FAQs – Trademark

A trademark popularly known as brand name is a distinctive/ identification symbol/sign, word, shape, device, label, phrase, numerals, packaging or their combination, which enables the consumer to distinguish and identify certain goods or services as those produced or provided by a specific person or enterprise from similar goods or services of another person or enterprise. Unique shape of the bottles of Coca-Cola with its distinctive logo, red imprint and design is a landmark example of trademark. Simply put – a trademark is a source indicator that makes business more visible in the marketplace.

A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the Services of one provider from services provided of another, and to indicate the source of the services. Eg.: Advertising agency, Banks, Software development, Hotels & Restaurants, Real estate, Courier, Building construction etc.

A trademark protects the owner of the mark by guaranteeing the exclusive right to use it to identify goods or services, or to authorize/assign another person, to use it on monetary return. Trademark promotes inventiveness and by rewarding the owners of trademark with recognition and financial profit. It also curbs unfair competitors, such as counterfeiters, from using similar distinctive signs to deceive the market. Trademark enables people with skill to produce goods and services, thereby aid trade globally.

A registered trademark is the one which has been approved and entered in the trademark register held by the Registrar of Trademarks under the Indian Trademark Act. Registration of the trademark is the legal proof of ownership.

Trademarks are of different forms, viz. invented or coined words, common or dictionary words which are applied on totally unrelated goods or pictures, labels, logo, letter; numeral marks; device of an article; or any combination thereof. Domain names and tag-lines for brands are also protected as trademarks.

Under modern business condition a trademark performs four functions; it identifies the goods or services and its origin; guarantees its unchanged quality; advertises the goods or services and creates an image for the goods or services.

Registration of trademark is not a legal compulsion, however, for the third party not to take advantage of the goodwill and reputation that is built in a mark, by adopting an identical or deceptively similar mark; it is advisable to register a trademark. Only a registered trademark is protected under Trademarks Act, 1999 enabling the owner to take legal action against infringement. The registration enhances its brand identity in the market and thereby enabling the owner to amass more returns from business. Moreover, registration grants statutory rights to the owner of the trademark.

All marks are not registrable. The Trademark Act, 1999 sets out certain conditions for a mark to be registrable. It must conform to certain statutory prescriptions. The fundamental principle that finds place in most national laws is that in order for a mark to be registrable, it shall be “distinctive” and shall not fall under restrictive / prohibited categories as directed by the Government. The trademark applied shall not be confusable or conflicting with earlier existing trademarks used by others for same goods or services. A word having a direct reference to the character or quality of goods is registrable unless it has acquired distinctiveness through long and continuous use. The mark should not conflict with a trademark already registered or pending registration in respect of similar goods.

A word in a foreign language may be considered as a ‘unique word’ for the purpose of registration as a trademark.

The Trademarks Act, 1999 provides protection for a term of 10 years and is renewable every ten (10) years. Non-renewal lapses the trademark registration.

Trademark registration protects the goodwill of a business and also helps to identify and distinguish the source of the goods or services of one party from those of the others. The registration of a trademark confers upon the owner, exclusive rights to use the trademark in relation to the goods/services registered for. He has the right to take legal action under this protection against infringement and can look forward to enhance his brand image and recognition. Trademark provides; the proprietor with the exclusive right to use the mark in relation to the goods/services for which it is registered; a statutory right to take a legal action against others who may infringe the registered trademark or one resembling it in relation to similar goods; it affords the proprietors the advantage of having the burden of proof in their favor. In case of the unregistered trademarks, the onus to prove that somebody is infringing on that trade mark is on the owner of the trade mark. Thus, registration passes the onus on the alleged infringer to prove that he has not infringed the registered trademark. Without registration, an owner of a trade mark cannot bring an action for infringement to protect the mark if it is copied by others which is a much simpler action than the common law action for passing off for protection of unregistered trademarks. The rights of the trademark are applicable only in India and separate applications are needed for each country. Trademark registration is an evidence of ownership of the trademark and also constructive notice nationwide are issued of the trademark owners’ claim. Trademark registration in India can also be used as a basis for obtaining registration in foreign countries. Thus, trademarks are important business tools as they allow companies to establish their products’ reputation. For instance, they prevent, an inferior product coming along and seizing the market by deceiving the consumer with same or similar brand names.

The ™ or ℠ sign indicates that the brand name or logo belong to the particular business and informs the world that the trademark is protected by the law. However registration has its advantages such as: a notice to the general public of the ownership in respect of the mark, a presumption of ownership and the exclusive right to use the mark in respect of the goods and services for which it is registered across India.

