Introduction

A trademark, trade mark, or trade-mark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities. A trademark may be designated by the following symbols: (for an unregistered trade mark, that is, a mark used to promote or brand goods) (for an unregistered service mark, that is, a mark used to promote or brand services) (for a registered trademark) A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound. The owner of a registered trademark may commence legal proceedings for trademark infringement to prevent unauthorized use of that trademark. However, in some countries unregistered rights in a sign may also be enforced. These are often known as 'common law' rights. An unregistered sign is usually only protected within the geographical area within which it has been used or in geographical areas into which it may be reasonably expected to expand. The term trademark is also used informally to refer to any distinguishing attribute by which an individual is readily identified, such as the well-known characteristics of celebrities. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark, particularly in the United States.

Fundamental Concepts
The essential function of a trademark is to exclusively identify the commercial source or origin of products or services, such that a trademark, properly called, indicates source or serves as a badge of origin. In other words, trademarks serve to identify a particular business as the source of goods or services. The use of a

trademark in this way is known as trademark use. Certain exclusive rights attach to a registered mark, which can be enforced by way of an action for trademark infringement, while in some countries unregistered trademark rights can be enforced pursuant to the common law tort of passing off. It should be noted that trademark rights generally arise out of the use or to maintain exclusive rights over that sign in relation to certain products or services, assuming there are no other trademark objections. Different goods and services have been classified by the International (Nice) Classification of Goods and Services into 45 Trademark Classes (1 to 34 cover goods, and 35 to 45 services). The idea of this system is to specify and limit the extension of the intellectual property right by determining which goods or services are covered by the mark, and to unify classification systems around the world.

History

Bass Brewery's logo became the first image to be registered as a trademarked, in 1875 In trademark treatises it is usually reported that blacksmiths who made swords in the Roman Empire are thought of as being the first users of trademarks. Other notable trademarks that have been used for a long time include Lowenbrau, which claims use of its lion mark since 1383, and Stella Artois, which claims use since 1366. [Citation needed]

Registered trademarks involve registering the trademark with the government. The oldest registered trademarks in various countries include: United Kingdom: 1876 The Bass Brewery's Red Triangle for ale was the first trademark to be registered under the Trade Mark Registration Act 1875. United States: 1884 A picture of Samson wrestling a lion was registered to Sampson Rope. In 1980, there were fewer than ten thousand registered high-tech trademarks in the United States. In 2011, there are more than 300,000.

Symbols
The two symbols associated with U.S. trademarks (the trademark symbol) and (the registered trademark symbol) represent the status of a mark and accordingly its level of protection. While can be used with any common law usage of a mark, may only be used by the owner of a mark following registration with the relevant national authority, such as the U.S. Patent and Trademark Office (USPTO or PTO). The proper manner to display either symbol is immediately following the mark in superscript style.

Terminology
Terms such as "mark", "brand" and "logo" are sometimes used interchangeably with "trademark". "Trademark", however, also includes any device, brand, label, name, signature, word, letter, numerical, shape of goods, packaging, color or combination of colors, smell, sound, movement or any combination thereof which is capable of distinguishing goods and services of one business from those of others. It must be capable of graphical representation and must be applied to goods or services for which it is registered. Specialized types of trademark include certification marks, collective trademarks and defensive trademarks. A trademark which is popularly used to describe a product or service (rather than to distinguish the product or services from those of third parties) is sometimes known as a generic zed trademark. If such a mark

becomes synonymous with that product or service to the extent that the trademark owner can no longer enforce its proprietary rights, the mark becomes generic.

Registration

Wikipedia is a registered trademark of Wikimedia Foundation, Inc. The law considers a trademark to be a form of property. Proprietary rights in relation to a trademark may be established through actual use in the marketplace, or through registration of the mark with the trademarks office (or "trademarks registry") of a particular jurisdiction. In some jurisdictions, trademark rights can be established through either or both means. Certain jurisdictions generally do not recognize trademarks rights arising through use. If trademark owners do not hold registrations for their marks in such jurisdictions, the extent to which they will be able to enforce their rights through trademark infringement proceedings will therefore be limited. In cases of dispute, this disparity of rights is often referred to as "first to file" as opposed to "first to use." Other countries such as Germany offer a limited amount of common law rights for unregistered marks where to gain protection, the goods or services must occupy a highly significant position in the marketplace where this could be 40% or more market share for sales in the particular class of goods or services. In the United States the registration process entails several steps prior to a trademark receiving its Certificate of Registration. First, an Applicant, the individual or entity applying for the registration, files an application to register the respective trademark. The application is then placed in line in the order it was received to be examined by an examining attorney for the U.S. Patent and Trademark Office. Second, following a period of anywhere from three to six months the application is reviewed by an examining attorney to make sure that it complies with all requirements in order to be entitled to registration. This review

includes procedural matters such as making sure the applicant's goods or services are identified properly. It also includes more substantive matters such as making sure the applicant's mark is not merely descriptive or likely to cause confusion with a pre-existing applied-for or registered mark. If the application runs afoul of any requirement, the examining attorney will issue an office action requiring the applicant to address certain issues or refusals prior to registration of the mark. Third, and after the examination of the mark has concluded with no issues to be addressed or an applicant has responded adequately to an examining attorney's concerns, the application will be published for opposition. During this 30-day period third-parties who may be affected by the registration of the trademark may step forward to file an Opposition Proceeding to stop the registration of the mark. If an Opposition proceeding is filed it institutes a case before the Trademark Trial and Appeal Board to determine both the validity of the grounds for the opposition as well as the ability of the applicant to register the mark at issue. Fourth, provided that no third-party opposes the registration of the mark during the opposition period or the opposition is ultimately decided in the applicant's favor the mark will be registered in due course. Outside of the United States the registration process is substantially similar to that found in the U.S. save for one notable exception in many countries: registration occurs prior to the opposition proceeding. In short, once an application is reviewed by an examiner and found to be entitled to registration a registration certificate is issued subject to the mark being open to opposition for a period of typically 6 months from the date of registration. A registered trademark confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark in relation to the products or services for which it is registered. The law in most jurisdictions also allows the owner of a registered trademark to prevent unauthorized use of the mark in relation to products or services which are identical or "colorfully" similar to the "registered" products or services, and in certain cases, prevent use in relation to entirely dissimilar products or services. The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin. An example may be a very large multinational brand such as "Sony" where a nonelectronic product such as a pair of sunglasses might be assumed to have come

from Sony Corporation of Japan despite not being a class of goods that Sony has rights in. Once trademark rights are established in a particular jurisdiction, these rights are generally only enforceable in that jurisdiction, a quality which is sometimes known as territoriality. However, there is a range of international trademark laws and systems which facilitate the protection of trademarks in more than one jurisdiction.

