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Trademark: A weapon for modern day Trade War

Trademark Law:

  1. What is a Trademark
  2. Process of Filing of a Trademark
  3. What is a Trademark
I am pretty much sure that immediately after seeing this image, the first name that would have come to your mind would have been APPLE.

Now let's think for a second that what if all the electronic companies would have started using the name Apple for their products, what would have been the consequences, would we be able to distinguish and protect the product from others in the market.

That is where the Trademark Law comes into picture.

A Trademark can simply be defined as the, 'Distinctive Mark' or 'Product Appearance' which provide a product with a unique identification to distinguish it from other products and services i.e., anything that can create the connection / mental linkage between what the consumer sees and the product. Like: Swoosh of NIKE, or Sound of Nokia mobiles when it's turned on.

There was a very famous case between Apple Inc. Ltd. V. Apple Corps. where Apple Inc. Ltd. was in the business of manufacturing electronic products and the Apple Corps was the company incorporated by a music band Beatles, which was in the business of manufacturing music related products.

Both these parties into an agreement that the former will not enter into the music industry and later would not manufacture any product related to music. In 1978, Apple Inc. Ltd. breached its contract and introduced iPods into the market, to which the Apple Corps. sued the Apple Inc. Ltd. for the using breaching the agreement and using its trademark. For same Apple Inc. Ltd. had to pay 500 million USD.

With this example, now I believe you would have got an idea that how important and powerful role does the Trademark Law plays from the incorporation of the company to its functioning and promotion.

As per, Section 2(1)(zb), of the Trademark's Act, 1999 defines the word Trademark as: 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 colors; and
  1. 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
     
  2. 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 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;

In a layman's language a trademark can simply be defined as a brand name can be any word, signature, name, device, label, number or combination of colors used by any individual or undertaking on its goods or service or other articles of commerce, which differentiate it from other goods and services that is made by some other undertaking.

Essentials for any mark to fall under the preview of a Trademark:

  1. The mark should be capable of being represented graphically i.e., in the paper form and include represented in digitized form.
  2. It shall be able to make distinguish between the goods and services of one undertaking from those of another.
  3. It should be used or proposed to be used mark 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, and some person has the right to use the mark with or without the identity of that person. Ex: A red and Green mark on any product shows whether the product is vegetarian or not.

Trademark Portal of India: https://ipindia.gov.in/trade-marks.htm

In total, all the goods and services are divided into 45 classes internationally, were from class 1 to 35 represents goods and from 36-45 represents services. Whenever any trademark is been searched for registration, a class search is very much necessary according to the NICE classification of trademark, where we find out that in which category the trademark lies that is belongs to.

NICE Classification: https://www.wipo.int/classifications/nice/nclpub/en/fr/?basic_numbers=show&class_number=1&explanatory_notes=show&gors=&lang=en&menulang=en&mode=flat´┐Żion=&pagination=no&version=20230101
Trademark Information

Now let's try to understand what is the function of Trademark:

  • It helps any product or service to be identified by its end user, because of which he/she is able to distinguish it from the goods and services or others.
  • Another function of Trademark is that it guarantees that certain products containing a certain similar mark have been emerged from the same source. (E.g., In the milk industry if any packet mentions on its packaging the trademark AMUL, then all the packages having the similar trademark assures that the source of its manufacturing is same).
  • Any product or service having a unique and similar trademark convinces that any product of a similar class having such trademark would have equal level of quality. (Taking the same example for ANUL, it confirms that any package of the mild in which process / trade secret through which the milk is produced is of the same quality).
  • The trademark creates an image for the goods / services, which ultimately helps in the advertisement of the product and creates a memory for such product or service.

Who can apply for a Trademark and how?

  1. The person who is eligible for registration of a trademark shall:
    • Be the proprietor of such trademark which he used or proposed to use in the future.
    • Contain trademark, goods/services/name and address of the applicant (or of agent if filed through an attorney).
    • Time period of use of such mark.
    • The filed applicant can be in two languages either English or Hindi.
    • The application can be sent either by post, in person at the front office counter of the trademark registrar or through e-filing gateway available at the office website.

