Trademarks registration for services under the act 1958
The 1999 Act has introduced one fundamental change. It provides for registration of trade marks for services. It also referred as service trademarks for the first time effective 15.9.2003. There is no difference in substantive or procedural requirements for trade marks registration for services.
Trademarks registration for services
All the provisions applicable to trademarks for goods are more or less applicable to service marks. Till the time it is impossible to apply them to services. What constitutes services can be seen from section 2(1)(z). Which defines services which shall be reproduced below.
Physical Presence of the Mark:
The essential feature of the trade mark that it has to be present physically on the goods. It would not be applicable to services. But the services would have to be made of a distinctive character by emphasizing the trademark in relation to things accessory to rendering the service. For example, putting the mark on literature, invoices, or stickers – like ‘service by’ of the service rendering organization, etc.
Section 2(2)( c )(ii) reads as follows:
(a) to the use of a mark,-
(i) in component to goods. It shall be considered as mention to the use of the mark upon or in any other relation or in any physical whatsoever, to such goods;
(ii) in component to services. It shall be considered as mention to the use of the mark as or as part of any statement about the provision, availability or performance of such trademark services.
Meaning of Services:
The expression ‘services’ has been defined in section 2(1)(z) which reads:
“Service” means service of any description which is made procurable to possible users. Contains the stipulation of services in relation with business of any commercial or industrial matters. Such as entertainment, communication, banking, education, chit funds, processing, financing, construction, insurance, lodging, real estate, transport, material treatment, supply of electrical or other energy, boarding, amusement, repair, livery of news or advertising and information.
This is quite comprehensive and an all-subsuming definition. Service of every description which is made available may have a trademark. The definition goes on to effectively mention business, industrial and commercial matters and by way of caution or to make matters explicit enumerates 20 types of services. The opening part of the definition does not require ‘valuable consideration’ as a necessary condition of ‘making available’.
Abolition of part B of register and Integration into one part
The trademark register was introduced in India by 1940 act. In between, for the period from 25 November 1959 to 15 September 2003, by virtue of the 1959 act. The register was divided into two parts known as part A and B. Under the 1940 and 1958 Acts the trademarks could be registered for goods only. The provision for registration of trade marks for goods was made by 1940 Act. Which was continued in 1958 Act and is kept up in 1999 Act. The 1999 Act provides for registration and protection of trademarks in respect of both goods and services.
The 1999 Act has integrated the two parts into one composite register effective 15.9.2003. The registration of trademarks for services which has been allowed by the 1999 Act will also take place in Chennai with the same register. As Parts A and B of the trademark register have been integrated into one. The trademarks belonging to Part B on 15.9.2003 have become equal to Part A trade marks.
The trademark which did not fulfill the strict requirements for Part A registration of 1958 Act could obtain registration in Part B of the register. In addition to satisfying the definition of the trademark. The only condition for registration in Part B of the register was the capability of distinguishing the goods.
The trademarks which are registered for goods or are used for services cannot be freely used inter se as. It would violate the rights of respective owners. The ‘goods is defined to conveys anything which is the subject of manufacture or trade.
Distinctiveness Requirements in 1999 Act lowered to Distinctive character
The expression’ distinctive character’ in the 1999 Act carries the same meaning as the expression ‘capability of distinguishing’ in the 1958 Act. In the 1999 Act the standard required for registration of all trademark is ‘capability of distinguishing. Which is lower than the requirements for registration in Part A and equal to Part B requirements under the 1958 Act. The protection extended is larger in terms of goods and services. The overall quality of protection to all trademarks enjoying protection under the 1999 Act. It is a bit lower in view of amendments in erstwhile section 17.
Classification of Goods and Services
The registrar has to classify goods and services under section 7( I) of the 1999 Act. In conformity with the global classification of goods and services. The letter ‘P’ is an alphabetical index has to be issued under section 8.
Rule 22 of Trade Mark Rules as amended by 2013. Amendment reads:
Classification of goods or services.-
(1)For the aim of registration of trademarks. The goods and services shall be classified as per current edition of the International Classification of goods and services (NICE Classification). It is published by (WIPO)World Intellectual Property Organization.
