FAQ's on Trademark

1. What is a trademark?

A trademark can be any coin word (CADILA), Brand Name (RELIANCE), symbol or device (NIKE SHOES), slogan, Shape or Packaging of product (Coca-Cola bottle) or combination of these that serves to identify and distinguishes product/services from others in the market place or in trade. Even a sound (Britania chimes) color combination, smell or hologram can be a trademark under some circumstances. The term trademark includes product mark as well as service mark.

A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.

In India the trade mark is understood as :
In other words a trade mark (popularly known as brand name) in layman’s language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking.

2. The legal requirements to register a trade mark under the Act are:

  1. The selected mark should be capable of being represented graphically (that is in the paper form).
  2. It should be capable of distinguishing the goods or services of one undertaking from those of others.
  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 have the right to use the mark with or without identity of that person.

The following type of marks can be registered as Trademark.

  1. Word marks including letters, numbers or combination of letters, numbers and words;
  2. Figurative marks, whether or not including words;
  3. Figurative marks in colour;
  4. Colours or combinations of colours;
  5. Three-dimensional marks;
  6. Sound marks;
  7. The application must contain a graphic representation of the mark.

A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. A service mark is essentially the same thing as a trademark, only a service mark is used in the sale of services, whereas trademarks are used in the sale of goods. It appears to be common usage to refer to service marks as either trademarks or service marks. However, the reverse is not true; and you cannot refer to a mark affixed to goods as a service mark. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.

4. How to select a trade mark?

  1. If it is a word it should be easy to speak, spell and remember.
  2. The best trademarks are invented words or coined words.
  3. Please avoid selection of a geographical name. No one can have monopoly right on it.
  4. Avoid adopting laudatory word or words that describe the quality of goods (such as best, perfect, super etc)
  5. It is advisable to conduct a market survey to ascertain if same/similar mark is used in market.

5. What purpose the trade mark system serves?

  1. It identifies the actual physical origin of goods and services. The brand itself is the seal of authenticity.
  2. It guarantees the identity of the origin of goods and services.
  3. It stimulates further purchase.
  4. It serves as a badge of loyalty and affiliation.
  5. It may enable consumer to make a life style or fashion statement

6. What are the benefits of registering a trade mark?

The registration of a trade mark confers upon the owner the exclusive right to the use of the registered trade mark and indicate so by using the symbol (R) in relation to the goods or services in respect of which the mark is registered and seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc. Also, where two or more persons have registered identical or nearly similar mark due to special circumstances such exclusive right does not operate against each other.

6. Can any correction be made in the application or register?

Yes. But the basic principle is that the trade mark applied for should not be substantially altered affecting its identity. Subject to this changes are permissible according to rules detailed in the subordinate legislation.

7. Can a registered trade mark be removed from the register?

Yes. It can be removed on application to the Registrar on prescribed form on the ground that the mark is wrongly remaining on the register. The Registrar also can suo moto issue Notice for removal of a registered trade mark?

8. Collective mark?

The word collective mark itself speaks its nature to signify goods or services produced or provided by members of an association or group of traders. The association or group generally establishes a set of criteria for using the collective mark and permits others who are members of the association or the group to use the mark if they comply with those standards.

9. Certification mark?

A certification mark is a sign/mark used to distinguish goods or services that comply with a set of standards defined by the owner of the certification mark (such as material, mode of manufacture and quality). They may be used by anyone whose goods or services meet these established standards with the permission of owner of the certification mark.

10. What is Extension of brand name?

Generally the business under the well known brand name used to be extended by way of diversification of business. The best Example is TATA Salt, TATA Indica, TATA Safari, TATA Indigo, TATA Sumo.

11. Protection of Well known trade mark in India?

In India when a mark is substantially known among the customers and substantial segments of public the mark is considered as a well known trade mark. In short, the public at large would recollect the well known mark for any goods or services.

12. Is registration of a trademark compulsory?

No, registration of a trade mark is not compulsory .however, without registration the owner of a trademark cannot bring an action for infringement to protect his mark id it is used or copied by others. Suing for infringement of a registered trademark is much simpler than launching a common law action for passing to protect an unregistered trademark since the owner of a registered can base his case simply upon the fact that his mark has been registered.

13. Kind of marks and signs may be registered as Trademark.

A Trademark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

Therefore, signs which may be registered as a trade mark include the following:

  1. Word marks including letters, numbers or combination of letters, numbers and words;
  2. Figurative marks, whether or not including words;
  3. Figurative marks in colour;
  4. Colours or combinations of colours;
  5. Three-dimensional marks;

The application must contain a graphic representation of the mark.

14. What kind of marks cannot be registered?

The following marks cannot be registered:

  1. marks that describe value, quantity, quality, or intended purpose of the goods or services;
  2. marks that are deceptive;
  3. marks that are contrary to public order or morality;
  4. marks that consist of armorial bearings, flags and other emblems or official signs of States or international intergovernmental organizations;
  5. Marks of such a nature as to infringe rights acquired by third parties in the country where protection is claimed (for example: marks that are identical or similar to earlier marks for identical or similar goods or services; or marks that are identical or similar to well-known marks).

