What is a Trademark?
What can be a Trademark?
Can sound or smell be registered as a Trademark in India?
How is a Trademark different from tradename?
What are the essential features of good Trademark?
- It must be distinctive and not descriptive
A trade mark like ‘Blueberry’ for apparels may be regarded as distinctive because it has nothing to do with blueberry and hence not descriptive of the goods/services provided under the said trademark. A trademark should not describe the goods or services that are proposed to be used or used in connection with the mark.
- It must be fanciful
Fanciful marks 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. So “Kodak” for camera equipment can be called a creative or coined trademark and even “Apple” for phones and computers.
- It must be suggestive
Suggestive marks suggest a quality or characteristic of the goods and services of a brand. Suggestive marks require some imagination, thought, or perception to reach a conclusion as to the nature of the goods. “Airbus” for airplanes or “24/7” for a departmental store fall under the category of suggestive marks as they suggest the kind of goods/services offered by the trademarks.
- It should not be generic
The word or combination of words making a trademark should not be generic words. Generic words can be described as those words which are used in general sense in common language. So a detergent manufacturing company cannot have trademark “detergent” or “soap” or “clothes cleaner” as its too generic and not inventive word.
What are the benefits of Trademark registration?
The registration of trademark has the following benefits:
- Exclusive rights to the brand/company by enjoying sole ownership of the trademark throughout the jurisdiction where the trademark is registered, thereby stopping others from the unauthorised use of the trademark for the products or services for which the trademark is registered. The brand/company has legal rights to file an infringement suit against third party infringers against unauthorised use of the trademark.
- It helps to build brand/company’s goodwill and reputation by establishing trust among the customers in the market.
- 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.
- 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.
- 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.
- 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.
What is the significance of the symbol TM and ® when used along with the Trademark?
The TM symbol is used to denote that the trademark has been applied for by the brand owner and is pending for registration. Also, this symbol can be used for all trademarks even if the application for registration has not been applied 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.
Who can file a Trademark application?
How to determine the class of goods or services before filing the Trademark application?
As per Section 7, the goods and services have been specified in accordance with the International Classification (NICE) of goods and services. The NICE Classification can be assessed at: https://www.wipo.int/classifications/nice/nclpub/en/fr/
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.
What information/documents are required to file a Trademark application?
The information/documents required are:
- The particulars of the proprietor/owner (applicant);
- If the applicant is a company, the incorporation details and in case it is a partnership firm, then details of the partners;
- Whether the applicant is an Individual, Start-up or a small enterprise;
- Details of goods or services for the trademark is in use or is proposed to be used;
- Image of the trademark in case it is a device mark;
- Priority details and documents in case the application is claiming priority from an earlier filed application in another country;
- If the trademark application is filed on a prior use basis, the application is to be accompanied with an affidavit of use. The affidavit of use is to be filed by the proprietor or owner of trademark detailing the use of the trademark sought registration, with respect to the class of goods or services for which the application is being filed for. The evidence substantiating such use of the said trademark is to be attached along with the affidavit of use;
- The Power of Attorney signed by the authorized representative of the applicant authorising the trademark agent/lawyer to act and represent on behalf of the applicant.
What is the registration process of a Trademark in India?
An initial trademark search may be conducted on the trademark portal to check if a same or similar mark exists on the register. The search is optional but it is advised to conduct the same prior to filing so that the proprietors or owners are aware of the chances of registrability of trademark before filing.
Upon filing of the trademark application with the Registry, the application is first examined by the Registry for any formal objection. If the Registry is satisfied the application is then examined on relative and absolute grounds for refusal of mark and an examination report is issued. The mark is examined on the following important grounds:
- Similarity to the prior marks
To qualify for registration, mark should be distinctive, non-descriptive, and there shouldn’t be any similar prior marks. The Registry may take around 8 – 10 months for issuance of examination report. Within one month of issuance of examination report reply is to be filed with the Registry. Once the reply to the objection raised in the examination report is filed and the Registrar is convinced with the reply then the application proceeds for publication else the application is put up for hearing.
Upon hearing if the Registrar is convinced the application is published in the trademark journal. If, within a period of four months form the date of publication of the mark in the journal, the application is not opposed the application proceeds for registration and registration certificate is issued and the trademark is recorded in the register of trademarks.
