Trademark what does assigned to lie mean

Notices of allowance are only issued for applications that have been filed based on "Intent to Use". After receiving the Notice of Allowance, the applicant must file a Statement of Use or a request for an extension of time to file a Statement of Use within 6 months from the issue date of the Notice.

If the applicant fails to timely file a Statement of Use or a request for an extension of time to file a Statement of Use, the application will go abandoned.

This means the Statement of Use has been approved for an Intent to Use application. This means that changes have been made to the trademark record. This document is usually a refusal to register based on a problem with the application or a problem with the trademark itself. Note that there is no right to privacy on most trademark information entered by the applicant. Trademark applications are public records. This change in the record means that the USPTO believes the trademark would be entitled to registration under the current circumstances assuming an acceptable AAU or SOU were filed for an intent- to- use application and that no new issues were found.

If the application is an intent- to- use application, the examiner may re- examine an application when the Statement of Use SOU is filed because there may be new issues involved with the specimen submitted, new issues of likelihood of confusion with marks that registered during the lag time or other issues.

When will my trademark register? This depends on if the application is currently a 1 a or a 1 b application and depends on the date when it was published for opposition. A 1 a trademark application that is not opposed should register about 11 weeks after publication. This means that an attorney has been changed not necessarily revoked. The same form is used to appoint or revoke but the record always indicates Revoke in either situation.

Pseudo marks have no legal significance and will not appear on the registration certificate. The pseudo- mark entries in the USPTO databases allow likelihood of confusion searches for a particular word or term to automatically retrieve phonetic equivalents or pictorial equivalents that have been appropriately pseudo- marked. A pseudo mark may be assigned to marks that include words, numbers, compound words, symbols, or acronyms that can have alternative spellings or meanings.

Pseudo- marks provide an additional search tool for locating marks that contain an intentionally- altered spelling of a normal English word or that contain the literal equivalent to a pictorial representation of the word in a design mark. They have no legal significance and will not appear on the registration certificate.

For example, if your mark contains the design of a flower, design search code This means that the identified trademark was abandoned in full usually because a response to the Office Action was not received within the 6- month response period or a Statement of Use SOU was not filed within the 6- month response period after a Notice of Allowance.

If the delay in filing a response or SOU was unintentional, you may file a petition to revive the application with a fee. If the abandonment of this application was due to USPTO error, you may file a request for reinstatement. Please note that a petition to revive or request for reinstatement must be received within two months from the mailing date of the notice of abandonment. A suspension letter suspends the action on an application. An application may be suspended for a variety of reasons [such as a likelihood of confusion with a pending application].

These include waiting for the disposition of a cited prior pending application to be determined or waiting for an assignment of ownership to be recorded. Applicants do not have to respond to suspension letters. This means that another 6 months has been approved in which to file a Statement of Use in an Intent to Use application. Applicant must continue to file extension requests every 6 months calculated from the date the Notice of Allowance was issued until a Statement of Use is filed.

Please note that a Statement of Use cannot be filed more than 36 months from the issuance date of the Notice of Allowance. An applicant can split an application into separate parts containing different International Classifications in the event that one classification has been held up by refusals or lack of a Statement of Use for all classifications or other reasons. This allows the individual parts to be prosecuted separately.

More child applications may later be created from the parent application. If the examining attorney assigned to an application raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication. The notice of publication provides the date of publication. Any party who believes it may be damaged by registration of the mark has thirty 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose.

If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process. What does "Notification of Notice of Publication" mean? This email notification indicates the future date of publication the date of the beginning of the opposition period , and allow a user to go to TSDR to download the notice. Then, on the actual date of publication, "Notice of Actual Publication" will appear in the TSDR and will be emailed to the correspondent of record.

This is a written confirmation of an amendment made to a trademark application. TMEP If so, the LIE will refer the amendment to allege use to the examining attorney for examination on the merits. With respect to the requirement that the amendment to allege use include a verification or declaration signed by the applicant, or a person properly authorized to sign on behalf of the applicant, that the mark is in use in commerce, the LIE will review the document only to determine whether it bears a signed verification stating that the mark is in use in commerce.

