Trademarks

Trademark is any mark which is distinctive i.e. capable of distinguishing goods and services of one undertaking from that of other undertaking, and  are capable of being represented graphically.

Trademark denotes the characterization of a product or its representation, which has to be unique, where it would appeal to the general public’s perception and senses in a significant manner. Generally a brand or a logo fall under the ambit of Trademarks.

Any distinctive Word, Letter, Numeral, Slogan, Picture, Shape, Colour, Logotype, Label, Name, Signature, Shape of Goods, Packaging, Combination of Colours, which is capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others, can be registered as a Trademark. A Trademark can be any distinctive feature of a brand which helps the common public to identify the same brand.

Yes, sound or smell can be registered as a Trademark provided that they can be represented graphically and are distinctive in nature.

A Tradename is the legal identity or the official name of the brand/company under which the brand/company is “doing business” whereas a Trademark identifies the products or services provided by the brand/company and it acts as an indicator of origin. A Tradename and a Trademark may be the same for a business or different as the case may be. A company can sell all its products under its name or have separate Trademarks for different products/goods manufactured/distributed by the company.

• Distinctive and not Descriptive: A Trademark should not describe the goods or services that are proposed to be used or used in connection with the mark;
• Fanciful: Fanciful Trademarks are considered to be the one strongest type of mark which have been invented, designed or created for the sole purpose of functioning as a Trademark and have no other meaning than acting as a mark;
• Suggestive: Suggestive Trademarks suggest a quality or characteristic of the goods and services of a brand;
• Unique: The word or combination of words making a Trademark should not be generic words, but specific or unique coined words which can be described as those words which are not used in general sense in common language, like common adjectives or nouns.

The registration of Trademark has the following benefits:

• Exclusivity: Exclusive rights to the brand/company by enjoying sole ownership of the Trademark throughout all the jurisdictions where the Trademark is registered, thereby stopping others from unauthorised use of that Trademark for registered products or services. The brand/company has legal rights to file an infringement suit against third party infringers against unauthorised use of the Trademark;
• Brand Image: It helps to build brand/company’s goodwill and reputation by establishing trust among the customers in the market;
• Distinctiveness: It helps to distinguish the brand/company’s products or services from that of others and helps the general public or the consumers to identify the brand/company by its Trademark. A Trademark designates the characteristic of the brand/company;
• Identity: It helps consumers or the general public to associate quality of the products with the brand/company’s name thereby helping in gaining customer base;
• Creates IP Rights: Registration of Trademark forms an intangible asset which is the intellectual property of the brand/company, which can be further licensed, assigned or franchised to third parties in exchange of royalties;
• Protection from infringement: Third party infringers can be restricted to the registered Trademark and the brand owner can get the legal protection under the Trade Marks Act, 1999.

The symbol is used to denote that the application for registration of Trademark has been filed, however it is pending for registration. The symbol can also be used for all Trademarks even if the application for registration has not been filed for, to claim use over the mark.

The symbol is used to denote that the Trademark has been registered and the brand owner has exclusive rights over the same. This symbol can be used only after the Trademark is registered.

Any person who claims to be a proprietor or owner of Trademark can file an application for registration of a Trademark on proposed to be used (intent to use) basis or on prior use basis.

The goods and services have been specified in accordance with the International Classification (NICE) of goods and services. The NICE Classification can be accessed here.

The proprietor or owner of Trademark can search for the class of Trademark by putting in key words related to the goods or services provided under the Trademark for which the application has been filed.

The register is being maintained in e-form and contains details of the class of goods/services including the goods/services details in respect of which the trademark is registered including particulars of the proprietor/owner of trademark; type of trademark; priority details; prior use details; validity detail.

No, it is not mandatory to register a Trademark. However, registration is prima facie evidence of ownership of a Trademark from the date of Trademark application and it allows the Trademark owner to institute infringement proceedings against the infringer. A Trademark owner cannot institute a suit for infringement of unregistered Trademark but an action of passing off of goods or services can be taken against the third party indulged in unauthorised use of the said unregistered Trademarks.

In India prior use of a Trademark is favoured over prior registration of a Trademark as the Trademark law recognises first to use and not first to file. Hence, a registered owner cannot restrain a third party from using a Trademark identical/similar to the registered Trademark, if the third party has been continuously using the mark in relation to the same goods or services for which the Trademark is registered, provided the third party is a prior user of the said Trademark when compared on the basis of the date of use or the date of application of the registered mark, whichever is earlier.