Search
In the United States, the USPTO maintains a database of registered trademarks. The database is open to the public; however a licensed attorney may be required to interpret the search results. Furthermore as trademarks are governed by federal law, state law, and common law, a thorough search as to the availability of a mark is very important. In the United States, obtaining a trademark search and relying upon the results of an opinion issued by an attorney may insulate a trademark user from being required to pay treble damages and attorney's fees in a trademark infringement case as it demonstrates that the trademark user performed due diligence and was using the mark in good faith. The USPTO internally captures more information about trademarks than what they publicly disclose on their official search website. For example, the USPTO collects information about what exactly is shown inside every logo trademark filing. Trademarks may also be searched on third-party databases, such as LexisNexis, Dialog and Compu-Mark. In Europe and if a community trademark has to be filed, searches have to be conducted with the OHIM (Community Trademark Office) and with the various national offices. An alternative solution is to conduct a trademark search within private databases.

Maintaining Rights
Trademarks rights must be maintained through actual lawful use of the trademark. These rights will cease if a mark is not actively used for a period of time, normally 5 years in most jurisdictions. In the case of a trademark registration, failure to actively use the mark in the lawful course of trade, or to enforce the registration in the event of infringement, may also expose the registration itself to become liable

for an application for the removal from the register after a certain period of time on the grounds of "non-use". It is not necessary for a trademark owner to take enforcement action against all infringement if it can be shown that the owner perceived the infringement to be minor and inconsequential. This is designed to prevent owners from continually being tied up in litigation for fear of cancellation. An owner can at any time commence action for infringement against a third party as long as it had not previously notified the third party of its discontent following third party use and then failed to take action within a reasonable period of time (called acquiescence). The owner can always reserve the right to take legal action until a court decides that the third party had gained notoriety which the owner 'must' have been aware of. It will be for the third party to prove their use of the mark is substantial as it is the onus of a company using a mark to check they are not infringing previously registered rights. In the US, owing to the overwhelming number of unregistered rights, trademark applicants are advised to perform searches not just of the trademark register but of local business directories and relevant trade press. Specialized search companies perform such tasks prior to application. In the U.S., failure to use a trademark for this period of time, aside from the corresponding impact on product quality, will result in abandonment of the mark, whereby any party may use the mark. An abandoned mark is not irrevocably in the public domain, but may instead be re-registered by any party which has reestablished exclusive and active use, and must be associated or linked with the original mark owner. If a court rules that a trademark has become "generic" through common use (such that the mark no longer performs the essential trademark function and the average consumer no longer considers that exclusive rights attach to it), the corresponding registration may also be ruled invalid. Unlike other forms of intellectual property (e.g., patents and copyrights) a registered trademark can, theoretically, last forever. So long as a trademark's use is continuous a trademark holder may keep the mark registered with the U.S. Patent and Trademark Office by filing Section 8 Affidavit(s) of Continuous Use as well as Section 9 Applications for renewal, as required. Specifically, once registered with the U.S. Patent and Trademark Office the owner of a trademark is required to file a Section 8 Affidavit of Continuous Use to

maintain the registration between the 5th and 6th year anniversaries of the registration of the mark or during the 6-month grace period following the 6th-year anniversary of the registration. Note, if the Section 8 Affidavit is filed during the 6month grace period additional fees to file the Affidavit with the U.S. Patent and Trademark Office will apply. In addition to requirement above, U.S. trademark registrations are also required to be renewed on or about every 10-year anniversary of the registration of the trademark. The procedure for 10-year renewals is somewhat different from that for the 5th-6th year renewal. In brief, registrants are required to file both a Section 8 Affidavit of Continuous Use as well as a Section 9 Application for Renewal every ten years to maintain their registration.

Trademark Dilution
A trademark is diluted when the use of similar or identical trademarks in other non-competing markets means that the trademark in and of itself will lose its capacity to signify a single source. In other words, unlike ordinary trademark law, dilution protection extends to trademark uses that do not confuse consumers regarding who has made a product. Instead, dilution protection law aims to protect sufficiently strong trademarks from losing their singular association in the public mind with a particular product, perhaps imagined if the trademark were to be encountered independently of any product (e.g., just the word Pepsi spoken, or on a billboard). Under trademark law, dilution occurs either when unauthorized use of a mark "blurs" the "distinctive nature of the mark" or "tarnishes it." Likelihood of confusion is not required. 15 U.S.C 1127, 1125(c).

Limits and defenses to claims of infringement

Trademark is subject to various defenses, such as abandonment, limitations on geographic scope, and fair use. In the United States, the fair use defense protects many of the interests in free expression related to those protected by the First Amendment. Fair use may be asserted on two grounds, either that the alleged infringer is using the mark to describe accurately an aspect of its products, or that the alleged infringer is using the mark to identify the mark owner. One of the most visible proofs that trademarks provide a limited right in the U.S. comes from the comparative advertising that is seen throughout U.S. media.

An example of the second type is that Audi can run advertisements saying that a trade publication has rated an Audi model higher than a BMW model, since they are only using "BMW" to identify the competitor. In a related sense, an auto mechanic can truthfully advertise that he services Cadillacs, and a former Playboy Playmate of the Year can identify herself as such on her website.

Wrongful or groundless threats of infringement

Various jurisdictions have laws which are designed to prevent trademark owners from making wrongful threats of trademark infringement action against other parties. These laws are intended to prevent large or powerful companies from intimidating or harassing smaller companies. Where one party makes a threat to sue another for trademark infringement, but does not have a genuine basis or intention to carry out that threat, or does not carry out the threat at all within a certain period, the threat may itself become a basis for legal action. In this situation, the party receiving such a threat may seek from the Court a declaratory judgment; also known as a declaratory ruling.

