What is Trademark?
According to the World Intellectual Property Organisation (WIPO):
"A trademark is a sign capable of distinguishing the goods or services of one
enterprise from those of other enterprises. Trademarks are protected by
intellectual property rights."
In simple language, a Trademark (or Trade Mark) is a unique symbol which is
capable of identifying as well as differentiating products or services of one
organization from those of others. The word 'Mark' stands for a sign, design,
phrase, slogan, symbol, name, numeral, devise, or a combination of these.
Essentially, the Trademark is anything that identifies a brand to a common
Trademarks in India used to be governed by Trade and Merchandise Marks Act
1958. However, near the end of the 20th century, India felt the urgent need for
new legislation in light of the TRIPS agreement and recent membership to WIPO.
So, at present time trademarks in India is now governed by the Trade Mark Rules
2017 & Trade Marks Act, 1999.
The definition of trademark according to this Act is - "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 shape of goods,
their packaging and combination of colours; and:
- In relation to Chapter XII (other than section 107), a registered trade
mark or a mark used in relation to goods or services for the purpose of
indicating or so as to indicate a connection in the course of trade between
the goods or services, as the case may be, and some person having the right
as proprietor to use the mark; and
- in relation to other provisions of this Act, a mark used or proposed to
be used in relation to goods or services for the purpose of indicating or so
as to indicate a connection in the course of trade between the goods or
services, as the case may be, and some person having the right, either as
proprietor or by way of permitted user, to use the mark whether with or
without any indication of the identity of that person, and includes a
certification trade mark or collective mark;
This Act also states in Section 2(a) to include collective mark and
certification trade mark under the ambit of Trademark.
The difference between Trademark and other intellectual property rights is
that Trademark is given for an indefinite amount of time. Initially it is
provided for 10 years but it may be renewed indefinitely.
Whereas other intellectual property rights are not provided indefinitely.
Types of Trademarks
- Word Marks:
This indicates the right only in words, letters, or numerals. No protection in representation of marks (words only).
- Device Marks:
It indicates the right of unique representation of a word, letter, or numeral (word + logo).
- Service Marks:
It is used only for services, not for goods. (There are 45 classes in Trademark. 1-34 are for goods and 35-45 are for services).
- Collective Marks:
They are the marks used by a group of companies collectively. For example, Sony used by Bravia, Xperia etc.
- Certification Marks:
It includes marks used to define standards. (ISI).
- Well Known Marks:
When a mark is recognized among a large percentage of the population, it is termed as well-known marks. They enjoy greater protection (extra fees) (either on application or if the court has declared).
- Unconventional Trademarks:
Marks which get recognition for their inherently distinctive feature. These include:
- Color Trademark: Purple color on the pack of dairy milk.
- Sound Marks: Phone ringtone on startup.
- Shape Marks: 2D and 3D shapes.
- Smell Marks: Lush green smell of a tennis ball (only in the USA).
Genericide is when a brand name becomes so commonly used to describe a certain
type of product that people forget it's a specific brand. It's like the brand
name turns into a regular word that everyone uses. This can be a problem for the
company that made the brand, because they lose the special recognition that
their brand used to have.
For example, "Xerox" was a brand name for a kind of photocopier. But over time,
people started using "xerox" to mean making copies, no matter what brand of
photocopier they were using. So, "Xerox" kind of lost its special meaning as a
brand name and became a generic term for copying.
Companies work hard to avoid genericide and keep their brand names strong, so
people always remember their unique products.
How many offices of Trademark are there in India?
In India, the operations of Trademarks are carried out from five cities i.e.,
Delhi, Mumbai, Ahmadabad, Kolkata, and Chennai. Each city has been assigned a
bunch of states. The businesses located in a particular state can only use the
services of the assigned Trademark Registration Office. In the case of foreign
applicants, jurisdiction is based on the location of the office of the applicant
's agent or attorney.
The jurisdiction associated with each city is as follows:
Registration:Process, Restrictions and Importance:
- Mumbai - Maharashtra, Madhya Pradesh, Chhattisgarh and Goa.
- Ahmedabad - Gujarat, Rajasthan and Union Territories of Daman, Diu, Dadar and Nagar Haveli
- Kolkata - Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim, Tripura, Jharkhand, and Union Territories of Nagaland, Andaman and Nicobar Islands.
- New Delhi - Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Uttarakhand, Delhi and Union Territory of Chandigarh.
- Chennai - Andra Pradesh, Telangana, Kerala, Tamil Nadu, Karnataka, and Union Territory of Pondicherry and Lakshadweep Island.
The process of registering trademark of a company must be in adherence to the
provisions of the Trademark Act. Registration is done by filing an application
for the same. It can be done both by the proprietor or any agent on his behalf.
However, it is recommended to conduct a prior art search to ensure the
registration criteria. By this search, the registrant ensures that the trademark
is not already in use and complies with all the provisions of this Act.
Once the 'prior art search' is over and the applicant is convinced about the
distinctiveness of the Trademark, he can proceed to fill the application form
for registration (TM-A).
The application is filed at the Trademarks Office
subject to the jurisdiction of the applicant.
The steps involved in the
registration process are as follows:
- After the prior art search has been conducted, the applicant can apply for the registration on his own or with the help of a certified agent.
- The application is assigned an application number within a few days. The same can be tracked online.
- The application is scrutinized by a professional examiner. If everything is in order, the particulars of the application are published in the official Trademark journal. Otherwise, objections are sent to the applicant for rectification.