The examining attorney will determine whether the amendment to allege use was filed by the owner. If you have installed Anti- Spam filters or software on your email service, please ensure that legitimate emails from TEAS uspto. Please check that the entered email address does not contain any typographical errors. NOTE: Email originating from "uspto. On the publication date or shortly thereafter, applicants should review the information that appears in the TMOG for accuracy. What is a Post Publication Amendment and when can it be used?

A patentee, whether of the whole or any sectional interest therein, may, on payment of the fee required by law, make disclaimer give up all or part of the owner's rights to enforce claims of any complete claim , stating therein the extent of their interest in such patent.

Such disclaimers are required to be in writing and recorded in the USPTO, and are considered as part of the original patent to the extent of the interest actually possessed by the disclaimant and by those claiming under him. Any patentee or applicant may disclaim or dedicate to the public the entire term, or any terminal part of the term from a certain point in time through the projected end of the entire term , of the patent granted or to be granted.

There are two types of disclaimers: a statutory disclaimer and a terminal disclaimer. The purpose of a disclaimer is to permit the registration of a mark that is registrable as a whole but contains matter that would not be registrable standing alone, without creating a false impression of the extent of the registrant's right with respect to certain elements in the mark.

A document disclosing an invention, and signed by the inventor or inventors, that is forwarded to the USPTO only as evidence of the date of conception of the invention. The disclosure document may be forwarded to the USPTO by the inventor or by any one of the inventors when there are joint inventors , by the owner of the invention, or by the attorney or agent of the inventor s or owner.

A disclosure document is not the only type and not necessarily the best type of evidence of the date of conception of an invention. Notarized records or a conventional, witnessed, permanently bound, and page-numbered laboratory notebook may also serve as evidence of the date of conception of an invention. A Disclosure Document will be retained for two years , and then be destroyed unless it is referred to in a separate letter in a related patent application filed within those two years.

A Disclosure Document is not a patent application, and the date of its receipt in the USPTO will not become the effective filing date of any patent application subsequently filed. Ability of a designation to be a trademark that identifies and distinguishes a single source of goods or services.

Suggestive, arbitrary, and fanciful designations are inherently distinctive and immediately serve as trademarks. Designations such as descriptive terms and symbols are not distinctive, but can become trademarks by acquiring distinctiveness through extensive use and promotion by the trademark owner.

Trademarks must either be inherently distinctive or have acquired distinctiveness to be federally registered on the Principal Register. The essential objective inquiry is: "Does the accused product or process contain elements identical or equivalent to each claimed element of the patented invention? A domestic representative may be served process or notice of proceedings affecting the application, patent or trademark registration, or related rights.

Patent drawings must show every feature of the invention as specified in the claims. Omission of drawings may cause an application to be considered incomplete but are only required if drawings are necessary for the understanding of the subject matter sought to be patented. Helps describe the types of interactions that occur between the Federal Government and others. Purpose of a DRM is to establish a commonly understood classification for Federal data that will lead to the identification of duplicative data resources.

It lists the tags or structural labelling for each distinctive section of text, images, or other embedded file object examples: title, author, etc. Electronic Filing System for patent applications. E lectronic F unds T ransfer. The period of enforceability of a patent is the length of the term of the patent plus the six years under the statute of limitations for bringing an infringement action.

E lected O ffice - the national Office or intergovernmental organization of or acting for the Contracting State elected by the applicant under Chapter II of the Patent Cooperation Treaty.

E lectronic P atent A ssignment S ystem. E uropean P atent O ffice. E lectronic T rademark A ssignment S ystem. It allows the public to complete various trademark filings and transactions on-line.

No other reply or submission by a third party will be considered in ex parte reexamination. The trademark examining attorney assigned to the application will make the amendment after consultation with an applicant or the applicant's attorney. The examiner's amendment is merely a written confirmation of the agreement between the examining attorney and the applicant as to the amendment, and it is also a notice that the amendment will be made.

The applicant need not respond to the examiner's amendment unless the applicant wishes to make further changes to the application. Trademark registration is no longer active. The registrant failed to renew the trademark registration at the end of the registration period. A patent application may be expressly abandoned by filing a written declaration of abandonment identifying the application in the United States Patent and Trademark Office.