Enforcing Rights
The extent to which a trademark owner may prevent unauthorized use of trademarks which are the same as or similar to its trademark depends on various factors such as whether its trademark is registered, the similarity of the trademarks involved, the similarity of the products or services involved, and whether the owner's trademark is well known or, under U.S. law relating to trademark dilution, famous. If a trademark has not been registered, some jurisdictions (especially Common Law countries) offer protection for the business reputation or goodwill which attaches to unregistered trademarks through the tort of passing off. Passing off may provide a remedy in a scenario where a business has been trading under an unregistered trademark for many years, and a rival business starts using the same or a similar mark. If a trademark has been registered, then it is much easier for the trademark owner to demonstrate its trademark rights and to enforce these rights through an infringement action. Unauthorized use of a registered trademark need not be

intentional in order for infringement to occur, although damages in an infringement lawsuit will generally be greater if there was an intention to deceive. For trademarks which are considered to be well known, infringing use may occur where the use occurs in relation to products or services which are not the same as or similar to the products or services in relation to which the owner's mark is registered. A growing area of law relating to the enforcement of trademark rights is secondary liability, which allows for the imputation of liability to one who has not acted directly to infringe a trademark but whose legal responsibility may arise under the doctrines of either contributory or vicarious liability.

The International Application

1. An international application must be presented to the International Bureau through the Office of origin. An international application which is presented direct to the International Bureau by the applicant will not be considered as such and will be returned to the sender. 2. The international application must contain, inter alia, a reproduction of the mark (which must be identical with that in the basic registration or basic application) and a list of the goods and services for which protection is sought, classified in accordance with the International Classification of Goods and Services (Nice Classification). 3. An international application may claim priority under Article 4 of the Paris Convention, whether from the application with the Office of origin or from a prior application filed with the Office of another country party to the Paris Convention or with the Office of a Member of the World Trade Organization. 4. An international application must designate the Contracting Parties in which the mark is to be protected. Where the Contracting Party whose Office is the Office of origin is a party to the Agreement but not the Protocol, only other States which are also party to the Agreement may be designated. Where the Contracting Party whose Office is the Office of origin is a party to the Protocol but not the Agreement, only other Contracting Parties which are also party to the Protocol may be designated. Where the Contracting Party whose Office is the Office of origin is

a party to both the Agreement and the Protocol, any other Contracting Party may be designated. 4. The Contracting Party whose Office is the Office of origin cannot be designated in an international application; nor can it be designated subsequently. 5. The designation of a given Contracting Party is made under that treaty (Agreement or Protocol) which is common to the designated Contracting Party and the Contracting Party whose Office is the Office of origin. Where both Contracting Parties are party to both the Agreement and the Protocol, it is the Protocol which governs the designation. 6. There are therefore three kinds of international application: An international application governed exclusively by the Agreement; this means that all the designations are made under the Agreement; An international application governed exclusively by the Protocol; this means that all the designations are made under the Protocol; An international application governed by both the Agreement and the Protocol; this means that some of the designations are made under the Agreement and some under the Protocol. 7. An international application can be filed in any one of the three languages of the Madrid system, namely, English, French or Spanish. The Office of origin may, however, restrict the applicants choice to only one language, or to two languages, or may permit the applicant to choose between any of the three languages. 8. The international application is subject to the payment of the following fees: A basic fee;

A complementary fee in respect of each designated Contracting Party for which no individual fee is payable; A supplementary fee in respect of each class of goods and services beyond the third; no supplementary fee is payable however where all the designations are ones in respect of which an individual fee has to be paid.

9. For international applications filed by applicants whose country of origin is a Least Developed Country, in accordance with the list established by the United Nations, the basic fee is reduced to 10% of the prescribed amount. 10. These fees may be paid direct to the International Bureau or, where the Office of origin accepts to collect and forward such fees, through that Office. 11. The Office of origin must certify that the mark is the same as that in the basic registration or basic application, that any indications such as a description of the mark or a claim to color as a distinctive feature of the mark are the same as those contained in the basic registration or basic application, and that the goods and services indicated in the international application are covered by the list of goods and services in the basic registration or basic application. 12. The Office of origin must also certify the date on which it received the request to present the international application. This date is important; provided the application is received by the International Bureau within two months of that date (and provided that certain crucial elements are not missing), it is that date that will be the date of the international registration. 13. The International Bureau checks that the international application complies with the requirements of the Agreement or Protocol and the Common Regulations, including requirements relating to the indication of goods and services and their classification, and that the required fees have been paid. The Office of origin and the applicant are informed of any irregularities; these must be remedied within three months, otherwise the application will be considered abandoned. 14. Where the international application complies with the applicable requirements, the mark is recorded in the International Register and published in the Gazette. The International Bureau then notifies each Contracting Party in which protection has been requested.

Effects of the International Registration

1. From the date of the international registration (or, in the case of a Contracting Party designated subsequently, from the date of that designation), the protection of the mark in each of the designated Contracting Parties is the same as if the mark had been the subject of an application for registration filed direct with the Office of

that Contracting Party. If no provisional refusal is notified to the International Bureau within the relevant time limit, or if any such refusal is subsequently withdrawn, the protection of the mark in each designated Contracting Party is the same as if it had been registered by the Office of that Contracting Party. 2. An international registration is therefore equivalent to a bundle of national registrations. Although it is a single registration, protection may be refused by some of the designated Contracting Parties, or the protection may be limited or renounced with respect to only some of the designated Contracting Parties. Likewise an international registration may be transferred to a new owner with respect to only some of the designated Contracting Parties. An international registration may also be invalidated (for example, for non-use) with respect to one or more of the designated Contracting Parties. Moreover, any action for infringement of an international registration must be brought separately in each of the Contracting Parties concerned. 3. This is in contrast to a unitary regional right such as the Community trademark, which cannot be refused, limited or transferred with effect for only a part of the territory covered by the right, and which may be enforced by a single legal action covering infringement occurring anywhere in that territory.

Replacement of a National or Regional Registration by an International Registration

38. An international registration is deemed to replace a national or regional registration for the same mark and the same goods and services recorded in the name of the same person in a designated Contracting Party. The effect of replacement is that, if the national or regional registration is not renewed, the holder of the international registration may continue to benefit from the earlier rights acquired by reason of that national or regional registration. Although replacement takes place automatically, the holder of the international registration may request the Office of the Contracting Party in which the national or regional registration is recorded to take note in its register of the international registration.

