Introduction

The Trademark Act, 1999 was enforced by the Government of India by complying with its TRIPS (Trade-related aspects of Intellectual Property Rights) obligation recommended by the World Trade Organization (WTO). The aim of the Act is to grant protection to the users of trademark and direct the conditions on the property and also provide legal remedies for the implementation of trademark rights.

Intellectual Property Rights (IPR) is protection of rights generating from human intellect. These are rights which are a result intangible creations and human creativity. Amongst other categories of rights under IPR, Trademark is an important one. The word trademark is self-explanatory, it is anything which can help one differentiate a product in the market; it could be a name, a symbol, a slogan, a tune, a design etc.

What is a Trademark?

A trademark is a sign of sort which helps a person in distinguishing a product with any other similar product in the market. It is different from a generic word or a sentence. A trademark is symbol of goodwill of a trader in the market. A good trademark is unique and easily recognizable. A trademark is a creation of the intellect, however an ideal trademark should fulfill the following requirements:

• The selected mark should be capable of being represented graphically (that is in the paper form).
• It should be capable of distinguishing the goods or services of one undertaking from those of others.
• 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.

A trademark is designated by:

• ™ (™ is used for an unregistered trademark. It is used to promote or brand goods).
• ℠ (used for an unregistered service mark. It is used to promote or brand services).
• ® (letter R is surrounded by a circle and used for registered trademark).

What are the types of Trademarks?

The The Trademark Act, 1999 does not classify trademarks however, based on the nature and characteristic of trademarks, we can divide them as follows:

1. Service Trademark: This type of mark is used by a service provider to differentiate their service from others. Example, hotel services, internet services like Google or Yahoo, app based service providers like Urban Company etc.
2. Product Trademark: These marks are the most common ones. These are the marks which we usually see on the products we buy. It helps in making a product familiar and trustworthy for the customer. Example, Nestle, Cadbury etc.
3. Collective Trademark: These are marks owned and used by large corporate groups as a whole for their goods or services. Example, TATA Group, Reliance etc.
4. Certification Trademark: The certification marks are used to define the standard. They guarantee the consumers that the product meets certain prescribed standards. Example, ISI, ISO-9000 etc.
5. Shape Trademark: Companies register trademarks for their products so that competitors do not copy them. Example, shape of Coca-Cola bottles is registered.

Why should one register a Trademark and what is the process of it?

A trademark confers upon the proprietor an absolute and exclusive right to use the mark to market their products or services. It helps in maintaining and protecting the goodwill of a branch. And most importantly in case of any infringement a registered trademark owner can approach the competent court of law and can seek appropriate remedies against such infringement.

The process of registration is fairly simple and can be found on the official IPR website. Any person who claims to be the owner/proprietor of the mark can file for registration. The person needs file an application with the Registrar at the Trade Marks Registry along with all the details like name of the goods, mark and services, class of goods and the services in which it falls, name and address of the applicant and duration of use of the mark.

The Act lays down that a mark which is ‘deceptively similar’ to another mark cannot be granted a registration. In addition to this section 9 of the Act gives absolute grounds for refusal of registration which includes marks which may deceive public or cause confusion, marks which are scandalous or obscene matter etc. The basic thumb rule one needs to apply before applying for a trademark is ensuring that the mark is not similar to any other mark. The mark needs to unique and must come as a result of human labour.

What are the legal remedies available against Infringement and/or Passing-off?

Under the Trade Marks Act, both civil and criminal remedies are simultaneously available against infringement and passing off.

Infringement of trademark is violation of the rights which are exclusive to a person who has the ownership of a trademark. Infringement of trademark happens when a “mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark (section 29(1) of the Act).” However, it is pertinent to note that the Act protects the vested rights of a prior user against a registered proprietor which is based on common law principles.

Passing off is a common law tort, recognized under the India laws. The Act provides protection to unregistered marks as well by way of the recognizing passing off as a ground for offence. Passing off prevents a person from misrepresenting or misleading the consumers and damaging the goodwill of a trader.

Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action against violation of trademarks in India. In India, a combined civil action for infringement of trademark and passing off can be initiated.

The courts use the ‘test of similarity’ while decided whether a mark is infringing another mark of not. For the conclusion, if one mark is deceptively similar to another the essential features of the two are to be considered.

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FREQUENTLY ASKED QUESTIONS (FAQs) ON TRADEMARK LAW

Question: What is the difference between a trade name and a trademark?

Answer: A trade name or business name is the name which identifies a business. It is either the formal name under which a business is incorporated or organized, or the assumed or fictitious business name adopted by the business. A trademark or service mark is the word(s), logo, or slogan used in connection with goods or services, such as a brand name. Trade names are sometimes used as trademarks or service marks, but this is not always the case.

Question: What is a Service Mark?

Answer: It is a sign or logo or representation or design which distinguishes the services of an enterprise from another enterprise.

Question: What is a Collective Mark?

Answer: It is a sign or logo or representation or design which is used by employees and a collective group, or by members of a collaborative association, or the other group or organization to identify the source of goods or services.

