CHAMBERS OF LAW (TRADE MARK ATTORNEYS)
A trademark is a distinctive industrial property, which is again distinct from other forms of intellectual property. The basic purpose of a trademark is to exclusively identify the commercial source or origin of products or services.
The terms "mark", "brand" and "logo" are also used to refer to "trademark". When used to refer to services rather than products, a trademark may be called a service mark.
• A trade mark may be a word, a letter a device or a numeral or any combination thereof.
• When a word is used as a Trade mark, it should be easy to pronounce, spell and remember.
• The ideal word for a Trade mark is an invented or coined word.
• Words which are laudatory or which directly describes the character or quality of the goods should not be adopted.
• Geographical names connected with the reputation or quality of the goods for which registration is sought should not be adopted.
• The TM symbol or SM may be used when trademark rights are claimed in relation to a mark.
The ® symbol is used to indicate that the mark has been so registered.
Trademarks are words, names, symbols, brands, devices, headings, labels, tickets, signatures, letters or numerals or any combination there of, used or proposed to be used by manufacturers of goods to identify and to distinguish their goods from goods manufactured and sold by other. A person who sells his goods under a particular Trademark acquires a sort of limited exclusive right to use the mark in relation to those goods. Such a right acquired by use is recognized as a form of property in the Trademark, and protection under common law. A person can also acquire a similar right over a trademark, not so far used but only proposed to be used, by registering it under the Trademark Act.
In India, you can protect a trademark for goods or services, on the basis of either use or registration or on the basis of both elements. A registration of a Trademark is for 10 years, but it can be renewed without restriction in time by payment of renewal fee for next 10 years. Thus a trademark may be protected indefinitely.
• Importance of Trademarks
• Why should you register a Trademark
• Acquiring Trademarks rights
• Who should register a Trademark
• The Trademarks Act 1999
• New Trademark Rules 2015
• Process of Registration
• Documents Required for Trademarks Registration
• Information Required for Trademarks Registration
• Different Forms of Protecting Trademarks
• Remedies Available
Importance of Trademarks
In short Trademark is a brand name. A trademark can be the most valuable assets of a company and may at times be worth more than the company's Land & Factory. The value of the trademark becomes prominent while considering a merger or an acquisition of a company.
Why should you register a Trademark:
• Registration of a trademark gives the registered owner of the mark exclusive right to use the mark in relation to goods or services for which the trademark has been granted.
• It identifies and distinguishes the source of the goods or services of the party from those of other.
• It is an evidence of ownership of the mark.
• To offer licenses & franchises.
• It serves as a notice to the public that you claim ownership in the mark.
• If a person uses a mark in connection with certain goods/ services in the course of trade, which is identical or deceptively similar to a registered trademark for similar goods/services, the registered owner will be able to sue for infringement of a trademark.
• If the mark is not registered, then the owner of the trademark can take the action of passing off under common law and the legal action under the passing off, requires proof of use and reputation of the Trademark each time an action is launched against an infringer. This process is very cumbersome.
• If you do not register your trademark and someone else registers a similar or identical mark, the owner of the registered mark prevents you from using the mark.
Acquiring Trademarks Rights:
• By Use
• By registration of the mark
A person who uses the mark first can prevent subsequent users from using the mark in respect of the same goods. He acquires common law right in the mark and can sue for passing off.
By virtue of the use of the Trademark the person gets a sort of exclusive right to use the Trademark in relation to the product/services. Similar rights can also be acquired by registration of the Trademark even if the mark is proposed to be used and is not currently used by the person. A Trademark is a form of property and enjoys protection either under The Trademarks Act., 1999 if it is registered or under the common law if it is unregistered.
WHO SHOULD REGISTER A TRADEMARK:
A manufacturer or a merchant of goods or a service provider who wishes to distinguish his goods from those of others can apply for registration. Even those proposing to use the mark at a later date can apply.
THE TRADEMARKS ACT 1999:
A new law has been enacted which has come into force on 15th September 2003 called THE TRADEMARKS ACT, 1999. Following are the salient changes in the New Act.
SERVICE MARK: Service marks are used by the services industry to indicate the source or origin of the services in India. Service marks can now be registered under classes 35 to 45. Service Industry providing services like Wholesale & Retail Traders, Showroom, Beauty & Health Care, Insurance, Courier, Transport, Communication, Educational & Entertainment are now in a position to protect their Names & Marks.
WELL KNOWN TRADEMARK: Now Well Known Trademarks will enjoy a greater protection. Persons will not be able to register or use the mark if that is a well-known trademark although the goods are different.
COLLECTING MARKS: Now it will be possible to register a Trademark by Associations or Co-operating Societies, Textile Associations, Jute Associations & Silk Associations etc.
SINGLE APPLICATIONS: Now a single application can be filed for registration in more than one class.