Advantages of the System

1. International registration has several advantages for the owner of the mark. After registering the mark, or filing an application for registration, with the Office of origin, he has only to file one application, in one language, and pay one fee instead of filing separately in the trademark Offices of the various Contracting Parties in different languages and paying a separate fee in each Office. Moreover, the holder does not have to wait for the Office of each Contracting Party in which protection is sought to take a positive decision to register the mark; if no refusal is notified by an Office within the applicable time limit, the mark is protected in the Contracting Party concerned. In some cases, the holder does not even have to wait the expiry of this time limit in order to know that the mark is protected in a Contracting Party, since he may, before the expiry of the time limit, receive a statement of grant of protection from the Office of that Contracting Party. 2. A further important advantage is that changes subsequent to registration, such as a change in the name or address of the holder, or a change (total or partial) in ownership or a limitation of the list of goods and services may be recorded with effect for several designated Contracting Parties through a single simple procedural step and the payment of a single fee. Moreover, there is only one expiry date and only one registration to renew. 3. International registration is also to the advantage of Trademark Offices. They do not need to examine for compliance with formal requirements, or classify the goods or services, or publish the marks. Moreover, they are compensated for the work that they perform; the individual fees collected by the International Bureau are transferred to the Contracting Parties in respect of which they have been paid, while the complementary and supplementary fees are distributed annually among the Contracting Parties not receiving individual fees, in proportion of the number of designations made of each of them.

Relevant Forms and Procedure for Obtaining Trademark in India

(a) Objectives

The aim of the Trademarks Registry is to provide for registration and better protection of trade marks in India and for the prevention of the use of fraudulent marks on merchandise. b) Functions The Trademarks Registry had been functioning since 1.9.1940 for the administration of the Trade and Merchandise Marks Act, 1958 read with the Trade and Merchandise Rules, 1959 Since September 20, 2003 the Trademarks Act 1999 read with The Trademark Rules 2001 has come in force. Apart from the above, the Trade Marks Registry has other functions like issue of search reports as to whether an identical or deceptively similar trade mark is already registered or filed, preliminary advice regarding distinctiveness of a trade mark, issuing of search certificate for use under the Copyright Act, preparation of search materials, maintenance of Register of Trade Marks, preparation of annual statistical reports, publication of Trade Marks Journal, publication of annual reports and the like. The new Trademark Rules have provisions to enable users / customers obtain Trademark Search, report within a week. Through a Government of India initiated project for modernization and administration of the Trade Marks Registry with UNDP/WIPO assistance, it has resulted in the computerization system functioning, fee receipt generation, numbering of applications, preliminary search report, examination of application, journal printing, renewal, change of name and address of registered proprietors etc. Complete database of trademarks is now available from its administrative organization. Top c) Procedure for registration of trade marks Before applying for registration of a trade mark, it is desirable to conduct a market survey through an investigating agency, etc. to ascertain whether any identical or deceptively similar mark is used for the same goods or services by any other person /party in the market.

It is also desirable before applying for registration to obtain preliminary advice regarding the distinctiveness of the mark from the Registrar by making a request on form TM-55 with the prescribed fee of Rs.50/-. The request on form TM-55 can be filed at the Trade Marks Registry, Mumbai or at the regional branch offices at Delhi , Kolkata, Chennai or Ahmadabad. Also a request on form TM-54 can be made with prescribed fee of Rs.50/- to the Trade Marks Registry, Mumbai or at the said any branches to obtain an official report to ascertain whether any identical or deceptively similar trade mark is pending for registration in respect of the same goods services. It is also possible to make a personal inspection or search through the records of the Trade Marks Registry on payment of prescribed fee of Rs.50/- per hour. After following the above procedure, an application for a trademark may be made on form TM-1 with the prescribed fee of Rs.300/- at the appropriate office of the Trademarks Registry. The appropriate office means the office within whose territorial limits the applicant resides or has his principal place of business in India . In case of a foreign applicant, the place mentioned as address for service in India will determine the appropriate office at which the application should be filed. An application on form TM-1 should be filed in triplicate along with fee of Rs.300/- and with 10 copies of additional representations of the mark. The additional representations shall contain the mark, name and address of the applicant, or MOA in case of a Society / Company, class, goods and date if any from which the mark has been used etc. A trademark particularly a device or figurative mark may preferably be a black and white representation on bromide prints of dimension of 8 cm x 8 cm. However if color is also an attribute in the Trademark for its distractedness, colored photographs / print may be provided instead of said bromide paper. All the fees may be paid in cash or Demand Draft or local cheques drawn in a scheduled bank at the place where the appropriate office is located payable in the name of the Registrar of Trademarks. An application to register a trademark should be made in respect of goods comprised in one class only.

Trade mark Law in India

The Indian law of trademarks is enshrined the new Trade Marks Act, 1999 came into force with effect from September 15, 2003. The old Trade and Merchandise Marks Act, 1958 was repealed at the same time. The new Trademarks Act of 1999 is in line with the WTO recommendations and is in conformity with the TRIPS Agreement to which India is a signatory. India has declared certain countries as convention countries, which afford to citizens of India similar privileges as granted to its own citizens. A person or company from a convention country, May within six months of making an application in the home country, applies for registration of the trademark in India. If such a trademark is accepted for registration, such foreign national will be deemed to have registered his or her trademark in India, from the same date on which he or she made application in the home country. Scope of Foreign Investors With Regard to the Registration of Trade Mark in IndiaRegistration of trademarks is one of the important protections that businesses should avail in India. Many foreign and domestic Applicants have been able to successfully register their marks in India. Indian courts have upheld many of those registrations and granted favorable decisions to rights holders. In addition to the registering of their trademarks in India, businesses need to adopt other strategies for protecting their trademarks. Some of them are mentioned below: Get trademark searches conducted in the Indian Trade Marks Registry in the classes that are of interest to you including the ancillary classes. Get common law searches (this includes the internet, market surveys, yellow pages and directories) conducted to ascertain whether third parties are using your trademarks and if so, the extent of such use. Based on this information and after seeking the local counsels opinion decide if the trademark is available for use or not. Should the trademark be available for use, immediately apply for the registration.

