SKGK amp ASSOCIATES LLP COMPANY SECRETARIES SKGK TRADEMARK SKGK SKGK MEANING OF MARK AND TRADEMARK What is a mark Mark includes a device brand heading label name signature word letter numeral shape of goods packaging or combination of ID: 1003398
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1. “Trade Mark – Practice and Procedure”SKGK & ASSOCIATES LLPCOMPANY SECRETARIESSKGK
2. TRADEMARKSKGK
3. SKGK
4. MEANING OF MARK AND TRADEMARKWhat is a mark:Mark includes a device, brand, heading, label, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.What is a trademark:A mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging & combination of coloursSKGK
5. WELL-KNOWN TRADEMARKKnowledge or recognition of the trademark in Public;Duration, extent and geographical area of use of that trademark which includes its advertisement, publicity at fairs or exhibitions of the goods or services;Recognition of a mark as a well known by any Court or Registrar;The number of actual or potential consumers of the goods or services;The business circle dealing with the goods or services, to which the trademark applies;SKGK
6. FEATURES OF A TRADEMARKIt must be distinctive. Easy to spell, Pronounce, write legibly and remember.Non-Descriptive wordIt must not be a geographical name of a place.Short and Appealing.SKGK
7. FUNCTIONS OF A REGISTERED TRADEMARKIn case of enterprises engaged in Manufacturing Sector-It identifies the product and its originIt guarantees its qualityIt Advertises the productIt creates an image of the products in the mind of the consumersSKGK
8. FUNCTIONS OF A REGISTERED TRADEMARKIn case of enterprises engaged in the service sector- It identifies the service providerIt guarantees its qualityIt Advertises the services offeredIt creates an image of the services in the mind of the consumersSKGK
9. TRADEMARK PROCEDURESKGK
10. TRADEMARK APPLICATION FORMSKGK
11. TRADEMARK APPLICATION FORMSKGK
12. TRADEMARK OBJECTIONSAbsolute grounds for refusal of registration:Trademark is devoid of any distinctive character or If the mark depicts the kind, quality, quantity, intended purpose, values, geographical origin or time of production of the goods or rendering of the service or other characteristics of goods or serviceException to the above:If before filing the trademark application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade markSKGK
13. TRADEMARK OBJECTIONSRelative grounds for refusal of registration:A trademark is identical or similar to an earlier trademark;The earlier trademark is well-know in India;SKGK
14. TRADEMARK HEARINGIntroduce yourself properly;Wear ICSI dress code;Explain the background of your trademark, the idea behind evolution of the mark;File any additional documents as “Document in support of show cause hearing” before the hearing;Read the objections carefully and prepare your arguments accordingly;SKGK
15. TRADEMARK OPPOSITIONNotice of Opposition under Rule 42 in Form TM-O shall be filed within 4 months from the date of publication of the similar mark in the trademark journal. The Opposite party shall file Counter Statement under Rule 44 in Form TM-O within 2 months from the receipt of the Notice of Opposition. The Applicant shall filed Evidence in support of opposition under Rule 45 within 2 months from receipt of the copy of counter statement. The Opposite party shall file Evidence in support of application under Rule 46 within 2 months from the receipt of copies of affidavit as Evidence in support of opposition. The Applicant shall file Evidence in Reply under Rule 47 within one month from receipt of affidavit as Evidence in support by the opponent. The Registrar after closure of the evidence shall give notice to the parties the date of hearing.SKGK
16. TRADEMARK INFRINGEMENTInfringement of a trademark occurs if a person other than the registered proprietor in the course of trade, in relation to the same goods or services for which the mark is registeredUses the same mark or a deceptively similar mark.SKGK
17. PASSING OFFPassing off occurs when one trader attempts to pass off his goods by representing them as to make the consumers believe that his goods are same as those of another trader. For example, using a mark “COLMATE” on a tooth paste with a similar get up to pass it off as “COLGATE”SKGK
18. ACTION AGAINST INFRINGEMENT AND PASSING OFFAction against passing off or infringement can be filed in a District Court having jurisdiction to try the suit.The procedure followed in the disposal of the suit is as laid down in Code of Civil Procedure, 1908.Under the Limitation Act, 1963 the period of limitation for filing a suit for infringement of a trademark is three years from the date of infringement.SKGK
19. DIRECTORS LIABILITY UNDER THE TRADEMARK ACTUnder the provisions of the Trademark Act, 1999, if a Company commits any of the offences listed in Chapter XII of the Trademarks Act, 1999, the Company as well as every person in charge of and responsible to the Company for the conduct of its business at the time of the commission of the offence shall be deemed to be guilty of the offence and shall be liable to be proceeded against and punished accordingly.SKGK
20. DIRECTORS LIABILITY UNDER THE TRADEMARK ACTFew offences listed under Chapter XII of the Trademark Act, 1999 includes:Making a trade mark or deceptively similar trade mark without the assent of the proprietor of the trade mark;Falsifying trade mark by alteration, addition or otherwise; Applying trademark or deceptively similar trademark on goods or services or any promotional material without the assent of the proprietor;Falsely indicating the country of origin / manufacturing address and name of manufacturer;Representing a trademark which is not a registered trademark as a registered trademark; SKGK
21. WHERE THE REGISTERED TRADEMARK CAN BE USED?On the goods / productsInvoicesLetterheadsStationeryDiaries (Gifting)UniformsMain Door of the Enterprise / CompanyEmailsSKGK
22. COPYRIGHT vs TRADEMARKTrademark- Logo, Mark, Jingle, Tagline, Label, Heading, Unique Word.Copyright- Literary work, Dramatic Work, Musical Work, Artistic Work, Cinematographic Film, Sound recording.SKGK
23. AREAS UNDER TRADEMARK FOR COMPANY SECRETARIESA Company Secretary can provide following services:Act as a Trademark Agent;Tracking and monitoring services;Trademark Search Report services;drafting IP Policy for companies;appear and represent in hearings;provide IP advisory services;assist the Companies in drafting assignment, licensing agreements;Filing oppositions, counter-replies;SKGK
24. HOW PCS CAN BECOME A TRADEMARK AGENTForm TM-G is to be filed along with Fees of Rs. 4,500/-;A Certificate of Practice along with a Character Certificate is to be attached with the Form;Fees of Rs. 10,000/- for 5 years is to be paid subsequently;SKGK
25. THANK YOUIt you want to know further intricacies in Trademark please contact me CS. Gaurav Kulkarni,Designated PartnerSKGK & Associates LLPCompany SecretariesMobile: +91-9890037738SKGK