A trademark is a sign, expression or design that is recognizable and can identify a product or service of an individual, business organization or legal entity from others. Trademarks that are designed for service providers are known as service marks. In companies, trademarks are displayed on buildings for corporate identity.
The India trademark act of 1999 serves as the national trademark which is enforced on a date determined by the government. In a situation that a consumer buys a good from a certain manufacturer and then discovers that the goods had been of inferior quality and was not from the original supplier, then such a consumer has been deceived. The buyer and the seller can be saved from such embarrassing situation if a symbol is attached to the goods to identify the source of the commodity.
WHAT IS A TRADEMARK?
Trademarks can be defined as symbols that are placed on goods and services to identify the origin of such goods or services. Section 2(zb) of the 1999 Trademarks Act defines it as mark that can be graphically represented and has the capability of distinguishing both goods and services from others. A mark can be a brand, colour, device, shape of goods, word, name, letter, signature, packaging or combinations of colours.
A buyer makes use of these marks to decide which goods he/she would purchase and from which company or seller.
PURPOSE OF TRADEMARKS TO THE PUBLIC
Trademarks serves many purposes and functions which includes
- Decision making from the buyer on the type of goods to purchase based on the known qualities for that goods.
- In situations that the goods of a manufacturer are in the possession of others, trademarks will allow the manufacturer to spot out his goods with ease.
- Authorities and regulators can easily spot the goods that are under its watch in the public markets and shops.
- It differentiates similar goods of different companies or entities.
TYPES OF TRADEMARKS
There are three other types of trademarks in accordance with the 1999 trademark Act. These include Collective Trademark, Certification Trademark and Well-known trademark.
- Collective Trademark: Collective Trademark identifies goods and services that are from members of an association that are not listed as a part of partnership in accordance with the 1932 India partnership Act. You may which to know the difference between a collective trademark and a trademark. Here it is; while a trademark is for an individual, a collective trademark is for group of persons in an association that is not within the 1932 India Partnership Act. Goods or Services from groups of companies like Hindustan Liver can be registered under collective trademarks.
- Certification Trademark: as stated in section (2e), certification of trademark is defined as a mark which can distinguish good or services that is used in trade and is certified by the original owner of the mark based on origin, quality, mode of production, service performance, accuracy and material from other goods and services that has not been certified nor registered with the same name of the original owner of the trademark is known as certification trademark.
- Well-known Trademark: in accordance with the definitions stated in the Trademark Act of 1999, a well-known Trademark is a mark that has become so used and familiar to the public that any person rendering such services or selling goods with such a trade mark is deemed to have a direct relationship with the owner of the trademark.
QUALITIES OF A GOOD TRADEMARK
The major quality that is associated with trademarks is uniqueness. Below are the qualities of well-designed trademarks besides uniqueness.
- if the mark is a word, it should be easy to remember and pronounce.
- One must be able to spell it easily and write clearly.
- If the mark is a device, it must possess the ability of being be described with words.
- It should be able to suggest the quality of goods.
- It should appeal to both the eye and the ear.
- Satisfying the necessary requirement for registration is a plus.
- It should belong to the appropriate class mark.
WHAT ARE THE FUNCTIONS OF A TRADEMARK?
- It helps in identifying the origin of a product. An example is the trademark ‘Brooke Bond’ which identifies tea emanating from the company involved in tea production and markets the product under it.
- It ensures that the quality of a product is guaranteed. A tea with the label ‘Brooke Bond’ is like that with Taj Mahal label but is different.
- It represents the product and can serve as a means of advertisement to other product. Looking at the product Sony, what comes into mind is electronics. Thus, the trademark ‘Sony’ advertises the product and differentiates it from other competitors
- The image of the product can be registered in the minds of the consumers through its trademark. The mark ‘M’ on food products is an indicator for foods from MACDONALD an American fast food chain and thus creates the image of the quality products from their stores.
REGISTRATION OF TRADEMARKS
In accordance with the provisions of the India Trademark 1999 Act, registration of trademarks confers on the proprietor rights which are related to the use of such marks in providing goods and services. The proprietor of the trademark can sue if his rights to the marks are infringed once it is registered.
PROCEDURE FOR REGISTRATION OF TRADEMARKS
Any person with the intention of using a trademark must apply to the registrar of trademarks in accordance with the manners stipulated in the law. One application can be made for several classes of goods and services stated in the 1999 Trademarks Act. It is important to note that different fees are paid for each class of goods and services to be registered.
