Trademark
A trademark can be any word, name, symbol, or device capable of distinguish the goods or services of one person from those of others, and it may include shape of goods, their packaging and even combination of colours.
Trademark includes a brand name, a house mark, and even a service mark. It may be an insignia, label, name, sign, logo, device, signature, numerals, packaging, shape of goods, colour combination etc.
In other words, it is a visual symbol used in related to any goods or services that indicate some kind of trade connection between the goods and services and the person using the mark. It usually identifies the product and acknowledges its unchanged quality and helps to advertise the products which help customer to identify. This gives the consumer satisfactory assurance of the quality of the article he is buying.
The duration of trademark is not limited and they may even last forever, subject to renewals at proper intervals.
Our Trademark practice includes but not limited to
Trade name / mark search
Filing new Trademark applications and prosecution till registration
Caution Notices
Opposition
Trademark licensing and assignment
Trade mark infringement and litigation (if applicable)
A “trademark” is a word, name or symbol which is used to identify particular products or services offer by a particular manufacturer or from a particular source. The trademark distinguishes and authenticates a product of a particular manufacturer from similar products offered by others. The owner of a Trademark has the right to prevent others from using the same or similar trademark on their products.
A “Service mark” is a form of trademark that is used in the sale or advertising of services. The service mark distinguishes the services offered by one business from similar services offered by other businesses.
Trademark in India
The Government of India has notified the Trade Marks Act 1999 on 15 September 2003, thereby repealing the old Trade and Merchandise Marks Act 1958. The new Act brought into force statutory framework with respect to trademarks in India in line with emerging worldwide trends as well as with India’s obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
What is Trademark?
A TRADEMARK is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs is used in the course of trade which identifies and distinguishes the source of the goods or services of one enterprise from those of others. A SERVICE MARK is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services. A trademark is different from a “Copyright” or a “Patent” or “Geographical Indication”.
Almost all jurisdictions including India employ a classification system in which goods and services have been grouped into classes for registration. Most countries follow the same classification system, namely the International Classification of Goods and Services, which consists of 34 classes of goods and 8 classes of services.
The registration of a trademark in India confers on the registered proprietor of the trademark the exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. While registration of a trademark is not compulsory it offers better legal protection for action for infringement.
Who can apply?
Any person can apply for registration of a trademark to the Indian Trademark Registry under whose jurisdiction the principal place of the business of the applicant in India falls. In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company’s favor.
Before making an application for registration it is prudent to make an inspection of the already registered trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.
Trademark Procedure
An application for trademark may be made on Form TM-1 with prescribed fee of Rs. 2500/- at one of the five office of the Trade Marks Registry located at Mumbai, Delhi, Kolkata, Chennai and Ahmedabad depending on the place where the applicant resides or has his principle place of business.
The application is examined to ascertain whether it is distinctive and does not conflict with existing registered or pending trademarks and examination report issued Once the applicant has overcome all objections raised by the registrar, the application proceeds to publication in the Indian Trade Marks Journal, with an endorsement stating either that it has been accepted or that it is being published before acceptance.
After publication in the Trade Marks Journal, anyone has three months (which may be extended by up to a further month at the registrar’s discretion) to file a notice of opposition to registration.
The question of acceptance or refusal of the trademark application will be considered only once the opposition proceedings have been completed. The onus is on the applicant to establish that it is entitled to registration of the trademark as applied for.
If an application has been published as accepted and is not opposed, or if any oppositions are decided in favour of the applicant, the mark will proceed to registration. If the application has been published before acceptance and is not opposed during the opposition period, the registrar will then consider afresh whether to accept the application; if he decides in the affirmative, the mark will be registered.
The fact of registration must be published in the Trade Marks Journal. Once an application has been accepted for registration and any opposition have been decided in favour of the applicant, certificate of registration is issued.
If the applicant’s response does not overcome all objections, the Registrar will issue a final refusal. The applicant may then appeal to the Intellectual Property Appellate Board, an administrative tribunal.
Opposition or Refusal or Cancellation of Trademark
A common ground for refusal is likelihood of confusion between the applicant’s mark with registered mark or pending prior mark. Marks, which are merely descriptive in relation to the applicant’s goods or services, or a feature of the goods or services, may also be refused registration.
Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well.
Trademark Registration
The term of a trademark registration is for a period of ten years. The renewal is possible for further period of 10 years each. Unlike patents, copyrights or industrial design trademark rights can last indefinitely if the owner continues to use the mark. However, if a registered trademark is not renewed, it is liable to be removed from the register.
