A trademark is a word, name, logo or symbol or phrase or device, which is used in trade with 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 terms “trademark” and “mark” are commonly used to refer to both trademarks and service marks.
Trademark rights may be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark. Trademarks, which are used in interState or foreign commerce, may be registered with the Trademark Office of concerned countries individually or through Madrid Agreement Route . India is yet to become Member of the Madrid agreement.
There exist three different types of trademark protection:
State / Federal registration
In order to gain common law rights in a trademark, the owner must use the mark on goods or services in commerce. These rights may be limited to the area in which the owner is doing business. Countries like India have, only federal registration system for trademarks. However some countries like USA have provision of registration in any State as well as from the federal trademarks office. In order to secure a State registration, the owner must use the goods or services in commerce and simply file the mark with the Secretary of State. The boundaries of protection for a State trademark are limited to the particular State. A federal trademark registration extends the owner’s trademark rights nationwide. The federal registration serves as notice to all other trademark owners and generally trumps any other form of trademark protection, of course with some limitations
Functions of a Trade Mark
- It identifies the product of its origin
- It guaranties its unchanged quality
- It advertises the products &
- It creates an image for products
Through a Government of India initiated project for modernisation and administration of the Trade Marks Registry with UNDP/WIPO assistance, it has resulted in the computerisation system functioning, fee receipt generation, numbering of applications, preliminary search report, examination of application, journal printing, renewal, change of name and address of registered proprietors etc. Complete database of trademarks is now available from its administrative organization.
Procedure/Steps for Online Trademark Registration
- Trademark Search:It is advisable to conduct a trademark search for the relevant classes before filing the application to register a trademark in order to make sure that there is no identical or similar trademark already registered or for which an application for registration has been submitted.
- Filing of an applicationfor registration by a person claiming to be the proprietor of a trademark, in the office of the Trade mark Registry, within the territorial limits of the place of business in India.
- Examination of the applicationby the Registrar to ascertain whether it is distinctive and does not conflict with existing registered or pending trademarks and examination report is issued.
4.Publication of the application after or before acceptance of the application in the Trademark Journal.
- Opposition by third party:After publication if any person gives notice of his/her opposition to the registration within three months which may be extended to the maximum of one month.
- Hearing before Registrar:If the opposition has been decided in favour of the applicant of the registration of trademark, the Registrar shall register the Trademark.
- Registration of Trademark:On the registration of the Trademark the Registrar shall issue to the applicant a Trademark Registration Certificate.
Use of the 'TM', 'SM' and ® symbols
‘TM’ Symbol: Generally, one who has filed an application (pending registration) can use the TM (Trademark) symbol with the mark to inform the public of his exclusive claim over the Brand. The claim may or may not be valid.
‘SM’ Symbol: An SM symbol indicates Service Mark, which is the same as a Trademark except that it identifies and distinguishes the source of a service rather than a product.
‘R’ Symbol: The registration symbol ® may only be used when the mark is registered and the Certificate of Registration is issued by the Trademark Registrar. Out of all above symbols TM symbol is one of the most popular and widely used symbol to indicate the application or registration of Trademark.
Frequently Asked Questions (FAQs)
What is a Trade Mark ?
- A trade mark popularly known as brand name, is an identification symbol which may be a word, a device, a label or numeral etc. or a combination thereof used in the course of trade to enable the purchasing public to distinguish one trader’s goods or services from similar goods or services of other traders.
What are the benefits of 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 others. Trademark registration is an evidence of ownership of the trademark and also confirmation of the constructive notice nationwide issued of the trademark owner’s claim on it. Trademark registration in India can also be used as a basis for obtaining registration in foreign countries.
How to select a Trade Mark ?
- The trademark may be selected with following precautions:
- A trademark may be a word, letter a device or numeral or any combination thereof. It is better if it is simple in design.
- If it is a word, it should be easy to speak, spell and remember.
- The ideal word for a trademark is an invented or coined word.
- A word which are laudatory or which directly describes the character or quality of the goods or services should not be adopted.
- Geographical names connected with the reputation or quality of the goods for which registration is sought should not be adopted. Geographical Indications (GI’s) have been enacted in India and GI’s registry in Chennai interaction wef 15-09-2003 GI applications for again goods, natural products, food, industrial designs and handicrafts.
Are all Trade Marks registrable ?
No. It is not possible to register a trademark which is confusable with a trademark of another trader who has been using the trademark earlier for the same goods or a trademark or which describes the character or quality of the goods which other traders may reasonably want to use in the course of their business. The mark should not conflict with a trademark already registered or pending registration in respect of similar goods. Also some marks are prohibited from registration under the directions of the Government.
Who can file an application for trademark registration?
- 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.