Express abandonment becomes effective when an appropriate official of the Office takes action thereon. Express abandonment of the application may not be recognized by the USPTO before the date of issue or publication unless it is actually received by appropriate officials in time to act.

An abandoned application, in accordance with 37 CFR 1. The filing date for Trademark documents is not the same as for patent documents. Such marks comprise words that are either unknown in the language e. F oreign A gricultural S ervice. F ederal A ccounting S tandards A dvisory B oard. F irst A ction S ystem for T rademarks. Fastener Quality Act 15 U.

Part An "Issue Notification" would be the next step in the processing of a patent and is mailed approximately 3 weeks prior to the issue date of the patent. F ederal F inancial M anagement I mprovement A ct. F ederal Identity C redentialing C ommittee.

Every piece of information in TESS is categorized as one of these types. It contains a complete record of proceedings in the USPTO from the filing of the initial patent application to the issued patent.

The file wrapper of a patent application that is maintained by the Office is the "official record. The legal basis for filing an application for registration of a mark. The Trademark Act sets out five filing bases, and an applicant must specify and meet the requirements of one or more bases before the mark will be approved for publication for opposition or registration on the Supplemental Register.

The requirements for the bases are set forth in Trademark Rule 2. If no basis is set forth in the original application for registration, the examining attorney will issue an Office action requiring the applicant to specify a basis and meet all requirements for the basis.

When an application is submitted via e-TEAS , the Office immediately issues a confirmation of filing via e-mail that includes the serial number and filing date, and a summary of all the data provided by applicant in the application. This serves as evidence of filing. A proper response to a final Office action is a compliance with the requirements or b appeal to the Trademark Trial and Appeal Board. A final Office action is intended to end examination of a trademark or service mark application.

If an applicant does not resolve all issues or timely file an appeal within six months from the issue date of the final Office action, the application will be abandoned. Applicant's reply under 37 CFR 1. Reply to a final rejection must comply with 37 CFR 1. If any claim stands allowed, the reply to a final rejection must comply with any requirements or objections as to form 37 CFR 1.

F ederal I nformation S ecurity M anagement A ct. F ederal M anagers' F inancial I ntegrity A ct. An individual or entity whose domicile is not located within the United States or its territories. Forms are provided as either official or unofficial optional formats to facilitate providing all information required to initiate desired procedures or respond to official procedural correspondence. Control numbers are assigned to identify each form and customers are usually instructed to locate forms by short form numbers rather than lengthy form titles.

For a list of fillable and printable PDF forms divided by major office process and sorted by form number please see Forms.

F ree T rade A greement of the A mericas. General Information Concerning Patents. In the context of service marks, a service 1 must be a real activity; 2 must be performed to the order of, or for the benefit of, someone other than the applicant; and 3 the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant's goods or the performance of another service. G overnment P erformance and R esults Act.

Groups are more properly referred to as Technology Centers , or TCs. Staffed by one supervisory patent examiner SPE and a number of patent examiners who determine patentability on applications for a patent. Group Art Units are currently identified by a four digit number, i. G eneral S ervices A dministration, an agency of the U. I nternational B ureau - the secretariat of the WIPO which, among other functions, centralizes information of various kinds relating to the protection of intellectual property.

I nitial D ata C apture Initial Data Capture IDC is the first phase of the publication process for a patent where the patent file is electronically captured. It takes approximately 6 weeks from the date that the allowed file is received for the completion of the Initial Data Capture of the application. The application is then sent to the File Maintenance Facility FMF for matching of the issue fee and any other correspondence. The application may stay in the FMF for approximately weeks.

However, if all requirements are not yet fulfilled the application will remain at the FMF until the requirements are met. Once all files are matched, the application will move to the FDC. I ntegrated D evelopment E nvironment. Please note that the terms in the class headings or short titles of the classes in the "International Classification of Classes of Goods and Services" are generally too broad and should not be used alone as an identification.

