Common Law Trademarks

1. Legislation

The common law Trademark is enshrined in the Trade Marks Act, 1999. The Trademark Act, 1999 seeks to provide for the registration of Trademarks relating to goods and services in India. The rights granted under the Act, are functioning in the whole of India. Trademark common law rights are property rights that do not completely require formal registration in order to enforce them.

2. Trademark

A Trademark is a word, symbol, phrase, and design, or combination of words, phrases, symbols or designs is used in the course of trade which identifies and distinguishes the source of the goods or services of one enterprise from those of others.

 

3. Classification of Services and Goods

India employs a classification system in which goods and services have been grouped into classes for registration. Most countries follow the same classification system, namely the International Classification of services and Goods, which consists of 34 classes of goods and 11 classes of services. [Download]

4. Rights conferred by registration

The registration of a Trademark confers on the registered proprietor of the Trademark the limited right to use the Trademark in relation to the goods or services in respect of which the Trademark is registered. While registration of a Trademark is not necessary it offers better legal protection for action for infringement.

5. Trademark Search

Before making an application for registration it is careful to make an inspection of the already registered Trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.

6. Who Can Apply For A Trademark

Any person can apply for registration of a Trademark to the Trademark Registry under whose jurisdiction the major place of the business of the applicant in India falls. In case of a company about to be formed, anyone may apply in his name for following assignment of the registration in the company's favour.

7. Duration of a Trademark

The term of a Trademark registration is only for a period of ten years. The renewal is possible for period of 10 years each. Unlike patents, copyrights and industrial design Trademark rights can last indefinitely if the owner continues to use the mark.

8. Use of the "TM" "SM" and "(R)" Symbols

Anyone who claims rights in a mark can use the TM (Trademark) and SM (Service Mark) designation with the mark to alert the public of the claim. It is not essential to have a registration, to use these designations.

9. Use of Trademarks in Foreign Countries

Trademark rights are granted on a country basis. An Indian registration provides protection in India and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the applicable laws.

10. International Trademark protection

Almost all countries have Trademark offices in which applications may be filed. Therefore, when contemplating Trademark protection in different countries, it is most helpful to start with a list of countries where registered Trademark protection is available. Deciding where to register a Trademark involves different considerations.

Trademark Registration

Guruji Trademark & Law Agency is one of the leading law firms in India, which has developed a specialization in Trademark law and how to register Trademark in India as well as in abroad. We offer Trademark registration in India at affordable price, which gives complete customer satisfaction. Our mission is to guide every case with highly experienced and professional attorneys, no matter how big or small. The practice arena of intellectual property is staffed by a right-mix of experienced professionals along with young energetic fresh blood, who come from diverse backgrounds such as medical, science, engineering & technologies, law, and business administration.

International Trademark Registration

To file an international Trademark, you require to fill out the international trademark registration application. You can fill international Trademark Application through the Trademark Electronic Application System or through any agent or attorney.

Trade Mark Registration Procedure

  • Trademark Search: It is advisable to conduct a Trademark search for the relevant classes before filing the application to register a Trademark in order to make sure that there is no identical or similar Trademark already registered or for which an application for registration has been submitted.
  • Filing Application: The application to register the Trademark is filed with the Registrar of Trademarks.
  • Publication in the Trademark Gazette: If after a preliminary examination, the Trademark Registrar considers the mark to be distinctive, it orders the publication of the mark in the Trademark Gazette. If no opposition to the mark is filed within 90 days from the date of publication, or 120 days if request for extension of time is given by an opponent and opposition is refused, mark proceeds for grant of registration certificate.
  • Trademark Registration: The Trademark is registered and the Trademark registration certificate is issued by the Registrar of Trademarks. If there is no objection and /or opposition raised, the process of registration of Trademark usually takes 1-1.5 years and in case of any objection/opposition proceedings it usually takes approx 2 years.
  • Time Frame: If there is no objection and or opposition raised, the process of registration of Trademark usually takes 1-1.5 years and in case of any objection/opposition proceedings it usually takes approx 2 years. [view flow chart]

Trademark TM/SM

The symbol TM and SM stands for Trademark and Service Mark. The word TM is typically associated with goods and the word SM with service.

According to Indian Trademark Act, 1999 the symbol TM and SM shall be used when a particular Trademark application has been applied for registration and the same is pending before the Registrar of Trademarks Registry. The symbol TM and SM should be used to indicate that the brand name /slogan belong to a particular proprietor or user. It is a medium through which different applicants and service providers inform the world of their protectable mark. It is to be noted that this symbols shall be used as long as the Trademark application is pending for registration. As soon as the same gets registered the symbols get replaced by the logo?

Sec 7 of the Indian Trademarks Act provide detailed information pertaining to the classification of goods and services. The fourth schedule of the act speaks exclusively of goods and services coming within the ambit of different classes. Goods have been classified from class 1 to class 34 and services from class 35 to class 42. Thus whenever a registered proprietor or user files a Trademark application pertaining to goods he designates his Trademark with the symbol TM, and whenever an application is filed pertaining to services the same is indicated by the logo SM. The symbol TM and SM helps to differentiate the business of service providers with that of the manufacturers, traders and sellers. TM & SM represents the business of the user or proprietor at the Local, National or International market.

Trademark Watch & Guard

Trademark Watch is an essential part of an effective Trademark maintenance and enforcement program, which is also essential tool to protect your Trademark's integrity. Trademark watch looks for similar marks those owned by your business, which are either filed with or published by the IPO.

Conducting a Trademark watch keeps you informed and upto date about potentially conflicting marks that are registered with the IPO. Recognizing potentially conflicting marks going through the registration process could allow you to put in force your Trademark rights and force the denial of an application.

A Trademark watch service is essential as it falls on Trademark owners themselves to police their marks by ensuring that others do not register Trademarks that are similar to theirs. Therefore, Trademark watch services will identify applications for marks that you may want to consider opposing.

Our Trademark watching services allow Trademark professionals to systematically uncover potential conflicts involving newly filed Trademark applications in India & across the globe. Trademark watching will assist you to detect the conflicting Trademark applications, which are published, allowing you to file oppositions in time to stop third-party incursion. The aim of Trademark watching is to prevent the registration of new Trademarks, which are identical to or very similar to Trademarks that may infringe a company's existing Trademarks, or registered Trademarks.

We will watch the specific class in the Trademark Journal and periodical reporting of the conflicting report will be sent to the given email id of yours and thereby you can protect your Trademark by opposing the conflicting Trademark in the Trademark Registry.

To stop duplicity of registered/unregistered Trademark

To Stop Duplicity of registered products names, logos, designs. As for :-

  1. Caution Notice
  2. Personal Notice
  3. Police Complaints
  4. Raid Conduct by court order
  5. Raid conduct by copyright act
  6. Raid conduct by Trade Mark act under the opinion of registry of Trade Mark
  7. Civil Suit

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