Important terms to be considered for trade mark process

There are some of the important terms are used in trademark process, which is going to be discussed here along with a meaning.

Definition and interpretation:

In this act, unless the context otherwise requires,

Appellate board means the appellate board established under section83;

Assignment means an assignment in writing by act of the parties concerned;

Associated trademarks mean trademarks deemed to be, or required to be, registered as an associated trademark under this act;

Bench means a bench of the appellate board;

Certification trademark is a mark which is capable of distinguishing the goods or services in connection with which it has been used in the course of trade that are certified by the proprietor of the mark with respect to origin, material,  mode of manufacturing the goods or the performance of services, accuracy, quality or other characteristics from goods or services which is not so certified and registrable as in respect of those services or goods in the name, as proprietor of the certification trademark of a person;

Chairman means the chairman of the appellate board;

Collective mark means a trademark distinguishing the goods or services of members of an association of persons (not being a partnership within the meaning of the Indian Partnership Act, 1932 (9 of 1932) which is the proprietor of the mark from those of others;

Deceptively similar- a trademark that shall be deemed to be deceptively similar to another mark if it nearly resembles the other mark that is to be likely to deceive or cause confusion;

False trade description means-

• A trade description which is untrue or misleading in a material respect as regards the goods or services to which it is applied; or
• Any alteration of a trade description as regards the goods or services to which it is applied, whether by way of addition, effacement or otherwise, where that alteration makes the description untrue or misleading in a material respect; or
• Trade description which implies or denotes that there has been contained as regards the goods in which it is applied, more meters or yards than there are contained therein standards meters or yards; or
• Any arrangement or marks or combination thereof when applied
  • To goods in such a manner as to be likely to lead persons to believe that the goods are the manufacture or merchandise of some person other than the person whose merchandise or manufacture they really are;
  • In relation to services in such a manner as to be likely to lead persons to believe that the services are provided or rendered by some person other than the person whose services they really are; or
• Any initials or a fake name of a person applied to services or goods in such a manner if such name or initials were a trade description in any case where the name or initials
  • Is or are not a trademark or part of a trademark; and
  • It is same or identical with or deceptively similar to the person’s initials or a name that carries on a business has to be in connection with the goods or services of the same description or both and who are not authorized to use such name or initials; and
  • Either the initials or name of a fictitious person or some person who is not a bonafide carrying on a business in connection with such services or goods.

And the fact that a trade description is a trademark or part of a trademark shall not prevent such trade description being a false trade description within the meaning of this act;

• Goods mean anything which is the subject of trade or manufacture;
• Judicial member means a member of the appellate board appointed as such under this act, and includes the chairman and the vice-chairman;
• Limitations with its grammatical variation mean the limitations of the exclusive rights in order to use of the trademark which is given by the registration of a person as a proprietor thereof, includes the limitations of that right as to mode or area of use within India or outside the country;
• A mark generally includes a heading, brand, device, signature, name, ticket, letter, shape, word, numeral, a combination of colors, packaging or any combination thereof;
• Member means a judicial member or a technical member of the appellate board and includes the chairman and the vice-chairman;
• The name includes any abbreviation of a name;
• Notify means to notify in the trademark journal published by the registrar;
• Package includes any case, box, container, covering, folder, receptacle, vessel, casket, bottle, wrapper, label, band, ticket, reel, frame, capsule, cap, lid, stopper, and cork;
• Permitted use, in relation to a registered trademark, means the use of the trademark-
  • By a registered user of the trademark in relation to goods or services
    • Which he may connect in the course of trade;
    • The trademark remains registered for the time being; and
    • For which he is registered as a registered user; and
    • That complies with any limitations or conditions to which the registration of a registered user may be subject; or
  • A person other than the registered proprietor and the registered user in relation to the goods or services-
    • With which he is connected in the course of trade; and
    • Trademarks registered with respect to time being;
    • Consent of a registered proprietor in a written agreement and that complies with any conditions or limitation to which such user is subject and to which the registration of the mark is subject;

 (s) Prescribed means prescribed by rules made under this act;

(t) Register means the register of trademarks referred to in sub-section (1) of section 6.