All applications for registration of trademarks are directed to the office of the registrar of trademarks within the state where it operates. For groups of persons who are applying for registration, the residence of the first person whose name appears on the list determines the territory of the registry.
STAGES INVOLVED FOR REGISTRATION OF TRADEMARK
For registration of trademarks as prescribed in the 1999 trademarks Act, an application must be filed to the registrar. Thus, the stages for registration include:
- Withdrawal of acceptance of application
- Advertisement of application for registration
The essential facts on the process for registration as stipulated in section 18 of the India Trademarks Act 1999 are as follows:
- The person desiring to use a trade mark will write an application to the registrar of trademarks within the jurisdiction of residence.
- A single application can cover the various classes of goods and services that require trademarks.
- Applications must be directed to the registry within the jurisdiction where the business is located.
- The registrar can either accept or reject the application or may request for amendment and modifications to the intending trademark.
- If the application is rejected or put under conditional acceptance, the registrar will write to express the reasons for refusal or conditional acceptance and the yardstick for such a conclusion.
WITHDRAWAL OF ACCEPTANCE OF APPLICATION
In accordance with section 19 of the India Trademarks Act 1999. After the registrar must have accepted an application for registration but discovers that the application was erroneously accepted or that the trademark should not be registered or if registered, it should be based on conditions; then the registrar can withdraw the acceptance.
ADVERTISEMENT OF APPLICATION FOR REGISTRATION
Declaration on advertisement of application for registration are contained in section 20 of the India Trademarks Act 1999. Thus, applications for registration must be advertised to avail the populace of the opportunity to oppose such applications. When an application for registration of trademark is accepted mistakenly by the registrar, he can withdraw the acceptance after he may have heard from the applicant if so desires and continue with the application as if it was not accepted in the first instance.
This provision allows the registrar to correct any mistake that occurred while the application was accepted. Advertisement permits all parties of interest to oppose the trademark sought in the application for registration.
Declaration on opposition to registration of trademarks are stipulated in section 21 of the India Trademarks Act 1999. They are as follows:
- Within 3 months from the date of advertisement for registration of trademark or 1 month form the date of re-advertisement, a notice of opposition can be made to the registrar of trademarks after the payment of prescribed fees.
- The registrar shall forward a notice of opposition to the applicant who will have to reply via a letter to the registrar within two months of receipt of the notice. The letter from the applicant will state the reasons which he relies for his application. Failure to write to the registrar of applications within 2 months implies that the applicant is no longer interested in continuing with the registration.
- Any counter statement from the applicant shall be served to the person who served the notice of opposition.
- The grounds that the applicant and the opponent profess over the trademark shall be communicated in a prescribed manner to the registrar within a stipulated time after which both may be invited for a hearing before the registrar.
- On hearing the parties, the registrar will decide if the registration process can continue or on what condition the trademark can be registered.
- In event that the applicant or the person serving a notice of opposition is not resident in India, he will be required by the registrar to pay for the proceedings before the applications or notice can be treated.
- The registrar can call for the amendment of an application, notice of opposition or counter statement based on the terms he sees fit.
CORRECTION AND AMENDMENT
The registrar can at any time either before or after accepting an application for registration allow for corrections of any error on the documents or permit an absolute amendment of the application.
In event that an application involves other applications which are divided into other groups, the date of making the first application shall be the date for the other applications.
When the registrar had accepted an application for registration and is duly satisfied with the application not being opposed or the decision on opposition of the application has been in favour of the applicant, the registrar shall unless disproved by the Central Government register the Trademarks. The date of the registration will be from the date of application for registration as stipulated in section 154 of the 1999 Trademarks Act.
The registrar shall forward to the applicant a certificate of registration with a seal of the ‘Trade Marks Registry’.
The registrar can treat an application for registration as abandoned if the applicant fails to complete the process of registration within 12 months of writing the application.
In an event of a noticeable mistake on the certificate of registration, the registrar can amend the register to correct the errors.
RENEWAL OF REGISTRATION
The duration of registration of trademark shall be for a period of 10 years which is calculated from the date of application for registration. The registration must be renewed within 12 months to the period of expiration of the registration. It should be noted that the period before which the registration expires is 10 years. Failure to renew after an expiration will lead to the loss of rights to the Trademarks.