The application must be filed in the name of the owner of the trademark; usually an individual, corporation or partnership. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.

A trademark search is designed to identify pre-existing trademarks that have the potential to conflict with your brand name. Without the benefit of a trademark search, you run the risk of being sued for trademark infringement and losing the right to use your new business name, product name, domain name or slogan after you have invested in that name. You would not like to promote a name that is confusingly similar to another company’s brands/ trademarks and subjects you to the risk of a lawsuit for trademark infringement. Your search results will help you complete your own application by giving you numerous examples of registered and pending marks.

The best trademarks are invented words or coined words. If the trademark is a word, select an easy to speak, spell and remember. Selection of geographical names is not advisable as no one can have monopoly right on it. Adopting laudatory word or words that describe the quality of goods, such as best, excellent, superb…etc are to be avoided. A search in trademark office and a market survey to ascertain if similar mark is used in market, can be done while selecting a trademark.

Before adopting a mark, conduct a detailed and thorough search for the availability of the marks in the trademark register. To make sure that there are no similar marks registered for the same services or goods. Moreover, do not adopt a common term or generic term or purely descriptive term of any characteristic of the goods and services.

An application for registration of trademark can be made by any person claiming to be the proprietor of a trademark used or proposed to be used, on a prescribed form on payment of its requisite fees along with proper drafting stating the nature of the goods/services at the appropriate office of trademark registry based on residence or place of business or address of service in case of foreign applications. Such person can include an individual, company (includes a company still to be incorporated under the Companies Act, 1956), firm, partner, the government, trust or joint applicants. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark. An application filed by a person who is not the owner of the mark will be declared void.

Though not required that you are an Indian citizen, an applicant’s citizenship must be set forth in the record. If an applicant is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, then the applicant must choose which citizenship will be printed in the Official Gazette and on the certificate of registration.

After filing an application for registration of a trademark, while the mark is pending for registration, one can use the TM (the letters TM written in superscript style) indicating pending registration of a trade mark or ℠ (the letters SM written in superscript style) indicating pending registration of a service mark. It is an alert to the users/public that the mark bearing this symbol is being used in commerce, and/or that an application for registration of the mark is pending at the trademarks registry. The ® symbol can only be used against marks which have already been registered by the registry.

The governing law for protection of trademark in India is the Trademarks Act, 1999 and the accompanying Trademark Rules, 2002. Historically speaking, it is the Trademarks Act, 1940, for the first time provided mechanism for statutory protection and registration of trademarks. Prior to this; trademark was governed by principles of common law. The 1940 Act was repealed by the Trade and Merchandise Marks Act in 1958. With evolution of law, the Act of 1958 also got repealed and replaced by the Trademarks Act, 1999. The new Act has come into force from 15 September 2003 which has given statutory recognition and better protection of well-known marks. It provides registration of marks for services as well and has established a specialized appellate tribunal amongst many other new provisions.

Rule 4 of the Trade Marks Rules, 2002 defines that the principal place of business in India is the place where the business is carried on at that particular place only, but where the business is carried on at more than one place then place mentioned by the person, carrying on the business, as principal place of business.

The trademark registration in India is valid only in the territory of Government of India. Trademark registration in India can be used as a basis for obtaining registration in foreign countries.

Yes, sound and smell are registrable as a mark. They should be capable of being reproduced graphically and should be distinctive. The musical notations along with the sound recording and chemical formula along with sample are the specifications for the sound and smell trademark respectively.

Yes, the definition of a mark under Section 2 (m) of the Act of 1999 includes shape of goods, a device, brand, heading, label, letter, numeral, packaging, combination of colours or any combination of the aforesaid features.

A collective mark is any trademark or service mark used or intended to use in the market place by an association or collective group or organization to distinguish the goods or services of members of an association of persons, which is the proprietor of the mark and is registrable under the Act. The members of the association are bound by regulations governing use of the collective mark which is required to be filed along with the application. If the registrar is satisfied with the terms, then it is published in the trademarks journal and follows the same procedure as other applications.

Certification mark is a mark which is certified by the proprietor of the mark, in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics. A certification mark can be used by others with the permission of the owner to use that particular name, device, and symbol. The popular examples are ISI mark issued by Bureau of Indian Standards and CE mark stands for “European Conformity”.

Marks applied if seems to be confusing, deceptive or conflicting and/or resembling with existing earlier trademarks which are intended to be used in the same line of products/services; by others for same goods or services and falls under the restricted/ prohibited categories such as unlawful marks; scandalous, obscene, religiously inflammatory marks as directed by the Government, can not be registered.

