1. What is a Trademark?
A Trademark is a sign that is used to distinguish the goods and services of one party from those of others. A Trademark can be a letter, number, word, phrase, logo, graphic, shape, smell, sound or combination of these things.
2. What is the purpose of the Trademark?
Trademark Registration in India serve as a vehicle for the creation and retention of custom by their use, as they indicate the origin of goods and services. The function of a Trademark is to give an indication to the purchaser or possible purchaser as to the manufacture or the quality of the goods, to give an indication to his eye of the trade source or trade hands through which they pass on their way to the market. Thus, the purpose of a Trademark is to focus attention on the origin of goods, not the proprietor of the goods.
3. What is my Trademark worth and how can I exploit it?
A Trademark is an intangible asset and it also represents the reputation or goodwill of a business. If through the process of growing your business you establish an excellent reputation, your Trademark could end up being a high valued asset for your business. You can license the rights to use a Trademark, through franchising or through sale of the business.
4. What are the benefits of Trademark registration in India?
A Trademark helps the consumers to identify and purchase a good or service because of its nature and quality, indicated by its unique Trademark, to meet their needs. By registering a Trademark, the owner of the Trademark protects the goodwill of the business. Hence, the Trademark contributes to the commercial value of the goods or services to which it is applied, and increases the marketability.
The registered owner of a Trademark receives the presumptive right of the Trademark owner to use the Trademark and can indicate it by using the Trademark symbol ™ or ® in relation of those goods and services for which the owner has registered the Trademark. The registered Trademark owner can stop other traders from using his Trademark unlawfully. The registered owner of a Trademark can sue other traders for recovery of profits, damages and costs in case of Trademark infringement. Trademark provides the guarantee for the unchanged quality and helps in creating and advertising the goods and services in public.
It serves as a constructive notice in general public about the ownership claim of the Trademark. Registration of Trademark in India can be used as a basis of registration of Trademark in other countries.
5. What are the different kinds of Trademarks?
There are three basic types of Trademarks that can be registered in India:
Trademark and Service Mark:
Trademarks and Service Marks are those that are affixed to identify goods or services of certain producers.
Collective mark is a Trademark registered in the name of groups, associations or other organizations for the use of members of the group in their commercial activities to indicate their membership of the group. In another words the members of the group or organization may use the collective Trademark to identify themselves with a level of quality or accuracy, geographical origin, or other characteristics set by the organization.
Certification mark is a Trademark capable of distinguishing the goods or services in connection with which it is used in the course of trade and which are certified by the proprietor of the Trademark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other specific features.
6. What are different types of Trademarks available for adoption?
The different types of Trademarks available for adoption are:
- Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.
- An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
- Letters or numerals or any combination thereof.
- The right to proprietorship of a Trademark may be acquired by either registration under the Act or by use in relation to particular goods or service.
- Devices, including fancy devices or symbols.
- Combination of colors or even a single color in combination with a word or device.
- Shape of goods or their packaging.
- Marks constituting a 3- dimensional sign.
- Sound marks when represented in conventional notation or described in words by being graphically represented.
7. Is the registration of Trademark mandatory?
The registration of a Trademark is not mandatory, but it is advisable. Trademark law protects the right of the owner of a mark to use marks that distinguish his goods from others and to prevent others from using marks that are likely to cause confusion. Trademark law provides much simpler infringement remedies than provided in common law to protect the unregistered Trademark.
8. Who can apply for a Trademark and how?
In India, any person who claims to be the proprietor of Trademark used or proposed to be used by him can apply for the Trademark registration of the goods and services. For registration of Trademark, the application can be filed in the Trademark Office, in whose jurisdiction the principal place of your business falls. If the principal office is not situated in India then the applicant can file the application in the Trademark office in whose jurisdiction the Lawyer/Attorney appointed by the applicant is situated. In case it is the company which is yet to be formed then anyone can apply for the registration on behalf of the company. The application should contain the Trademark, the goods and/or services, Name and Address of applicant and agent (if any) with Power of Attorney, period of use of the mark and signature. The application should be in English or Hindi. An application filed by anybody else will be declared void. Before making an application for registration it is prudent to make a proper search in the Trademark office to ensure that your registration may not be denied due to the similarity of the proposed mark to the already existing one or prohibited one.
