The registration of trademarks process in India is a ‘first to file’ basis. Therefore, it is important to apply for registration as soon as possible. A trademark usually takes 2-3 years to get registered, if the trademark is not being opposed by a third party. Trademark applications are handled by the Office of the Controller General of Patents, Trade Marks, Industrial Designs and Geographical Indications. Branches for these offices are available in Mumbai, Kolkata, Ahmedabad, Delhi and Chennai.
The most precious asset for a modern firm is its trademark. You may have been aware that a trademark is a distinctive logo or sign used to identify one company from another. Every company has several IPR assets that can be registered as trademarks, including the name of the company, the brand name, the label, the product name, the logo, the punchline, and the domain names. We have seen that the majority of a company’s trademarks are still unidentified, which leads to misunderstandings and potential litigation in the future. We highly advise all our clients to comprehend the significance of trademarks and take the necessary precautions to protect them.
Definition of Trademark under the Trademark Act, 1999
Trademark is defined in the Trademark Act, 1999 under Section 2(1) (i) (viii) (zb) as, “trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours.” Such a mark may include numerous things such as signatures, names, labels, headings etc.
Let us examine the definition of the word “Mark” now. A mark that includes the following is referred to as a mark to include the following under Section 2(m) of the Act. In other words, the following group of marks is eligible to be a trademark if it meets the requirements outlined in the previously mentioned definition of a trademark.
What are the benefits of registered trademark?
The biggest benefit to having a trademark registered is for the protection of the brand and the business by contributing to the goodwill of the business. Further, having a strong brand can act as a bridge between the customer and the product by ensuring they are loyal and affiliated to the business for a long time.
The following are some of the other benefits: –
- It gives credits to the source of the product or service;
- It guarantees its quality;
- It helps in the advertisement of goods and service.
Importance of Registration of Trademarks
Trademarks are jurisdictional rights and like any other tangible assets, its also tangible in nature like, it can be licensed, sold, and purchased and can also be utilized as a security to obtain loan. Hence, such a tangible asset needs protection to keep acquiring economic benefits as long as the owner of such a mark wishes to.
A registered trademark gives exclusive identity to one’s business and also safeguards their brand reputation. A trademark after registration can be used for 10 years before its renewal and hence, as long as the owner keeps renewing it on time, it can be used as long as the business of the trademark owner is alive.
Only a registered trademark can file an infringement suit against any third party infringer who tries to infringe or pass off their own goods and or services by utilizing the reputation and the goodwill of another person’s registered trademark. The cost and time for registration of a trademark has ben reduced and also it is a one time expense. Now, the time required for registration ranges from 6 to 12 months and once its registered, it will remain valid for next 10 years.
What are the types of trademarks or category in India?
In the sections, we knew what the terms “Mark” and “Trademark” meant. Let us now examine the numerous trademark categories that the Trademarks Act of 1999 permits registration of. Practically speaking, while submitting a trademark application in the TM-A (formerly known as TM-1), the required form for submitting a trademark application in India, the applicant must select the trademark category, which can only be from the alternatives listed below. Only the important categories of trademarks listed below will be presented with examples.
- “Word” as Trademark: – The most frequent kind of mark is a word or other collection of letters or alphabets. Apple, Google, INFOSYS, TATA, IBM, and others are examples. The most valuable and significant type of trademark is a word mark since they may be written, drawn, and spoken. It is regarded as the Most Powerful Mark for IPR Protection Under the Trademark Act, 1999 because of its increased adaptability. If a trademark is registered as a wordmark, it may be used in any marketable format. The owner of the wordmark can simply file an infringement lawsuit if they discover that someone else is using a similar mark. Please be aware that a Wordmark need not have a specific meaning; any letter combination that is distinct enough will do;
- “Device” as Trademark: – In general, “device marks” refers to trademarks like logos, images of drawings, combinations of images and words or drawings, etc. A visual display of numerous device markings is shown below. The Brand Name, which is occasionally constructed as a mix of images and words, is another illustration of a device mark. Here are a few illustrations of the Device Mark;
- “Colour” as Trademark: – If it is determined that the specific colour or colour combination serves as a distinctive distinguishing mark to identify the source of goods or services, it is recognised as a trademark. An increasing trend in the industry in recent years is the use of certain colours or colour combinations as trademarks. However, it is arguably the most difficult trademark category to be legally protected and upheld. The legal definition of a trademark has been expanded by the World Trade Organization to include “any sign…capable of differentiating the products or services of one enterprise from those of other undertakings.” Section 10 of the Trademark provides for recognition of a trademark having protection to its colour as property, provided that the colour or a combination of several colours are an inherent part of the Trademark. In other words, the Registration to a Colour Mark is granted once the Trademark gets public recognition by that colour;
- “Shape of goods” as Trademark: – The provenance of products may be determined by the form of a product or a container. Another type of design protected by intellectual property is the shape of a container. While the design protection will refer to the fundamental qualities of the shape, the trademark refers to the place of origin of the products. However, the form might be registered as a trademark if it has become recognisable via broad use. The Coca-Cola bottle provides the best illustration possible for this;
- “Sound” as Trademark: – A sound trademark serves the purpose of a trademark by using sound to specifically identify the commercial source of products, services, and objects. A sound mark has seen an increase in use as a trademark in recent years. It is a distinctive brand. The provenance or commercial origin of an item or service can be determined by its sounds.