- Based on the satisfactory response, the examiner would recommend the revised application to be published in the journal. If the application is rejected, the applicant may approach the Intellectual Property Division to challenge the rejection of an application by the examiner.
- Once the Trademark is published in the official journal, the public has an opportunity to file an objection, if any, within 90 days. After hearing both the parties, the officer decides whether to proceed further for the grant of Trademark or disallow the grant of Trademark.
- In case of an unfavorable outcome, the applicant has the right to contest the decision in front of the IPAB (Intellectual Property Advisory Board).
- Once the application has successfully completed all formalities, a Trademark registration certificate is issued in the name of the applicant.
Provisions regarding the registration of trademark are as following:
- Section 18 - Application for registration to Registrar, single application for registration in different categories, fee payable for each category. If the registrar refuses the application, he will record reasons for it.
- Section 19 - The registrar may withdraw the application after its been accepted but before the trademark is registered if he has reasons for it after hearing the applicant.
- Section 20 - Advertisement of Application
- Section 21 - Opposition to Registration (within 3 months of advertisement)
- Section 22 - Correction and amendment of application
- Section 23 - Registration
In the year 2010, amendments were made to add protection of Trade marks through
international registration under Madrid Protocol (Section 36A to Section 36G
This section states that registration is prima facie evidence of ownership of
trademark, if you don't register then also you can prove your right over it, but
registration makes it easier.
Betco Enterprises and Another v. Pradhan Perfumes and others
"Trademarks exist independently of the registration; registration is just extra
evidence of protection."
Following conditions have been prescribed by the Act to be considered by any
person seeking to register their trademark:
Section 9: Absolute grounds for refusal of registration
- Trademarks cannot be registered if:
- They are devoid of any distinctive character, not capable of distinguishing goods or services (Deceptively Similar Marks).
- They consist exclusively of marks or indications describing characteristics of goods or services (Descriptive Marks).
- They consist exclusively of marks or indications customary in trade (Use of Common Names).
- They are deceptive, scandalous, obscene, or cause confusion (Offensive or Immoral Marks).
- They hurt religious sentiments or are prohibited by law (Hurtful to Religious Sentiments).
- They use government symbols prohibited by law (Government Symbols).
- They consist of functional shapes or add substantial value to goods (Functional or Common Shape).
Section 10: Limitation as to color
- A trademark may be limited to a combination of colors.
- If not limited, the trademark is registered for all colors.
- Example: Cadbury (Purple), Color of drink or cans.
Section 11: Relative Grounds for Refusal of Registration
- No registration if identity or similarity to an earlier trademark or goods and services.
- No registration if the earlier trademark is well known and the new trademark benefits from it.
- New trademark can be registered with owner's consent.
- Case Example: M/S Hitachi Ltd v. Ajay Kumar Aggarwal (1996)
- Court refused registration of 'HITAISHI' similar to 'HITACHI'.
Section 12: Registration in the case of honest concurrent use
- Registration of similar trademarks allowed if parties act in good faith and meet Registrar's conditions.
Section 13: Prohibition of registration of names of chemical elements or international non-proprietary names
- No registration of names of chemical elements or compounds declared as international non-proprietary names by WHO.
Section 14: Use of names and representations of living persons or persons recently dead
- Using a person's name (living or dead within last 20 years) requires consent from the person or their legal representatives.
Consequence of Non-Registration of Trademark
The registration of trademark for goods or services is not compulsory but it
adds an extra layer of protection in case of infringement.
- Section 31:
This section states that registration is prima facie evidence of ownership of trademark, if you don't register then also you can prove your right over it, but registration makes it easier.Betco Enterprises and Another v. Pradhan Perfumes and others
"Trademarks exist independently of the registration; registration is just extra evidence of protection."
- Passing off:
- Passing off is when someone pretends to be something they're not, especially in business. It's like if you have a popular lemonade stand, and someone else starts a stand using a similar name and look to trick people into thinking it's yours. That's passing off. It's about stopping unfair competition and protecting your business's reputation and brand.
- Passing off is used to enforce unregistered trademark rights. This remedy for the same has been provided under Section 27 of this Act.
- The three basic elements of passing off are Reputation, Misrepresentation, Damage which are called as Classical Trinity, propounded in the case of Reckitt & Coleman Ltd v. Borden Inc.
- Modern elements of passing off were propounded in the case of
Erven Warnink v. Towned. They are as following:
- Made by a person in the course of trade
- To prospective customers or consumers or another traders goods or services
- Which injures the trader's business or goodwill
- Causing actual damage to a business or goodwill of the trader by whom the action is brought.
- The case of S. Sayed Moideen v P. Soluchana Bai (2005) is highly relevant in the Indian scenario. The court said that a right over registered trademark is not absolute, subject to rights of prior user for passing off.
Importance of Trademark Registration
The registration of trademark is very important as it provides a lot of
benefits. The benefits are as stated below:
- Brand Protection: It stops others from using your brand name or logo, so customers always know it's your stuff.
- Legal Power: If someone copies you, you can use your registered trademark to legally make them stop. Infringement of the same has been talked about under Section 29 and Section 30 of this Act.
- Trust Builder: It builds trust with customers. When they see your trademark, they know your product is real and reliable.
- Asset Value: Your trademark becomes an asset, like a valuable treasure. If your business grows, it can be worth a lot of money.
- Nationwide Rights: It gives you rights all across your country, so you don't have to worry about local copycats.
- It can also provide international rights, as per provisions in consonance with the Madrid System envisaged under Section 36A to Section 36G after the 2010 amendment.