9. What are the legal requirements for the registration of a Trademark in India?
The legal requirements to register a Trademark under The Trademark Act are:
- The selected mark should be capable of being represented graphically (that is in the paper form).
- It should be capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours (it should be distinctive).
- It should be used or proposed to be used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services.
10. What are the steps of Trademark registration?
Registration of Trademark usually involves the following steps:
1. A preliminary search of existing Trademark.
2. An application for the registration of Trademark.
3. An examination of your application by the Trade Mark Registry (TMR).
4. Publication of your mark in the Trademarks Journal.
5. Opposition to the registration.
6. Correction and amendment in the application.
7. Acceptance of Registration.
11. What are the different grounds for the refusal of registration of a Trademark?
There are two grounds for the refusal of registration of a Trademark:
Absolute grounds for refusal of registration of a Trademark are:
- Marks devoid of any distinctive character or not capable of distinguishing the goods or services of one person from those of others.
- Marks which indicates quality or other descriptive character of the goods or services.
- Marks which have become customary in the current language or in the bona fide or established practice of the trade.
- Marks to the trade or generic names or marks common, chemical names and international non-proprietary names.
- Marks likely deceive public or cause confusion.
- Marks comprising scandalous or obscene matter or likely to hurt religious susceptibilities of any class or section of the citizens in India.
- Marks prohibited under Emblems and Names (Prevention of Improper Use) Act, 1950.
- Marks shape of which results from the nature of the goods themselves.
- Marks the shape of which is necessary to obtain a technical result.
- Marks the shape of which gives substantial value of the goods.
Relative grounds for refusal of registration of a Trademark are:
- Marks which are identical or similar to an earlier Trademark and the respective goods or services are identical or similar.
- Mark which are identical or similar to an earlier Trademark, but the goods or services are not similar. The question of refusal of registration of a mark similar to an earlier Trademark where the goods are different can be considered only in opposition proceedings.
- Marks under passing off or law of copyright.
12. Is there any mark prohibited to be registered as a Trademark?
Marks that are prohibited to be registered as a Trademark are:
- Marks commonly used and accepted name of any chemical element or any chemical compound (as distinguished from mixtures) in respect of a chemical substance or preparation.
- Marks declared by the World Health Organization and notified as such by the Registrar, as an International non-proprietary names.
13. Can the ownership of a Trademark be assigned from one person to another?
Yes, A Trademark can be licensed by the owner of the Trademark in favour of another person by way of an assignment. Trademark can be either assigned in full or transmitted in part. Trademark can be assigned with or without goodwill attached to it. If the Trademark is assigned without any goodwill than the Registrar of Trademark insist on advertisement in Newspaper and permit the assignment only after ensuring that the interest of the third party would not be affected by the assignment. All assignments must be registered with the Trade Mark Registry (TMR) by paying the prescribed fees.
14. How long a Trademark registration last?
Unless otherwise cancelled, a Trademark registration is valid for 10 years and the registration can be renewed every 10 years thereafter upon payment of renewal fee.
15. How many years of non-use of a Trademark do causes cancellation?
Non-use of a registered Trademark for a continuous period of 5 years is a ground for cancellation of registration of such Trademark. However, if the law prohibits the owner of the Trademark to use the mark in the Indian market, in that case non-use of the mark by the owner can be condoned.
16. What is a Trademark search?
A Trademark search is designed to uncover other pre-existing Trademarks that have the potential to conflict with your Brand Name or Mark or Label or Logo. Trademark search for existing Trademark helps to protect you from accidentally infringing on marks currently being used for an identical or similar product or service. It is very much advisable to conduct a Trademark search before registering or using your Trademark. If you register a Trademark that is similar or identical to one that is already registered, it may lead to confusion or costly legal battles. It is also advisable to conduct periodical searches to determine if other parties are attempting to register a conflicting Trademark.
