TRADEMARKS:
COMPUTER AND SOFTWARE PRODUCTS
What
is a Trade Mark?
A
trade mark, is an identification mark which may be a word, a device,
a label, a name brand, heading or numeral etc. or a combination
thereof used to enable the purchaser to distinguish one trader's
goods from similar goods of other traders .A trade mark connects
particular goods in the minds of people to particular manufacturer.
Computer
and computer related products as also Software products can also
have trademark that will distinguish the products from the other
manufacturers and can be identified by the consumer to be coming
from particular manufacturer. eg. Dell, IBM. Microsoft
are all trademarks of their respective manufacturers. In fact these
trademarks are very popular and are registered trademarks. Use of
these trademarks by others in respect of similar goods may amount
to infringement and against which action can be taken.
Selection
of a Trade Mark for your products.
A
trademark may be a word, letter a device or numeral label or any
combination thereof.
It
shall be distinctive.
If
it is a word it should be easy to speak, spell and remember.
The
ideal word for a trademark is an invented or coined word.
It
should be short.
HOW
TO PROTECT YOUR TRADEMARK
Care
should be taken to keep the distinctiveness of the trademark intact
by using it in correct ways in written materials, in promotions
etc.
It
should be used exactly the way it was designed.
“The
Trade and Merchandise Marks Act, 1958” is the legislation which
deals with trademark law in India. Under this Act registration of
trademark is permitted under specified classes of goods. Computer,
software products are registered under class 9(nine) in India.
Once
the trademark is registered it helps in action against infringement.
In
case of unregistered marks and marks which are not registrable,
the only form of protection is the common law remedy of passing
off.
The
basic difference between the protections available for registered
trademarks (infringement action) and unregistered trademarks (action
for passing is that the former is a statutory remedy and the latter is
a common law remedy. In order to establish infringement with regard
to a registered trademark, it is necessary only to establish that
the infringing mark is identical or deceptively similar to the registered
mark and no further proof is required. In the case of a passing
off action, proving that the marks are identical or deceptively
similar alone is not sufficient. The use of the mark should be likely
to deceive or cause confusion. Further, in a passing off action
it is necessary to prove that the use of the trademark by the defendant
is likely to cause injury or damage to the plaintiff’s goodwill,
whereas in an infringement suit, the use of the mark by the defendant
need not cause any injury to the plaintiff.
The
types of trademarks that can be registered
- Trademark protection is available for words, names, symbols, or devices
that are capable of distinguishing the owner's goods from the
goods of others.
- A trademark that merely describes a class of goods rather than distinguishing
the trademark owner's goods from goods provided by others cannot
be registered.
- Trademarks are not registered if:
- The
use of the mark is likely to deceive or cause confusion;
- The
use of the mark is contrary to any law or is disentitled
to protection in any court of law;
- The
mark contains scandalous or obscene matter;
- The
mark contains any matter that is likely to hurt the religious
sentiments of any section of the citizens of India;
- The
mark is identical or deceptively similar to a trademark
already registered in respect of the same goods or goods
of the same description;
- The
use of the mark is prohibited under The Emblems and Names
(Prevention of Improper Use) Act, 1950.
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Procedure for registration of trade marks
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- Any
person/entity who claims to be the proprietor of a trademark
can apply for registration. Before applying for registration,
the applicant may apply for a report from the Registrar
of Trademarks, as to whether the mark or one similar to
it has already been registered or applied for. The applicant
can also conduct private searches using the records maintained
in the Registry.
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- Thereafter,
the application for registration should be filed in Form
TM-1, under the Trade and Merchandise Marks Rules, 1959.
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- After
the application is received, the Registrar of Trademarks
will examine the same and communicate any objections to
the applicant. The objections normally are with regard
to distinctiveness and similarity with already registered
trademarks. The applicant can put forward his case in
writing or at a hearing. If the submissions of the applicant
are accepted, the application will be advertised in the
Trademarks Journal.
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- In
case any objections are received, the Registrar will conduct
a hearing and give a decision regarding the same.
- If
no objections are received, the Registrar will enter the
mark in the Register of Trademarks and issue a certificate
of registration to the applicant. The certificate of registration
is valid from the date of application for registration.
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Advantages
of registration of the trade mark
The
exclusive right to use the trade mark in relation to the goods for
which it
is
registered and the right to take legal action against others who
may infringe the registered trade mark or one resembling it in relation
to similar goods.
Renewal of registration.
The
registration of a trademark is for a period of seven years from
the date of the application. Registration of the mark can be renewed
for successive period of seven years.
Assignment
of trademark
A
trademark is recognised as a form of property. It is therefore assignable
and transferable as in the case of other forms of property. Assignment
of trademark can be made by making a request on form TM-23/24 along
with the deed of assignment etc to the trademark registry.
An
unregistered trademark can be assigned without the goodwill of the
business under the following circumstances:
At
the same of assignment it is used in the same business as a registered
trademark;
That
both the registered and unregistered trademarks are assigned at
the time and to the same person; and
That
the goods in respect of which the assignment is effected are the
same for both the marks.
Infringement
of a trademark
A
registered trademark is infringed if a person uses the same/deceptively
similar mark in the course of trade, in respect to the same goods.
The test for deceptive similarity is whether the defendant's use
of a mark is likely to cause confusion, i.e., whether an appreciable
number of reasonably prudent consumers are likely to be confused
or deceived as to the source, affiliation or sponsorship of the
parties and their goods and services.
Reliefs
that the court may grant in an infringement suit are:
- Injunction, restraining the further use of the trademark;
- Damages or an account of profits; and
- An order for delivery of the infringing labels and marks for destruction.
Service
marks
Service marks are marks used by people rendering various kinds of
services, for eg: travel agents, finance companies, consultants
etc. At present there is no provision for the registration of service
marks in India, and they can only be protected by an action for
passing off.
The
Trade Marks Bill, 1999
It
is passed by both Houses of parliament and has also received the
Presidential assent is still to be notified. So far it is not in
effect.
Some of the important provisions under the new Act are:
·
“Trade
mark” shall now include services as well. All 42 international
classifications of goods will be applicable in India. Thus service
providers will be able to register their service marks.
·
The
period of registration has been enhanced from 7 years to 10 years.
·
“Well
known trade mark” can be protected.
·
The
new Act will empower courts to pass ex-parte injunction orders
or other interlocutory orders for (a) discovery of documents, (b)
preserving the infringing goods, documents or other evidence, and
(c) restraining the offender 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 remedies.
·
Trademark
violation is now a cognizable and non-bailable offence
·
Minimum
penalties
of a six-month imprisonment term and Rs. 50,000/- have now been
prescribed for trademark violations. The maximum penalties have
been increased from two years imprisonment to three years and a
fine of Rs. 2 million.
©
Zarana Khona. E-mail:zarana@indiaitlaw.com
