Trademarks

Introduction

A trademark is a type of intellectual property consisting of a recognizable sign, design, or expression which identifies products or services of a particular source from those of others, although trademarks used to identify services are usually called service marks. Customers identify a product by its trademark. Value and importance of trademark increases as the business grows. Trademark is a valuable property of any business. Sometimes trademarks like Coca-cola, Pepsi, IBM, Philips, etc. get worldwide recognition. It is necessary for a business that a trademark is not used by an unauthorized person. The Trademarks Act, 1999 has been enacted with an intention to protect rights of trademarks of business.

The foundation behind right to restrain the use of a similar name is the principle that no one is entitled to represent his business or goods as being the business or goods of another. A trademark may consist of a device depicting the picture of animals, human beings, etc., words, letters, numerals, signatures or any combination thereof. Since a trademark indicates relationship in the course of trade, between trader and goods, it serves as a useful medium of advertisement for the goods and their quality.

Definition of Trademark

Trademark means a mark capable of being represented graphically and which is 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.

A trademark is any word, symbol, phrase or logo design adopted and placed on a product offered for sale or on a container to identify its source. In this way, the connection between the product and the manufacturer/trader is bought to the notice of the public at large. Trademarks are an integral part of a firm’s strategy to differentiate its products and services from other competitors and to establish consumer brand loyalty.

Trademark Search

Trademark search must be completed before trademark registration application to find any faults in existing trademarks. This can be done through government website. Trademarks registration is controlled by Comptroller general of patent designs and trademarks. 

Procedure of Trademark Search

Navigate to website of the Comptroller General of Patent Designs and Trademarks and follow these steps:-

1. Select “Wordmark” as the Search type at the top of the page
2. Enter the wordmark you would like to search on the trademark database. The trademark database can be compared against the search query with three conditions- ‘start with,’ ‘contains’ and ‘match with.’
3. The class of the Trademark that is applicable should be entered. Trademarks are divided into 45 classes wherein each class represents a distinct group of goods and services. A registered trademark or trademark application will only be pertinent to the class under which it is applied for
4. With the final step, you can click on search to begin the Trademark search.

Selecting the option “show details” would display information pertaining to the trademark. Trademark must not be registered same as any existing one. If the results show no results found then there’s no registered trademark same as searched ones. 

Trademark Consultation

Trademarks are those marks which helps business to get identified in market. It is very easy to get trademark registered but it is preferred by most of the business to get it done professionally in order to avoid any unwanted consequences. 

Trademark consultation with professional is very much convenient. It has following benefits- 

1. Helps in the systematic filing of the application.
2. Registration is done in a manner as prescribed by the rules and regulations governing Trademark law. 
3. Helps in removing ambiguities. 

An application not filed in a manner prescribed can be rejected and applicant will get no legal right on the trademarks. That’s why it is good to get trademarks registered professionally.

Trademark Registration

Trademarks are those marks which helps business to get identified in market. Trademark registration India is under Controller General of Patents Designs and Trademarks, Ministry of Commerce and Industry, Government of India. Trademarks are registered under the Trademark Act, 1999. Trademarks are intellectual property. 

Types of Trademarks

1. Name
2. Symbol
3. Music
4. Image
5. Logo
6. Number
7. Word
8. Packaging
9. Shape
10. Slogan
11. Graphic content
12. 3D image/content

Who can apply for trademark registration?

1. Private firms
2. Individuals
3. Companies – LLP, OPC, Private Company, Public Company, Partnership, etc.
4. NGO’s

Process of Trademark registration

1. Trademark search to ensure that there are no issues & there are minimal chances of an objection being raised in the future.
2. After choosing name or design, prepare the authorization letter duly signed, to a registered lawyer or agent to apply for trademark registration.
3. Once the application gets approved, we can start using ™ symbol.
4. Once a trademark application is complete, the application will be verified by the trademark office. The government can also object if your name similar to some other trademark in the same class, or the name is deemed obscene and hurts religious sentiments.