- Yahoo – (Human voice yodelling Yahoo)
- National Stock Exchange – (Theme song)
- ICICI Bank – (Corporate jingle – Dhin Chik Dhin Chik)
- Britannia Industries (Four note bell sound)
- Cisco – (Tune heard on logging in to the conferencing service Web Ex)
- Edgar Rice Burroughs – (Tarzan Yell by its toy action figure)
- Nokia – (Guitar notes on switching on the device)
- “Three-dimensional shape” as Trademark: – According to stringent criteria on the intrinsic uniqueness of trademarks and their capacity to clearly identify the source of products and services, three-dimensional symbols may be registered as trademarks in India. The physical look of the product or substantial packaging is typically depicted in three-dimensional pictures as the three-dimensional trademarks (3D trademarks). The following are some instances of 3D trademarks: –
Registration of Trademarks – Process & Validity
The registration of a trademark can assist stop rivals or other parties from replicating or duplicating an item or service. Most firms nowadays focus on developing their brands and devote large money to advertising and marketing activities. Such enterprises may safeguard their investment and labour against dishonest copycats by registering their trade marks. In-depth examinations of the registration procedure, trademark categories, and the continued use of a registered mark are provided in this article.
Validity of Registered Trade Mark
The applicant may start utilising the TM sign after submitting a trade mark application to the Trade Mark office. The applicant may use the R sign if the trademark has been registered. In India, a trademark is granted for a duration of ten years beginning with the day the trademark listed in the certificate was first registered. However, in opposition or rectification processes, a trademark holder may lose his trademark rights if he has not used the mark for more than 63 months.
How is the right to use a trademark granted?
To register a trademark, the owner needs to go through the following steps: –
- Conducting an exhaustive trademark search;
- Filing an application with necessary documents;
- Examination of the application by the Trademark Registry;
- Post examination procedures;
- Advertisement of the application in the Trademark Journal;
- Opposition by any third party;
- Registration and renewal of the same after every 10 years.
What are the steps to register a trademark?
It is not difficult to register a brand name as a trademark. You may register your brand name in India with only a few easy steps, as outlined here, and get the much-needed legal protection.
To register a trademark in India, the following steps must be followed:-
Step 1: Trademark Search: – Many business owners are unaware of the significance of a trademark search. A distinctive brand name in mind is not a sufficient excuse to forego a trademark search. A trademark search enables you to determine whether comparable trademarks are in use, it offers you a realistic assessment of where your trademark stands, and occasionally it alerts you to the risk of trademark infringement lawsuit. When you have the option to avoid time-consuming trademark litigation in the first place, why waste your money on it?
Step 2: Filing Trademark Application: – Once you are certain that the brand name or logo you have chosen is not already registered with the Trademark Registry of India, you may decide to register it. The initial step is to submit a trademark application to the Indian Trademark Registry. The application must be filed in Form TM-A either online from the IP India’s official website or physically at the Trademark Registry Office according to one’s jurisdiction. Most filing is done online these days. An official receipt is supplied right away for future use after the application has been submitted.
Moreover, if the trademark is already in use before filing the application (i.e. the owner wants to claim prior use), they have to attach an user affidavit indicating the usage of the mark also the evidence of its prior use in the trade.