(2) The registrar shall publish alphabetical index and a class wise of such goods and services, including goods and services of Indian origin.”
Rule 101 relating to re-c1assification of goods or services in the fourth schedule has not been altered. The effect of the rule was that if by reason of amendment of fourth schedule. The specifications relating to a registered trademark get altered. Then the registered proprietor should apply for conversion of the specifications relating to his trademark in form TM – 40. The register is allowed to be amended in relation to the goods from the previous class to the new class to which the registered trademark belongs after the amendment of fourth schedule. The rule might have to be applied to large number of applications now.
Facility of filing a single application for goods or services falling in more than one class.
An application for registration of a trademark can be made for goods or services comprised in more than one class. But the fee shall have to be paid for as many numbers of classes in which the goods or service fall. In this sense it is a facility of filing a single application for goods or services falling in more than one class.
Goods and Services to be Associated–One Business Undertaking
Section 2(3) enacts a new provision. It indicates that the law shall recognize goods and services in an associated manner. If the goods and services are provided by one business undertaking. The effect is that a trademark may be used for goods as well as for services. When a trademark is being used for goods by a proprietor who also makes provision for services under the same business. He would be entitled to the spill over the reputation of the trademark for the purposes of goods and services or vice versa.
Section 2(3) reads:
(3) For the role of this act, goods and services are connected with each other. If it is likely that those goods might be sold or otherwise traded in. Those services might be provided by the same business. So with descriptions of goods and descriptions of services.
The declaration that goods can be associated with services or vice versa, as stated above. It would give a proprietor of a trademark a preemptive right in relation to associated goods or services as the case may be. The association of goods or services it appears would also be covered in the expression “similar”. This is occurring in section II or section 29 for the purposes of opposition and infringement.
Collective Marks – A New Category of Marks
The 1999 Act has introduced a new category of collective marks. Which are different from other trademarks. A collective mark distinguishes the goods or services of members of an association of persons from the goods or services of others. The association is registered as proprietor of the trademark.
The members who use the marks can do so. If they fulfill regulations which are filed together with the application. Regulations of the association are open to public inspection. Members using the registered marks are referred to as authorized users.
Extension of Rights – Trade Marks would Turn as Concurrent Marks
The 1999 Act has enhanced the rights of existing registered trade marks. For instance by integrating ‘Part B trademarks’ in a single part register. Whereby Part B trademarks got upgraded equal to Part A trademark. Moreover, it has extended rights of opposition and to obtain relief for infringement. If the mark is used not only on same goods but also on similar goods or services.
The point of extension of rights from same goods/services to similar goods/services is illustrated as follows. Assume that AYZ is registered for soaps, lipsticks and nail enamel. A second manufacturer is independently using trademark AYZ for shampoos, perfumes and other beauty products. Under section 11 (1) the first proprietor can now oppose the use of AYZ on similar products like shampoo is to soap and lipsticks are to perfumes. As both the parties are in trade of similar goods of their trademark. Under the new act tend to become concurrent trademarks.
New Separate Legislation for Geographical Indications
Law of many countries makes provision for registration. The use of collective marks including serving as tools for the purpose of law relating to geographical indications. Initially, there was no proposal to enact law to protect geographical indications. But as a separate law has been enacted for geographical indications.
It is much of the limelight has been taken out of collective marks. Yet law relating to collective marks where under collective registration trademark. It is be used by a trader who is a member of the association on fulfilling regulations governing use of such registration trademarks.
New Unequal Categories of Trade Marks
The 1999 Act has introduced distinct unequal categories of trademark, namely:
(i) trade marks, and
(ii) well-known trademark, enjoying different rights before the Registrar in registration or opposition proceedings.
The third category is of trademark having reputation in Chennai. In relation to which no one may use a similar mark un authorisedly. Even on different goods or services under section 29(4) as such a use shall constitute infringement. A fourth category of marks may be said to be of those marks has their registry in Chennai. Which qualify to oppose the registration of an applicant for registration under section 11 (3). Whose opposition is acceptable as such marks in the opinion of registrar may be able to obtain an injunction in passing off against trade marks sought for registration.