Anyone who claims rights in a mark can use the TM (trademark) or SM (service mark) designation with the mark to alert the public of the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, (R), may only be used when the mark is registered.
Two types of remedies are available in India to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party. These remedies are: – ‘an action for infringement’ in case of a registered trademark and ‘an action for passing off’ in the case of an unregistered trademark.
However, the registration cannot upstage a prior consistent user of trademark in India, for the rule followed is ‘priority in adoption prevails over priority in registration`.
Rules for Trademark Holder
The proprietor should use and renew the trademark regularly and in time. If the Trademark is misused by others he should file a suit for infringement and passing off and also take criminal action.
The proprietor should keep a watch in respect of trademarks published in the Trademarks Journal and institute opposition proceedings if identical or deceptively similar trademarks are advertised. He should initiate rectification proceedings if an identical or deceptively similar trademark is registered.
Trademark rights are granted on a country-by-country basis. An Indian registration provides protection only in India and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws.
There is no system as yet wherein a single trademark application is sufficient to protect the trademark right internationally. However, Paris convention provides certain privileges to member countries in trademark registration. A party that files their first trademark application in a member state of the Convention, such as India, can within six months of that filing date file applications in other member countries claiming the priority of the first application. If such a trademark is accepted for registration it will be deemed to have registered from the same date on which the application is made in the home country.
Almost all countries have trademark offices in which applications may be filed. Therefore, when contemplating trademark protection in various countries, it is most helpful to start with a list of countries where registered trademark protection is available. Deciding where to register a trademark involves various considerations. Countries where a trademark is currently in use, but prior use of trademark is not recognized, should be the first to be considered for seeking registered protection. If commencing use shortly or expanding use to other countries within a few years, then such countries should also be included. The last group of countries should be those have a history of unauthorized registration of other’s trademarks.
Trademark Classification in India
At present the 9th edition of the Nice Classification system is being followed in India for trademark applications. Therefore the trademark classes available in India are classes 1 to 45. Classes 1 to 34 are in respect of goods and classes 35 to 45 are in respect of services.
The Trade Mark Rules, 2002 were published in exercise of the powers conferred in Section 157 (2) (1) of the Act, 1999 and Section 22 and 24 of the General Clauses act, 1897 and the Rules came into effect from September 15, 2003. The Trade Mark Rules, 2002 have been amended and Trade Mark (Amended) Rules, 2010 have come into force with effect from May 20, 2010. The major change is amendment in Fourth Schedule of the Trade Mark Rules i.e. adoption of all 45 international classes. Earlier international classes 43, 44 and 45 were merged in class 42 in India, but from May 20, 2010 separate application has to be filed for services covered under International class 43, 44, 45.
Trademark applications which fall under classes 43 to 45 but were filed in class 42 prior to this amendment can be reclassified into their correct class.
Detailed description of Goods
Class 01 : Chemicals
Class 02 : Paints, Coatings & Pigments
Class 03 : Cleaning Products, Bleaching & Abrasives, Cosmetics
Class 04 : Fuels, Industrial Oils and Greases, Illuminates
Class 05 : Pharmaceutical, Veterinary Products, Dietetic
Class 06 : Metals, metal castings, Locks, Safes, Hardware
Class 07 : Machines and Machine Tools, Parts
Class 08 : Hand Tools and implements, Cutlery
Class 09 : Computers, Software, Electronic instruments, & Scientific appliances
Class 10 : Medical, Dental Instruments and Apparatus
Class 11 : Appliances, Lighting, Heating, Sanitary Installations
Class 12 : Vehicles
Class 13 : Firearms, Explosives and Projectiles
Class 14 : Precious Metal ware, Jewellery
Class 15 – Musical Instruments and supplies
Class 16 : Paper, Items made of Paper, Stationary items
Class 17 : Rubber, Asbestos, Plastic Items
Class 18 : Leather and Substitute Goods
Class 19 : Construction Materials (building – non metallic)
Class 20 : Furniture, Mirrors,
Class 21 : Crockery, Containers, Utensils, Brushes, Cleaning Implements
Class 22 : Cordage, Ropes, Nets, Awnings, Sacks, Padding
Class 23 : Yarns, Threads
Class 24 : Fabrics, Blankets, Covers, Textile
Class 25 : Clothing, Footwear and Headgear
Class 26 : Sewing Notions, Fancy Goods, Lace and Embroidery
Class 27 : Carpets, Linoleum, Wall and Floor Coverings (non textile)
Class 28 : Games, Toys, Sports Equipment
Class 29 : Foods – Dairy, Meat, Fish, Processed & Preserved Foods
Class 30 : Foods – Spices, Bakery Goods, Ice, Confectionery
Class 31 : Fresh Fruit & Vegetables, Live Animals
Class 32 : Beer, Ales, Soft Drinks, Carbonated Waters
Class 33 : Wines, Spirits, Liqueurs
Class 34 : Tobacco, Smokers Requisites & Matches
Detailed description of Services
Class 35 : Advertising, Business Consulting
Class 36 : Insurance, Financial
Class 37 : Construction, Repair, Cleaning
Class 38 : Communications
Class 39 : Transport, Utilities, Storage & Warehousing
Class 40 : Materials Treatment, Working
Class 41 : Education, Amusement, Entertainment, Reproduction
New Services Classes – Effective JANUARY 1, 2002
Class 42 : Scientific and technological services and research and design relating thereto
Class 43 : Services for providing food and drink; temporary accommodations.