Also, an international class number alone is never an acceptable listing. For a listing of acceptable wording for goods and services. I nspector G eneral - 57 statutory OIGs were created by an act of Congress in to independently detect fraud or instances of waste, abuse or misuse of federal funds and identify operational deficiencies within each of the Departments. Please see the entry for " application " above for a list of the required elements. For patent applications filed under 35 U.

The IDS must include a list of all patents , publications , U. In ternational T rademark A ssociation. Creations of the mind - creative works or ideas embodied in a form that can be shared or can enable others to recreate, emulate, or manufacture them.

There are four ways to protect intellectual property - patents, trademarks, copyrights or trade secrets. Applicants who have not yet used in commerce that can be regulated by Congress the mark they wish to register may file a trademark application under this filing basis.

An "intent to use" application must include a sworn statement usually in the form of a declaration that applicants have a bona fide intention to use the mark in commerce. A properly worded declaration is included in the trademark application form for registration. The applicant or a person authorized to sign on behalf of the applicant must sign the declaration. Applicants who file based on "intent to use" must begin actual use of the mark in commerce and file an Allegation of Use before the USPTO will register the mark.

There is an additional filing fee for the Allegation of Use. Inter partes reexamination practice primarily differs from ex parte practice in that the third party requestor may file written comments addressing issues raised by the patent owner in a response to Office action.

The patent law of the United States of America requires that the applicant in a patent application must be the inventor. International Preliminary Examining Authority - either a national Office or an intergovernmental organization whose tasks include the establishment of examination reports on inventions which are the subject of international applications.

International Search Authority - either a national Office or an intergovernmental organization whose tasks include the establishment of documentary search reports on prior art with respect to inventions which are the subject of international applications. The issue date is the date that patent rights can be exercised.

See MPEP JPEG image files are encoded using a standard for file compression making the files smaller that preserves essential color and display information in a fairly photorealistic way, with smooth edges, shapes and color blends.

JPEG files are generally preferred for displaying still image photographs in digital form. The JPEG format is "lossy", meaning some information is lost when an image is compressed. This accounts for the "fuzziness" and patchy color areas what you may see when lower resolution JPEG images are enlarged to fill a space on the screen.

Detailed information on Standard ST. Legal Instruments Examiner - a position classification for USPTO employees charged with docketing cases and other administrative processing that support the workflow and examination of applications. After an application is filed, the assigned examining attorney will search the USPTO records to determine if such a conflict exists between the mark in the application and another mark that is registered or pending before the USPTO.

The USPTO will not conduct any preliminary searches for conflicting marks before an applicant files an application and cannot provide legal advice on whether a particular mark can be registered. If a conflict exists between your mark and a registered mark, the examining attorney will refuse registration on the ground of likelihood of confusion.

If a conflict exists between your mark and a mark in a pending application that was filed before your application, the examining attorney will notify you of the potential conflict and possibly suspend action on your application. If the earlier-filed application registers, the Examining Attorney will refuse registration of your mark on the ground of likelihood of confusion.

The "Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks" Madrid Protocol is an international treaty that allows a trademark owner to seek registration in any of the countries that have joined the Madrid Protocol by filing a single application, called an "international application. When materials recited in a claim are so related as to constitute claiming the members of the claimed group in the alternative, such as "selected from the group consisting of A, B and C.

The legal standard for evaluating how much a trademark owner can modify, or "amend," their trademark, both during examination of the application and after registration. If you want to amend your trademark at any point after you apply, the amended version must create the impression of being essentially the same as the trademark in your application or your registration.

Otherwise, the amendment is a "material alteration" of the mark and we deny your request to amend. At that point, if you still want to change your trademark, you must file a new application. Section e 1 , TMEP et seq for refusing registration of trademarks and service marks because the proposed mark merely describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services.

The degree of descriptiveness can be determined only by considering it in relation to the specific goods or services. At one extreme are marks that are completely arbitrary or fanciful. Next on the continuum are suggestive marks, followed by merely descriptive matter. Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks.

The major reasons for not protecting descriptive marks are: 1 to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and 2 to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.

See also Descriptive Mark. Manual of Patent Examining Procedure. Acceptable multiple dependent claims shall refer to preceding claims using the terms "or, any one of, one of, any of, either. Such an application is filed under 35 U. An examining attorney will send a non-final Office action after he or she reviews the application for the first time.

