Name – SHREYA S.K. PANDEY
College - LAW COLLEGE DEHRADUN faculty of UTTARANCHAL UNIVERSITY
What is a Trade mark?
In general, Trade mark is a mark that distinguishes one good or service from another.
Section 2(zb) of Trade Marks Act, 1999, defines Trade Mark as a mark that is capable of being represented graphically and which distinguish the good and service of an individual from other and it includes the shape of the good, its packing and combination of colours.
What is a Registered Trade mark?
According to Section 2(w) of The Trade Mark Act, 1999, a registered Trade Mark is a mark that is actually included on the register and which remains in force.
Classification of goods and services for registration
Goods and Services are classified into various classes for simplifying the process and to distinguish every good and service easily. There are in total 45 Classes of Goods and Services out of which Class 1 to class 34 are for goods and Classes 35 to 35 are for services. These classes are provided in the Fourth Schedule of Trade Mark Rules, 2002.
It is a website of the Controller General of Patents Design and Trade Marks for Public Search of Trade Marks.
Type “Suzuki” in Value Column.
Type 42 in the class column as it comes under technological and industrial services.
A list of various documents will open in which Suzuki had received Trade Mark.
Objection for Registration of Trademark
Objection to register a trade mark may arise under
Section 9 where there is absolute ground of refusal to register a trade mark;
Section 11 talks about the relative ground of refusal to register a trademark;
General objection to any kind of clerical error
How to check objection
Visit https://ipindiaonline.gov.in/eregister/eregister.aspx (website to check registered trade marks and application status) to see whether there is an objection filed against the application.
Click on “Trade Marks Indexes” on the left side of the page.
The page will direct to the “Search Index of Registered Trade Mark/ Application”.
Select the “Index Type” as “Pending Marks”.
Write the name of your Goods or Services in the “Search Column” and “Class” for which you are applying for.
Write the code shown and click on the “Search” button.
The list of “Matching Trade Marks” will open.
Click on “Trade Mark No” and it will show the status of the application.
If the status shown is “Objected” then click on “View Examination Report”.
The Examination Report, in brief, tells the Section and Clause under which objection has been raised.
Reply to objection
After going through the examination report thoroughly draft a reply.
You may, also, take the help of other replies which was filed under the same section from the other Trade Mark examination report.
Look carefully at the cases referred to and the points used to counter the objection.
Now type “Trade Mark Login” in the web search.
Open the first link.
Log in by typing your user id and password (or Digital Signature).
A page for Comprehensive Online Filing of Trademark will open.
Click on “New form filing” on the right side of the page.
Choose “Miscellaneous Reply” on this bar.
Click on “Reply to Examination Report”
After typing the “Application Number” below go for the “Proceed” button.
Choose the mode of hearing, either Video Conferencing or Physical.
Then, upload your reply and Click on “Submit”.
Click on “Update Application/Forms” on the left side of the page and then select “Drafted Forms”.
Click on “Select” and then choose “Sign Document”.
Click on “Sign Files”.
Attach the “Signature” and then type your “User Pin”.
After this, your reply will be submitted successfully.
The Remedy to Unregistered Trade mark: Passing off
Whenever, there is no registration of Trade Marks remedy for infringement is available under Sectio 135 of the Trade Marks Act, 1999, which talks about relief for passing off.
This remedy is available when a person uses the trade mark of other which is not registered but was in use for a long. If the person infringing was unaware of the fact that such trade mark was in use or had no reasonable grounds to believe that such trade mark was in use then he had done no damages and no relief will be passed against him.
The party asking for damages under passing off have to prove -
Misrepresentation of his trade mark;
Goodwill attached to his trade mark, and;
Damages occur to him due to the actions of another party.
In the ITC Ltd. v. Nestle India Ltd. (Famous Magic Masala case), the issue, in this case, was whether there arise a case of passing off by Nestle India Ltd for using an expression “Magic Masala” for selling its “Maggie Magic Masala” (now Maggie Masala-e-Magic) while ITC Ltd. was trading “Sunfeast Yippie! Noodles Magic Masala”. While ITC was trading it from 2010 Nestle started it from 2013 onwards. ITC wants the court to pass an injuction ordered to prevent Nestle from using this name to trade their masala.
Madras High Court by referring to the Section 9(1)(c) of the Act, stated that no generic words can be used as a Trade Mark, and in this case, both the words “Magic” and “Masala” are common generic words and these words give no one any trade marks right. The word is not distinctive in nature and is highly common to the food industry. Court stated that there is no case of passing off against the defendant.