The Trade and Merchandise Marks Act only allows for registration of trademarks used in connection with goods. Service marks or trade marks used in relation to services alone, such as names of travel agencies, finance companies, airlines etc. are not registerable under the Act and are not protected. As a result there is no remedy available for imitation. The best protection available for service marks in India is by a remedy against "passing off".
The Trade Marks Act 1999 was passed by the Parliament to consolidate the law relating to trademarks, to provide for registration and better protection of trade marks for goods and services and for the prevention of the use of fraudulent marks. The 1999 Act has not been notified yet and therefore is not in force. Under this Act, all trademarks have to be registered with respect to one or more of 34 classes of goods and 6 classes of services. Broad areas being advertising, business management and administration, insurance, monetary and real estate, education, entertainment, legal etc.
A service mark is not separately defined under the 1999 Act, but is included in the definition of a trademark. A trademark as defined under the 1999 Act includes a mark capable of being represented graphically and which is capable of distinguishing the services of one person from those of other, and a mark that is used for the purpose of indicating a connection between the services and the person who has the right to use that mark.
Under the 1999 Act, a mark could be a name, signature, word, letter, numeral, brand, heading, label, device, ticket or any combination of these. The use of any of these in connection with a service, where the mark can distinguish the service of one person from another or indicates a connection between the service and the person who has the right to use the mark, is brought under the definition of a trademark and can be registered.
At present, unless a mark used in relation to services has built up a substantial reputation and goodwill it is difficult to prevent imitations of the mark. But once the Trade Marks Act, 1999 is notified, infringement of trademarks registered in relation to services can be prevented and relief obtained under the Act.
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