In case no objection is raised, the trademark registrar will publish an advertisement in the trademarks journal. If no opposition is filed by any party within 4 months, the trademark should be registered within the next 6 months.

5. If the objection has been filed on your trademark and the opposition doesn’t agree with your response, then hearing is held before the registrar.

Documents required for registration

1. Address proof of applicant.
2. Identity proof of applicant.
3. Trademark material. 
4. Registration certificate. 
5. User affidavit. 
6. Proof of use of ™. 
7. Signed form 48. 
8. MSME recognition. 

Advantages of Trademark Registration

• Helps in differentiating products/services. 
• Protection from infringement. 
• Helps in building goodwill. 
• Gives legal protection. 
• Helps in promotion. 
• Opens up better opportunity.
• Gives unique identity to the business.
• Creation of intangible asset.

Trademark objection

After the scrutiny and verification, registrar issues an examination report for trademark. In that report registrar can come up with an objection. A response to this must be filed within a month otherwise registrar will abandon the application. 

Reply to objection

Assess the examination report. You must get it done professionally. Get assessment of implications of notice. Get drafted objection reply and review it. Submit the response. 

Trademark Renewal

The trademark remains valid just for 10 years after that one needs to file for Trademark Renewal. Trademark renewal must be filed before the expiry of the trademark. The renewal application form must be filed before the deadline to have the seamless protection of the trademark without any chances of litigation.

The process for the same is as follows:-

1. The application of renewal is done in form TM-12
2. The application can be executed by either the registered owner of the trademark or an agent approved by him.
3. You must take the help of a professional to register for the renewal of a trademark application to guarantee that the mark is well protected. This is because you may need to increase the scope of protection. After all, if your brand has lasted 10 years, it’s likely that it will have outgrown the classes you had 1st registered it under.
4. Filing a trademark renewal application increases protection by another 10 years. The trademark registrations are applicable for another 10 years and renewed again before expiry.

Trademark Symbols and Their Usages

1. “R” Symbol: You receive the R symbol the moment you file the trademark application for registration. This type of symbol assists protects the trademark from getting copied by others.​
2. “TM” Symbol: This symbol is for unregistered trademarks. It informs others from copying your logo, name, or symbol. It does not give you copyright protection, and others can apply your logo or name in case your application gets denied.​
3. “C” Symbol: The C symbol stands for contents that do not have any copyright issues. The symbol is necessary for many countries for copyright claims.​
4. “SM” Symbol: The service industry applies this symbol. The symbol is suitable for classes from 35 to 45. It never assures protection upon copyright issues.

Grounds for refusal to register trademark

1. Common or non-distinctive : 

1. Trademark which are devoid of any distinctive character i.e., not capable of distinguishing goods and services of one person from those of another person.
2. Trademark which consist exclusively of marks or indications which may serve in trade to designate the kind, quantity, quality, intended purpose, value, geographical origins, or the time of production of goods or rendering the service or other characteristics of goods or services.
3. Trademark which consists exclusively of marks which have become customary in the current language or in the bona fide and established practices of the trade.

2. Confusing, obscene or prohibited trademark :

1. Trademark which is likely to deceive or cause confusion.
2. Trademark which comprises of scandalous or obscene matters.
3. Trademark which contains any matter likely to hurt religious sentiments.
4. Trademarks use of which is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

3. Trademarks regarding certain shapes :

1. Shapes of goods which result from nature of goods themselves.
2. Shapes of goods which are necessary to obtain a technical result.
3. Shapes which give substantial value to the goods.

4. Trademark which are likely to create confusion in case of similar goods :

1. Its identity with the earlier trademark and similarity of goods or services covered by trademark.
2. Its similarity to an earlier trademark and the identity of goods or services covered by trademark.

Trademark Infringement 

Trademarks infringement is unauthorized usage of any trademark which is registered by someone else. It can be used to deceive customers. 

Types of infringement

1. Direct infringement
   1. Use of trademarks by another individual/organization. 
   2. Creating deceptively identical trademarks. 

