under Sec.18(2) provides single application may be made for reistration of trade mark for different class of goods and/or services. The New Act is Prohibiting use of someone else's trade mark as a part of corporate name or name of the business concern. By providing this facility, the definition of the trade mark is made wider and gives more protection to the traders and industries.

(9) In the present Act, registration of trade mark also includes shape of goods, packaging and combination of colours. Therefore, a wider protection is provided under the Act.

(10) The registration period of the trade mark is provided for 10 years and thereby the renewal is required to be made after 10 years, whereas in the old Act it is 7 years.

(11) In the new Act under Sec. 33 effect of acquiescence is provided that if earlier owner of a trade mark acquise the user of the mark by subsequent user for more than 5 years is not entitled to apply for declaration that registration of latter's trade mark is invalid or to oppose the use of the latter's trade mark in relation to the goods or services in relation to which it has been so used. In Section 135(2) provides a relief for order of injunction under Sub Sec. (1) for infringement of trade mark or for passing off action includes ex-parte injunction or for interlocutory order for discovery of documents and preventing the infringing goods documents or other relevant documents which relates to the subjects matter of the suit and also include restraining defendants from disposing off or dealing with his assets in a manner which may adversely affect the plaintiff's ability to recover damages, costs or other pecuniary remedy which may be finally awarded to the plaintiff.

This amendment simplifies and streamlines the trade mark law and procedures.