Yes, the Trademark office has the discretion to refuse an application, in accordance with the norms it follows.

The registrar refers to section 9, 10, 11, 12, 13 and 14 of the Act while examining an application. The registrar could consider a trademark based on its distinctiveness. The registrar would also compare the records, as to the existence of any prior pending of registered similar marks and the likelihood of deception or confusion or passing – off or infringement if both the marks are used simultaneously. Further, name of chemical elements in respect of chemical substance, industry terminologies or non-proprietary names shall also not be registered as trademark.

If a trademark is not continuously used commercially for a period of five years and one month from the date of registration, a mark is liable to be removed on an application from the affected party, subject to few other provisions. A person can move an application for cancellation. An application for cancellation may be filed before the Registrar of Trademarks or the Intellectual Property Appellate Board (IPAB).

A trademark is recognized as a form of property. It is therefore assignable and transferable as in the case of other forms of movable or immovable property. The registered and unregistered trademarks can be assigned with or without the goodwill in the trademark. However, the assignment must be in conformity with the rules of the trademark registrar.

A proprietor of mark can use a mark by itself or through a franchisee or an authorized user / licensee. In such situations, the owner can claim goodwill and reputation to the mark for the use made by the licensee. The owner is required to maintain a connection in the course of trade with the licensee and maintain a quality control. The Act provides for registration of licensee as a registered user. An application has to be filed jointly by the owner and licensee along with mutual agreement. If the registrar is satisfied, then the licensee shall be recorded as a registered user. A registered user can initiate legal action to stop infringers, whereas a licensee is required to make the trademark owner/ registered user a party to the proceedings.

A registered proprietor or an applicant in a pending application can assign a trademark to another person on payment of consideration. A request is to be made before the Registrar of Trademarks for recordal of the assignment. The registrar may restrict an assignment when it involves creation of multiple rights in different persons and use by the mark therein would give rise to deception or confusion.

Under the Trademarks Act, 1999 trademarks can be licensed by filing with the registry the name of the registered users or where such use is with the consent of the proprietor under an agreement in writing and is in conformity with prescribed conditions. By this, the proprietors of Indian registered trademarks residing abroad can use their trademark in India through licenses granted to their Indian partners.

Yes, a registered mark, or a mark for which an application to register has been filed is transferable/assignable. This means that the mark can be sold to another person/entity. An assignment agreement executed, and notarized by both parties is required to be filed with the trade marks registry to effect such a change of ownership in respect of the mark. A trademark similarly may also be licensed to another following the same procedure as that of assignment of a trademarks.

An agreement for payment of royalty to a non-resident requires the prior approval of the government. The government’s policy statement makes it clear that in case of a use of a foreign brand name a payment of royalty shall not be allowed unless the products on which the mark is used are intended for export.

The Intellectual Property Appellate Board (IPAB) is the appellate authority to the registrar of trademarks. An appeal against the order of the registrar of trademarks can be filed before the IPAB. The Board also has original jurisdiction in certain cases. It is based in Chennai and has its regular sittings at Chennai, Mumbai, Kolkatta, New Delhi and Ahmedabad. The Board is chaired by a retired Judge of the High Court, alongwith a vice- chairman and technical members.

There is no provision of appeal against an order of the IPAB. However, writ petition under Article 226 and 227 of the Constitution of India can be filed in the High Court against the order of IPAB. An aggrieved person can also invoke the jurisdiction of Supreme Court of India under Article 136 of the Constitution of India.

Use of a mark which is similar or deceptively similar to a registered trademark, when used with goods of same or similar description, is infringement. A well-known or famous registered mark is infringed when it is used even on dissimilar goods. Further, disparagement of a registered trademark is an infringement.

Use of an un-registered mark or features, by a person on its goods in a manner which would mislead a consumer about its origin is called passing-off. However, when the dispute is concerning use of a similar trademark then passing off and infringement are same. Even in the case of passing-off, a well-known mark will succeed in stopping an infringer, though the goods involved are of different description.

The allegedly infringing mark must be either identical or deceptively similar to the registered trademark; it must be used in relation to the same goods/services as the registered mark in the course of trade and confuse the public about the source of the goods/services in relation to which it is used.