2. Indirect infringement

1. Active infringement.
2. Contributory infringement.

Trademark infringement can lead to penalty to the organization who infringed it. There can be criminal proceedings as well. 

Removal of a Trademark for non-use

Section 47 of the Trademarks Act, 1999 deals with removal of a trademark from the register on the ground of non-use and provides that a trademark which is not used within 5 years of its registration, becomes liable for removal, either completely or in respect of those goods or services for which the mark has not been used.

Frequently Asked Questions (FAQs)

1. What is Trademark Registration?

Ans. The Trademark Registration is registering of visual symbols which can be a word, name, device, label, digits, etc. Trademark registration in India helps the candidate or the trademark owner to safeguard his logo or trademark. Trademark registration also helps to evade duplication within the trademarks.

2. How to get trademark registration done?

Ans. The easy way to get trademark registration done, involves the first step as “selecting a name then do a trademark search, after that file an application for the trademark registration”. Then fill the required documents like the name of the trademark or address. Then the application is examined after that the trademark is published in the Indian Trade Mark Journals. Lastly, the issuance of the trademark registration certificate.

3. How much does it cost to get trademark registration?

Ans. The cost of registering trademarks starts from almost Rs. 6000/-

4. What is the process to get trademark registration?

Ans. The process to get trademark registration:
Step 1: The first step is the choice of a trademark.
Step 2: The applicant must search the trademark records registry and assures that the proposed trademark does not match or the same to the registered mark.
Step 3: The search can be done online or by the trademark office.
Step 4: It is advisable to discuss an experienced lawyer as they are well-versed in their profession and are being prepared to conduct an exhaustive search.

5. What are the documents required to get the trademark registered?

Ans. Every applicant including corporations will have to give the following documents to get a trademark registered: – “Address proof of the person or company registering for the trademark, a copy of the logo, certificate of partnership deed and ID proof of the person registering for the trademark”.

6. What is trademark infringement?

Ans. Trademark infringement is basically the illegal use of a trademark or service mark linked to goods and services.

7. Is trademark registration valid for all types of services and goods?

Ans. Trademark registrations are unique to the goods or services they describe. The registrations can be product or service-specific. Also, they are made under a Class of goods or services they signify. The trademark registration will, hence, be valid for the whole class of goods or services it describes.

8. Is there relevance of Digital Signature in Trademark registration?

Ans. Yes, the authorities mandate it for applicants to check all the documents they submit including the application for trademark registration by applying a Class III Digital signature.

9. What is the validity of trademark registration?

Ans. The registered trademark is valid for only 10 years from the date of filing of an application. After that one needs to apply for trademark renewal.

10. When can I use symbol R or TM?

Ans. Symbol “TM” can be applied after filing of a trademark application. After registering a trademark a symbol “R” must be used. The ® symbol may only be used in connection with the goods and services mentioned on the registration certificate.

11. Who can apply for trademark registration in India?

Ans. There is no limitation for anyone to apply for a trademark registration in India. Any individual, a foreign company, society or trust, partnership firm, LLP or private limited company, etc anyone can apply.

12. Can an application be registered in more than one class for the same trademark?

Ans. The trademark application can be filed as a multiclass application or as a separate single class.

13. What is Trademark Class?

Ans. The Trademark Registry has classified goods and services under 45 classes. Your application must mention the class/classes of the goods/services. The trademark would be registered under those classes only.

14. What is the validity of a Trademark?

Ans. It is valid for a limited period of time i.e. for 10 years. But it is renewable indefinitely. You just need to pay the fee for trademark renewal every time.

15. When can I use ™ with my Trademark?

Ans. After the application is registered with the government, a TM number is assigned by the trademark department within 1-2 days of submission of application. After this, you can use TM with your brand.

16. What is the difference between Trademark and Copyright?

Ans. A trademark is an intellectual property which is being assigned to a word or logo but on another hand, copyright assures you the protection for your unique content such as books, music, videos, songs or even software.