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The Trade And Merchandise Marks Act, 1958

The Trade And Merchandise Marks Rules, 1959


Trade Marks Act, 1999

The Trade Marks Rules, 2002

TRADEMARK
REGISTRATION
Ministry of Industry, Department of Industrial
Development
Controller General of Patents,
Designs and Trade Marks
Trade Marks Registry
Bombay, New Delhi, Chennai, Calcutta and Ahmedabad

FORM TM-1
Application for Registration of a trade mark
(Section 18(1), Rule 25)

Application is hereby made for registration in the register of


the accompanying trade mark in class ................. in respect
of ........ in the name of(s) whose address is ...... who
claim(s) to be proprietor(s) thereof and whom the said mark
is proposed to be used or by whom and his (their)
predecessors in title the said mark has been continuously
used since ............. in respect of the said goods.
Date:

SCHEDULE IV
Total classes: 42. (1-34 goods and 35-42 services) (Some Illustrations)
Class 25: Clothing including boots, shoes and slippers.
Class 29: Meat, fish poultry and game, meat extracts, preserved, dried
and cooked fruits and vegetables; jellies, jams, eggs; milk and other
dairy products; edible oils and fats; preserves, pickles.
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes;
flour and preparations made from cereals; bread, biscuits, cakes, pastry
and confectionery; honey, treacle; yeast, baking-powder, salt, mustard;
pepper, vinegar, sauces, spices; ice.
Class 31: Agricultural, horticultural and forestry products and grains
not included in other classes, living animals, fresh fruits and vegetables;
seeds; live plants and flowers; foodstuffs for animals; malt.

Cond
Services
35. Advertising, business management, business administration,
office functions
36. Insurance, financial affairs, monetary affairs, real estate affairs
37. Building construction; repair; installation services
38. Telecommunications
39. Transport; packaging and storage o goods; travel arrangement
40. Treatment of materials
41. Education; providing training; entertainment; sporting and
cultural activities
42. Providing food and drink, temporary accommodation; medical,
hygienic and beaty care; veterinary and agriculture services, legal
services, scientific and industrial research, computer programming;
servives that cannot be classified in other classes.

MARKS WHICH CANNOT BE REGISTERED

Use of which is contrary to law


(Emblems and Names (Prevention of Improper Use),
Act, 1950

Use of which is likely to hurt


religious susceptibilities of any
class or section of the citizens of
India

WORDS WHICH ORDINARILY CANNOT BE REGISTERED

Words having direct reference to the


character or quality of goods

Geographical name

Surname

Sect caste or tribe

(Distinctiveness to be established)

NO REGISTRATION OF MARKS LIKELY


TO DECEIVE OR CAUSE CONFUSION

This is done by searching the


register for the already
registered trademarks

Cases
Elora clocks as opposed to Ellora time pieces
Pearl and Pearle appliances
Surya as opposed to Suryan trademark for soaps
Ponas as opposed to Ponds
Fieldmarshal Diesel pumps as opposed to
Sonamarshal Diesel pumps
Amritdhara and Lakshmandhara were the two
medicine.
Peacock brand plastic wares and opposed to Mayur
plastic wares

Cases
Amritdhara and Lakshmandhara were the two
medicine.
Peacock brand plastic wares and opposed to Mayur
plastic wares
Surya with a half rising sun and Bhaskar with a
full rising sun for tube lights
Robin with a device of a bird sitting on a twig; Bul
Bul with two birds-one partially hiding the other
for blue

Cases
MERCEDES BENZ" cars with the symbol of a
'THREE POINTED STAR'. VIP Benz vests with a
star symbol.
Rediff v/s Radiff
Yahoo v/s YahooIndia
"www.jrdtata.com", "www.ratantata.com",
"www.tatahoneywell.com",
"www.tatayodogawa.com",
"www.tataeleservices.com", "www.tatassl.com",
"www.tatapowerco.com", "www.tatahydro.com",
"www.tatawestside.com",

Similar, Identical, Deceptively


similar, causes confusion

Nature of the marks

Degree of resemblance (phonetic,


visual as well as similarities in ideas)

nature, character and purpose of


goods

class of purchasers

trade channels

Kabushiki Kaiha Toshiba (Toshiba Corporation) v/s


Toshiba Appliances Co. and others
(Calcutta High Court, 27/28.9.1993)

Now, if there are no goods at all in physical existence, there can be


no use of the mark in relation to those. It is the same, if the goods
are in physical existence somewhere else than in the Indian
market. For, however, big the foreign market of a trader might be,
and however famous his trade mark might be all over the world,
yet to qualify for use of the mark in relation to the goods within
our Trade and Merchandise Marks Act of 1958, such use must be
made in India and not abroad.

Thus, a mere use of the mark in advertising or other publication


media is insufficient as 'use'. This is quite understandable, because
if it were no so, trafficking in trade marks could be legally indulged
in, for a mark could be registered and then kept alive merely by
advertising without ever putting any goods into the market.

Cond

The trade mark law is a national code and not an


international treaty... If a country blocks international
trade within itself, international names only cannot be
registered and preserved in the blocked market. This
would mean allowing international names to hold the
market totally without goods, or give international
marks a copyright value, and both these are
impermissible and against the first principle of trade
mark law.

PROBLEMS IN REGISTRATION
OF FOREIGN TRADEMARKS

Rectification for non-user- R J Reynold


v/s ITC Ltd.

Non-registration of surnames- SEARS,


HONDA, SUZUKI, ADIDAS

Passing-off action failed on account of


non-user

WHIRLPOOL CASE
The Delhi High Court (1994) thus framed the
question:
"If plaintiff was not having any sale in India but
was having sales in the trade mark WHIRLPOOL in
other countries/geographic regions of the world,
can the plaintiffs have the benefit of 'trans-border
reputation' so as to maintain passing off action in
India or should their goodwill/reputation be
treated confined to territories in which they have
proved actual user of the trade mark in the
market?"

And answered:

Cond

And answered:
Whirlpool associated with the plaintiff No. 1 was
gaining reputation throughout the world. The
reputation was traveling tran-border to India as
well through commercial publicity made in
magazine which are available in or brought in
India. These magazines do have a circulation in
the higher and upper middle strata of Indian
society. The plaintiff no. 1 can bank upon transborder reputation of its product washing
machine for the purpose of maintaining passing
off action.

Supreme Court (1996) affirmed in the


Whirlpool Case:
It has also to be borne in mind that a mark in
the form of a word which is not a derivative of
the product, points to the source of the
product. The mark/name WHIRLPOOL is
associated for long, much prior to the
defendents' application in 1986 with the
Whirlpool Corporation- plaintiff No. 1. In view
of the prior user of the mark by plaintiff No. 1
and its trans-border reputation extending to
India, trade mark WHIRLPOOL gives an
indication of the origin of the goods as
emanating from or relating to the Whirlpool
Corporation.

Kamal Trading Co. vs. Gillette UK Ltd.


Bombay High Court noted:
It is not necessary in the context of the present
day circumstances, the free exchange of
information
and
advertisement
through
newspapers, magazines, video television,
movies, freedom of travel between various
parts of the world, to insist that a particular
plaintiff must carry on business in a jurisdiction
before improper use of its name or mark can be
restrained by the court. (quoted from Apple
Computer Case)

IMPORTANT PROVISIONS OF THE NEW


TRADEMARK LAW

Inclusion of services
Classes of goods extended to 42
international categories
Registration extended to 10 years
Special protection to "well known
trade name"
protection across goods if the
brand name is reputed

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