Trademark
Brand Equity has great significance in the competitive worlds of business and lifestyles. It has become crucial to protect the brand and in acquiring benefit from the goodwill and image associated with it.
The marking of goods for various purposes, including distinguishing them from those of other traders, can be traced back to ancient times. Similarly, the existence of rules governing the use of such marks goes back to the medieval craft guilds. The Trademarks Registration Act, 1875 of England was the first legislation introduced in the history of trademarks. It was only in the nineteenth century that the idea evolved that a mark, which has become distinctive of a particular trader’s goods, and so attracted valuable goodwill, might be considered as a type of property, now described as “Intellectual Property”. The trademarks law in India viz. Trademarks Act 1999 (the ‘’Act”) aims to take into account of the needs of industry and commerce and align nation with other countries, both in the EU and internationally.
Trademark is a sign, symbol or a combination of signs and symbols which are used in relation to goods or services. Its distinctive sign or indicator is used by an individual or an organization to identify and distinguish the products or services of one entity from those of the other entities. Such signs may use words or letters such as APPLE, IBM, CNBC etc. Numerals such as 555, pictures, shape for e.g. the shape of a Coca Cola bottle. The marking of goods for various purposes, including distinguishing them from those of other traders, can be traced back to ancient times. Similarly, the existence of rules governing the use of such marks goes back to the medieval craft guilds. Trademark registration protects investments of yesterday in brand building and reserve resources for tomorrow.
‘Mark’ includes a word, signature, device, letter, numeral, brand, heading, label, name written in a notable style, the shape of goods, packaging, or any combination thereof. The marks lacking distinctive character, or which specify a purpose, significance or geographical origin of the goods, or marks which are already a trend in the trade out of their habitual use may not be registered. However, this ineligibility does not apply to marks, which are well known in the market due to their recognition and consistent use.
Trademarks provide exclusive rights to use distinctive signs, such as symbols, colours, letters, shapes or names to identify the producer of a product, and protect its associated reputation. The main purpose of a trademark is to prevent customers from being misled or deceived. The period of protection varies, but a trademark can be renewed indefinitely. In addition many countries provide protection against unfair competition, sometimes by way of preventing misrepresentations as to trade origin regardless of registration of the trademark. In case of unregistered trademark, you must rely on the common law action of passing off if someone uses your mark without permission.
Kinds of Trademark
Marks, that are popularly known and generally regarded by the public as top-quality products or services, are said to be well known. . Section 2 (zg) of the Act states, “well-known trademark”, in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.
A collective mark is a sign used to distinguish goods or services of members of a collective group and to distinguish their goods and services from those of non-members, and to indicate membership in the group. The collective group can be either an association of which those enterprises are members or any other entity, including a public institution or a cooperative. The group generally establishes a set of criteria for using the collective mark and permits the members of the group to use the mark if they comply with those standards. The members are bound by regulations governing use of the collective mark. While filing an application for registration of Collective Trademark, the regulations governing use of the mark are required to be filed with the application.
Certification mark is used to distinguish goods or services that comply with a set of standards defined by the proprietor of the certification mark in respect of origin, material, and mode of manufacture of goods or performance of services, quality, accuracy and such other characteristics of the goods or services. Certification Mark is being used by a proprietor whose goods or services meets these established standards and is certified by accredited testing and certification organizations. The popular examples are ISI mark issued by Bureau of Indian Standards, CE mark stands for “European Conformity” etc. The trademark application is to be filed along with regulations governing the usage of the Certification Mark.
A service mark is a mark that identifies and distinguishes the source of a service rather than a product. E.g.: Advertising Agency, Banking, Financial Services, Hotels, Real Estate, Courier, Import Export etc. The service marks are used in the sale of services. While a mark for goods appears on the product or on its packaging, a service mark appears in promoting of the services.
International Classification of Goods and Services for the purpose of Registration
The Nice Classification consists of a classification of goods and services for the purposes of registering trademarks and service marks. The Nice Classification is based on a multilateral treaty administered by WIPO. This treaty is called the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, which was concluded in 1957. The referred agreement was entered in the city called ‘Nice’ in Southeast France and thus the Classification is commonly referred as ‘the Nice Classification’. The Nice Agreement is open to States party to the Paris Convention for the Protection of Industrial Property.
Classification of Goods and Services adopted in India
Section 7 of the 1999 Act provides that the Registrar shall classify goods and services in accordance with the international classification for registration of trademarks, which is known as Nice Classification.
The Fourth Schedule to Trademark Rules, 2002
Classification of goods and services – Name of the classes
(Parts of an article or apparatus are, in general, classified with the actual article or apparatus, except where such parts constitute articles included in other classes).
The index of goods or services appearing in the class headings are general indications relating to the fields to which, in principle, the goods or services belong.