Class 44 : Medical services; veterinary services; hygienic and beauty care for human beings or animals
Class 45 : Personal and social services rendered by others to meet the needs of individuals
Filling Requirement for Trademark Registration
- Full name and address of Applicant.
- Specification of goods or services specified in terms of individual names.
- Class: International Class of goods and services.
- Mark-character, device, figure, three-dimensional mark, logo and/or color.
- Prior use is not required to file an application.
- Details of Convention Priority, if any- first filed country, filing number and date; the term of priority is six(6) months.
Documents
- Power of Attorney(neither notarization nor consular legalization required) to be executed by an individual or a representative of a corporation.
- Certified copy of the application which is the basis of the Convention priority (if applicable) may be filed within three(3) months from the Indian filing date.
- A clear print of the mark or 10 prints of color mark (not larger than 7cm x 7cm)
Frequent Ask Question about Trademark
01. What is a Trademark?
02. What are the forms of Trademark?
- An ideal trademark is an invented or coined word or symbol.
- A trademark can be in the form of a word; letter; device; numeral or; any combination thereof. Domain names are also protected as trademarks. To ensure easier public identification with the mark, a proprietor should use simple design or a word that is easily to spoken, spelt and recollected.
- Laudatory words should not be used. Similarly words that directly describe the character or quality of the goods/services should not be adopted. It is therefore advisable to use the trademark as an adjective rather than as verbs or nouns. This maintains its status as the owner’s brand.
- Geographical names connected with the reputation or quality of the goods for which registration is sought should not be adopted.
- The Indian Law does not allow registration of smell or sound marks.
03. What is the governing law in India with relation to trademarks?
04. What remedies are available to proprietors of trademarks?
A trademark owner in India can bring a:
- Statutory action of infringement where the trademark is registered; and
- The common law action of passing off where the trademark is not registered.
05. What steps may be recommended before applying for registration of a trademark?
- Although not mandatory, one may conduct a prior search with the Trademarks Registry to ascertain whether an identical or deceptively similar mark is in use with regard to the same goods by any other person in the market. It is advisable to have a professional search carried out by a trademark firm.
- If the trademark search reveals a similar mark in use for similar goods/services, the prospective applicant must consult with a trademark firm to see how he can use the sought mark.
- The trademark application must contain a clear representation of the sign and set out the good/service in respect of which it is proposed to be filed at the appropriate Trademark Registry office. The Trademark Act allows a single application with respect to multiple classes.
06. Are all trademarks registrable?
07. What are the benefits of registration of trademarks?
The benefits of registering a trademark can be summed as follows:
- Provides the proprietor with the exclusive right to use the mark in relation to the goods/services for which it is registered.
- Provides a statutory right to take a legal action against others who may infringe the registered trademark or one resembling it in relation to similar goods.
- It affords the proprietors the advantage of having the burden of proof in their favour. In case of the unregistered trademarks, the onus to prove that somebody is infringing on that trade mark is on the owner of the trade mark. Thus, registration passes the onus on the alleged infringer to prove that he has not infringed the registered trademark.
08. Who can apply for trademark registration in India?
09. Is Registration of a Trade Mark compulsory and what is the term of trademark in India?
10. How is registration obtained in India?
By filing an application in the prescribed form and fee at the concerned Trade Marks Registry office, depending on the place where the applicant resides or has his principal place of business. Thereafter, the application is examined to ascertain whether it is distinctive and does not conflict with existing registered or pending trademarks and examination report issued.
If it is found to be acceptable then it is published in the Trade Marks Journal to allow others to oppose the registration. If there is no opposition (within the prescribed period of four months) or if the opposition is decided in favour of the applicant, then registration of mark is granted and a certificate of registration is issued.