 The rights holder should also consider hiring a watching service to monitor the trademark journals in order to alert them to any published, deceptively similar trademarks or descriptive trademarks that might be of concern. Should the rights holder own a trademark that has been used and has acquired goodwill and reputation, it is advisable that along with filing of the trademark application in India, they should also make press releases, publish cautionary notices and advertise the mark to ensure that the relevant section of the public is aware that they are entering the Indian market and are protecting their trademark from any kind of third party violation. The rights holder should also take immediate steps to register their domain names including country coded top level domain names in India, as there have been many instances of third parties registering domains for certain well known marks with the intention of extracting money by selling these domain names to the rights holders. Should the rights holder discover that their trademark is being infringed, they should take immediate steps to protect their trademark, either by the means of filing oppositions, cancellations, conducting investigations, sending cease and notices or initiating appropriate civil and criminal actions.

Other Aspects
Public policy Trademark law is designed to fulfill the public policy objective of consumer protection, by preventing the public from being misled as to the origin or quality of a product or service. By identifying the commercial source of products and services, trademarks facilitate identification of products and services which meet the expectations of consumers as to quality and other characteristics. Trademarks may also serve as an incentive for manufacturers, providers or suppliers to consistently provide quality products or services to maintain their business reputation. Furthermore, if a trademark owner does not maintain quality control and adequate supervision in relation to the manufacture and provision of products or services supplied by a licensee, such "naked licensing" will eventually adversely affect the owner's rights in the trademark. This

proposition has, however, been watered down by the judgment of the House of Lords in the case of Scan decor Development AB v. Scan decor Marketing AB et al. [2001] UKHL 21; wherein it has been held that the mere fact that a bare license (equivalent of the United States concept of a naked license) has been granted did not automatically mean that a trademark was liable to mislead. By the same token, trademark holders must be cautious in the sale of their mark for similar reasons as apply to licensing. When assigning an interest in a trademark, if the associated product or service is not transferred with it, then this may be an "assignment-in-gross" and could lead to a loss of rights in the trademark. It is still possible to make significant changes to the underlying goods or services during a sale without jeopardizing the trademark, but companies will often contract with the sellers to help transition the mark and goods or services to the new owners to ensure continuity of the trademark. Comparison with patents designs and copyright While trademark law seeks to protect indications of the commercial source of products or services, patent law generally seeks to protect new and useful inventions, and registered designs law generally seeks to protect the look or appearance of a manufactured article. Trademarks, patents and designs collectively form a subset of intellectual property known as industrial property because they are often created and used in an industrial or commercial context. By comparison, copyright law generally seeks to protect original literary, artistic and other creative works. Continued active use and re-registration can make a trademark perpetual, whereas copyright usually lasts for the duration of the author's lifespan plus 70 years for works by individuals, and some limited time after creation for works by bodies corporate. This can lead to confusion in cases where a work passes into the public domain but the character in question remains a registered trademark. Although intellectual property laws such as these are theoretically distinct, more than one type may afford protection to the same article. For example, the particular design of a bottle may qualify for copyright protection as a nonutilitarian [sculpture], or for trademark protection based on its shape, or the 'trade dress' appearance of the bottle as a whole may be protectable. Titles and

character names from books or movies may also be protectable as trademarks while the works from which they are drawn may qualify for copyright protection as a whole. Drawing these distinctions is necessary, but often challenging for the courts and lawyers, especially in jurisdictions where patents and copyrights pass into the public domain, depending on the jurisdiction. Unlike patents and copyrights, which in theory are granted for one-off fixed terms, trademarks remain valid as long as the owner actively uses and defends them and maintains their registrations with the competent authorities. This often involves payment of a periodic renewal fee. As a trademark must be used to maintain rights in relation to that mark, a trademark can be 'abandoned' or its registration can be cancelled or revoked if the mark is not continuously used. By comparison, patents and copyrights cannot be 'abandoned' and a patent holder or copyright owner can generally enforce their rights without taking any particular action to maintain the patent or copyright. Additionally, patent holders and copyright owners may not necessarily need to actively police their rights. However, a failure to bring a timely infringement suit or action against a known infringer may give the defendant a defense of implied consent or estoppels when suit is finally brought. Sale, transfer and licensing In various jurisdictions a trademark may be sold with or without the underlying goodwill which subsists in the business associated with the mark. However, this is not the case in the United States, where the courts have held that this would "be a fraud upon the public". In the U.S., trademark registration can therefore only be sold and assigned if accompanied by the sale of an underlying asset. Examples of assets whose sale would ordinarily support the assignment of a mark include the sale of the machinery used to produce the goods that bear the mark, or the sale of the corporation (or subsidiary) that produces the trademarked goods. Most jurisdictions provide for the use of trademarks to be licensed to third parties. The licensor (usually the trademark owner) must monitor the quality of

the goods being produced by the licensee to avoid the risk of trademark being deemed abandoned by the courts. A trademark license should therefore include appropriate provisions dealing with quality control, whereby the licensee provides warranties as to quality and the licensor has rights to inspection and monitoring. Domain Names The advent of the domain name system has led to attempts by trademark holders to enforce their rights over domain names that are similar or identical to their existing trademarks, particularly by seeking control over the domain names at issue. As with dilution protection, enforcing trademark rights over domain name owners involves protecting a trademark outside the obvious context of its consumer market, because domain names are global and not limited by goods or service. This conflict was more easily resolved when the domain name user actually used his website to compete with the trademark owner. Cyber squatting, however, involves no such competition, but instead an unlicensed user registering the trademark as a domain name to pressure a payoff (or other benefit) from the lawful mark owner. Typo squattersthose registering common misspellings of trademarks as domain nameshave also been targeted successfully in trademark infringement suits. Other types of domain name disputes include the so-called "gripe site," which use a registered trademark in a domain such as "[trademark] sucks.com." There are also disputes arising from the sub domain, when a third party uses a protected mark in a web address such as "[trademark]. [Legitimate domain].com."[20] This clash of the new technology with preexisting trademark rights resulted in several high profile decisions as the courts of many countries tried to coherently address the issue (and not always successfully) within the framework of existing trademark law. As the website itself was not the product being purchased, there was no actual consumer confusion, and so initial interest confusion was a concept applied instead. Initial interest confusion refers to customer confusion that creates an initial interest in a competitor's "product" (in the online context, another party's website). Even though initial interest