What rights do registration of the mark bring ?
- The exclusive right to use the trade mark in relation to the goods for which it is registered and the right to take legal action against others who may infringe the registered trade mark or one resembling it in relation to similar goods.
A. The registration of a trade mark confers on the registered proprietor of the trade mark the exclusive right to use the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain the relief in respect of infringement of the trade mark by others. The registration of a trade mark is not compulsory. However, without registration an owner of a trade mark cannot bring an action for infringement to protect the mark if it is copied by others.
Is Registration of a Trade Mark compulsory ?
- No. Registration of a trade mark is not compulsory, but without registration the owner of a trade mark cannot bring an action for infringement to protect his mark if it is used by others. Suing for infringement of a registered trade mark is much simple than launching a common law action for passing off to protect an unregistered trade mark since the owner of a registered trade mark can base his case simply upon the fact that his mark has been registered.
What trademarks can be registered?
- A trade mark which consists of at least one of the following essential particulars :
- the name of a company, individual or firm represented in a particular or special manner;
- the signature of the applicant for registration;
- one or more invented words;
- one or more words having no direct reference to the character or quality of the goods
- any other distinctive trade mark;
- a trade mark which has acquired distinctiveness by use over a prolonged period of time, may be registered by its owners;
What trademarks may not be registered ?
- Trademark, which is identical to or deceptively similar to a trademark, which is already registered or has already been applied for in the name of a different proprietor in respect of the same goods or description of goods, may not be registered. Also trademark the use of which would be likely to deceive or cause confusion; the use of which would be contrary to any law in force; which comprises or contains scandalous or obscene matter or any matter likely to hurt the religions susceptibilities of any class or section of the citizens of India ; may not be registered. According to its ordinary signification, the words standing for geographical names or a surname or a personal name or any common abbreviation thereof or the name of a sect, cast or tribe in India will not be registered as trademarks. Domain name of there that of trademarks owner will also not be registered for trademark.
How necessary is to get professional help ?
- As registration of a trade mark is a specialized area of work utilize it may be necessary to employ the services of a trade mark agent or attorney. However, this is not compulsory and the applicant may correspond directly with the Trade Marks Registry and handle the matter.
What are common safeguards a trademark owner is supposed to take?
- Safeguards to be taken by the owner of a registered trade mark to protect his rights :-
- He should use and renew the trade mark regularly once in every decade wef date of registration.
- If his trademark is copied by others, he should file a suit for infringement and passing off and also take criminal action. In E&IT sector, detecting of infringers is easy by way of keeping constant watch of Internet Websites.
- He should keep a watch in respect of trademarks advertised in the Trademarks Journal and institute timely opposition proceedings if identical or deceptively similar trade marks are published.
- He should initiate rectification proceedings if an identical or deceptively similar trademark is registered.
What is a trademark search?
A trademark search is designed to identify pre-existing trademarks that have the potential to conflict with your 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. Uncovering and avoiding trademark conflicts with your name can often mean the difference between the success and failure of your business venture.
How long does a trademark registration last?
- A trademark registration is valid for ten years from the date of filing if obtained. You have to apply for renewal during this time-period in every decade w.e.f. said date.
May I cover more than one mark in a single application?
- No. A separate application must be filed for each mark the applicant wishes to register. Likewise, if the applicant wishes to register the same mark in more than one class, a separate application must be filed for each class and each type Black & White, and Colour.
Do I have to be an Indian citizen to obtain a trademark registration?
- No. However, 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.
Is a trademark registration valid outside India as well?
- No. Certain countries, however, do recognize a trademark registration in India as a basis for registering the mark in those countries. The laws of each country regarding registration must be consulted.
Is it possible for a foreign corporation to license a trade mark in India against payment of royalty in a foreign currency?
- 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.
Can the ownership of a trademark be assigned or transferred from one person to another?
- Yes. A registered mark, or a mark for which an application to register has been filed is assignable
How do I contest someone else using a trademark similar to mine?
- There are several ways to dispute use of your trademark by a third party. It can be by way of filing a suit in a District Court where infringement has occurred or follow the path of arbitration proceedings or enter into an out of court settlement against some new contract / consideration.
What is the Organizational structure for administration of trademark in India ?
The Trade Marks Registry is a subordinate office under the Department of Industrial Development, Ministry of Industry, Govt. of India. It is headed by the Controller General of Patents, Designs and Trade Marks. The Head Office of the Trade Marks Registry is located at Mumbai with branches at New Delhi , Chennai, Calcutta and Ahmedabad. The Head Office of the Trade Marks Registry, Mumbai is headed by the Joint Registrar of Trade Marks. The branch offices are headed by the Deputy/Assistant Registrar of Trade Marks.