This process takes four to five years and once the trademark is granted, the date of registration is considered from the application date. With a payment of five times the application fee and reasons furnished by the applicant, the registration process may be expedited.
11. What are the safeguards which the owner of a registered trade mark must take in order to protect his rights?
- He should use and renew the trademark regularly and in time.
- If his trademark is copied by others, he should file a suit for infringement and passing off and also take criminal action.
- He should keep a watch in respect of trademarks advertised in the Trade Marks Journal and institute opposition proceedings if identical or deceptively similar trade marks are published.
- He should initiate rectification proceedings if an identical or deceptively similar trade mark is registered.
12. How are trademarks assigned?
13. How is licensing of trademark carried out?
Under the Trademarks Act, 1999 trademarks can be licensed by filing with the Registry the name of the registered users or where such use is with the consent of the proprietor under an agreement in writing and is in conformity with prescribed conditions.
The advantage of this system is that proprietors of Indian registered trademarks resident abroad (having no presence in India) can use their trademark in India through licenses granted to their Indian partners.
14. What are the conditions for an action of infringement?
- The allegedly infringing mark must be either identical or deceptively similar to the registered trademark.
- The allegedly infringing mark must be used in relation to the same goods/services as the registered mark n the course of trade.
- The alleged use must be in such manner as to imply being use as a trademark and confuse the public about the source of the goods/services in relation to which it is used.
15. For a trade mark to be registrable, should the mark be used?
16. Is a statement of use of a trade mark required at the time of filing an application for registration?
17. At the time of filing the trade mark application, is “intent to use” the trademark sufficient?
18. Does the Indian Law permit trade mark registrations for goods as well as services?
19. How does the trade mark registration system operate?
20. What is the classification of the goods adopted in India?
21. Is a three-dimensional mark registrable?
22. Is sound or smell registrable as a mark?
23. If sounds or smells are registrable, how are these marks specified?
Sound – musical notations along with the sound recording
Smell – chemical formula along with the sample
24. Are there any grounds for refusal of registration of trade marks?
Under the Trademarks Act, there are 2 grounds for refusal of registration of trade marks:
(a) Absolute ground for refusal of registration of trade mark: marks that are devoid of any distinctive character which in the trade serve to designate the kind, quality, quantity and geographical origin will not be registered. However, if it can be proved that these marks have acquired a distinctive character prior to application by long continuous and uninterrupted use of the mark; marks will also not be registered if they are likely to deceive public or confusion. If the mark comprises scandalous or obscene matter or if the mark is likely to offend the religious sensibilities of the people the same cannot be registered. In addition, if the mark registration is prohibited under the Emblems and Names (Prevention of Improper Use) Act, it will not be registered. Normally, if the shape of the goods is necessary to obtain a technical result or the shape that adds substantial value to the goods it will not be registered.
(b) Relative ground for refusal of registration of trade mark: when the proposed mark for registration is in conflict with the identity of an earlier registered trade mark in respect of the same or similar goods or services or if it conflicts with the internationally well-known trade mark even if it is not registered in India.
25. Can a Registered Trade mark be amended at a later date?
Yes, the filed mark is allowed to be amended as per the provision of Section 22 of the Trademarks Act, which allows the amendment of the mark provided it does not amount to a substantial change in the character of the mark as such.
It is practice of the Registrar of Trade Marks that if the mark applied as a label mark, any superficial or insignificant character or feature of the said mark, is allowed to be amended, if a request filed in the prescribed format along with 16 copies of the amended label mark.
26. Is it possible to get an opinion from the Registrar regarding the registerability of the marks?
27. Can we know whether similar marks have already been registered in respect of the same type of goods?
28. What is the procedure adopted by the Trade Mark Registry for completing the process of registration of a brand?
The Trade Mark Office requires that an application for registration must be made in Form 1 in triplicate along with a prescribed fee of Rs. 2,500/- per application per class. Form 1 should be accompanied by five representations of the brand in the prescribed manner.
On receipt of the Application, the Trade Mark Registry will issue an Examination Report and the Applicant will have to comply with the requirements of the report within a month of receiving the report.
On compilation of these requirements, the mark will be advertised in the Trade Mark Office Journal prior to the acceptance. If there is no opposition, the mark will proceed towards acceptance.
29. Is there any opposition system for third parties?
Yes, there is an opposition system for third parties wherein within three months after the publication of the mark in the Trade Marks Journal and from the date of publication (the same being extendable by another one month).
Soon after the receipt of Notice of Opposition, the Applicant for Registration must file Counter Statement against Opposition. There after, the Opponent will be allowed to file Evidence in Support of Opposition.