Link for e-filing portal: https://ipindiaonline.gov.in/trademarkefiling/user/frmLoginNew.aspx

On the following spectrums, a Trademark can be registered on the basis of strength and distinctiveness:

Throughout the world there are various brands which either sell goods or a service in the market, but the brand value that is the worth of their trademark differs from each brand to brand. Well, this is because of the impact that such brand creates on the market which decides whether such brand is strong or not.

Weakest Strongest

  • Generic - Descriptive - Suggestive - Arbitrary - Fanciful / Coined
  • Generic name is considered to be the most weakest type of Trademark, as due to the common work associated with the mark which directly identifies the nature of the product or services. E.g., Trademark name: BAND-AID, Generic name: Adhesive bandage, Plaster, Trade Mark owner: Johnson and Johnson.
  • Descriptive marks are those trademarks which determine its product or service through the description of the product to the way they are therefore, which directly identifies the nature of the products or services. E.g., Cold and Creamy (ice-cream), American airlines for airlines.
  • Suggestive marks are those names which indicate some quality of the product or service but does not directly describe the associated product or service. For e.g., Airbus for airplanes.
  • Arbitrary are those trademarks which have a common meaning but apply to the product or services that are unrelated to that meaning. E.g., Apple for tech-related products as by name it sounds like a fruit but is connected with the tech products.
  • Fanciful / Coined: these marks have no meaning other than that of the trademark. It is considered as the strongest type of trademark and are easier to register and enforce. E.g., KODAK, TATA, PEPSI etc.

POINTERS: If a trademark is a word, then it should be easy to Speak, Spell and Remember.

The best trademarks are invented words or coined words or unique geometrical design.

Avoid selecting a geographical name, common personal name or surname so that no one can have a monopoly over such a product.

Who benefits from a trademark:

  1. Proprietor:
    The owner that is the proprietor of the trademark does take the absolute advantage of the product as soon after the registration of the trademark:
    • It protects the goodwill of the goods or the service.
    • It stops the unlawful use of the trademark by anyone else other than the proprietor, wherein case of any infringement or passing off as well the owner i.e., proprietor can claim damages or secure destruction of the infringing goods or the label.
       

  2. Government:
    It earns the revenue as a fees for registering and protecting the trademark, along with some other miscellaneous charges that the government charges for any matter related to such trademark e.g., application for change of name or assignment of the trademark. Form TM-P (https://ipindia.gov.in/writereaddata/Portal/Images/pdf/FORM-TM-P.pdf).
     
  3. Legal Professionals:
    They charge service fees from the entrepreneurs for assisting them in selecting, registering, and protecting their trademark. As this process from selecting to registering to its protecting can be a bit complex and confusing for some people, in such a case legal professionals can become a big support.
     
  4. Customer:
    The customers are also from one of those parties who get the benefit from the registration of the trademark as it helps them to distinguish between the different products easily and make the decision by just recognizing such a trademark on the packaging, label, or of any other type.

Source of a Trademark:

Knowing the source of a trademark can be very handy in case when there is a dispute among the parties with regard to the infringement of the disputed trademark or when the dispute is itself with regard to its origin itself.

  • International Multilateral Conventions
  • National Bilateral Treaty
  • Regional Treaty
  • Decision of the Courts
  • Office practice reduced in manuals and guidelines and ruling of the Courts
  • Decision of Intellectual Property Appellate Board [High Court]
  • Textbooks written by academician and professional experts.


Office of Trademark Registry:

According to section 5 of the Trade and Merchandise Act, 1958 the Trade Mark Registry established under this act are the offices where the registration of trademarks depending upon their jurisdiction would take place.

The head office of all such registry would be placed at Mumbai. The Central Government has also fixed the territorial jurisdiction of different offices of the trademark registry, which are as follow:
  • Office of the Trade Mark Registry

Territorial Jurisdiction

  • Mumbai Office
  • The state of Maharashtra, Madhya Pradesh and Goa
  • Ahmadabad Office
  • The state of Gujarat and Rajasthan and the Union Territories of Daman, Diu, Dadra and Nagar Haveli
  • Calcutta Office
  • The state of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Nagaland, Sikkim, Tripura and the Union Territories of Pondicherry and Lakshadweep
  • Delhi Office
  • Union Territory of Jammu and Kashmir, Delhi and Chandigarh and the state of Punjab, Haryana, Utter Pradesh and Himachal Pradesh.