The main differences between infringement action and passing off are following: In passing off, the owner has to prove the right of the mark for getting relief. In the registered trademark, the owner need not prove the monetary damage of the infringement. But in the passing off the owner has to prove the actual damage because of the wrongful adoption. Prima facie the owner can prove the ownership in the trademark registration. In a passing off case, the owner has to show the long use of that particular trademark and prove the fact that the infringer adopted the mark and affected the goodwill of the company. In trademark infringement the plaintiff or owner can file a suit within the jurisdiction of Court where the plaintiff resides or carries the business. The plaintiff can file suit in a place where defendant resides in the case of passing off.

If the trademark is registered, the owner can bring statutory actions against the infringer of infringement where the trademark is registered; and the common law action of passing-off where the trademark is not registered. In addition, the owner can file suit for injunction, damages or account profits in the court. Also, an action for passing-off may be modified into an action for infringement if the proprietor obtains registration for his mark before the court disposes off the suit.

1. Criminal means: Use of similar trademark is a penal offence and attracts imprisonment of upto three years and imposition of fine extending upto rupees fifty thousand, if found guilty. A proprietor of a trademark can file a complaint before a police officer, not below the rank of Deputy Superintendent of Police or before a Metropolitan Magistrate or Judicial Magistrate of First Class for seizure of goods bearing similar trademarks.

2. Civil means: A proprietor can file a civil suit seeking injunction restraining use of a similar trademark, before a District Court. In a civil suit a person can make prayer for interim injunction from use of similar mark and pray for appointment of Local Commissioner to seize infringing goods, documents or evidence and can pray for damages or an account of profits together with or without an order of delivery-up of the infringing labels and marks for destruction.

3. Customs: The proprietor of a mark may request the Commissioner of Customs to prohibit the importation of goods, if it amounts to infringement of a trademark. The Commissioner shall then call upon the importer to furnish all details regarding such import. The Commissioner is authorized to confiscate goods which the Commissioner finds to be in conflict with the rights of the trademarks owner.

Under the Limitation Act, 1963, the period of limitation for filing a suit for infringement of a trade mark is three years from the date of infringement.

Parallel imports are imports of a trademarked/ patented product from a country where it is already being marketed. When the proprietor of a mark has put the goods in the market, it cannot restrict further dealings with the marked goods unless it could be shown that such dealings has impaired the condition of the products. It is on the principle of ‘exhaustion of rights’; the proprietor exhausts control and has no right to stop another person who has purchased the goods legally from being imported to India.

He should use the trademark regularly and renew in time. If his trademark is copied by others, he has an option to file a suit for infringement and passing off and also take necessary steps of legal action. He should keep a watch in respect of trademarks advertised in the Trademarks Journal and institute opposition proceedings if identical or deceptively similar trademarks of that of his gods/services are published therein. He should initiate rectification proceedings if an identical or deceptively similar trade mark is registered.

The process for registering domain names is totally different from the process for trademark registration. The registration of domains is governed by a body named as Internet Corporation for Assigned Names and Numbers (ICANN). The system for domain name registration generally operates on a first-come first-serve basis and anybody is entitled to obtain any domain name without proof of any commercial use.

You can register your name as a trademark provided the trademark office of India considers it as “distinctive”.

If your mark is not put to use upon registration, it is liable to be cancelled on the application of a third party who could prove that your mark has not been used. However, if the owner of a mark can establish that, he was prevented from using the mark due to circumstances beyond his control, the mark may not be subject to cancellation.

If you are intending to register a mark that sounds similar to a mark already in market, there is possibility for the trademark statutory office to reject your application upon examining thoroughly if the application conflicts with third party rights. Further, if you are using such a mark without registration, the owner of the registered mark may take legal action against your use of such mark on the basis that your mark is confusingly the consumer by being similar to his mark.

Your right with respect to your trademark is confined to the country in which it was applied for and obtained. Therefore, if you export goods bearing your mark and you have only obtained protection for that mark only in your country, then it is better that you register your mark in the countries to which you are intending to export so that your mark is protected in those countries as well.

The trademark is territorial right and it is valid within India only. Therefore, you have to file a separate application to the country you are interested.

Before granting the trademark right the application remains open for public opposition. Any person may file an opposition within a period of three months from the date of advertisement of the mark in the trademark journal, which is extendable by one month. If the opposition is filed within this period, the application enters for opposition proceedings and the registrar serves a notice of opposition to the applicant. The applicant is then required to file reply as counter-statement to the opposition within two months from the date of receipt the opposition notice. From the date of service, the opponent is required to file its evidence by way of affidavit within a period of two months, which is extendible by one month. The opponent then has the option of filing reply. The case is then taken up for hearing before the registrar. Finally, the registrar will take the decision of allowing or rejection of the opposition application and will pass an order.