confusion is dispelled by the time any actual sales occur, it allows a trademark infringer to capitalize on the goodwill associated with the original mark. Several cases have wrestled with the concept of initial interest confusion. In Brookfield Commc'ns v. West Coast Ent'mt the court found initial interest confusion could occur when a competitor's trademarked terms were used in the HTML metatags of a website, resulting in that site appearing in the search results when a user searches on the trademarked term. In Playboy v. Netscape, the court found initial interest confusion when users typed in Playboy's trademarks into a search engine, resulting in the display of search results alongside unlabeled banner ads, triggered by keywords that included Playboy's marks that would take users to Playboy's competitors. Though users might ultimately realize upon clicking on the banner ads that they were not Playboyaffiliated, the court found that the competitor advertisers could have gained customers by appropriating Playboy's goodwill since users may be perfectly happy to browse the competitor's site instead of returning the search results to find the Playboy sites. In Lamparello v. Falwell, however, the court clarified that a finding of initial interest confusion is contingent on financial profit from said confusion, such that, if a domain name confusing similar to a registered trademark is used for a non-trademark related website, the site owner will not be found to have infringed where he does not seek to capitalize on the mark's goodwill for his own commercial enterprises. In addition, courts have upheld the rights of trademark owners with regard to commercial use of domain names, even in cases where goods sold their legitimately bear the mark. In the landmark decision Creative Gifts, Inc. v. UFO, 235 F.3d 540 (10th Cir. 2000)(New Mexico), defendants had registered the domain name "Levitron.com" to sell goods bearing the trademark "Levitron" under an at-will license from the trademark owner. The 10th Circuit affirmed the rights of the trademark owner with regard to said domain name, despite arguments of promissory estoppels. Most courts particularly frowned on cyber squatting, and found that it was itself a sufficiently commercial use (i.e., "trafficking" in trademarks) to reach into the

area of trademark infringement. Most jurisdictions have since amended their trademark laws to address domain names specifically, and to provide explicit remedies against cyber squatters. In the US, the legal situation was clarified by the Anticybersquatting Consumer Protection Act, an amendment to the Lanham Act, which explicitly prohibited cyber squatting. It defines cyber squatting as "(occurring) when a person other than the trademark holder registers the domain name of a well-known trademark and then attempts to profit from this by either ransoming the domain name back to the trademark holder or using the domain name to divert business from the trademark holder to the domain name holder". The provision states that "[a] person shall be liable in a civil action by the owner of the mark ... if, without regard to the goods or services of the person, that person (I) had a bad faith intent to profit from the mark ...; and registers, traffics in, or uses domain name [that is confusingly similar to another's mark or dilutes another's mark]". This international legal change has also led to the creation of ICANN Uniform Domain-Name Dispute-Resolution Policy (UDRP) and other dispute policies for specific countries (such as Nominet UK's Dispute Resolution Service) which attempt to streamline the process of resolving who should own a domain name (without dealing with other infringement issues such as damages). This is particularly desirable to trademark owners when the domain name registrant may be in another country or even anonymous. Registrants of domain names also sometimes wish to register the domain names themselves (e.g., "XYZ.COM") as trademarks for perceived advantages, such as an extra bulwark against their domain being hijacked, and to avail themselves of such remedies as confusion or passing off against other domain holders with confusingly similar or intentionally misspelled domain names. As with other trademarks, the domain name will not be subject to registration unless the proposed mark is actually used to identify the registrant's goods or services to the public, rather than simply being the location on the Internet where the applicant's web site appears. Amazon.com is a prime example of a protected trademark for a domain name central to the public's identification of the company and its products.

Terms which are not protectable by themselves, such as a generic term or a merely descriptive term that has not acquired secondary meaning, may become registrable when a Top-Level Domain Name (e.g. dot-COM) is appended to it. An example of such a domain name ineligible for trademark or service mark protection as a generic term, but which currently has a registered U.S. service mark, is "HEARSAY.COM". Among trademark practitioners there remains a great deal of debate around trademark protection under ICANN's proposed generic top-level domain name space expansion. World Trademark Review has been reporting on the at times fiery discussion between trademark owners and domainers.

Cases of Trade Mark Violation in IndiaTrade mark infringement especially among the corporate classes in India is rising on an alarming rate. Few of the notable cases have been described in brief. 1. Pantaloon dragged to court by Shoppers Stop and Lifestyle; Westside also contemplates similar action, (July 14th, 2008). Shoppers Stop and Lifestyle have dragged their rival Pantaloon to court as they were miffed with an advertisement issued by the flagship company of Kishore Biyani owned Future Group that offered 10% extra discount to their loyal customers vide an advertisement issued in The Times of India, New Delhi, dated 28th June, 2008. The complainant retailers have accused Pantaloon of trademark violations and unfair business practices, says a Live Mint report. All the three parties operate department store format store chains in lifestyle segment. Even Westside has taken objection to the ad saying, We have sent a notice to them to which they have not responded, said Smeeta Neogi, Head (Marketing) Westside. Pantaloons Central mall at Gurgaon had offered 30% discounts to its customers over the weekend. Loyalty card holders of competing retailers like Shoppers Stop, Lifestyle and Westside, were lured by Pantaloon by offering an additional 10% discount on select brands of apparel. The advertisement asked such customers to:Present your membership card to avail this offer.

Loyalty cardholders are mainstay of business for most retailers. Shoppers Stop has a highly popular loyalty card programme branded First Citizen. According to analysts, more than two-thirds of Shoppers Stops apparel business is accounted for by its loyal customers. They (Pantaloon) are luring my customers by using my name in an unfair manner, said Sandeep Mittal, the lawyer representing for both the petitioners. The Honorable Delhi high court has issued an injunction restraining Pantaloon from using names of its rivals in the ads until the next hearing in the matter fixed for 31st July. Taking potshots at these competitors is not new for Pantaloon. Last year, its Big Bazaar chain had put up hoardings, asking customers to Keep West-aside, Shoppers! Stop and Change Your Lifestyle. Make a Smart Choice. 2. Amul wins trade mark case in Gujarat High Court, (Sep 24, 2007) Amul has won the trade mark case in Gujarat High Court and no one else can use it. The Kaira District Co-operative Milk Producers? Union Ltd. and GCMMF had filed trade mark infringement cases, against two local shop owners? Amul Chasmaghar and its partners and Amul Cut Piece Stores in the District Court, Anand. The District Court, Anand passed an order dated 25 April 2007, ruling that it was a clear case of infringement and restrained the two from using the Amul trademark. Amul Chasmaghar had challenged this interim injunction in the Gujarat High Court. The Gujarat High Court ruled the decision in favor of Amul, terming the order passed by the trial court as true, correct, legal and in consonance with the facts of the case, as well as in accordance with the provisions of the Trade Marks Act 1999.

