1. The Trade And Merchandise Marks Act, 1958 The Trade And Merchandise Marks Rules, 1959 Trade Marks Act, 1999 The Trade Marks Rules, 2002 The Trade And Merchandise Marks Act, 1958 The Trade And Merchandise Marks Rules, 1959 Trade Marks Act, 1999 The Trade Marks Rules, 2002

2. 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 Bombay, New Delhi, Chennai, Calcutta and Ahmedabad

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

4. 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.

5. 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.

6. MARKS WHICH CANNOT BE REGISTERED Use of which is contrary to law 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 Use of which is likely to hurt religious susceptibilities of any class or section of the citizens of India

7. WORDS WHICH ORDINARILY CANNOT BE REGISTERED Words having direct reference to the character or quality of goods Words having direct reference to the character or quality of goods Geographical name Geographical name Surname Surname Sect caste or tribe Sect caste or tribe (Distinctiveness to be established)

8. NO REGISTRATION OF MARKS LIKELY TO DECEIVE OR CAUSE CONFUSION This is done by searching the register for the already registered trademarks

9. 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

10. 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

11. 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", "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",

12. Similar, Identical, Deceptively similar, causes confusion Nature of the marks Nature of the marks Degree of resemblance (phonetic, visual as well as similarities in ideas) Degree of resemblance (phonetic, visual as well as similarities in ideas) nature, character and purpose of goods nature, character and purpose of goods class of purchasers class of purchasers trade channels trade channels

13. 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.

14. 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.

15. PROBLEMS IN REGISTRATION OF FOREIGN TRADEMARKS Rectification for non-user- R J Reynold v/s ITC Ltd. Rectification for non-user- R J Reynold v/s ITC Ltd. Non-registration of surnames- SEARS, HONDA, SUZUKI, ADIDAS Non-registration of surnames- SEARS, HONDA, SUZUKI, ADIDAS Passing-off action failed on account of non-user Passing-off action failed on account of non-user

16. 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:

17. Cond… 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 trans- border reputation of its product washing machine for the purpose of maintaining passing off action.

18. 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.

19. 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)

20. IMPORTANT PROVISIONS OF THE NEW TRADEMARK LAW Inclusion of services Inclusion of services Classes of goods extended to 42 international categories Classes of goods extended to 42 international categories Registration extended to 10 years Registration extended to 10 years Special protection to "well known trade name" Special protection to "well known trade name" protection across goods if the brand name is reputed protection across goods if the brand name is reputed