Step 3: Examination: – Once the application is filed, it will be thoroughly examined by the Registrar and they will prepare an examination in writing and will send a copy of it to the applicant with 30 days to let them know whether the Registry wants to refuse or conditionally accept the application and shall also include the materials by which he came to such a decision.
An examiner looks for any errors in a trademark application once it has been submitted. It can take 12 to 18 months to complete the examination. The examiner may accept the trademark without conditions, subject it to conditions, or object. If approved, the trademark is unconditionally published in the Trademark Journal. If not approved without restrictions, the examination report would list the requirements to be met or the objections, and one month would be allotted for a response to the requirements or objections. The trademark is published in the Trademark Journal if the response is accepted. One may ask for a hearing if the response is rejected. If the examiner decides at the hearing that the trademark deserves to be registered, it proceeds for publication in the Trademark Journal.
Step 4: Publication: – After the examiner has accepted the application, it will be published in the Trademark Journal which will remain there for 4 months. Advertisement of such an application is done so that within the time period stated above, any third party can see it and if they want can file an opposition against the applicant. Every Monday the Journal is updated with new accepted trademark applications.
The step of publication is also included in trademark registration process so that if any third party wants to oppose the trademark gets the opportunity to do so. The trademark moves toward registration if there is no resistance after three to four months following publication. If there is objection, a fair hearing will be held before the registrar decides.
Step 5: Notice of Opposition: – Within 4 months from the date of publication of the application, any aggrieved party can file a notice of opposition in Form TM-O. When any third party feels that their already existing and prior use trademark has been infringed by the applicant, or the application is made in bad faith and if such a trademark is registered, it will harm the the reputation and good will associated with the prior trademark of the third party.
Notice of opposition will halt the registration process and the opposed mark of the applicant according to the Trademark Act, 1999, and the applicant have to go through certain legal procedures if they wants to continue with the registration of the same mark, which includes filing a counter- statement, submitting evidence in reference to that counter statement and in some cases it is seen that the applicant have to go through hearing as well.
Step 6: Registration Certificate: – The last step in the registration procedure is to get the certificate of registration. A registration certificate with the seal of the Trademark Office is issued once the application for trademark registration has been approved and has been published in the Trademark Journal.
In case where there is no opposition or any false opposition filed, after 4 months of publication period is over, within 7 days an auto- generated registration certificate will be issued to the applicant by the trademark registry office which needs to be renewed after every 10 years for keeping it alive.
Step 7: Renewal: – After every ten years, a trademark may be renewed indefinitely. Thus, registration of your brand name or emblem might provide you with indefinite protection. The procedure of registering a trademark in India is not difficult, as can be seen from the information above. it right now.
How can a Trademark be removed for non-use?
The trademark removal application may be submitted by anybody. Consequently, anybody may submit an application to have your mark removed, not only your rivals.
Any of the following reasons might lead to a trademark being removed: –
- No bonafide Intention: – If a trademark has been casually filed without the intention that it should be used in relation to those goods or services, it may be removed.
- Five years without use: — A trademark may be struck from the trademark registry if it has been unutilized for five years straight, counting from the date of registration. This five-year window starts on the official day when the trademark is registered. This is different from the application registration date.
What are the absolute grounds for refusal of registration of trademarks?
Grounds for refusal of trademark is listed in section 9 of trademark act. Any trademark that violates one of the reasons specified in this section is ineligible for registration.
The sole reasons for rejecting registration of trademarks are as follows: –
- Trademarks that lack any unique characteristics. Trademarks with distinctive character are those that cannot be used to separate the products or services of one company from those of another;
- Trademarks that only comprise symbols or identifiers used in commerce to specify the nature, calibre, scope, costs, or place of origin of products or services;
- Trademarks that specifically contain such marks or signs that have become customary in the current language or established practices of business;
- Trademarks are of such a nature as to deceive the public or create confusion;
- Trademarks containing or involving matters likely to offend the religious sensibilities of any class or classes of citizens of India;
- Trademarks that contain or have defamatory or obscene material;
- Trademark consisting of markings of the shape of the goods which arise from the nature of the goods themselves;
- Trademarks that mark the size of the goods that are necessary to obtain a technical result;
- Trademark consisting of markings of size which give sufficient value to the goods; and
- If the usage of the trademark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
The Act provides exceptions with respect to the first three points, i.e., where the trademark lacks distinctiveness or contains exclusive marks which are different to define the type, quality etc. have become customary. The exception is that a trademark falling under the first three points shall not be denied registration if the trademark has acquired a distinctive character as a result of use or is a well-known trademark before the application for registration.
