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Brand Names and Trademarks are crucial for the development of a business as they act as the market identity of businesses. Therefore, protection of Brand Names and Trademarks is particularly significant for any thriving business.
The team has prominent experience in advising corporate giants, start-ups and individuals, with expertise in initial Trademark search, handling, filing and managing complex national and international Trademark portfolios, building brand strategies for protecting brands and enforcement of legal rights and litigation.
We also provide post-registration services like renewals and maintenance of Trademark or services with regards to any changes required in the registered Trademark like assignment and licensing.
We provide legal opinions on issues relating to counterfeits, passing-off and infringement of Trademarks as well.
We maintain a system to keep a timely check on the upcoming deadlines and make every effort to stay in touch with our clients regularly.
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.
The registration of Trademark has the following benefits:
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:
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:
Yes, the reduced official fee applicable if the Applicant is:
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:
The court may grant the following reliefs in a suit for infringement or passing off:
It has been a pleasure working with a professional, efficient and knowledgable team of lawyers at Singhania & Partners' Intellectual Property Practice.
I really appreciate your expertise, professional and responsive approach and always have the feeling that our client is in very good hands.
We are always grateful and happy with your firm's swift work, starting from our incorporation till attaining the trademark it was done in a very short time.
We look forward to your legal guidance and support on our startup journey & definitely we shall speak about your work in our circle.
Many thanks for your diligent work on this matter. We greatly appreciate it.
The client’s satisfaction is evident from years of their association with us, more than a decade for a lot of them. We act as an extension of in-house legal teams and act as External Legal Counsel to you. Our efforts are towards being strategic partners in your growth and not to be just a law firm.
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