What are the safeguards to be taken by the proprietor of a registered trade mark to protect his rights?
The proprietor should use and renew the trademark regularly and in time. If others misuse the trademark he should file a suit for infringement and passing off and also take criminal action. The proprietor should keep a watch in respect of trademarks published in the Trade Marks Journal and institute opposition proceedings if identical or deceptively similar trademarks are advertised.
What to do to have the mark registered in other countries?
Trademark rights are granted on a country-by-country basis. There is no system as yet wherein a single trademark application is sufficient to protect the trademark right internationally. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws. However, Paris convention provides certain privileges to member countries in trademark registration. A party that files their first trademark application in a member state of the Convention, such as India, can within six months of that filing date file applications in other member countries claiming the priority of the first application. If such a trademark is accepted for registration it will be deemed to have registered from the same date on which the application is made in the home country.
Is an INDIAN Trademark registration valid outside the INDIA?
No. Certain countries, however, do recognize an Indian registration as a basis for registering the mark in those countries. Many countries maintain a register of trademarks. By adding your trademarks, you are being proactive in minimizing the potential cost of international litigation.
What is meant by "goods/services" classification?
Nearly all jurisdictions including India employ a classification system in which goods and services have been grouped into classes for registration. Most countries follow the same classification system, specifically the International Classification of services and Goods, which consists of 34 classes of goods and 8 classes of services. (The WIPO recently revised the Nice Classification, adding three service classes (43, 44, 45) and restructuring Class 42, retaining certain services.
What are the remedies available against Infringement and passing-off?
Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party. These remedies are: - 'an action for infringement' in case of a registered trademark and 'an action for passing off*' in the case of an unregistered trademark. The basic difference between an infringement action and an action for passing off is that the former is a statutory remedy and the latter is a common law remedy. Accordingly, in order to establish infringement with regard to a registered trademark, it is compulsory only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required. In the case of a passing off action, proving that the marks are identical or deceptively similar alone is not sufficient. The use of the mark should be likely to deceive or cause confusion. Further, in a passing off action it is compulsory to prove that the use of the trademark by the defendant is likely to cause injury or damage to the plaintiff's goodwill, whereas in an infringement suit, the use of the mark by the defendant need not cause any injury to the plaintiff.