Process of Registering / filing a Trademark:
Before heading towards the procedure of registration of a Trademark, lets first understand a bit about the registration, like: what is registration, why are the benefits and formalities of major trademark transaction, condition of registration etc.

Q. What is Trademark Registration?
Answer. It could be defined as a process through which a proprietor of any trademark officially records its trademark with the government authority. E.g., In India the Trademark is registered with Trade Mark Office, In USA it is registered with USPTO (United States Patent and Trademark Office).

Q. Benefits of Registering a Trademark.
Answer. After having the Trademark registered, it provided the owner of such trademark an exclusive right to use or exploit such trademark for generating profit or for any other use. For instance, If I register a trademark with the name PIGLET for my restaurant, then I can subset such name and earn revenue on such transfer.

Q. What are the type of Trademark that may be registered in India?
Answer. There are in general 7 types of Trademarks which are registered in India:
  • Word Mark (any word or combination of numbers such as brand name, slogan, tagline. E.g., TATA, KFC, GE)
  • Device Mark (any label, sticker, monogram, logo, or any geometrical figure with or without having any work in it.)
  • Sound Mark (any sound track which creates the linkage of such good or service to the customer i.e., the customer is easily able to identify such product or service soon after hearing it. E.g., Nokia tune)
  • 3D Mark (any mark which uses 3-dimensional picture of the goods or service to which people are able to recognize such product or service with such specific thing only)
  • Color Mark (any single color or the combination of color which is distinctive and creates a unique brand value of such product. E.g., RED-YELLOW-GREEN-BLUE color of Google.)
  • Smell Mark (E.g., smell of Dutch company's tennis balls with scent of newly mown grass)
  • Shape Mark (any goods which have a distinctive shape can be registered as a trademark but it shall not be something which is necessary for getting / obtaining such shape).

Q. what are the formalities and govt. fees for major trademark transactions?
Answer. From filing a new application for registration to the striking out such registered trademark, there are certain forms which are prescribed by the authority, which are necessary in any activity related to Trademark.

In order to simplify the procedure, the total number of forms were reduced from 74 to 8.
https://ipindia.gov.in/form-and-fees-tm.htm
  • Form TM-A: This form is used for registration of a trademark/ collective mark/ certification mark/ series of trademark for specification of goods or services which are included in 1 or more class.
  • Form TM-O: When any notice of opposition is filed within 4 months of publication or its counter statement is filed by the applicant for such opposition then in such case, this form is referred.
  • Form TM-R: For renewal of registration of a trademark under each class as stated under section 25, shall be done in accordance with this form.
  • Form TM-P: In case of doing any amendments to the application, where the application under section 45 of the Trademark Act, 1999 to register a subsequent proprietor in case of assignment or transfer of such trademark for each such trademark, is done accordance to this form.
  • Form TM-U: This form is filed by the registered user to the registrar, in case when such user is willing to jointly form the proprietor of a registered trademark by submitting this form accompanied by the documents, evidence and details as required under sub-section (1) of Section 49 of the Trademark Act, 1999.
  • Form TM-C: This form of request for search and issue of certificate under rule 22(1) is made by the applicant before the registrar in the circumstance where there is no such similar mark registered or, there is no such identical mark, by making this application of request to issue a certification under sub-section (1) of section 45 of copyright act to identify such mark under the copyright act as an artistic work.
  • Form TM-M: This form is made to the registrar before the mark has been registered, to make certain amendments like for: extension of time, certified copy, duplicate registration certificate, inspection of document, particulars of advertisement to registrar, seeking grounds of decision of registrar or for entry in the register.
  • Form TM-G: Whenever any application is made before the registrar for registration of a person as a trademark agent under rule 147 and 149 of the Trademark Rules of 2017.

Q. what are the grounds for refusal of registration of a Trademark?
Answer. There the two grounds, under which if the trademark falls under its preview, then it might become a ground for non-registration.