Class 2: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordents; raw natural resins; metals in foil and powder form for painters; decorators; printers and artists
Class 3: Bleaching preparations and other substances for laundry use; cleaning; polishing; scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices
Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels(including motor spirit) and illuminants; candles, wicks
Class 5: Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparation for destroying vermin; fungicides, herbicides
Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores
Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs
Class 8: Hand tools and implements (hand-operated); cutlery; side arms; razors
Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus
Class 10: Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying ventilating, water supply and sanitary purposes
Class 12: Vehicles; apparatus for locomotion by land, air or water
Class 13: Firearms; ammunition and projectiles; explosives; fire works
Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and other chronometric instruments
Class 15: Musical instruments
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks
Class 17: Rubber, gutta percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal
Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery
Class 19: Building materials, (non-metallic), non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl, meerschaum and substitutes for all these materials, or of plastics
Class 21: Household or kitchen utensils and containers(not of precious metal or coated therewith); combs and sponges; brushes(except paints brushes); brush making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes
Class 22: Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes) padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials
Class 23: Yarns and threads, for textile use
Class 24: Textiles and textile goods, not included in other classes; bed and table covers.
Class 25: Clothing, footwear, headgear
Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers
Class 27: Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile)
Class 28: Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees
Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats
Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces, (condiments); spices; ice
Class 31: Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt
Class 32: Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
Class 33: Alcoholic beverages (except beers)
Class 34: Tobacco, smokers’ articles, matches
Class 36: Insurance, financial affairs; monetary affairs; real estate affairs
Class 37: Building construction; repair; installation services
Class 38: Telecommunications
Class 39: Transport; packaging and storage of goods; travel arrangement
Class 40: Treatment of materials
Class 41: Education; providing of training; entertainment; sporting and cultural activities
Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software
Class 43: Services for providing food and drink; temporary accommodation
Class 44: Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services
Class 45: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals
Use of ™ and ® symbols
While the ™ symbol alert the public that an application for registration of the mark is pending at the Trademarks Registry, the ® symbol, is used against marks which have already been registered by the Registry. Any use of ® symbol for an unregistered mark amounts to a legal offence.
Scope of Registration
The Trademark registration confers upon the owner exclusive rights to use the registered trademark in relation to the goods or services in respect of which the mark is registered. However, the exclusive right is subject to any limitation of area of use as entered in the register.
The registrar by virtue of Section 23 upon registering the trademark and issues the certificate of registration to the applicant. The date of registration of trademark shall be the date of filing of the application. Though registration of a trademark is not compulsory registration establishes that the registered owner is the proprietor of the mark covered by the registration. In case of unregistered goods yet well known brands, the owner of the brand can initiate of passing off action. The mark selected for registration by one person shall be distinguishable from the goods or services of the others; not deceptively similar to an existing mark of another person and not expressly prohibited under the Act. Trademark registration is very crucial for protection of a company’s intellectual property lest one who registers a mark identical to the company’s mark later will remain as a hurdle for the development of the company’s use of its trademark. Trademark registration regards you authoritatively that you are the rightful owner of the mark.
Advantages of Registering Trademark
Registering your trademark gives you the exclusive right to use your mark for the goods and/or services. A registered trademark may put people off using your trademark without your permission; allows you to take legal action against anyone who uses your trademark without your permission; allows trading standards, to bring criminal charges against counterfeiters if they use your trademark as it is your property. Also, you can sell it, or let other people have a license that allows them to use it.
Issue of Certificate of Registration
As a final stage after the procedure is completed the registrar by virtue of section 23 of the Act registers the trademark and the certificate of registration is issued to the applicant. The date of registration shall be the date on which the application for registration was made. Once granted the registration remains valid for a period of ten years from the date of application for registration. Renewal of registration shall be effected before the expiry of the validity, failing which the mark becomes liable to be removed from the Register on account of non-renewal. The request for renewal of a trademark shall be filed six months prior to the expiry of the validity of registration. Renewal and restoration of lapsed trademark is permitted in law, provided such a request is made within the maximum period of one year after the expiry of the validity. On lapse of one year after the expiry of validity, the mark shall stand removed from the register of trademark and would not qualify to be renewed. In such a situation, the proprietor shall be left only with the option to file a fresh application for registration and to go through the same procedural requirements as if the said application was a fresh application for registration.
Action against Infringement
Suits may be filed against the infringement of registered marks and in any suit; registration may be regarded as valid in all respects even years from the date of registration. Unregistered trademarks with reputation in India or internationally well-known trademarks can be protected against misuse in a passing off action. Wide powers has been given to the police to seize the infringed goods and penal punishment for violating a trademark has now been made cognizable and power of the civil courts to grant ex parte injunctions have been broadened.
Appellate Board
Section 83 of the Act states that the Central Government shall, by notification in the Official Gazette, establish an Appellate Board to be known as the Intellectual Property Appellate Board to exercise the jurisdiction, powers and authority conferred on it by or under this Act. The Appellate Board is constituted under the Act for the benefit of persons aggrieved by an order or decision of the Registrar and an application to cancel registration may also be made to the Appellate Board. An Intellectual Property Appellate Board (IPAB) has been constituted for speedy disposal of Appeals and rectification of applications which is based in Chennai.
Trademark Acts & Rules
Trademarks Act 1999
Trademarks Act (Amendment) 1999
Trademarks Rules 2002