Frequently Asked Questions About Trademarks
A trademark (popularly known as brand name) in layman’s language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking. The legal requirements to register a trademark under the Act are:(i) The selected mark should be capable of being represented graphically (that is in the paper form)(ii) It should be capable of distinguishing the goods or services of one undertaking from those of others(iii) It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person
If it is a word it should be easy to speak, spell and remember. The best trademarks are invented words or coined words or unique geometrical designs.Please avoid selection of a geographical name, common personal name or surname. No one can have monopoly right on it.Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc.)It is advisable to conduct a market survey to ascertain if same/similar mark is used in market.
Under modern business condition a trademark performs four functionsa. It identifies the goods / or services and its originb. It guarantees its unchanged qualityc. It advertises the goods/servicesd. It creates an image for the goods/ services
Any person, claiming to be the proprietor of a trademark used or proposed to be used by him, may apply in writing in prescribed manner for registration. The application should contain the trademark, the goods/services, name and address of applicant and agent (if any) with power of attorney, the period of use of the mark. The application should be in English or Hindi. It should be filed at the appropriate office.The applications can be submitted personally at the Front Office Counter of the respective office or can be sent by post. These can also be filed on line through the e-filing gateway available at the official website.
(i) Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark(ii) An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service(iii) Letters or numerals or any combination thereof(iv) The right to proprietorship of a trademark may be acquired by either registration under the Act or by use in relation to particular goods or service(v) Devices, including fancy devices or symbols(vi) Monograms(vii) Combination of colors or even a single color in combination with a word or device(viii) Shape of goods or their packaging(ix) Marks constituting a 3- dimensional sign(x) Sound marks when represented in conventional notation or described in words by being graphically represented
The Registered Proprietor of a trademark can create establish and protect the goodwill of his products or services, he can stop other traders from unlawfully using his trademark, sue for damages and secure destruction of infringing goods and or labels.The Government earns revenue as a fee for registration and protection of registration of trademarksThe Legal professionals render services to the entrepreneurs regarding selection registration and protection of trademarks and get remunerations for the sameThe Purchaser and ultimately Consumers of goods and services get options to choose the best.
The registration of a trademark confers upon the owner the exclusive right to the use the trademark in relation to the goods or services in respect of which the mark is registered and to indicate so by using the symbol (R), and seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc. Also, where two or more persons have registered identical or nearly similar marks due to special circumstances, such exclusive right does not operate against each other.
(i) The national statues i.e., the Trade Marks Act, 1999 and rules made thereunder (ii) International multilateral convention(iii) National bilateral treaty(iv) Regional treaty(v) Decision of the courts(vi) Office practice reduced in Manuals and guidelines and rulings of the Courts(vii) Decision of Intellectual Property Appellate Board(viii) Text books written by academician and professional experts
The register of trademark currently maintained in electronic form contains inter alia the trademark the class and goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred; the address of the proprietors; particulars of trade or other description of the proprietor; the convention application date (if applicable); where a trademark has been registered with the consent of proprietor of an earlier mark or earlier rights, that fact.
The basic principle is that the trademark applied for should not be substantially altered affecting its identity. Subject to this changes are permissible according to rules detailed in the subordinate legislation.
It can be removed on application to the Registrar on prescribed form on the ground that the mark is wrongly remaining on the register. The Registrar also can suo moto issue Notice for removal of a registered trademark?
The modern definition of trademark is that "it is a word, name, symbol, or device or a combination thereof, used by a person [including a business entity], or which a person has a bonafide intention to use, to identify and distinguish his or her goods or services from those manufactured or provided by others and to indicate the source of those goods or services."
Any Distinctive Words, Letters, Numerals, Pictures, Shapes, Colors, Logotypes, Labels etc.
