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ROLE OF SERVICE MARKS in SERVICE PROVIDERS
  • March 2015
By Adv. Bhagyesh K.P.
Ideas and knowledge formed the principle part of trade during the twenty first century. The value of a service in travel and tourism sector lies in the quality and accessibility that goes behind its successful implementation. The need to protect the brands and trade names has attained paramount importance due to globalization and rapid industrialization in India.  A service mark helps business concerns to maintain a clear identity in the market and further their economic interests. It is for this very reason that the travel and tourism industry, particularly those having multi - national operations, need to prevent others from using their trademarks and logos and also use the right to negotiate payment in return for others using them. These are referred to as ‘intellectual property rights’ in the present day parlance.
In the present scenario of aggressive competition, globalization and liberalization, every service provider has certain ideas and business tactics. Especially in hotel industry in this day and age,  various resorts are coming up with invented names and logos. These unique characteristic service marks, which identify and distinguish services from those of others, need protection. But how can you convey that to today’s sophisticated consumers and prospects in present saturated market place? The only way is to add a service mark to your service under the Trade Marks Act.
India has amended its intellectual property laws significantly over the last few years to comply with W.T.O. regulations. The Trade Marks Act, 1999 replaces the Trade and Merchandise Marks Act, 1958. The new trade mark legislation effective from September 15, 2003, complies with Trade Related  Intellectual Property Rights (TRIPS) and contains important provisions that have been widely welcomed by the service industry because it gives the right to register service marks.
PROTECTING SERVICE MARKS.
Under the old Act, there was no provision for registering service marks. Service providers had no option but to rely on registrations in the relevant goods Class. This did not provide adequate protection and in case of misuse brand owners turned to passing off action. But as per the new Act, the applicants can register their marks under service Classes 35 to 45.
SALIENT FEATURES OF THE NEW ACT.
Service marks are now eligible for registration under the Act. Applications can be filed with respect to 11 Classes of services.
A single application can be filed with respect to multiple Classes of goods/services.
The term of registration has been increased from 7 years to 10 years.
Each period of renewal of the registration is now for 10-year period.
Concept of ‘well-known trade marks’ have been introduced. The proprietor of a ‘well-known trade mark’ can prevent the registration by others of identical or similar marks even for goods and services that are different from the ones of the proprietor. 
Unregistered trademarks can now be assigned without the goodwill of the business concerned.
A suit for infringement of a trade/service mark can be filed in the court within whose jurisdiction the plaintiff resides or carries on business. This is of great advantage and convenience to the plaintiff.
The Intellectual Property Appellate Board has been set up in Chennai and all appeals from the Registry will now will lie with this Board, as opposed to the High Court as was the case under the old Act. IPAB will soon open a branch office in Delhi.
In addition to the above legislative changes, the Government of India has taken several measures to streamline and strengthen the intellectual Property administration system in the country. New internationally agreed trade rules for intellectual property rights were seen as a way to introduce more order and predictability, and for disputes to be settled more systematically. The TRIPS agreement ensured to reduce distortions and impediments to international trade or service, and taking into account the need to promote effective and adequate protection of intellectual property rights, and to ensure that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade.
As per new Act, the ‘service’ means service of any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as travel, tourism, transport, banking, communication, education, financing, insurance, chit funds, real estates, storage, material treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising. Any person/firm provide such services can now apply for the protection of his/their marks as service marks.
THE PROCESS OF REGISTRATION.
The application for service mark registration must contain a clear reproduction of the sign/mark, including any colors, forms, or three-dimensional features, and has to be filed with the appropriate office of the Trade Mark Registry. The sign/mark must fulfill certain conditions in order to be protected as a trademark, or as another type of mark, and must indicate the Class of services to which it would apply. The mark should be distinctive and not be in the prohibited category. A mark shall not be registered as a service mark if it comprises or contains of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India or it comprises or contains scandalous or obscene matter. The Trade Marks Act has laid down absolute and relative grounds of refusal of trade mark registration.
PERSON WHO CAN APPLY FOR REGISTRATION.
Any person claiming to be proprietor of a mark used or proposed to be used by that person can file an application for registration. The application may be made in the name of individual, partner of a firm, a company, any government department, and or even in the name of joint applicants. The service provider can apply for registration of the word mark or as a logo mark along with certain artistic matter or both. The advantage of applying for a word mark is that if the Registry grants registration of the mark the applicant gets exclusive rights to use/represent mark in any manner they wish and they would also be in a position to stop others from using any mark identical or deceptively similar to their mark represented in any manner whatsoever.
After filing the application, the Registry would allot a number for application. This would also be the registration number if the mark is registered and the registration will have retrospective effect from the date of application. The entire process from filing of application until getting the registration certificate normally takes about 2-3 years depending upon the nature of objections and oppositions.
REDEFINING INFRINGEMENT AND STREAMLINING ENFORCEMENT.
The scope of infringement has been widened. One of the important changes under the new Act has been to make it clear that use of a registered trade mark as part of a company name or business name will constitute trade mark infringement. This is quite useful for IP owners since, with the growth of the service industry in the last 10 years, there has been a growing tendency for infringers to adopt well-known marks as part of their trade name.
The new Act will provide much greater certainty. The level of penalties for criminal acts of infringement has been increased considerably. Under the old Act, trade mark offences were classified as non-cognizable. The new Act has made the offences cognizable and non-bailable and also the police have the powers to arrest a counterfeiter during raids on his premises, a move widely welcomed by IP holders.
Intellectual property is rapidly becoming one of the most valuable assets of an entity and it is important to clearly identify it. It may be a name, logo or a design. Failure to protect it, or to do so early enough, may put your Intellectual property right at risk. Identify and value your service marks and ensure they are itemized in your business plan.
(The author is an advocate and IPR Attorney with Lawyers’ Arcade, Corporate and Trademark Attorneys, Kochi and Bengaluru. He can be reached at indianiplaw@gmail.com)
 
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