A Trademark is a name or a logo or a jingle or a piece of original music, the means by which a business makes itself visible in the marketplace.
A trademark is “a word, symbol, numeral, combination of colours or a device that is used in trade on goods to indicate the source of the goods and to distinguish them from the goods of others”. A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.
The owners of the registered trademarks have been bestowed with the legal right to prevent others from using a confusingly similar mark but they cannot be used to stop the competitors from making the same goods or from selling the same goods or services under a clearly different mark.
Examples of well-known Trademarks are: Maruti, Nokia, Nike logo, Airtel music, Kingfisher Jingle etc.
Why register A Trademark?
Registration of Trademark is an official recording of the statutory right of the owner, subject to certain conditions, to prevent others from infringing the use of the trademark without the registered owner's permission.
One of the principal aim of a business is to build a brand for its goods or services and by applying for and gaining a Registered Trademark, the process of brand building gets accelerated as it serves notice on would-be copiers about the serious intent of a business to defend its position in the marketplace.
If a Trademark is properly promoted and protected it can be a very valuable asset for any business and can in some cases, the worth can be more than the bricks and mortar of a business.
What is the Difference between a Business, Trade or Company name and a Trademark?
Business, Trade or Company names are names under which a trading entity conducts its business. They are usually used for company registration, taxation and financial reporting purposes. Invariably a company or business name does not have a logo or other identifier.
Probably only about half of all company names are eligible for trademark registration. In fact, many company names are confusingly similar or so descriptive that they cannot be trademarked. In other words they do not have the necessary “distinctiveness” to be used in the marketplace to distinguish one proprietors good or services from another.
A Company name can be registered as a Trademark, but only if it is used as such, that is, used to identify wares or services
To be registrable, a trade mark must be:
- distinct for the goods/services for which registration is sought, and
- not deceptive, or contrary to law or morality, and
- not identical or similar to any earlier marks for the same or similar goods/services.
Registration of Trademark in India
The trade mark laws in India are governed by Trade Marks Act, 1999 which is in conformity with the TRIPS Agreement to which India is a signatory. Other sources which affect trademarks law are International Multilateral Convention, National Bilateral Treaty, Regional Treaty, Decision of the Courts, Office practice and rulings, Decisions of Intellectual Property Appellate Board.
Requirements for Filing of Trade- Mark Application
Any person or company claiming to be the proprietor of a Trade Mark used or proposed to be used can apply for Trade Mark registration. Following are the requirements for filing Trade Mark applications:
Name and Address of the Applicant Company / Person
Trade Mark or Logo
Description of Goods / Services
Original Priority Documents, if priority is claimed.
Power of Attorney regarding pre-registration to post-registration process of Trade Mark.
The registration process without any disputes generally shall take 16 to 18 months of duration which involves different phases of registration process:
- Filing of Trade Mark Application
- Examination Report and Reply
- Hearings (if required)
- Acceptance before Advertisement
- Publication in Trade Mark Journal
- Issuance of Registration Certificate.
Term & Renewal of Trade mark
The Term of Trade Mark is for ten years. It can be renewed further after every ten years. The application for the renewal has to be made within six months from the date of expiry of the Trade Mark.
Licensing & Assignment
Trade Mark can be assigned or licensed in respect of all or portion of the goods or services for which they are registered. Assignment or License Agreements of Trade Marks must be in writing and recorded with the Registrar of Trade Marks for its validity and enforcement.
Enforcement & Protection
The remedies available to the owner of a trade mark for unauthorized use of his mark by third party under civil or criminal proceedings are:
- action for infringement in case of a registered trade mark
- action for passing off in case of an unregistered trade mark.
The action for infringement is a statutory remedy and action for passing off is a common law remedy. In a suit for infringement or for passing off, the relief that the court may grant includes injunction, damages, account for profits and/or order for delivery of the infringing labels and marks for seize and destruction.
Disclaimer: The entire contents of this document have been developed on the basis of relevant provisions and are purely the views of the authors. Though the authors have made utmost efforts to provide authentic information however, the authors and the company expressly disclaim all and any liability to any person who has read this document, or otherwise, in respect of anything, and of consequences of anything done, or omitted to be done by any such person in reliance upon the contents of this document