Trade marks, Service marks, Collective marks, Certification marks, Well-known marks and Tradename1. Trade marksTrade marks are used to distinguish goods and 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.2. Service marksService marks are used to distinguish services rather than a product. Service marks are used in the United States and several other countries.3. Collective marksCollective mark is a trademark owned by an organization (such as an association), used by its members to identify themselves with a level of quality or accuracy, geographical origin, or other characteristics set by the organization.4. Certification marksType of trademark that is used to show consumers that particular goods and/or services, or their providers, have met certain standards.5. Well-known marksWell known trademark are widely known marks which are known to public and they therefore enjoy a special protection under Indian trademark law. even if they are unregistered.
The basics of a trademark is - A sign capable of identifying and distinguishing in the marketplace the products of one. enterprise from those of other enterprises- The terms "products" encompasses both goods and services.- Different from trade name: A trade name cannot be registered as a trademark unless it also functions as a trademark.- E.g. Apple Computer, Inc owns Apple computers
The "essential function" of a trademark is "to guarantee the identity of the origin of the trade-marked product to the consumer or ultimate user, by enabling him without any possibility of confusion to distinguish that product from products which have another origin. This guarantee of origin means that the consumer or ultimate user can be certain that a trade-marked product which is sold to him has not been subject at a previous stage of marketing to interference by a third person, without the authorization of the proprietor of the trade-mark, such as to affect the original condition of the product. The right attributed to the proprietor of preventing any use of the trade-mark which is likely to impair the guarantee of origin so understood is therefore part of the specific subject-matter of the trademark right.”
Selecting a trademark for your business should be done carefully. The trademark should be easy to speak, spell and remember. The best trademarks are invented words or coined words or unique geometrical designs. Pick a mark that is inherently distinctive.
Before filing a trademark application, you should consider (1) whether the mark you want to register is registrable, and (2) how difficult it will be to protect your mark based on the strength of the mark selected.
Your trademark should be distinctive at the same time easy to remember. The factors that would make your trademark registrable and protectable are:a. Invented or fanciful marksWords with no meaning that you have created, such as Google, Xerox etc. These marks are strongest because they are made up of one or more fanciful words that have no meaning at all outside of the related product or service. Thus, when a consumer uses a fanciful mark to identify the source of a product or service, there is no opportunity for confusion. b. Arbitrary marks Arbitrary marks have ordinary meaning, but are used in a way that disregards that ordinary meaning. They contribute no meaning to the goods being described. For example Apple for gadgetsc. Suggestive Marks Suggestive Marks are words that suggest meaning or relation but that do not describe the goods themselves . Suggestive marks are registrable and are also considered “strong” marks. GLANCE-A-DAY for “calendars”d. Descriptive marks Descriptive marks are words or designs (e.g., depiction of a television for “television repair services”) that describe the goods and/or services. Such marks are generally considered “weaker” and therefore more difficult to protect than fanciful and arbitrary marks.
You should be careful to avoid the following factors while deciding your trademark:a. Avoid generic wordsPlease avoid selection of generic words like a geographical name, common personal name or surname. No one can have monopoly right on it. An exception is if you can prove that your goods or services have become well known under the name or surname so that the word has acquired a second meaning in the public mind.b. Avoid descriptive wordsTerms that are merely descriptive of products and services cannot be protected as marks, and the more descriptive your mark is of your goods or services, the more difficult it may be to stop your competitors from using it.c. Avoid laudatory wordsAvoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc.)d. Avoid deceptively similar wordsMarks that are similar and resembling to another mark is likely to deceive or cause confusion among the trade and public. It is advisable to conduct a market survey to ascertain if same/similar mark is used in market.
A trademark is a distinctive sign that identifies certain goods or services as those produced or provided by a specific person or enterprise.They usually consist of one or a combination of words, letters and numbers and may even consist of drawings, symbols, three-dimensional signs such as shape and packaging of goods, or colours used as a distinguishing feature and protect its associated reputation.It is governed by the Trade Marks Act, 1999 in IndiaThe validity of a trademark is for 10 years ,however it can be renewed every 10 years making it perpetual.The protection of a trademark can only be provided upon registration with the Registrar of Trade marks .The registration does not include a provisional application, but it requires a trademark search.The right is territorial in nature ,therefore an application must be made to each country individually where one wishes to secure the trademark rights.A registered trademark retains the exclusivity of the associated goods or services in the market and prevents others competitors from using similar kinds of marks or texts in their branding. The registration of trademark is for brand establishment and trust inculcation in the minds of the customers.