The Applicant would also be given an opportunity to rebut the Evidence filed by the Opponent. If the Applicant fails to lodge the Counter Statement against the Opposition, then the Application will be deemed to be abandoned.
30. What if the Applicant doesn’t respond to the First Examination Report within the stipulated time?
31. What are the ways to overcome the objection raised in the Examiners Report?
The Applicant can produce evidence to the Examiner that the mark had over a period of time acquired distinctiveness and the consumers associate the brand only with the Applicant and none else.
For this purpose, the Applicant can file an Affidavit along with evidence to show the amount of money spent on advertisements, produce publicity brochures and the other hand bills to popularize the brand.
32. What if the Examiner rejects the Application even after the Applicant had responded to the objection in the first examination report? Will the Applicant be heard before the rejection?
There is no automatic right of hearing before rejection of a trade mark Application. If the Applicant is so particular, the Applicant has to request for hearing while responding to the first examination report.
Despite the hearing and the response given by the Applicant or in pursuant of a opposition logged by a third party, if the Trade Mark Registry rejects the Application the aggrieved Applicant can file an Appeal to the Intellectual Property Appellate Tribunal within 90 days of the receipt of the order.
33. Is renewal allowed?
34. How long is the term of trade mark right (registration)?
35. Is a renewal petition (application) examined?
36. Is the trade mark holder supposed to use his registered trade mark?
37. Is there any cancellation system on the ground of non-use of a registered mark?
38. How many years of non-use does causes cancellation?
39. What are Collective trade marks?
A collective trade mark can be obtained by an organization which can permit the members to use the mark. The association has to prepare and file a regulation with the Trade Mark Registry setting out the rules specifying standards and criteria for membership.
Collective trade mark cannot be owned by individuals or a body corporate. It has to be a registered association or Trust having many members or beneficiaries.
40. What are Certification Trade Marks?
Certification trade marks guarantee that the goods or services that use the mark have been certified by to have been made of a particular material, method of manufacture, quality, accuracy or origin.
This can be owned by individuals or a corporate body. Regulation governing the Certification would have to be logged with the Trade Mark Registry along with the application.
41. Is registration of trade mark compulsory? What if a person has a mark which is well known and has been used for a long time and some one else fraudulently uses the identical or similar mark?
Registration of a trade mark is not compulsory. However, the Registration of the trade mark establishes that the registered owner is the proprietor of the mark covered by the registration. Obtaining registration is like having a reserved ticket for a journey even though Law doesn’t compel you to reserve a ticket for traveling.
In the case unregistered yet well known brands, the owner of the brand can initiate a passing off action. Differences between Passing Off action and trade mark infringement are given as under:
Trade Mark Infringement | Passing Off | |
| 1 | Mere possibility of confusion is enough for getting interim and final relief. | Actual deception has to be proved for any relief. |
| 2 | Trade Mark infringement is actionable per se and the Registered Owner need not prove specific monetary damage because of the infringement. | In a Passing Off case, the owner of the unregistered brand has to prove actual damage because of the wrongful adoption. |
| 3 | Trade Mark registration is prima facie proof of ownership of the mark. | In a Passing off case, the Plaintiff has to lead evidence showing long uninterrupted use of the brand and the fact that the infringer adopted the mark knowing the goodwill of the Plaintiff’s mark |
| 4 | Registered owner can initiate proceedings within the Jurisdiction of a Court where the Owner / Plaintiff resides or carries on business. | Passing Off case can only be initiated in a place where the Defendant resides or carries on business or where any part of the cause of action arose. |
42. Would the subsequent changes in ownership or right to use of the mark be notified to the Registry?
Trade Marks can be either assigned in full of transmitted in part. All transmissions or assignments must be registered with the Registrar of Trade Marks on Form 23 or 24 of the Trade Marks. Under the Act there is a classification if the owners delay the registration of the transmission or assignment, the Applicants will have to increased registration fee.
The Trade Mark Rules make a classification between assignment of a trade mark with goodwill and assignment of a trade mark without goodwill. In case of Assignment without goodwill the Registry would insist on Advertisement in Newspapers and permit assignment only after ensuring that interest ;of the third party would not be affected.
43. Advice to foreign applicants who are interested in protecting their mark in India?
Indian Law has been harmonized and the same have now become TRIPS compliant. Further, the Indian Law now protects a well-known and famous mark irrespective of the facts as to whether the same is used and/or registered in India.
Moreover, it also provides for claiming priority based upon an earlier application made in a convention country.