Question: What is a Certification Mark?

Answer: A certification mark is a type of trademark that is used to show consumers that particular goods and/or services, or their providers, have met certain standards.

Question: For how much time a registered trademark is effective and can it be renewed?

Answer: The registration of a trademark is valid for a period of 10 years. It can be renewed every 10 years, perpetually.

Question: When and how the renewal for Trademark can be filed?

Answer: In India, renewal request should be filed in FORM TM-R within one year before the expiry of the last registration of trademark.

Question: Is there any extra charge payable if the renewal fee is not paid on time?

Answer: If renewal fee is not paid till the expiration of last registration; surcharge has to be paid along with prescribed fee accompanied to form TM-R. If renewal fee along with surcharge is not paid till the expiry of six months after expiration of last registration, trademark is liable to be removed.

Question: What if the procedure if the Trademark is removed for nonpayment of renewal fees?

Answer: Once removed, restoration of trademark can be requested in form TM-R along with prescribed fees and applicable renewal fees (physical filling: 10,000, e-Filling: 9000). TM-R can be filed within one year from the expiration of last registration of the trademark.

Question: Is the registration of trademark mandatory in India?

Answer: No, registration of a Trademark is not mandatory in India but it is advisable to do so.

Question: How the Symbol ® and TM are to be used in India?

Answer: Only the proprietor of a registered trademark can use the symbol ® in India. Using the symbol ® unless the mark has been registered is unlawful in India. Using symbol TM with trademark simply means that one claims to be the proprietor of the trademark. There is no prohibition on the use of the symbol TM in India.

Question: Can Three (3) dimensional or 3-D trademarks be registered in India?

Answer: Yes as per the Indian trademark Law 3-D marks or Three Dimensional marks can be registered in India.

Question: Can Sound and Smell be registered as a trademark in India?

Answer: Yes, sound and smell can be registered as a trademark in India under the Indian trademark law.

Question: Can a domain name be registered as a trademark or service mark in India?

Answer: Yes, so long it is being used as a trademark or service mark. If it is merely used to indicate the URL or address at which a web site may be found, such use is not sufficient. It must be used a source identifier for the goods or services.

Question: Is it possible to have a descriptive trademark registered in India?

Answer: No, It is not possible to register such a trademark.

Question: Can someone register a trademark/logo under the copyright act also?

Answer: Yes, to avail complete and exclusive authority/monopoly over and certain unique representation of your trademark/logo, one may register the same under the jurisdictional Copyright Act also.

Question: Can the ownership and rights over a registered trademark be transferred to another person or company?

Answer: Yes, the owner of a registered trademark may transfer the ownership of the trademark and all the rights associated with it, to another person or company.

Question: When can a person or body corporate use the TM or SM symbols?

Answer: The “TM” and “SM” designations (“trademark” and “service mark,” respectively) are commonly used as superscripts or subscripts after trademarks and service marks to place the public on notice that rights in the mark are being claimed. These symbols may be used as soon as the mark is in use without any registration of the mark.

Question: Is an INDIAN Trademark registration valid outside the INDIA?

Answer: No. Certain countries, however, do recognize an Indian registration as a basis for registering the mark in those countries.

Question: How do I get my trademark registered in India? What is the process for trademark registration?

Answer: Here’s an easy guide through which a person/entity could register a Trademark:

• Decide or Come up with a Mark/Name/Logo for the specified product/Company’s name: Decide on which Mark/Name/Logo/Device you want to register as a trademark.
• Trademark Search: The first and foremost step is to search and ensure whether there are any similar trademarks already registered or not. This would help you to overcome any grounds of refusal for rejection of a Trademark application. This search could be done at Public Search of Trade Marks website.
• Filing a Trademark Registration Application: After ensuring with the Trademark Search, A trademark application can be made with the Trademark Registry. This application could be done either offline (at the Trademark Offices) or through Online Mode.
• Examination: After an application is filed, the same is Examined by the Examiner of Trademarks. Normally the Examination process takes 04 to 08 months to be completed. The examiner can also call for any clarifications from the applicant if any discrepancies are found, and the same shall be justified from the end of the applicant.
• Publication: Once the application is examined thoroughly, the same shall be published in the Trademark Journal. The purpose of the publication is with respect to any Objections raised, if any, by any other entity or person.
• Registration: Usually after 06-08 months of the Trademark Publication, a Registration certificate is granted by the Trademark Office. The same could be renewed every 10 years for its due protection.

Question: What are the documents required for trademark registration?

Answer: The most important documents for trademark registration as follows:

1. Soft copy of the trademark.
2. In the case of an individual or a HUF:
   • Identity proof
   • Address proof
   • Citizenship
   • Business registration document (if available)
3. In the case of Company/LLP (any one):
   • Shops Establishment License
   • Certificate of Incorporation
   • Address proof of the company
4. In case of Partnership firm:
   • The Partnership Deed

Question: How much time does it take to get trademark registered?

Answer: Trademark Registration is a lengthy process and it takes around 12-18 months to obtain registration in a straight-forward case, without any objections or oppositions.