A Copyright is an exclusive right granted to the creators of original literary, scientific and artistic works. It gives the creator the right to exclusively copy or reproduce or publish the work for monetary gains or otherwise.Rights on creations such as art, poetry, graphic designs, musical lyrics, novels, film, original architectural designs, website content, etc. can be granted under copyright.They do not protect logos, slogans, and brand names unlike trademarksIt is governed under The Copyright Act, 1957Unlike patents and trademarks, the registration of such copyright is not compulsory, as the copyright over the original work is created the moment the author creates the work.No provisional application required as registration is not requiredThe validity of the copyright is for life time of the author + 60 years after his/her death.
A patent is an exclusive right over an invention awarded if the invention is found to be new, novel, contains inventive step and has industrial applicability. It prevent others from making, selling, distributing, importing or using the invention, without license or authorization, for a fixed period of time.It is governed by The Patents Act, 1970The registration for a grant of patent is compulsory with the Office of the Controller General of PatentsThe right is territorial in nature ,therefore an application must be made to each country individually where one wishes to secure the patent rights.A provisional application can be made 12 months prior to filing a complete specification.The validity of a patent is for 20 years from the date of application , and unlike trademarks they cannot be renewed after that.However, an application to the Controller for compulsory license for the patent may be made by any person interested after the expiry of three years from the date of grant of the patent on the following grounds:1. That the reasonable requirements of public with respect to the patented invention have not been satisfied, or2. That the patented invention is not available to the public at reasonably affordable price, or3. That the patented invention is not worked in the territory of Such an application may also be made by the licensee.
Distinctiveness that manifest itself in the form of invented words or pictures, but it will not be achieved if generic or vague descriptive terms are used to describe the trademark in the application for its registration. This form of distinctiveness is known as “inherent distinctiveness”.
To be eligible for registration, a trademark must possess distinctive characteristics that cause the public and its consumers to understand that the goods bearing that trademark are different from goods originating from other sources.
This raises the question of whether a trademark that is not inherently distinctive can still be registered. The answer is yes, but only if it is proved that the trademark has been used for a long enough time that it is known to the public and they are able to distinguish goods bearing the mark from the goods of other sources. This is referred to as “factual distinctiveness.”
Every trademark has a tendency to identify the goods sold under them as emanating from a particular source. This tendency with the efflux of time gets strengthened and a particular trademark gets registered or mentally associated in the minds of the consumers as distinctive of the product and its source. It can also be referred as ‘strength’ of the mark. Some trademarks are distinct from their inception due to their inherent characters and they are given legal protection immediately upon use as a trademark. Thus there is a correlation between ‘strength’ and ‘secondary meaning’ of a trademark. A non-inherently distinctive mark must have that quantum of strength or secondary meaning to qualify as trademark. In litigation the determination of whether there is an infringement requires an evaluation of the strength of that trademark hence the secondary meaning for a non-inherently distinctive mark is a threshold issue of trademark validity.Laudatory words or terms of praise, such as PERFECTION or BRAVO, and also common slogans, are also usually devoid of distinctiveness. Although practice has now changed, in the past letter combinations that were not words were usually regarded as non-distinctive, and likewise with number combinations.The easiest way to indicate how a mark might be non-distinctive is when it is descriptive. If a mark consists exclusively of a sign which serves in trade to describe a characteristic of a product, then this is necessarily non-distinctive. This prohibition of registrability also has a public policy aspect of keeping signs free for traders to use.
Evidence of use is highly important to a trademark owner if his or her trademark is not inherently distinctive. Trademark owners should collect evidence that shows, prima facie, acquired distinctiveness based on at least five years of use up to the date the claim is made. However, the number of required years varies on a case-by-case basis. In some cases, evidence of use dates back to less than five years after a mark’s filing, but the evidence may nevertheless be able to demonstrate sufficient distribution or advertising for the mark to become distinctive through use.Source: Pranav Vaidya, HIDAYATULLAH NATIONAL LAW UNIVERSITY, RAIPUR, C.G
The applicant is categorized in four types, i.e., individual, startup, small enterprise and fourth type cover all types of applicants who are not covered under the said three types. Certain benefits are being provided to individual, startup and small enterprise in the form of reduced fees.For identifying an entity as ‘small enterprise’ and ‘startup’, certain criteria. are given.