3. Trade Marks Disputes Involving Pharmaceuticals Industry in India-

A. Beecham Group Plc. vs. S.R.K. Pharmaceuticals 2004 (28) PTC391 (IPAB) The appellant was using the mark 'AMOXIL' in India since 1990. This mark was registered in India in 1972 in Class 5 in respect of Pharmaceutical goods. The respondent started using the mark 'LYMOXYL' in India from 1985. The respondent filed the application for registration of the mark in 1987 in India in the same class with respect to similar goods. The appellant brought an action against the respondent stating that the mark is deceptively similar. The only difference between the two marks is in the prefix 'LY' and 'M'. The rival marks are phonetically and deceptively similar and the goods are pharmaceutical goods under Sec. 12(1) of the Act. The Intellectual Property Appellate Board (IPAB) held that the respondent dishonestly adopted the mark by copying it from the appellant who had got the mark registered long ago. Hence the respondent cannot claim honest concurrent use, by virtue of earlier use. The Appellate Board delivered a judgment prohibiting registration of the Trade Mark 'LYMOXYL'. B. Ranbaxy Laboratories Limited vs. Anand Prasad & 4 Others 2004 (28) PTC 438 (IPAB) The appellant was the registered proprietor of the mark 'FORTWIN' and had been using the mark since 1975. The respondent applied for registration of the mark 'OSTWIN'. Both the marks related to pharmaceutical compositions in respect of treatment of bones. The appellant brought an action against the respondent stating that the mark is deceptively similar. The IPAB held that the prefixes are 'FORT' and 'OST' while both the marks end with the suffix 'WIN'. It was further held that since the rival goods are also pharmaceutical goods it might lead to serious consequences due to deception or confusion in the minds of the public. Hence on the possibility of harm being caused to common person the appeal was allowed. C. Wyeth Holdings Corp. & Anr. vs. Sun Pharmaceuticals Industries Ltd. 2004 (28) PTC 423 (Bom)

In this case the plaintiff whose former name was American Cyanamid Company and who was the proprietor of the trademark 'PACITANE' registered the mark in Class 5 of Pharmacy goods. The respondent was using the mark 'PARKITANE' with respect to similar goods. The plaintiffs filed a suit for infringement and passing off and sought various reliefs including interim injunction against the defendant for using the mark 'PARKITANE'. The Court held that in both the cases the goods are similar, being pharmaceutical preparations for treatment of Parkinson's disease, the customers buying these goods are the same and the trade channels are the same. Since the defendants did not show any search of the Register before adopting the impugned mark, prima facie adoption of the mark was not honest. Further, the Court held that despite protests, if the defendants have chosen to continue to sell the products, it cannot be said to be acquiescence by the plaintiff. Therefore the Court held that injunction is to be granted in favor of the plaintiff. The Court further held that in case of pharmaceutical products, the test is of possibility of confusion and not probability of confusion. The plaintiffs have been in the field since 1950 and as such the balance of convenience is in their favor. The Court granted injunction in favor of the plaintiffs. D. Hoechst Aktiengesellschaft vs. Artee Minerals & Anr. 2004 (28) PTC 470 (IPAB) The appellant was the registered proprietor of trademark 'ARELON'. This mark was registered in class 5 with respect to pharmaceutical goods relating to preparation for killing weeds and destroying vermin. The respondent filed an application for registration of the mark 'ARTEELON' in the same class with respect to pharmaceutical goods. The appellant opposed the application for registration of trade mark filed by the respondents on the ground that the registration of the impugned mark would be contrary to provisions of Sections 9, 11, 12(1) and 18 of the Trade and Merchandise Marks Act, 1958. The IPAB held that the rival goods were same and the only difference was the letters 'TE'. The Appellate Board further held that the possibility of confusion

and deception is not ruled out and hence affirmed the order rejecting the application for registration filed by the respondent. The IPAB further held that the benefit of use under Section 54 is given only in case of rectification proceedings when use of an associated trademark is deemed to be use of the registered trademark against which rectification proceedings are initiated for non-use of the mark.

ConclusionIn conclusion it can be drawn that Indian Trade Mark Law must me updated on frequently keeping in pace with the dynamic and new methods of Trade Mark infringement. Both Courts and Enforcement authorities must be well equipped and be trained for efficient disposal of cases relating to Intellectual Property.

General Microsoft Trademark Guidelines

The name Microsoft is synonymous with high-quality computer software and hardware products and services. Microsoft trademarks are extremely valuable because they represent the standards of excellence and consistent quality associated with Microsoft. This page contains detailed information about how to refer to Microsoft trademarks in different scenarios. Using Microsoft Trademarks in Text Proper use of Microsoft trademarks is important. You may use Microsoft trademarks or product names to refer to Microsoft products and services provided you follow these guidelines. Your use must not mislead consumers as to any Microsoft sponsorship, affiliation, or endorsement of your company, or of your products or services. Properly Identify Microsoft Brand Products When referring to Microsoft software and products, apply the appropriate trademark symbols in accordance with the list of current Microsoft trademarks. View the Microsoft Trademarks List

Here are some examples of Microsoft brands and their descriptors: Microsoft software Windows operating system Encarta multimedia encyclopedia FrontPage Web site creation and management tool MSN Internet Services Outlook messaging software PowerPoint presentation graphics program Xbox video game system

Set Microsoft Trademarks Apart from Other Words or Nouns They Modify The common way to set trademarks apart from other words or nouns is to capitalize the product name and use the appropriate trademark symbol and appropriate descriptor. You may also underlining, italic type, or bold type for the name. Examples: Correct: After you install the Windows operating system Incorrect: After installing Windows programs Use Trademark Notices Include an attribution of Microsoft ownership of the trademark(s) in the credit notice section of your documentation or advertisement. Follow this format: Microsoft, Encarta, MSN, and Windows are either registered trademarks or trademarks of Microsoft Corporation in the United States and/or other countries. Do Not Use Inappropriate Descriptors