Applicants must respond to all issues in a non-final Office action within six months from the date it is sent to avoid abandonment of the application. An examining attorney will issue a non-final Office action after reviewing the application for the first time. If a new issue arises after the applicant responds to the first non-final Office action, the examining attorney will issue another non-final Office action that sets forth the new issue s and continues any that remain outstanding.

Applicants must respond to non-final Office action letters within 6 months from the date they are issued to avoid abandonment of the application. On taking up an application for examination or a patent in a reexamination proceeding, the examiner is required to make a thorough study of the application and of the available prior art relating to the subject matter of the claimed invention.

This examination must be complete with respect to:. If the application was abandoned unintentionally or due to Office error, the applicant has a deadline of two months from the issue date of the notice of abandonment to file either 1 a petition to revive the application or 2 a request to reinstate the application. NOA - a written notification from the USPTO that a specific mark has survived the opposition period following publication in the Official Gazette , and has consequently been allowed for registration.

It does not mean that the mark has registered yet. Receiving a notice of allowance is another step on the way to registration. Notices of allowance are only issued for applications that have been filed based on "intent to use".

The notice of allowance is important because the issue date of the Notice of Allowance establishes the due date for filing a statement of use. After receiving the Notice of Allowance, the applicant must file a statement of use or a request for an extension of time to file a statement of use within 6 months from the issue date of the notice.

If the applicant fails to timely file a statement of use or a request for an extension of time to file a statement of use, the application will be abandoned. NOA , a notification to the applicant that they are entitled to a patent under the law and requesting payment of a specified issue fee and possibly a publication fee as well within three months non-extendable from the mailing date of the notice of allowance.

If the examining attorney assigned to an application raises no objections to registration, or if the applicant overcomes all objections, the examining attorney will approve the mark for publication. The notice of publication provides the date of publication.

Any party who believes it may be damaged by registration of the mark has thirty 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose. If no opposition is filed or if the opposition is unsuccessful, the application enters the next stage of the registration process.

A list of relevant references cited by a patent examiner in an Office action. The following are some examples of such references: domestic patents, domestic patent application publications, foreign patents or patent publications, publications, electronic documents, and affidavits.

N on P atent L iterature -- documents and publications that are not patents or published patent applications but are cited as references for being relevant in a patent prosecution. For example, a magazine article or doctoral thesis relevant to a claimed invention might be cited as non-patent literature. Typically, references cited in an application are grouped into: domestic patents and patent application publications; foreign patents; and non-patent literature.

O ffice A ction C orrespondence S ystem - used by patent examiners to generate office actions. O riginating B eneficiary I nformation - the informational portion of a wire electronic transfer of funds. It is a necessary and important element, providing the USPTO information as to why the "wire" was sent, by whom, and how to apply the payment. O mnibus B udget and R econciliation A ct. Office of Enrollment and Discipline. There are several types of Office actions: examiner's amendments, priority actions, non-final Office actions, final Office actions, and suspension inquiry letters.

For applicants who file for an extension of protection of an international registration to the United States under Trademark Act Section 66 a , the country of the office of origin is where the applicant is a national, domiciliary, or has a real and effective industrial or commercial establishment.

The five most recent issues are available online. Office of General Counsel. Office of Human Resources. Office of Patent Legal Administration. Office of Personnel Management - an agency of the U. Any person who believes that he or she will be damaged by the registration of a mark may file an opposition, but the opposition may only be filed in response to the publication of the mark in the Official Gazette. An original application may be a first filing or a continuing application.

Office of Technical Plans and Policy. Public Advisory Committee. The term "parent" is applied to an earlier application of the inventor disclosing a given invention.

A library designated by the USPTO to receive copies of patents, CD-ROMs containing registered and pending marks, and patent and trademark materials that are made available to the public for free. The term "PDTL" is no longer used. A patent family is the same invention disclosed by a common inventor s and patented in more than one country. A phrase that often appears on manufactured items.