Yes, the details of a Trademark application can be amended post filing of the same or post registration of the Trademark. The Applicant is required to file the requisite form along with prescribed fee for recordal of amendment. Any amendment is allowed by the Trademarks Registry provided it does not amount to any substantial change in the Trademark application or the Trademark itself.

A ‘Trademark Opposition’ means an objection filed by third parties, against the registration of a Trademark within 4 months of the advertisement of the trademark to be opposed.

Any person, natural or legal, may file an opposition with the Registry. This includes any individual person(s), companies, partnership firm(s) and trust(s).

Following are the grounds under which an Opposition may be filed:

• The mark which is devoid of any distinctive characteristic or includes indications which may serve in trade to designate quality, quantity, intended purpose, values, geographical origin or the time of production;
• The mark is likely to deceive the public or cause confusion. This includes any mark which may be identified with an already registered Trademark or that have become customary in the practice of trade;
• The mark contain matters which are likely to hurt the religious sentiments of any class or section of people;
• The mark is prohibited under the Emblem and Names Act, 1950.

Any ‘person aggrieved’ by the registration of a Trademark, may file for removal, cancellation or rectification of the register of Trademarks. Rectification is used to remove a registered Trademark from the register which is not used within 5 years from the date of its registration. However, unlike in the Opposition proceedings, only a person who has a ‘substantial interest’ or a person who would be ‘substantially damaged’ if the mark remained on the register, can file for rectification.

Moreover, a collective mark may also be removed from the register if the manner in which the mark is used has mislead the public.

Following are the grounds under which an application for Rectification can be filed:

• The Trademark was registered without any bona fide intention that it should be used in relation to the goods and services for which it was originally registered and there has been no use of the Trademark for 3 months before the date of the application;
• The entry made in the register was made without sufficient cause or was obtained by fraud or misrepresentation of facts, or if the mark is deceptively similar to an earlier registered Trademark;
• The registered Trademark has not been used for a continuous period of 5 years from the date of registration of Trademark;
• The proprietor is no longer competent relation to the goods and services for which the mark is registered or there is no longer any public advantage for the mark to remain registered.

Yes, the reduced official fee applicable if the Applicant is:

• an Individual;
• a Start-Up;
• a Small Enterprise.

In order to claim the said reduction the Trademark application is to be accompanied with the required evidence substantiating the nature of the Applicant.

The registration of a Trademark is valid for a period of 10 years and further can be renewed every 10 years. In case the registrant does not renew the Trademark, the Trademark protection is no longer valid. An application for renewal can be filed on or before 6 months, before expiry of registration, or within 6 months after expiry of registration by paying late fees along with renewal fee.

Any registered Trademark can be removed on the grounds of non-use if it was registered without any bona fide intention of use by the owner and that the same was not used till 3 months before the date of the application for removal or the same was not used for a continuous period of 5 years from the date of the Trademark application and the application was made after 3 months from the expiry of the said 5 years.

If more than 6 months have lapsed from the renewal date, then an application for restoration can be filed within 1 year from the date of expiration of the renewal date along with an undertaking explaining the reasons for the filing of the restoration request. If the registrar is satisfied, the Trademark is restored.

An infringement action occurs on the invasion of a statutory right of the registered Trademark holder. Such action may be instituted when a person uses a mark which is identical or deceptively similar to that of the registered proprietor. There are broadly two types of remedies a person has in such situations:

• Infringement Suit: The registered owner of the mark has the exclusive right to institute a suit before a court having civil jurisdiction;
• Passing off: An action for passing off is a common law remedy which allows an unregistered owner of a mark to seek civil action against misrepresentation, whether intentional or unintentional, on part of the infringer. The basis of a passing off action is that the plaintiff is likely to or has already suffered damages/ economic loss due to such misrepresentation;
• Criminal Action: The Trade Marks Act, 1999 provides for imprisonment for a term not less than 6 months which may extend up to 3 years and/or a fine not less than fifty thousand rupees (INR 0.05 million) which may extend up to two lakh rupees (INR 0.2 million).

The court may grant the following reliefs in a suit for infringement or passing off:

• Damages (nominal or compensatory) on accounts of profits obtained as a result of the unauthorized use;
• Permanent or temporary injunction against any further unauthorized use of such mark by the defendant.
• An order for delivery up of the goods bearing infringing labels and marks for the purpose of destruction or reassure.