Microsoft trademarks identify specific products and services. Do not refer to applications, services, or hardware devices that work with Microsoft products incorrectly. For example, do not refer to products or services that work with the Windows operating system as "Windows applications," "Windows services," or "Windows hardware." If necessary, these types of products can be referred to by their relationship to the Windows operating system by inserting the word "based" between the name Windows and the type of product designed to work with Windows. Correct: SpreadsheetXYZ is a Windows-based application. Incorrect: SpreadsheetXYZ is a Windows application. Do Not Use Microsoft Trademarks in the Possessive or Plural Form Microsoft trademarks should never be used in the possessive or plural form. They should be introduced as a proper adjective followed by an appropriate descriptor. Correct: This presentation was created using PowerPoint presentation manager. Incorrect: Widget Software Company included some PowerPoints in its presentation. Additional Guidelines for Advertising Collateral, Marketing, and Product Packaging You may use the names of Microsoft products and services on packaging, on Web sites, and in advertising materials to indicate your product's compatibility with a specific Microsoft product or service, provided the reference complies with the guidelines herein and the specifications below. Compatibility Any use of a Microsoft logo to indicate compatibility must be pursuant to a logo license under one of the Microsoft Logo Programs: 1. You may use Microsoft trademarks in referential phrases such as "Works with Windows XP," "Runs on Windows 2000," and "For use with Xbox."

2. Do not use any Microsoft trademarks as your product name, service name, or company name. 3. Do not use product, service, or company names that could be confused with any Microsoft trademark. 4. Do not mimic or copy Microsoft product packaging, advertising, or trade dress. 5. Do not use Microsoft trademarks more prominently than your product or service name. You should maintain a visual distinction between your company and product name and any Microsoft trademark. 6. Do not create or use any logos that include a Microsoft trademark unless your use is pursuant to a license from Microsoft (for example, do not create your own Windows compatibility logo). Logos Do not use the Microsoft Corporate logo, Windows logo, or any other Microsoft logos, symbols, or icons on or in connection with products, packaging, manuals, promotional or advertising materials, or Web sites for any purpose except pursuant to an express written trademark license from Microsoft. Learn more about Microsoft Logo Programs

The Microsoft corporate logo may be used only in limited situations to refer to Microsoft Corporation. Review the Microsoft corporate logo guidelines

Link Logos You may place a text link to a Microsoft Web page on your site if the text link is not a prominent feature on the site and is not used in a way that could confuse or mislead consumers. You may refer to the Microsoft company name or Microsoft product and service names in a plain text font and format, provided this use follows the general Microsoft trademark guidelines and you include appropriate wording

such as "This way to Microsoft.com." Except for the link logos as provided by Microsoft, you may not use the Microsoft corporate logo or any other Microsoft logo or graphic to link to Microsoft. You may use Microsoft link logos only in accordance with the guidelines applicable to each logo as provided. Learn more about Microsoft link logos

Web Sites You may use Microsoft product, service, and technology names on your Web site to indicate that your Web site runs on, or is compatible with, the referenced Microsoft product or technology, provided the reference complies with the guidelines herein. Do not use any Microsoft trademark in the title of your Web site or as a second-level domain name. You may not use any Microsoft logo without a license or written specifications from Microsoft. Publications, Seminars, and Conferences You may refer to Microsoft product, service, and technology names on the cover of magazines and periodicals, and in the title of seminars and conferences, provided you comply with the guidelines herein and the following specifications: 1. The publication, seminar, or conference should relate to the specific Microsoft product, service, or technology referenced. 2. Your name and logo should appear more prominently than the Microsoft word mark on all printed materials related to the magazine, periodical, seminar, or conference. 3. A disclaimer of sponsorship, affiliation, or endorsement by Microsoft, similar to the example below, should be included on the publication and in all related printed materials: "(Title) is an independent (publication) and is not affiliated with, nor has it been authorized, sponsored, or otherwise approved by Microsoft Corporation." 4. You should include a trademark attribution according to the notice format provided in the Use Trademark Notices section of this page.

5. Do not use a Microsoft trademark as the leading word or most prominent element in your magazine, periodical, seminar, or conference title. You may use Microsoft trademarks in a referential manner such as "XYZ MAGAZINE for the Windows operating system." Use outside this referential manner (such as "Windows Magazine") requires a license from Microsoft Corporation. 6. Do not use the Microsoft Corporate logo, Windows logo, or any other Microsoft logo on or in the publication, or on any materials related to the publication, seminar, or conference. Special circumstances may merit a license from Microsoft. 7. Do not use a Microsoft trademark in any manner that suggests Microsoft affiliation with, sponsorship of, or certification of the magazine, periodical, seminar, or conference. Box Shots, Screen Shots, and Icons Box shots, screen shots, and some icons may be used pursuant to Microsoft guidelines for these items. Learn more about using box shots, screen shots, and icons

Company, Product, Service, and Domain Names Do not use or register any Microsoft trademark, including Microsoft logos, symbols, icons, or any potentially confusing variation thereof, as part of your company name, trade name, product name, service name, or domain name. Do not place your company name, trademarks, service marks, or product names next to, or combine them with, a Microsoft product name. Endorsement or Sponsorship Do not use any Microsoft trademark in any manner that expresses or implies Microsoft affiliation, sponsorship, endorsement, certification, or approval. Do not use any Microsoft trademark in such a manner that it appears Microsoft is legally associated with your company. You must display your company name more prominently than any Microsoft trademark on all materials.

Merchandise Items Does not manufacture, sell, or give away merchandise items, such as T-shirts or mugs, that bear any Microsoft trademark, including logos, except pursuant to an express written trademark license from Microsoft. Trade Dress and Advertising Elements Do not imitate Microsoft logos, logotypes, trade dress, or other elements of Microsoft product packaging and Web sites in any of your materials, including but not limited to advertising, product packaging, Web sites, and promotional materials. Slogans and Taglines Do not use or imitate any Microsoft tagline, including but not limited to "Your Potential. Our Passion.TM".