(u) Registered (with its grammatical variations) means registered under this act;

(v) A registered proprietor, in relation to a trademark, means the person for the time being entered in the register as proprietor of the trademark;

(w) Registered trademark means a trademark which is actually on the register and remaining in force;

(x) Registered user means a person who is for the time being registered as such under section 49;

(y) Registrar means the registrar of trademark referred to in section 3;

(z) here, service is referred as any description which is made available to the potential users that includes the provisions of services that has connection with business of any commercial or industrial matters such as communication, banking, education, insurance, financing, real estate, chit funds, storage, transport, processing, supply of electrical or other energy, material treatment, lodging, processing, boarding, amusement, construction, entertainment, conveying of proper information or news and advertising;

 (za) trade description means any description, statement or other indication, direct or indirect,

• As to the quantity, measure, number, weight or gauge of any goods; or
• As to the quality and the standard of any services or goods in accordance with a classification which is commonly used or recognized in the trade; or
• As to the fitness for the purpose, performance, strength or behavior of any goods, drugs which are defined in the drugs and cosmetics Act or food which is defined in the prevention of food and adulteration act, 1954.
• As to the country or the place in which or at the time of any services or goods were made, produced or provided, as the case may be; or
• As to the address and the name or any other indication of the identity of the manufacturer or the person who provides the services or the person to whom the goods are manufactured or the services were provided; or
• The mode of manufacturing or producing the goods or providing the services; or
• To the material in which the goods were composed; or
• To the goods being subject to an existing copyright or privilege, patent.

And includes-

• The description of the use of any mark which accords to the custom of the trade is commonly taken to be the indication of the above matters;
• The description of the imported goods which are contained in any bill entry or shipping bill;
• The trade descriptions may be mistaken or misunderstood for all or any of the said matters;
• Trademark is a one which graphically represents and capable enough to distinguish the services or goods of one person from those of others and that includes the packaging, shape of goods and the combination of colors; and
• Relation to a registered trademark or a mark which has been used in relation to the services or goods for the purpose of indicating or to indicate a connection in the course of trade between the services or goods, as the case may be and some person has the right as proprietor to use the mark; and
• In relation to any other provisions of this act, a mark which is used or proposed to be used which in relation to the services or goods for the purpose of indicating or to indicate a connection in the course of trade between the services or goods as the case may be and some person may have the right either as a permitted user or a proprietor to use the mark whether with or without any indication of the identity of the person and includes a collective mark or a certification trademark;
• Transmission refers to the transmission by operation of law, devolution on the personal representative of a deceased person of any other mode of transfer, not being assigned;
• Technical member means a member who is not a judicial member;
• Tribunal referred to the registrar or as the case may be, the appellate board, before which the proceeding concerned is pending;
• Vice-chairman means a vice-chairman of the appellate board;
• A mark which is well-known in relation to goods or services means a mark which becomes a substantial segment of the public that uses such goods or receives such services that the use of such mark in relation to other services or goods that would be likely to be taken as indicating a connection in the course of trade or rendering the services between those services or goods and a person using that mark in relation to the first-mentioned goods or services.

In this act, unless the context otherwise requires, any reference-

• To trademark, shall indicate a reference to collective mark or certification trademark;
• To the use of a trademark that would be construed as a reference to the use of a visual or a printed representation of the mark;
• To the use of the mark,
  • In relation to goods, shall be construed as a reference to the use of the mark upon, or in any physical or in any other relation whatsoever, to such goods;
  • When comes to services, it may be construed as a reference to the use of a mark or a part of any statement about the provision, availability or performance of such services;
• The registrar shall be construed as a reference to any officer while discharging the functions of the registrar in pursuance of sub-section (2) of section 3.
• To the trademark, the registry shall be construed as including a reference to any office of the trademark registry.

Actually, the purposes of this act are goods and services have to be associated with each other if it is likely that those goods may be sold or otherwise traded in and those services may be provided by the same business and also with the description of goods and services.

For the purposes of this act, existing registered trademark means a trademark registered under the trade and merchandise act, 1958 immediately before the commencement of this act.