How to register, enforce and protect a trademark in India?
Definition: Trademarks (TM) are the most efficient form of creating brand value of any product or service. Generally, a Trade Mark is a distinctive sign and indicator to distinguish products or services of any business organization to those of others. Also, it is a means through which consumers identify the source of an organization’s products or services. It is generally used by business organizations, entrepreneurs and others. A trademark usually comprises of a name, word, phrase, logo, symbol, design, image or a combination of these elements.
Trademark gives an exclusive right to the owner over its use with a view to the protection to the goodwill that the manufacturer’s product enjoys in the market. Trade Mark brings transparency as it helps the consumers to identify the manufacturer or service provider. Thus, it also works as an advertising tool.
In India, the Trade Mark Act, 1999 provides for the protection of a mark as a Trade Mark. Under the Trade Marks Act, 1999, registration of a Trade Mark provides the owner with a monopoly in the use of that Trade Mark in relation to the goods for which is registered and the owner has the full right to sue in the courts of law for infringement of the trademark.
Below is the list of some FAQ’s in relation to the Trademarks.
- What is a Trade Mark?
A Trade Mark is a means through which goods can be identified and distinguished from those of others by the purchasing public. It is in the form of a symbol, logo, etc. and used by business organizations, entrepreneurs and others.
- How to select a Trade Mark?
From the business point of view as well as the legal point of view, proper selection of Trade Mark is very important.
Business point of view: It shall be easy to pronounce, remember, attractive and short.
Legal point of view: It should not fall under section 9 of the Act, which mentions all possible grounds for refusal like personal names, surname, geographical name, name of a tribe/caste or refer to the character or quality of goods. A good Trade Mark is one which is preferably an invented or coined word.
- Is it compulsory to register a Trade Mark under Indian laws?
Though it is not compulsory to register a Trade Mark in India, but desirable to avail the benefits provided by the law. A registered Trade Mark offers a bundle of exclusive rights to the owner including the right to exclusive use of the Mark in relation to the products or services for which it is registered.
- Is it possible to register a similar or registered Trade Mark?
As per law, there should be only one Trade Mark, one source and one owner. Thus, it is not allowed or advisable.
Exception: It has been allowed only in those circumstances where the mark has been adopted honestly and bonafidely used for a sufficiently long period of time.
- Can a registered Trade Mark used for one set of goods/services be used for another set of goods/services by different persons?
Yes, the same is permissible to be used in respect of different goods or services.
- How to find out the availability of a Trade Mark?
Every business organization or entrepreneur should go for official trade mark search of the proposed mark from the office of the registrar of trademarks, before filing its registration application and start using it in respect of your goods/services. In case of any confusion/existence of similar work, opinion should be taken from a Trade Mark lawyer.
- Honest concurrent user?
If it is found that there is a resembling mark on register9or any other previous application is pending w. r. t any similar mark, the trade mark may still be registered on proof of the honest and bonafide adoption of the trade mark and sufficiently long and continuous user of your trade mark subject to satisfaction of the Registrar of the Trade marks. The period of the honest and concurrent user is not defined in the act however in number of cases, the use of Trade mark for a period of 5-6 years of more has been allowed for such qualification.
- Criteria of registrar and Courts for deciding similarity/deceptively similarity?
The foremost criteria for determining confusing or deceptive similarity is whether an unwary purchaser i.e. a common prudent person will be confused or not, which are further determined by the OCCULAR as well as PHONETIC similarity of the mark, the getup, color combination, design and artwork of the label, packing material etc.
- Legal remedies on infringement and/or passing off of a trade mark?
- Both civil and criminal remedies are available under the provision of The Trade Marks Act, 1999.
- Please note, when there is invasion of the statutory rights of a person i.e. a Registered Trade mark Holder, it is called an infringement of the trade mark.
- Section (29) in all other cases, in respect of unregistered trademarks, the legal actions is called “Passing Off” actions.
- Section(27) In a civil action, following remedies are available:
- Interim Injunction
- Permanent Injunction
- Accounts & Damages
- The court has the power to not only pass interim injunctions but also the power to order for the delivery of the infringing material bearing the trademark of the plaintiff.
- Besides this, the court may also issue directions to give true and faithful account of the illegal profit so earned and the damages suffered by the owner the trademark.
- Cancellation of a registered trade mark?
Yes, in a certain circumstances registration of a trade mark can be cancelled, such as where the registration has been obtain by playing the fraud upon the Registrar, as to information and circumstances or when a registered trade mark is not used for a continuous period.
- Authority for registration of trade mark internationally?
There is no such international authority. The trade mark is a state subject, and one has to apply for registration in each and every country separately.
Some more elaboration on various aspects relating to Trademark:
Under the Indian laws, the proprietary rights in relation to a Trade mark may be established through actual use in the marketplace or through registration of the mark with the trademarks office/registry of a particular jurisdiction. The Trade Marks Rules, 2002 under Rule 25 to 62 govern the procedural aspects relating to the registration of Trade mark which can be done on any of the registration office at four metropolitan cities Delhi, Mumbai, Kolkata & Chennai. The mark to be registered must be distinctive and must not be descriptive.
- Disadvantage for non registration:
No person shall be entitled to institute any proceedings to prevent, or to recover damages for, the infringement of an unregistered trade mark.
- Assignment & Transmission:
The trademark is assignable as well as transmissible which can be done after following procedural formalities in connection with Assignment & Transmission.
- Registered User:
A person can use the Trade mark as a registered user subjects to certain conditions.
- Rectifications and corrections of register of Trademark:
After following the procedure there can be made correction in register of trademark or amendment in classification of goods.
- Special provision for Certification Trademark:
The act provides special procedure for registration of certification trademark.
- Infringement and Passing off:
A registered proprietor of a trade mark can prevent others from using an identical or deceptively similar trademark in relation to any goods in respect of which the mark is registered by either civil suit or criminal complaint for passing off.
Check list of information & Documents required for Trade Mark registration in India–
- Name of trade marks to be registered for search.
- LOGO/ Trade Marks to be registered.
- Name, address, legal entity and Nationality of the applicant.
- Detail of product or service.
- Trade Description: Manufacturing/ Trading/ Service.
- Little information about the product.
- Name and designation of the person authorized to sign the application and other documents.
- Duly executed power of attorney
If the proposed trade mark id is already in use, from the date it being used