Saturday, May 5, 2012

Registration Of Collective Marks Under Trademark Law Of India

In this article Perry4Law and Perry4Law Techno Legal Base (PTLB) would discuss the procedure for the registration of collective marks under the Indian trademark law.

The Trade Marls Act 1999 has made special provisions for the registration of collective marks.  “Collective mark” is defined to mean a trade mark distinguishing the goods or services of members of an association of persons (not being a partnership within the meaning of Indian Partnership Act, 1932) which is the proprietor of the mark from those of others”.

Thus, to be registrable, the collective mark must be capable of being represented graphically and meet other requirements as are applicable to registration of trade marks in India in general.

While examining such application, the Examiner must keep in mind that:

(1) The collective mark is owned by an association of persons not being a partnership.

(2) The collective marks belong to a group and its use thereof is reserved for members of the group.

(3) The association may not use itself the collective mark but it ensures compliance of certain quality standards by its members who may use the collective mark.

(4) The primary function of a collective mark is to indicate a trade connection with the association or organisation who is the proprietor of the mark.

An application for registration as collective mark should be made on form TM-3. Wherever appropriate form TM-66, 64 or TM-67 will be used. The draft regulations governing the use of the collective mark is to be submitted with the application on form TM-49. It shall include –

(a) The name and object of association.

(b) The persons authorised to use the mark and the nature of control the applicant would exercise over the use.

(c) The condition of membership of association.

(d) Conditions of use of the mark.

(e) Sanctions against misuse.

(f) Procedure for dealing with appeals against the use of collective marks.

The Rules 127 to 133 of the Trade Marks Rules, 2002 make special provision in this context. It is expressly provided that provisions of the Trade Marks Act will apply to collective marks subject to the special provisions contained in Chapter 8. Accordingly, the examination of an application for registration of collective mark will also be subject to the same standards as applicable to registration of trade mark in general subject to the additional requirements to scrutinise the draft regulations governing use of the collective mark and statement of case filed under rule 129.

In the case of acceptance of the application subject to conditions or limitations the provisions of rule 38(4), 39, 40, 41 and 42 will be applicable.