What are the relative grounds for refusal of registration of trademarks?
Section 11 of the Trademark Act provides relative grounds for refusal of registration of trademarks. This section provides exceptions on grounds of denial. Trademarks can be registered under section 11, if complied with exceptions.
Section 11(1) lays down the following grounds for refusal of registration of trademarks: –
- Trademarks which confuse the public as it is identical with an earlier similar trademark of goods or services; and
- Trademarks which confuse the public as it is similar with an earlier identical trademark of goods or services, which includes the likelihood of association with the earlier trade mark.
An exception to this clause is that the Registrar of Trademarks may allow registration if there is a faithful concurrent use of the trademark.
Section 11(2) lays down the following grounds for refusal of registration of trademarks: –
- Trademarks that would take unfair advantage of a similar or similar well-known trademark in India; and
- Trademarks which would be prejudicial to the distinctive character or reputation of a similar or identical to already existing well-known trademark in India.
Section 11(3) states the following grounds for refusal of registration of trademarks: –
- The law of passing off, which guards an unregistered trademark used in the course of business, is obligated to prevent the use of the brand; and
- The law of copyright will inevitably forbid the use of the trademark.
The trademarks listed in Sections 11(2) and 11(3) cannot be denied registration unless the owner of the earlier trademark objects in an opposition procedure.
All the grounds are exempt under Section 11(4). It specifies that if the owner of the previous trademark consents to the registration, the trademarks covered by Section 11 may be registered. The Registrar may register the latter trademark if the owner of the prior well-known brand grants permission.
Names Which Cannot Be Registered
Sections 13 and section 14 of the Trademark Act provide that trademarks containing specific names cannot be registered. Trademarks that contain a word that usually refers to a chemical substance or preparation using a single chemical element or chemical compound cannot be registered.
Trademarks which falsely suggest a relationship with a living person may be refused registration by the Registrar unless the consent of such living person is obtained. Similarly, a trademark suggesting false relationship with any deceased person within twenty years of the submission of the application for registration may be rejected by the Registrar unless the consent of the legal representatives of such person is obtained.
Illustrations of Refusal of Registration
Some examples of words whose registration was denied based on the above grounds are given below –
- Words like ‘Himalayan’ or ‘Shimla’ denied registration as they indicate geographical origin;
- Words such as ‘Janta’ or ‘Rasoi’ were not registered as they were generic expressions;
- The word Saffo was not registered for cleaning power and liquid as it is very close to the word ‘Saff’ which means clean. The word indicated the character of the goods;
- The term ‘ombrella’ was not registered for shower bath curtains as it used to describe shower bath curtains such as umbrellas;
- The word ‘heavenly’ for cosmetics was not registered as it is a term that is in common use;
- The registration of word ‘electrix’ for an electric vacuum cleaner was rejected as it is similar to the generic term ‘electric’.
Well Known Trademarks
|1.||Whirlpool||Whirlpool Corporation, USA||High Court, Delhi||1996 PTC 476||A product and its trade name transcend the physical boundaries of a geographical region and acquires a trans-border or overseas or extra-territorial reputation not only through import of goods but also by its advertisement. The knowledge or the awareness of the goods of a foreign trader and its trade mark can be available at a place where goods are not being marketed Injunction granted.|
|2.||Logo *M’ in the distinctive style and design of the famous golden arches||McDonald’s Corporation, U.S.A.||High Court of Karnataka.||1999 PTC 9||The Logo ‘M’ is a well-known and famous logo and courts have recognized the existence of trans-border reputation.|
|3.||PEPSI||Pepsi Inc.||RTM, Kolkata||2006(32) PTC 225||Pepsi enjoys a huge reputation and goodwill not only in India but also internationally.|
|4.||7 O’CLOCK for shaving razors||Gillette U.K. Ltd., England||Bombay High Court||1998 PTC 288 DB||It is recognized that trade mark 70’Clock is well known. As such the use of the mark in respect of tooth brush will lead to passing-off.|
|5.||PHILIPS||Philips NV Netherlands||Punjab & Haryana High Court||AIR 1983 P&H418||Is a household mark and has acquired enviable reputation in India and throughout the world.|