Any person, claiming to be the proprietor of a trademark used or proposed to be used by him, may apply in writing in prescribed manner for registration. An applicant may identify itself as a sole proprietorship. A sole proprietorship generally means a business which has only one owner Small Enterprise(i) in case of an enterprise engaged in the manufacture or production of goods, an enterprise where the investment in plant and machinery does not exceed the limit specified for a medium enterprise under clause (a) of sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006 (27 of 2006); andii) In case of an enterprise engaged in providing or rendering of services, an enterprise where the investment in equipment is not more than the limit specified for a medium enterprise under clause (b) of sub-section (1) of section 7 of the Micro, Small and Medium Enterprises Development Act, 2006. Explanation: “enterprise” means an industrial undertakings or a business concern or any other establishment, by whatever name called, engaged in the manufacture or production of goods in any manner pertain to any industry specified in the first schedule to the Industries (Development and Regulation) Act, 1951 (65 of 1951) or engages in providing or rendering or any services or services in such an industry. (iii) In case of a foreign enterprise, an enterprise which fulfills the requirements as mentioned in clauses (i) and (ii) above.Explanation: In calculating the investment in the plant and machinery, reference rates of foreign currency of Reserve Bank of India shall prevailStartup(i) an entity in India recognized as a startup by the competent authority under Startup India initiative, Any person, claiming to be the proprietor of a trademark used or proposed to be used by him, may apply in writing in prescribed manner for registration. “Any person” – is wide enough to include any individual, company, or association of persons or body of individuals, society, HUF, partnership firm, whether registered or not , Government, trust etc. (ii) In case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation / registration as per Startup India Initiative and submitting declaration to that effect. Explanation: In calculating the turnover, reference rates of foreign currency of Reserve Bank of India shall prevail For claiming the benefit as ‘Small Enterprise’ or ‘Startup’, documentary evidence (i.e., requisite certificate) shall be required to be submitted at the Indian Trade Marks Registry.
A company may make an application for registration of a trade mark in its own corporate name. In the case of a company incorporated outside India, the country of incorporation and the nature of registration, if any, is to be mentioned.
Partnership Firm can apply for Trade Mark Registration in its own name. Where a Firm subsequently undergoes a change in its constitution the reconstituted Firm may use the trade mark.
A Department of Government, Central or State/or a Government owned or controlled company may also make application for registration of trade mark like any other person.
Application may be made in the name of the trust, represented by its managing trustee/chairman etc trading as XYZ.
Section 24 enables registration of two or more persons to be registered as joint proprietors of the trade mark, where the mark is used or proposed to be used in relation to goods or services connected with the joint applicants.
The Trade Marks Rules, 2002, has been replaced by The Trade Marks Rules, 2017. On 6 March 2017, new Trade Marks Rules came in effect. The Trade Marks Rules, 2002 are substantially amended and can certainly have an impact on the trade mark filing and prosecution strategy, among other things.
Application for registration of trade markThis form is for filing an application for registration of trade mark/collective marks/certification mark/series of trade mark for specification of goods or services in one or more than one classes, with or without priority.
Opposition/Application for Rectification of the Register/Counter Statement/Refusal or invalidation of a trade mark under Geographical Indication of Goods (Regulation and Protection) Act, 1999.
Application for Renewal/Restoration of registration of a trade mark or for payment of surcharge towards the renewal.
Application for registration of Registered User/Variation of Registered User/Cancellation of Registered Users and Notice of intention to intervene in proceeding in cancellation/variation
Application for search and certificate under Section 45(1) of the Copyright Act, 1957
Trade Marks Agent Registration/Renewal/Restoration/Alteration
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