PROHIBITION ON USE OF THE SIMILAR CORPORATE NAME: Under the new Act, using the similar or same mark even only as part of their firm name or company name is prohibited.
DURATION OF THE REGISTRATION: The registration of a trademark is valid for a period of 10 years and can be renewed from time to time for further periods of 10 years. If the mark is not renewed it will be removed from the register. A mark that has been removed can be restored by filing an application with in 1 year from the expiration of the last renewal. By renewing it the mark can be kept alive indefinitely.
DIFFERENT CLASSES OF GOODS: There are 45 different classes of goods prescribed under the Trademarks Act.1999 An application is made in a particular class depending upon the goods on which it is being used or proposed to be used. Multiple applications can be made in different classes for the same mark.
PROCESS OF REGISTRATION IN INDIA
SEARCH: It is recommended to conduct a Trademark availability search in order to check if any similar Trademark has been filed in India, which may oppose your registration. The cost of the search is generally quite insignificant in comparison to the costs of re-branding if there is difficulty in using the Trademark because it infringes the right of others.
FILLING: A Trademark application is filed with Trademark office. Now the Trademark application can be filed for more than one class of goods in one application. An application with priority rights shall be filed within 6 months from the date of initial grant of the registration application of the mark in other country.
EXAMINATION: The Trademark Office will examine the registrability of the application, which includes distinctiveness, existing similarity with prior registrations, and completion of supporting documents, if accepted, the Trademark Office will issue an acceptance order and the Trademark is ordered for publication. Examination generally occurs within 3-4 months of filling of Trademark application, but the request for the expedite examination of an application can also be made, which costs 5 times the govt. fee for filling the Trademark application.
PUBLICATION: Trademark applications accepted by the Registrar are published in Trademark Journal. Any interested party may file a notice of opposition to the registration of the mark within 4 months from the date of last publication.
OPPOSITION: When the Trademark is advertised in the Trademark Journal, then third party can oppose the registration of the Trademark within the 4 months from the date of the Trademark journal made available to the public. Normally the following person opposes the registration of Trademark.
• The owner of an earlier Trademark application or registration covering a similar Trademark for similar goods.
• A person who has used the same or a similar Trademark prior to the client, but who has not sought registration of the Trademark.
If the Trademark application is opposed, then the Trademark office will request evidence in writing from both parties. If the dispute is not settled by the parties, then matter is determined at a hearing. Registration of an opposed Trademark application will be delayed pending till the determination of the opposition.
REGISTRATION: In the absences of opposition, a Trademark is registered, and the relative certificate of registration is issued for 10 years from the date of filing of an application. Now it is taking 18-24 months from the filling of the Trademark application to the final registration of the Trademark.
• Power of Attorney signed by the applicant & in the case of corporate body, by the Director or Legal representative of the company. (Please note that the power of Attorney need not be Legalized or Notarized
• Prints or label in jpeg format. For words marks/ labels are not required.
• Certified copy of the application which is the basis of the convention priority (if applicable) may be filed within 3 months from the Indian filing date.
• If Applicant is claiming user then applicant has to file notarized affidavit of use and it is advisable to file proof of use also at the time of filing application.
• Name of the Trademark/Service Mark to be registered.
• Full Names, Address, Nationality and Nature of the Business of the Applicant.
• Full Name & Nationality of the Proprietor/Partners of the Applicant firm.
• Date of first use of the Trademark/Service Mark in India, if any or whether it is proposed to be used.
• List of goods/services and classes or services according to the Nice classification.
• Translation and transileration of the Non-English word appearing on the mark.
• Exact meaning of the mark, if any in the foreign language other then the English language.
• Priority under the Paris convention can now be claimed in India. Details of Convention priority, if any first filed country, filing number and date.
DIFFERENT FORMS OF PROTECTING TRADEMARK :
If the mark is register able, then the best way is to protect it by registration and the infringement of the mark can easily be established. If the infringing mark is identical and the goods are same, then success in an action for infringement is almost certain unless the registration is attacked on the ground of invalid registration or the defendant establishes the honest concurrent user or acquiescence on the part of the registered proprietor or prior user.
If the mark is not identical but only similar, then the plaintiff will have to prove that the defendant's mark is deceptively similar, that is to say, the similarity is such as to be likely to deceive or cause confusion in the minds of the general public that the goods originates from the same source of plaintiff.
In the case of unregistered marks and marks which are not register able, then the only way that they can be protected is by an action of passing off. The plaintiff will have to prove sufficient use of the mark so as to create valuable goodwill of the business connected with the goods.
Criminal action against the infringers is possible whether the mark is registered or unregistered- Intention to deceive need not to be proved, evidence of fraudulent intention will be important factor in favour of the complaint.
• Injunction, Restraining present & future use of the mark.
• An account of profits at the option of plaintiff.
• An order for delivery up of the offending labels and marks for destructions.