Absolute Grounds (Section 9, Trademark Act, 1999)

  • Does not have any distinctive character.
  • Consists of any mark or indication which is exclusively used to designate the kind, quality, quantity, intended purpose, values, geographical origin or other character of the goods or service.
  • Any mark or indication which has become customary in current/daily language or practice of trade.
  • Mark or indication which makes it confusing and can deceive people.
  • The mark contains or comprises any matter which is likely to hurt the religious susceptibility of any class of people.
  • Mark contains scandalous or obscene matter.
  • The mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.
  • If the mark is of the shape of goods which results from the nature of goods.
  • The shape of goods which is necessary to obtain technical results.
  • Shape which gives substantial value to the goods.

Relative Grounds (Section 11, Trademark Act, 1999)

  • Mark which confuses people as identical or similar products.
  • Mark which can take unfair advantage of a similar or identical mark which is a well-known trademark.
  • Mark which would be harmful to the distinctive character or reputation of a similar/identical or a well-known trademark.
  • The usage of the mark is bound to be prevented by the law of passing off prevention.
  • The usage of the trademark is bound to be prevented by the laws of Copyright.

Process of Registration / Filing of Trademark:

Now let's understand the whole registration procedure, step-by-step:
  1. Step 1: Single Application for different class of goods and services:
    A single application shall be made before the registrar of a trademark for different classes of goods and services, where the fees which would be payable has to be in respect of each such class of goods or services.

    In case where the applicant wants to register the trademark in more than 1 class then, in such a case a separate application is required to be made.
     

  2. Step 2: Application has to be filed in the office of Trademark registry:
    The application for the registration shall be made in whose jurisdiction the principal place of business in India is situated.

    In case of a Joint Application, the principal place of the first applicant is considered.

    Where the applicant is not carrying on their business in India, then the territorial limits of such place would be considered where the applicant provides its services.
     

  3. Step 3: Acceptance or Refusal of Application:
    As per the provision of the act, it is up to the discretion of the registrar that he may accept such application without any condition, with some condition or can also refuse such application.

    In case if the registrar refuses the application or accepts it, on the conditional grounds then he shall record such reason of refusal or conditional acceptance for arriving at such decision.
     

  4. Step 4: Correction and Amendment:
    According to section 22 of the Trademark Act, 1999 the registrar may allow any changes or amendments asked to be made in the application which is either accepted or under the procedure to get accepted.

    If the application is made under section 18(2) of the Trademark Act, 1999 for the division of the application in to separate applications after its registration, then the registrar shall make the date of such divided application to get registered in the date of such division.
     

  5. Step 5: Advertisement of Application:
    According to section 20 of the Trademark Act, 1999 after the application is either accepted absolutely or under a certain condition, then the registrar shall advertise or publish such application under the Trademark Journal.
     
  6. Step 6: Opposition of Registration:
    Section 21 of the Trademark Act, 1999 states that any person is empowered with filing a notice of opposition to registration in writing to the registrar within 4 months from the date of advertisement or re-advertisement of an application.

    To such opposition the applicant can file a counter-statement for such opposition. After which the registrar shall give an opportunity to both the parties to present their case and depending upon their pleadings, he shall decide that by considering such opposition the application has to be refused from its registration or has to be considered on conditional grounds or has to be considered absolutely.

    The applicant can file such counter statement within 2 months from the date of opposition.
     

  7. Step 7: Submission of Evidence and Decision of Registrar:
    The registrar shall provide both the parties to present the appropriate evidence before the registrar, in prescribed time. After which both the parties shall be properly heard.

    After considering the evidence presented before him, the registrar shall decide that whether to register such application wholly, on some condition and limitation or not.
     

  8. Step 8: Registration:
    The application of the registration of a Trademark is registered according to section 23 of the Trademark Act, 1999. It might be registered in the two bases, which could be:
    • The application has not been opposed or the time for notice of opposition has expired.
    • The application for the registration has been opposed but the decision of such opposition has come in favor of the applicant.
In either of the scenario, the registrar shall register the application within 18 months of filing of the application, except in case where the Central government directs on some other time duration.

Conclusion:
In this article we have discussed what is Trademark, why it is necessary and also by looking into the forms of the Trademark as in how it is registered, like which form are considered when any changes or amendments are to be made before or after the registration of Trademark. Along with that, we have also discussed some key pointers in form of questions that also considers absolute and relative grounds for refusal of registration accompanying registration of the trademark in a detailed format.

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