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How A Right Is Acquired In A Trade/Service Mark
India is a common law country. Right to a trade mark/service mark is acquired by a person who adopts and uses commercially such mark in the course of trade prior to any point of time. The priority in adoption and use is the fundamental criteria to determine the ownership rights between the rival contenders. A person, who adopts the mark prior in point of time and uses it in the course of trade in relation to the vendible articles so as to indicate a connection in the course of trade, acquires a proprietary right therein to the exclusion of others. Such rights, popularly known as common law rights, are capable of equal protection parallel to that of a statutory right conferred by The Trade Marks Act, 1999 in respect of infringement.
Any person claiming to be the proprietor of a trade mark or service mark or collective mark or certification mark can obtain registration of such mark, if used or proposed to be used by making an application in writing to the Registrar of Trade Marks in the prescribed manner and on payment of prescribed fee. The proprietorship in a trade mark can be claimed by person even in respect of marks which are only proposed to be used on the date of filing of application for registration. In the case of a conflict between a person claiming proprietorship in the mark on the basis of filing an application with a claim of a proposed use and a person putting the same mark to an actual, physical and concurrent use, the proprietary rights vest with the person who uses the mark prior in point of time as against the person who merely adopted it and proposed to use it.
In order to qualify for registration, the mark should not offend the provisions of Section 9 of the Trade Marks Act, 1999.
If the trademark is devoid of any distinctive character or is not capable of distinguishing or is descriptive or has reference to the geographical origin will not qualify for registration under Section 9 of the Act. The mark on account of practice in the trade, which becomes customary in the actual language and/or recognized as such by the trade are also not entitled to registration. For example, Fridge was initially a trademark but the said word lost its distinctiveness on account of customary use thereof with reference to refrigerator.
The marks as are likely to cause confusion and deception or likely to hurt the religious sensibilities of any section of the society or comprises of scandalous or obscene or prohibited matter under the Emblem and Names (Prevention of Improper Use Act 1950) do not qualify for registration.
The onus to satisfy the Registrar that the mark applied for registration is not of such a nature, the use whereof is likely to cause confusion and/or deception is entirely on the applicant. It is also for the applicant to satisfy the Registrar that the mark desired to be registered is not disentitled to registration on any of the prohibitions contained in Section 9.
If the mark desired to be registered is covered by any of the prohibitions under Section 9 of the Act, the same constitutes absolute ground for refusal to registration. In case the applicant for registration is able to satisfy the Registrar by way of evidence of use or otherwise that the mark desired to be registered is capable of distinguishing his goods from those of other manufacturers and is not likely to cause confusion or deception and is not hit by any of the other prohibitions, the Registrar, in his discretion, may waive the objection to the registrability of such mark.
In addition to the grounds for absolute refusal, a mark may still be denied registration if there exists a likelihood of confusion or deception to the public because of its identity or similarity to an earlier trademark (pending or registered) and for identity or similarity of goods or services covered by such earlier mark. The Registrar may refuse to register the mark if it is adopted by the applicant with the intention to take unfair advantage of the reputation of an earlier mark or a well-known mark.
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