It is not any trade mark which is registrable. To be registrable the trademark should be distinctive and should not be similar to any other trade mark registered for the same or similar goods or used by a competitor whether registered or not. In the case of a similar mark used by a competitor but not registered difficulties for registration will arise only if the owner of the mark chooses to oppose the registration. In choosing a trade mark therefore one has to see whether the mark satisfies the requirement of distinctiveness contained in section 9 of the Trade and Merchandise Marks Act, 1958. This is not very difficult.
Thereafter the applicant has to verify as far as possible whether a similar mark, has been registered or used by others for similar goods. The applicant can make a search in the indexes kept for public inspection at the Trade Marks Office with or without professional assistance from practitioners of trade mark law. In the alternative a request for a search report may be made to the Registrar of Trade Marks in the prescribed form. It may be advisable to do both as it will provide some sort of evidence of bona fide of the applicant in adopting the mark which is very important.
While choosing a trade mark it is dangerous to start from some existing trade mark and then make modifications. However, after independently adopting the mark, it should be ascertained whether a similar mark has been registered or used or already applied for registration. If the investigations discloses the existence of a similar mark, it is best to discard the mark chosen and start again the whole process. It is not always easy to decide whether two marks are similar. The best way to determine the question is to consider one`s reaction and apply common sense.
The purpose of the Trade and Merchandise Marks Act, is to provide for the registration and better protection of trade of trade marks and to prevent the use of fraudulent marks on merchandise. In consonance with this object the following fundamental principles of trade mark law are embodied in the various provisions of the Act :
(i) Since registration confers on the proprietor a kind of monopoly right over the use of the mark which may consist of a word or symbol legitimately required by other traders for bona fide trading or business purposes, certain restrictions are necessary on the class of words or symbols over which such monopoly right may be granted. Thus descriptive words, surnames and geographical names are not considered prima facie registrable (See Section 9 of the Trade and Merchandise Marks Act, 1958).
(ii) Registration of a trade mark should not interfere with the bona fide use by any person of his own name or that of his place of business, or the use of any bona fide description of the character or quality of the goods. (See Section 34 of the Act)
(iii) Property rights in a trade mark acquired by use are superior to similar rights obtained by registration under the Act. It, therefore, follows that prior users of trade marks should be protected against any monopoly rights granted under the Statute (See Section 33 of the Act)
(iv) There are obviously two main interests to be protected when a trademark is presented for registration. There is first the interest of the public. A trade mark ought not to be registered if its use will be apt to mislead the public as to the origin of the goods they are purchasing. There is also the interests of other traders who are entitled to object if the use of the trade mark proposed for registration will be calculated to enable the applicant's goods to be passed off on the public as such other traders` goods. Thus a mark which is similar to a mark already registered or used for similar goods will not be allowed registration. (See Section 11 and 12 of the Act)
(v) It may so happen that a trader honestly used a trade mark for a number of years although an identical or similar mark has been registered or used by another. It will obviously cause hardship to such a trader if he is deprived of the benefits of registration. There is, therefore, provision for registration of such marks subject to suitable conditions and limitations. (See Section 12(3) of the Act).
(vi) Broadly speaking, the life of a trade mark depends on its use ; and continued non-use may lead to its eventual death. There is, therefore, no equitable or logical basis for the continuance of the protection afforded by registration where the mark is no longer in use for a sufficiently long period. The principle is recognized in the Act by providing for removal of a mark from the register on the ground of non-use.( See Section 46 of the Act)
(vii) A trade markis recognized as a form of property. The term “proprietor of a trade mark” is used in the definition of a trade mark and also in various other provisions of the Ac. It should, therefore, be assignable and transmissible as in the case of other forms of property. Having regard to the peculiar nature of this property, the Act has taken care to impose various restrictions and conditions for the assignment or transmission of property rights in a trademark, whether registered or unregistered. (See Section 36-44 of the Act)
(viii) Granting the benefits of registration under the Statute is not only a matter of interest to the applicant seeking registration, but is a matter in which the public is also interested. It is, therefore, necessary that any member of the public who wants to object to the registration should be permitted to do so. The Act accordingly provides for advertisement of the application and opposition thereto by any interested party. (See Section 20 and 21 of the Act).
Trademarks not registerable
The following trademarks are not registrable :
(i) a trademarks the use of which would be likely to deceive or cause confusion ; (Section 11(a) of the Act.)
(ii) a trademark the use of which would be contrary to any law for the time being in force (See Section 11(b) of the Act)
(iii) a trademarks comprising or containing scandalous or absence matter ; (See Section 11(c) of the Act)
(iv) a trademark comprising or containing any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India ; (See Section 11(d) of the Act)
(v) a trademark which would be disentitled to protection in a court of law ; [Section 11(e) of the Act.]
(vi) a trademark which is identical with or deceptively similar to a trade mark already registered in respect of the same goods or goods of the same description ; [Section 12(1) of the Act.]
(vii) a word which in the accepted name of any single chemical name or chemical compound in respect of chemical substances ; [Section 13 of the Act.]
(viii) Trademarks prohibited under the Emblems and Names Act.
Whether a trademark comes, within the prohibition of any of the above categories arises for consideration at the time of examination of the application by the Registrar, opposition and rectification proceedings and infringement and passing off actions.
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