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to be registered, of distinguishing services with the provision of which the owner of the mark
is or may be connected in the course of business from services the provision of which he or
she is not so connected. An applicant is free to seek the preliminary advice of the registrar on
distinctiveness before making an application. Additionally for a trademark to be registered in
either Part A or B, it must be capable of graphical representation.
The law also outlines unregistrable trademarks; the registrar may refuse to accept any
application
upon
which
any
of
the
following
appear
(a) the words patent, patented, by letters patent, registered, registered trade mark,
registered design, copyright, certified, guaranteed, to counterfeit this is a forgery
or words to like effect;
(b) the words Red Cross or Geneva Cross and representations of the Geneva and other
crosses in red, or of the Swiss federal cross in white on a red ground or silver on a red
ground, or such representations in a similar colour or colours;
(c) representations of the armorial ensigns of Uganda or any device so nearly resembling
them as to be likely to lead to mistake, or of the national flag, or any words, letters, or devices
likely to lead persons to think that the applicant has Government patronage or authorization;
and
(d) a representation of armorial bearings, insignia, a decoration or a flag of any state,
administration, city, town, place, society, body corporate, institution or person.
The law also restricts registration of the following marks; trademarks likely to deceive or
would be contrary to law, morality or any scandalous design; a trademark consisting of a
word commonly used and accepted as a name of a single chemical element or compound; a
shape that results from the nature of the goods themselves; the shape of goods that is
necessary to obtain a technical result and the shape that gives substantial value to the goods.
The law also prohibits registration of trademarks that are identical and resembling trademarks
already on the register by a different owner, subject to exceptions.
Effect of registration
Registration confers the exclusive right to use the mark and the right to act in case of
infringement. A registered owner also acquires a right to assign his or her trademark.
Additionally, in all proceedings relating to a registered trademark, the fact that a person is
registered as owner of a trademark is prima facie evidence of validity of the original
registration of the trademark and of all subsequent assignments and transmissions. A person
may not institute proceedings to prevent or recover damages for trade mark infringement
unless his trade mark is registered. However an unregistered owner has a right to bring an
action for passing off at common law.
The law does not make registration of trademarks compulsory. Mandatory registration comes
into play where an opposition has been made to the registration of a trade mark on grounds of
prior registration in the country of origin. The person or entity making the opposition must
make an undertaking to register the trademark with in a given period of time and must furnish
such undertaking with the registrar of trademarks at the time of filling the opposition that he
or she will take all the necessary steps to effect registration of that trademark registered in the
country of origin with the registrar of trademarks.
Term of registration
Registration of a trademark lasts for a period of seven (7) years from the application filing
date. Registration is renewable every ten (10) years upon payment of a prescribed fee.
Renewal of registration
Renewal is a
registration. If
removed from
expiration
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is
not intended to provide legal advice as individual situations will differ and should be
discussed with an expert and/or lawyer. For specific technical or legal advice on the
information provided and related topics, please contact the author.
application.
Under section 55, where use of a registered trademark is required to be proved for any
purpose, the tribunal may accept the use of one of the associated trademark for proving use of
the associated registered trademark in question. So where a person has been granted
associated trademark for different classes of goods, his sincere usage of the trademark in one
class would automatically mean that he has been using it in the remaining classes as well.
In case of P. Kamala Devi Chordia Vs. P. Ganeshan and Ors[1], the honble Intellectual
Property Appellate board held that Section 55 of Trademark Act, 1999 enables the authority
to accept use of a registered associated Trade Mark or of a Trade Mark with addition or
alterations, not substantially affecting its identity.
Thus, anyone can file associated applications provided the change, addition or alteration does
not substantially affect its identity. Moreover, if the mark is withdrawn or is not valid
anymore, the applicants also have the option to request the Registry to dissolve the
association by filing a particular form. Under section 44 it is provided that the two
associated trademarks shall be assigned or transmitted together and there would not be a
separate assignment of two associated trademarks. This provision aims at removing any sort
of confusion in the market. In case if the owner can prove to the satisfaction of the Registrar
that the two associated trademark has attained a separate distinctiveness in the market then
the owner can apply for the dissolution of association under section 16 (5) of the Trademark
Act, 1999.
To sum up, associated trademarks in India shall have the following benefits:Prevents the
existence of multiple rights in the market.
i. Prevents the existence of multiple rights in the market.Keeps in check defensive
registration as only those marks which have same/similar business are required to be
associated.
ii. Keeps in check defensive registration as only those marks which have same/similar
business are required to be associated.
iii.For business which keeps expanding their services and including newer goods, associated
trademark is a good option for them.
iv. Also in a cancellation proceeding if one of the two associated trademarks is in use then the
use of one can be considered as use for cancellation proceeding against the second associated
trademark.
v. By virtue of section 44, no two associated trademarks can be assigned or transmitted
separately. It can be done so only after the dissolution of the association. This helps in
removing confusion in the market.
vi. If only one of the associated trademarks was continuously being used and not the others,
the renewal of the registration of the trademark cannot be rejected solely because the
remaining trademarks were not in use
DRAWBACKS:
Many people take advantage of the benefits of the associated trademark system with regard to
cancellation and renewal and use the provisions to obtain an excessive number of so-called
stock trademarks. This might result in an increase in unused trademarks. Moreover under
associated trademarks, the primary trademark has an impact on the subsequent trademarks as
well. Hence, if the primary trademark is not renewed or stands invalid due to any reason, the
subsequent trademarks shall also be affected.
AUTHOR: Priyanka Karla
Copyright Intepat
More information about Intepat
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is
not intended to provide legal advice as individual situations will differ and should be
discussed with an expert and/or lawyer. For specific technical or legal advice on the
information provided and related topics, please contact the author.
Summary
Maintaining your trademark registration is imperative in protecting your brand name and/or
logos so that potential trademark infringements can be more easily stopped. Losing your
trademark rights through cancellation of a trademark can cost your business a valuable asset
and allow third parties to begin using a trademark that you invested a significant amount of
time, goodwill and resources in developing. If you have a registered trademark and seek
maintenance protection, contact the experienced trademark & copyright attorneys to insure
your rights are not lost.
AUTHOR: Karen Hawkes
Copyright Gehres Law Group, P.C.
More information about Gehres Law Group, P.C.
Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is
not intended to provide legal advice as individual situations will differ and should be
discussed with an expert and/or lawyer. For specific technical or legal advice on the
information provided and related topics, please contact the author.