17. What is covered through Trademark search?
It is always advisable to conduct Trademark search before applying for the registration of Trademark. By conducting Trademark search you can get answers of many important questions like:-
- Whether a mark is already registered or pending for registration, which is identical or similar to my mark?
- Whether I am infringing someone’s Trademark rights?
- Whether someone infringing my Trademark rights?
- What is the possibility of opposition of my Trademark?
In which fields my competitors are particularly active?
18. How can I search and register a Trademark outside India?
Registering your Trademark with the Indian Trade Mark Registry (TMR) protects your rights only in India, however, some countries recognizes Trademarks registered in India as a basis for registering the mark in their countries. If you are selling goods or services in other countries, you should consider registration in each of those countries, with the only exception to this being the European Community.
We can assist you in conducting searches and for registration of Trademark in foreign countries.
19. What system of classification of goods and services is presently used in India?
A Trademark is always protected only for certain classes of goods and services, as prescribed in the Classification of Goods and Services in the schedule IV of the Trademarks Act, 1999. As prescribed in Schedule IV of the Act, goods and services are classified into 42 classes and these classifications are based on the International (NICE) Classification of goods and services. When you apply for the registeration of Trademark than you must indicate the goods and services for which you wish to register and use your Trademark. Examples of Classes The long list of classes includes for example: — For goods (Class 1 – 34) — For services (Class 35 – 42). Click here for detailed classification list .
20. Can I cover different classes for registration of Trademark under single application?
No. When applying for the registaration of the same Trademark for goods and services in different classes, a separate application for registration should be filed in respect of each class of the prescribed Classification of Goods and Services. Likewise, if the applicant intends to use a registered Trademark in respect of other goods and services of the same class, a new application for registration should be filed.
21. How important is the selection process of goods and service classes?
It is very important to select your goods and service classes carefully.
A Trademark is always protected only for certain class or classes of goods and services. When you apply for the registration you must indicate the goods and services for which you wish to register and use your Trademark. If you do not use your Trademark for the goods and services you claimed within five years of registration, you can lose your Trademark protection.
22. What is Trademark infringement?
Trademark infringement is a violation of the exclusive rights to use the Trademark in relation to the certain goods conferred by registration as the proprietor of Trademark. The exclusive right is infringed, when a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the Trademark in relation to goods or services in respect of which the Trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a Trademark.
23. What remedies are available for the infringement of registered and unregistered Trademarks?
There are two types of remedies available for the infringement of Trademark. These remedies are:-
1. Infringement Action: An action for infringement, which is a statutory right, is dependent on the validity of the registration of the mark. Infringement of a Trademark is a violation of property rights. Trademark registration is prima facie proof of ownership of the mark. In case of infringement there is often no need to prove that your Trademark has a reputation or goodwill. The question of fraud or the probability of deception is immaterial, the plaintiff just have to prove that he is the true owner of the Trademark and the defendant is using a mark that is identical or deceptively similar to the registered mark and no further proof is required. The jurisdiction and procedure, in infringement suit, is governed by the Civil Procedure Code. The period of limitation for filing the suit for infringement is three years from the date of infringement. The relief and remedy in infringement proceedings include:-
- Restraining the future use of the mark;
- Damages or on account of profits;
- Order for delivery of the infringing labels and marks for destruction;
- Seizure and confiscation of the infringing goods by the police department;
- Arrest of the infringer;
- Fines and penalties.
2. Passing Off: An action of passing off is a direct subject matter of the law of tort or common law of right. Passing off is not defined in The Trade and Merchandise Marks Act, but it provides the rules of procedure and the remedies available. In the case of unregistered yet well known marks, the owner of the mark can initiate a passing off action in the appropriate Court of law. The cause of action in favour of the plaintiff will arise if the defendant in the course of trade misrepresents to prospective or ultimate customers of goods and services and the goods or services of the defendant is connected to the goods or services of the plaintiff and is calculated to injure the business or goodwill of the plaintiff and which actually causes damages to the business or goodwill of the plaintiff. Actual deception and actual damage has to be proved for any relief. Passing off action 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.