What does the Register of Trademark contain?
Is registration of a Trademark mandatory in India?
Can a registered user restrain third party from using identical or similar mark if third party is a continuous and prior user of the Trademark?
Can the details of the Trademark application be amended post filing of the same or post registration of the Trademark?
What is a Trademark opposition and who can file it?
What are the grounds under which an opposition may be filed?
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.
What are the steps which must be followed to file an opposition with the Registry?
Following are the steps to file an opposition:
- Filling a Notice of opposition: Any person who wishes to file a notice is required to mention important specifics concerning, details of the opposed application, details of the opposing party and grounds for opposition. Such notice must be filed within 4 months of the advertisement of the mark. If the Registry is satisfied with the notice, it will then serve a copy to the concerned applicant. The applicant has 2 months from date of receipt of the notice to file a counterstatement or else the Registry may deem the application of the trademark as abandoned.
- Filling of Evidence: The opponent upon receiving a copy of the counterstatement is required to file evidence by way of affidavit within 2 months (which is extendable by 1 month) from the date of receipt of the counterstatement. If the opponent fails to do so, the opposition will be treated as abandoned and the application may proceed towards registration. Similarly, the applicant is also provided with 2 months for filing similar evidence with the Registrar. The Registrar may, upon request extend the period of filing by 1 month. If applicant does not wish to submit any evidence and wishes to instead rely on facts already stated in the counter statement, should be intimated in writing to the Registrar and the opponent. If required, the parties may file additional evidence subsequently.
- Hearing of the parties: Upon completion of the evidence stage, the Tribunal generates a hearing notice specifying the date on which the parties will be heard. Such a notice must be sent by the Registrar at least 1 month before the date of first hearing. Within 14 days from the receipt of such notice, whoever intends to appear will notify by submitting the relevant form to the Registrar. Any party who fails to do so may be treated as not desiring to be heard and the matter may proceed accordingly. After hearing the opponent and the Applicant, the Registrar is liable to decide whether the concerned application of trademark is refused or has the opposition been cancelled.
What is Rectification of trademark and who may file for it?
What are the grounds under which an application for rectification may be filed?
Following are the grounds under which an application for rectification can be filed:
- The trademark was registered without any bonafide 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 in case of the goods and the services for which the mark is registered or there is no longer any public advantage for the mark to remain registered.
What is the procedure to file a Rectification?
The law prescribes the following procedure to file an application for rectification:
- An application for rectification of an entry relating to a trademark should be accompanied by a statement. The statement must set out the nature of the Applicant’s interest, the facts upon which he basis the rectification and the relief which he seeks.
- Within 2 months (extendable by 1 month) from the receipt of the copy of such application, the Registered Proprietor send to the Office of the trademark Registry a counterstatement stating the grounds on which the application for the rectification is contested and the same be served to the applicant within 1 month from the receipt of the same. The parties may also file evidence which in the digitized form and uploaded in the Trade Mark Automation System and subsequently integrated with the relevant records of the proceedings.
- Afterwards, the Registry will send a notice in writing to the registered proprietor stating the grounds under which the trademark proposes to rectify the register. The notice will specify the time at which the parties will be heard. On the date fixed for hearing, the Hearing Officer communicates to the parties its decision along with the grounds of the same.
Are there any variation in the official fee depending upon the nature of the applicant?
Yes, the applicant is charged a reduced official fee 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
What is the validity of a registered Trademark? Can a Trademark registration be renewed?
Is the Trademark liable to be removed from the register of Trademarks on the grounds of non-use?
In case the Trademark registration expires, can it be restored?
What are the remedies available to an owner of a trademark when the same is copied /infringed?
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. While infringement of a trademark is a continuing offence, a suit may be filed within 3 years’ time from the date of the infringement or within 3 years’ time from the date of knowledge of infringement.
- 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: Chapter XII of The Trade Marks Act, 1999 provides for imprisonment for a term not less than six months which may extend up to three years and/or a fine not less than fifty thousand rupees which may extend up to two lakh rupees.
What are the Reliefs which a court may grant against any unauthorized use of a mark?
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 infringing labels and marks for the purpose of destruction or reassure.