By: Yahya Abdullah
Trademark is a type of intellectual property consisting of recognizable signs, designs, or expressions used to identify their specific product or services different from others. The trademarks used to identify services are also known as service marks. Apart from trademark intellectual property consists of patents, trade secrets, and copyrights. All these four intellectual properties are administered by the international organization called the World Intellectual Property Organisation (WIPO).
This organization brings in the nation to acknowledge the intellectual property and lay a common law in the international trades among the nations. These laws are enforced via treaties and each nation should acknowledge the company in registering itself regarding the four categories of intellectual property in a foreign nation.
India, the country with the world’s second-largest population, became a member of WIPO in 1975 and is currently party to six treaties administered by WIPO, namely, WIPO Convention (1975), Paris Convention (1998), Berne Convention (1928), Patent Cooperation Treaty (1998), Phonograms Convention (1975) and Nairobi Treaty (1983).[i] Recently India has signed three WIPO treaties to help owners to obtain trademarks with much was in July 2019.
Paris Convention for protection of intellectual property law was signed in Paris on 20 March 1886 was the first treaty to be signed for the international trade and it established an official union for the protection of industrial property. The important provisions of the Paris convention are followed by three categories:-
- National treatment: This convention gives protection to the industrial properties, each contracting state should grant the same protection as it grants to its nationals in its contracting states. The nationals of non-contracting states are also entitled to the national treatment if their industry or establishment is situated in the contracting state.
- Right of Priority: In case of an application for registration of a trademark made in any of the Convention countries, a priority date can be claimed concerning the application in India, provided that the application should be submitted within six months of the application having been filed in the Convention country. The specified time of six months is for industrial design and marks and twelve months time period for patent and utility model. The Government has notified and extended this privilege of priority to the members who have ratified the Paris Convention on Protection of Industrial Property.[ii]
- Common Rules:” Patents” granted in a contracting state does not oblige other contracting states to grant a patent. A patent granted in a contracting state is independent of each other. The inventor is right to be named as such in the patent
” Trademarks” Paris convention does not regulate the filing and registration of trademarks determined for each contracting state by domestic law. Likewise, no application can be rejected by the contracting state applied by the national and registration cannot be invalidated on the grounds regarding renewal or registration has not been affected in the country of origin.
The registration obtained in one contracting state is independent of each other including the country of origin. The lapse or annulment of registration of this trademark in one contracting state does not affect the validity of the registration in other contracting states.
In India, the trademarks are given by The Trademark Registry and it was established in 1940 and now it administers the Trademark Act 1999. The legal position of a trademark in India has been prescribed under The Trademarks act 1999 its rules and also under the common law remedy of passing off. Statutory protection for a trademark is administered by the Controller general of patents, design, and trademarks (CGPDTM), a government agency that reports to the department of industrial policy and promotion (DIPP) under the ministry of commerce and industry.
It is said in The trademarks act 1999 to obtain trademark protection you need to follow the application for registration under section 18.
Section 18(1) states Any person claiming to be the proprietor of a trademark used or purposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trademark.[iii]
Procedure for applying for a trademark:
- Trademark Search.
- Filing Trademark Application.
- Registration Certificate.
As India is a convention country by signing the Paris convention to support the national who wants protection for his industrial property as we say trademark, the right of priority can be exercised under section 154 of the trademark act 1999.
Renewal of trademark
section 25(1) states that the renewal has to be done every 10 years before the expiration of the said registered date. The renewal will be done once the trademark is renewed in the prescribed format regarding the prescribed fee to be paid before the said date given by the registrar before the expiration date.
Removal of trademark
section 25(3) states that there will be prior notice sent from the register regarding the renewal of the trademark if the trademark is not renewed before the expiration date the trademark will be removed stating the process of renewal is not duly complied and the trademark will be removed from the register by the registrar.
Restoration of trademark
section 25(4) states that after removal of the trademark by the registrar, there will be a period of 6 months or 1 year extended for the proprietor to apply for the restoration of the trademark by duly complying to the terms said by the registrar then the trademark will be renewed for next ten years.
Infringement of registered trademarks
section 29(1) states that an unregistered proprietor trades a similar product which is identical or deceptively similar related to the product of registered proprietor. This is not permitted in law and its infringement of registered trademarks.
“The court held that the onus to prove infringement is on the plaintiff. The resemblance between marks may be phonetic or visual, or in the basic idea represented by the plaintiff’s mark, and establishing resemblance is a question of fact.”[iv]
Trademarks are becoming more flexible and easier for the proprietors to seek protection for their industrial properties. In modern times more and more of trademarks are being registered due to technological development and protection for the trademarks law is being strict and just.
A Trade Mark is a company’s persona and identity in the marketplace”
― Kalyan C. Kankanala, Fun IP, Fundamentals of Intellectual Property
[iii] The Indian trademark act 1999, edition 2016
[iv] Durga Dutt Sharma v Navaratna Pharmacy Laboratories AIR 1965 SC 980