It means that someone has applied for a patent on an invention that is contained in the manufactured item. It serves as a warning that a patent may issue that would cover the item and that copiers should be careful because they might infringe if the patent issues.

Once the patent issues, the patent owner will stop using the phrase "patent pending" and start using a phrase such as "covered by U. Private Branch Exchange - a telephony term describing a private telephone network used within an enterprise. Users of the PBX share a certain number of outside lines for making external telephone calls. Patent Cooperation Treaty more. Portable Document Format - a common proprietary document format from Adobe used for documents having mixtures of text and images that preserves the look and feel of a printed page and permits the user to zoom and magnify the pages when viewing; not "archival" because of its proprietary nature.

Public Key Infrastructure - a system of administrative procedures and methods, combined with secure information technologies, that is used to manage secure electronic commerce. Provides for a means of securely identifying participants in electronic transactions as well as secure transmission and handling of data. Power of Attorney - formal assignment to another of the right to legally act on your behalf. Patent Public Advisory Committee.

As stated under the Trade Marks Act, , the registrar shall classify the goods and services in accordance with the Nice Classification. The registration of an application with class headings, as provided in the Nice Classification, is prohibited. However, once the trademark proceeds to registration, the trademark is liable to be cancelled on the grounds of non-use.

A third party may file for a cancellation action on the grounds that a trademark has not been used in India for a continuous period of five years up to the date three months immediately preceding filing of the cancellation application.

For instance, a trademark is registered on 1 January on a proposed to be used basis. By March , the trademark is liable to be cancelled on the grounds of non-use by a third party.

Once a trademark reaches the examination stage, objections may be raised on two grounds: absolute and relative. Under Section 11 of the Trade Marks Act, , a trademark application is examined on relative grounds. A trademark may be refused registration if it is:.

Besides relative grounds, a trademark application may be refused on absolute grounds for refusal, as follows:. Apart from absolute and relative grounds for refusal, including confusion with an earlier trademark, descriptiveness or genericness, a trademark may not be registered under Section 9 2 of the Trade Marks Act, , in the following circumstances:. Judicial precedent has held that a descriptive word that lacks inherent distinctiveness may be refused registration under the Trade Marks Act, However, considering that a descriptive trademark proceeds to registration on the basis of acquired distinctiveness, there is no separate or supplemental register for descriptive marks.

According to Section 6 of the Trade Marks Act, , only a single record - the Trademarks Register - is to be kept at the head office of the Trade Marks Registry, containing details of all registered trademarks, including:.

The Trade Marks Act, provides that a third party may object to the registration of a trademark once the trademark has been advertised in the Trademarks Journal.

Trademarks may be filed and registered on the basis of intent to use i. Therefore, a trademark need not be used commercially prior to registration. However, registered trademarks may be cancelled by third parties if they have not been put to commercial use in India for a continuous period of five 5 years up to the date three 3 months immediately preceding filing of the cancellation application.

The first office action in a trademark application is usually issued in the first two 2 months from the date of filing of the application. It takes approximately four 4 to six 6 months for a trademark application to proceed from filing to publication, if no serious objections are raised. Under Section 91 of the Trade Marks Act, , any person aggrieved by an order or decision of the registrar of trademarks may file an appeal with IPAB within three 3 months of receipt of the decision.

The format must be followed clearly, stating the grounds for filing, and the appeal must be verified in the prescribed manner. It must be accompanied by a copy of the order appealed against and the requisite fees.

An extension is also available for filing an appeal by way of a condonation of delay petition, along with the prescribed official fees. However, a condonation of appeal petition must contain genuine reasons for delay - for instance, delay on account of the appellant being based out of India or on account of retrieving relevant documentation to be annexed to the appeal.

Once an application has been filed, the deputy registrar of IPAB will scrutinise the application and serve a copy on the respondent. After receipt of the application, the respondent may file a counterstatement in duplicate. The matter is heard by IPAB on the date assigned.

If one of the parties does not appear, the case may be decided on the merits, decided ex parte or dismissed. If a decision is made ex parte or the application is dismissed, IPAB may restore or set aside the decision based on a petition filed within thirty 30 days of the date of the order or on such terms that IPAB sees fit. The Trade Marks Act, prescribes that any third party can oppose the registration of a trademark, as long as it has sufficient cause to believe that the existence of the trademark application would lead to confusion or deception among the relevant trade public.

