In today’s world, rapid technological advancement, extensive digital marketing and online ecommerce stores have enabled the consumers to experience a wide range of products and services under same or similar categories – and at the same time it has created the need for an ability to distinguish and choose the right product or service from amongst these large varieties.
Trademarks or brand names are recognizable signs, designs or expressions which provide the consumers capabilities to individualize the goods or services of a given enterprise and distinguish them from the goods or services of its competitors. Just like we recognize an individual by his/her face, we recognize a particular product, its manufacturer or seller by its trademark. A trademark can be a brand label, logo, or any slogan or picture or a combination of words and pictures which is associated with a particular product or service and tells us that the said product or service is manufactured or sold by enterprise A and not any other enterprise. It is a trademark which tells us that a shoe is from ‘X’ or ‘Y’ or ‘Z’, and we make our choice – to buy or not to buy!
In short, trademarks should be capable of being represented graphically and distinguish the goods and services of one person from that of another.
A Trademark is a type of intellectual property and has to be acquired, maintained and protected like any other property. A trademark can be acquired in three ways – by way of registration before the trademark registry, by way of assignment from an existing owner of trademark and by prior use of the mark. It is important to note that the best way to legally acquire a trademark is by prior use – Supreme Court held that ‘the rights of prior user are superior to that of registration’.
In India, trademarks are protected under The Trade Marks Act, 1999 (“TM Act”) – which came into effect on September 15, 2003 upon replacing the TM Act, 1958. TM Act provides for registration of marks under various classes as per the NICE Classification of goods and services, which is incorporated in the Schedule to the Rules under the TM Act. There are in aggregate 45 classes under the Nice Class Headings, which are covered by two broad types of trademarks –
A trademark can be protected on the basis of either use or registration. In countries that have traditionally based trademark protection on use, the registration of a trademark merely confirms the trademark right that has been acquired by use. Consequently, the first user has priority in a trademark dispute, not the one who first registered the trademark.
Once registered, a trademark will be valid for 10 years from the date of filing, which can be renewed from time to time. The benefits of trademark registration are as follows –
A mark is commonly registered as a wordmark or a device mark or logo. While wordmark is just a word, device mark may comprise of images and designs with or without words. When we try to trademark a word, we connect one brand with that word. We can trademark a word that identifies a company or its products. Generally when we come up with a good catch phrase, we may want to trademark it.
The golden rule is that made-up words and words that aren’t directly related to a product are the strongest words to trademark. The words which are descriptive (describe how we use a product) or generic (name a product) are difficult to trademark. In the case of descriptive marks, the Trade Marks Registry usually insists upon proof of prior use of the mark and the distinctiveness acquired through such use before granting a registration.
A Device Mark/ Logo gives the trademark owner the right to a particular combination of images, design and words taken together. Trademarking a logo is beneficial when an entity designs a unique and attractive logo and that is how it wants its customers to identify the entity. It is to be noted that the protection given by a logo is restricted to the logo itself, whereas the protection given by a wordmark are bigger since all the appearances and use of the word are protected by the Trademark Registration.
Any person claiming to be the proprietor of a trademark used or proposed to be used by that person can file an application for registration.
The first step is to decide the mark – word or device; and to decide the class under which the mark will be registered – The application for registration of the trademark can either be filed in a singleclass or multi- class totally depending on the goods and services the business pertains to.
The second step – Before registration of a mark a search is recommended to identify similar marks already registered. It is possible to run a search internally on the trademark registry website, or through an external trademark attorney. This is advisable although not compulsory. In opposition proceedings or in infringement / passing off actions (passing off action is essentially an action in deceit where the common law rule is that no person is entitled to carry on his or her business on pretext that the said business is of that of another), such search reports act as proof of honesty and good faith in the adoption of the marks.
The third step is to file an application in Form TM- A which can be either filed online through the official IP India website or physically at the Trade Marks Office depending on the jurisdiction of the trademark. Once the Trademark registration application is filed with the Trademark Registrar, a trademark application allotment number is provided.
The fourth step is to overcome the objections by providing clarifications required under the “Official Examination Report” sent by The Trade Marks Registry.
Thereafter the trademark is advertised by publication in the “Trade Marks Journal,” which is a Government of India publication, published by the Trade Marks Registry.
After publication, if there is no opposition received on the mark within the specified opposition period of four months, then the registration is granted. On the other hand, if it is opposed by a third party, a reply to opposition has to be filed by applicant, the matter is heard and registration is granted only if the matter is decided in favour of the applicant.
In case the reply to opposition is not accepted by the registry, the trademark will be removed from the Journal and the application for registration will be rejected. At this stage, the applicant may file an appeal to the Intellectual Property Appellate Board.
Upon the registration being granted, a registration certificate is issued by the registry. The process of registration may take months or years, but the registration certificate is always effective from the date on which the application is filed.
It is a standard practice to use the “TM” symbol during pendency of trademark application or “®” symbol after trademark registration, as appropriate. The “TM” symbol gives an indication to the general public that the owner of the mark has filed a Trademark application with the department for exclusive rights to a mark. The “®” symbol gives an indication to the general public that the Trademark has been registered with the department and is not available for use by anyone except the owner of the Trademark.
Prior use of the trademark is not a prerequisite for filing application or its registration and an application may be made for registration even if the applicant wants to use the trademark in the future. In such a case, the application can be filed on a “proposed to be used basis”.
Registration of a trademark is valid for ten years and thereafter it is renewable for a subsequent period of ten years. Non-renewal leads to a lapse of registration. However, there is restoration period during which a lapsed registration can be restored.
Rejection – An application for registration of a trademark is usually rejected by the Registrar if the mark is confusing, or fails to achieve distinctiveness or is a generic word commonly used in the current language
Non-Renewal – In case an owner of a registered trademark does not renew or restore the trademark within the prescribed period in spite of receipt of a notice of renewal, the registry treats the mark as ‘Abandoned’ and the Registrar shall remove the mark from the register
Cancellation – A registered trademark can be cancelled by filing an application under Section 58 of the Act to the Registrar of Trademarks.
When a trademark is lost, the rights of the proprietor on the mark will become void, and the mark would be open for registration by another entity.
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