Implications of Trademark under recent Companies (Incorporation) Third Amendment Rules, 2016- Part I

Ministry of Corporate Affairs (MCA) on July 27, 2016 has notified Companies (Incorporation) Third Amendment Rules, 2016 wherein a few changes have been brought in.

One minor change that can be easily overlooked is regarding application for name availability, for a name that is registered as or applied for Trade Mark. With regards to the same, the Amendment Rule states as follows:

In the principal rules, in rule 8,- (a) in sub-rule (2)for clause(ii), the following shall be substituted namely:-

The name shall be considered undesirable, if-

“(ii) it includes the name of a trade mark registered or a trade mark which is subject of an application for registration under the Trade Marks Act, 1999 and the rules framed thereunder unless the consent of the owner or applicant for registration, of the trade mark, as the case may be, has been obtained and produced by the promoters.”

In the Principle Rules, the words “registration under the Trade Marks Act, 1999 and the rules framed thereunder” did not appear.

In the above context, in this article, let us understand the concept of registered Trade Mark.

• What is meant by the term “Registered Trade Mark”?

Trade Marks Act, 1999 (The Act) defines Registered Trade Mark as a trade mark which is actually on the register and remaining in force.

Explanation:

A Trade Mark that is recorded in the Register of Trade Mark, which is maintained by the Trade Marks Registry (Trade marks Registry established under the Trade and Merchandise Marks Act, 1958 shall be the Trade Marks Registry under this Act) which is kept at the head office of the Trade Marks Registry and continues to be in existence shall be a registered Trade Mark. 

  

• Is registration of trade mark mandatory under the Trade Marks Act, 1999?

         No, the registration of trade mark is not mandatory under the Act.

Explanation:

A logo or a word mark or any design, device, symbol which is capable of distinguishing the goods or services of one person from those of others can be used by any person without registration. However, such Trade mark is not recognized under the Trademarks Act, 1999 and accordingly, the protection under the said act is not available.

• Whether Trade Marks registered under Trade and Merchandise Marks Act, 1958 (erstwhile Act) will be covered in the term “Registered Trade Mark”?

As per the Act, existing registered Trade Mark means a trade mark registered under the Trade and Merchandise Act, 1958 immediately before the commencement of this Act.

Explanation:

A Trade Mark that was registered under the erstwhile Act shall be covered under the term “Registered Trade Mark” under this Act.

However, since the Act has been in existence for seventeen years and the validity period of the registration under erstwhile Act was only seven years, the Trade Marks registered under the erstwhile Act, post renewal on the expiration of term under the provisions of the Act, shall be covered under the term “Registered Trade Mark”.