Section 21 of the Trade Marks Act, states that any third party may oppose the registration of a trademark in the prescribed manner and on payment of the prescribed fee as laid down under law. The third party need not necessarily be the registered owner of a trademark.

As long as the third party has sufficient cause to believe that the existence of the trademark in question would lead to confusion among the relevant trade public, it may proceed to oppose the trademark. A third party may oppose a trademark application via a notice of opposition, which must be filed within four months of the date of publication of the trademark in the Trademarks Journal.

This period is not extendable under any circumstance. An opposition hearing board, comprised of hearing officers, is constituted by the Office of the Controller General of Patents, Designs and Trade Marks. A hearing officer conducts the opposition hearings at the respective office of the Trademarks Registry.

The decision of the registrar in the opposition proceedings can be challenged by filing an appeal before IPAB within three months of the date of receipt of the decision. Section 27 2 of the Trade Marks Act, provides a remedy for the unauthorised use of an unregistered trademark. Passing off is a common law tort which is most commonly used to protect goodwill and reputation that is attached to unregistered trademarks. Passing off is based on the principle that a person may not pass off its goods or services as those of another person.

In order for a passing off action to succeed, the owner of an unregistered trademark must be able to establish that its unregistered trademark has accrued goodwill or reputation in connection with the products, services or business with which it is used.

The owner should also be able to establish that there is deceptive similarity between its unregistered trademark and the trademark in question, which is bound to lead to confusion among the general public. A registered trademark confers a bundle of exclusive rights upon the registered owner under Section 28 of the Trade Marks Act, The owner of a registered trademark can prevent unauthorised use of the trademark in relation to the products or services for which it is registered.

Section 31 allows registration to be treated as prima facie evidence of validity. Section 28 also confers certain benefits on registration, including the following:. Various precedents have held that a descriptive word which lacks inherent distinctiveness may be refused registration under the Trade Marks Act, Accordingly, considering that a descriptive mark proceeds to registration based on acquired distinctiveness, there is no separate register for descriptive marks.

According to Section 6 of the Trade Marks Act, , only a single record — the Trademarks Register — shall be kept at the head office of the Trade Marks Registry, in which the details of all registered trademarks are recorded, including:. Trademark infringement is a violation of the exclusive rights attached to a registered trademark without the authorisation of the trademark owner or any licensees.

Infringement may occur when one party, the infringer, uses a trademark which is identical or confusingly similar to a trademark owned by another party, in relation to products or services which are identical or similar to those which the registration covers. The owner of a trademark may commence civil legal proceedings against a party which infringes its registered trademark.

Sections 29 and 30 of the Trade Marks Act, deal with the infringement action as a remedy against unlawful and unauthorised use of a registered trademark. As per Section 29 4 of the Trade Marks Act, , trademark infringement in the form of dilution will occur only when a person uses a trademark that:.

The doctrine of dilution gives further powers to the owner of a well-known trademark. Section 29 4 offers a remedy independent of the infringement action, allowing the owner of a well-known registered trademark to claim for civil, criminal and administrative remedies. The doctrine of dilution works at the discretion of the courts and according to the tests set by the courts.

For instance, the court will consider the overall structure and the visual, phonetic and conceptual similarity of the marks, the nature of the community, the class of purchasers, the mode of purchase and other relevant circumstances. If the court finds a risk of dilution, the mark will not be allowed in the market, so as to avoid confusion. Besides infringement and dilution, courts in India also recognise passing off as a remedy under common law. Passing off is a tort actionable under common law and is mainly used to protect the goodwill attached to unregistered trademarks.

Violation of the exclusive rights granted to a registered owner, under the Trade Marks Act, , to use its trademark in relation to the goods or services for which the mark is registered constitutes trademark infringement. The procedure for trademark infringement follows the same stages as any other civil commercial litigation, which broadly includes the following:. Any party which is aggrieved by the decision of the court can challenge that decision before a higher appellate court.