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The recognition of service marks as protectable marks-Indian law and US experience

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Introduction

A service mark is any sign, mark, symbol, phrase, or design, or a mixture of two or more of these, that identifies a company’s or other entity’s services and distinguishes them from those of others. Service Marks are distinctive and distinguishing marks used exclusively by service providers and all firms that provide a variety of services to the general public in order to do business in their respective industries conspicuously.Registration of marks was not extended to services in India under the former Trade and Merchandise Marks Act 1958, and trademarks were only used in connection with commodities. The Trade Marks Act of 1999 also allowed for the registration of service marks.These service marks are divided into trademark classes that range from Class 35 to Class 45.

It’s difficult to tell the difference between a service mark and a trademark when the former is bundled with the latter, as many service providers may also have branded items.

Because the norm for registering a domain name is first-come-first-served, and most of the time, registrations of well-known marks are owned by mala fide users, who don’t even intend to use the mark nor are they the company’s providers, but register the mark in order to eventually sell the domain name to the genuine owner for a large sum, internet service providing organizations face significant challenges in registering their domain names.

What is the role of the USPTO?

The USPTO demands that the service mark be in use in commerce, which means that it must be used or shown in the selling or advertising of the services. It differs from a trademark in that the use of the mark on goods or packaging, displays associated with the goods, tags or labels affixed to the goods, and so on would indicate commercial use.

As a result, specimens of advertisements or sales using the mark must be submitted to the USPTO in order to register a service mark. In addition, the specimen should show a direct link between the mark and the services. McDonald’s and Starbucks are two companies that employ both trademarks and service marks.

Service mark registration in India and the United States

An claimant willing to engage in registering a service mark should locate his or her service-providing company and complete Form TM-1, which includes all necessary documents, such as a soft copy of the service mark in jpeg format, registration fee, and information about the applicant’s company and its business,information about the applicant’s company and business, information about the Trade Marks Agent/Lawyer, Power of Attorney, information about the service mark, including the class and subclasses for which the company intends to provide services and register its service mark.

The Trademark Registry evaluates the substance of the service marks, verifies the submitted documents, and issues the application in the Indian Trade Marks Journal for a three-month period after receiving the application. If no objections are discovered, the service mark is approved for final registration. The Trade Marks Registrar, on the other hand, could object to the application if it finds any grounds for rejection under Section 9 or 11 of the Act, to which it expects a response, and the service mark could be approved for registration after the reply and evidence are satisfied.Third parties holding similar or identical service marks and/or similar or identical classes of services must file objections within four months of the service mark being published in the Trade Mark Journal. The Registrar sends a copy of the notice to the applicant, who has two months to respond after receiving the copy of the notice of opposition.

The service-providing company can use the ® – symbol to indicate the registration of the company’s service mark after it has been registered with the Trade Marks Registry. A service mark, like a trademark, enjoys 10 years of recognition and protection from the date of registration.If the service mark is renewed within the ten-year period of protection it currently has, it can be renewed for another ten years. For trademark renewal, the entity/body corporate must file Form TM-12 together with the renewal cost.

The Lanham Act, as well as state laws and restrictions governing registration and infringement, protect service marks that are comparable to trademarks. A service performed for the benefit of a third party qualifies as “services” for the purposes of the Lanham Act’s service mark registration.

The United States Patent and Trademark Office allows service marks to be registered (USPTO). The examiner examines the service mark application and may refuse registration if it is likely to cause confusion with a registered mark or application, is descriptive in nature and has not acquired any slightly different meaning, is a surname, or is unethical or disgraceful.It is important to remember that an organization or individual may seek service mark registration in a certain state, but such registration will not guarantee protection beyond the state’s borders.To obtain countrywide protection, the service mark must be registered with the USPTO, which creates a public record of the mark and permits the owner to sue in federal court for trademark infringement.

Conclusion

The Trade Marks and Merchandise Act of 1958 in India did not allow for the registration of service marks. Marks for services were only registered under the Nice Classification of Goods and Services, for classes 35 to 45, after the repeal of the Trade Marks and Merchandise Act and the enforcement of the Trade Marks Act 1999.Unlike a trademark, a service mark is used for advertising the body corporate’s services, whereas a trademark is used on packaging and products. For its company, a body corporate might have both a trademark and a service mark.Unregistered service marks and applications in the process of being registered may use the symbol SM, whereas registered service marks must use the ® – the registered symbol.In India and the United States of America, the procedure for registering a service mark is similar to that of registering a trademark. Sound marks, such as MGM’s lion roar, can also be registered as service marks. Otherwise, because a service mark is a subtype of a trademark, there isn’t much literature available, even for service markings.

Contributed by:– Nidhi Jha, Legal intern at LLL

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