15. Are all trades marks registrable?

A trade mark that capable of distinguishing the goods or services of one manufactures or trader From another cannot registered also, a mark shall not be registered if it deceives the public or causes confusion or likely to hurt religious susceptibilities or contains scandalous or obscene matter some name and symbols are not be used for commercial purpose under the name and emblem for commercial use, act -1950. Some marks cannot be acquired for distinctiveness like super, good, better, best, change etc, like generic names. Further, a trade mark conflicting with a prior registered or pending mark or deceptively similar mark can come in the way of registration , however, this objection may be overcome with the consent of notification under section 23(1) of the trade marks act .1999 the certain names , device or logo for use as a trade mark.

16. Who can apply for a trademark registration?

Any person can apply for registration of a trademark to the Trademark Registry under whose jurisdiction the principal place of the business of the applicant in India falls. In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company's favor.

17. Search is advisable.

Before making an application for registration it is prudent to make an inspection of the already registered trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.

18. Trade Marks search?

Conducting a search is crucial when preparing trade mark applications in order to avoid filing trade marks that are already registered or applied for or trade marks that would be similar to any existing ones. Trade mark databases are available on most national or regional trade mark offices' web sites, including the WIPO. The proper search depends on the territory where the protection is sought (proper database needs to be chosen), classes of goods and services (they need to be chosen accurately) and the representation of the sign.

19. How can I protect my mark?

At the national/regional level, trademark protection can be obtained through registration, by filing the appropriate application form with the national or regional trademark office and paying the required fees.
At the international level (for protection abroad), you have two options: either you may file a trademark application with the trademark office of each country in which you are seeking protection, or you can use the Madrid system and European Community Trademark System.

20. Safeguards for protection of a trade mark.

The proprietor should use and renew the trademark regularly and in time. If others misuse the trademark he should file a suit for infringement and passing off and also take criminal action.

The proprietor should keep a watch in respect of trademarks published in the Trade Marks Journal and institute opposition proceedings if identical or deceptively similar trademarks are advertised. He should initiate rectification proceedings if an identical or deceptively similar trademark is registered.

21. Duration of a trademark registration?

The term of a trademark registration is for a period of ten years. The renewal is possible for further period of 10 years each. Unlike patents, copyrights or industrial design trademark rights can last indefinitely if the owner continues to use the mark. However, if a registered trademark is not renewed, it is liable to be removed from the register.

22. What are the benefits of trademark registration in India

  1. Constructive notice of ownership of the Trademark
  2. TM and ® is Prestige of your Brand and your Company
  3. Its ownership and get exclusive rights over your trademark.
  4. You can sale your Trademark TM and ® and/or give license to other company to use your Trademark and get Royalty for the same.
  5. The exclusive right to use the registered mark in commerce in connection with the goods or services specified in the registration
  6. Establish the Goodwill and incontestability of rights in the registered mark
  7. No one can make a copy of your trademark; if some one copy then you can take legal action against them and ask for damages.
  8. Sue for counterfeiting of the registered mark and to obtain both civil and criminal penalties against counterfeiters
  9. Similar advantages can be obtained from registering a trademark in most other countries of the world. In some countries, a registration is a requirement for any enforcement activities. Since the advantages necessarily vary from country to country.

24. Multiclass application?

A multi class application is a single application for registration of a one trademarks made in different classes of goods or service. When registered, all the goods or services are recorded under a single trade marks number but fees to be paid for each class.

25. Whether registration in India give protection abroad or worldwide?

No, It will to apply for registration separately in each of those countries where registration is required. but generally registration in the home country would strengthen applicants hand. The date of priority can be claimed in convention countries within 6 months.

26. What is classification of goods or services?

Every application for new trade mark has to be made in the appropriate class. There are in all 42 classes under which all goods or services fall. This is based on international classification of goods or services, (nice Classification). The abstract of classification of goods or services mentioned in schedule IV of trade mark rules 2002 is given at the end of this brochure. This serves as a short ready reckoned. In case of doubt enquiries may be made to the registry for correct classification. Filing an application in the wrong class may be refused. Hence its importance to file application in proper class

27. What is the difference between a registered and an unregistered trademark?

A registered trademark has been approved and entered on the Trademark Register held by any Trademark Office (National or Regional). An unregistered trademark may also be recognized through "common law" (in some countries) as the property of the owner.

28.Registration of trade marks necessary / compulsory?

No, it is not necessary or compulsory but In certain jurisdictions, it is. In others, you may acquire rights over a mark that you have used, but not registered. And that is take more time to prove that you are owner of marks, so registration give you rights and proof of owner of the trademark.

29. What is the purpose and function of a trade mark?

A trade mark it is shorthand description for the goods or services sold for easy identification of the origin or trade source of goods or services. The consumer can count a similarity of composition and consumer and quality of goods/services bearing the trade mark, it acts as an instrument of sales promotion and consumer information thus facilitating repeat orders. It helps manufactures to acquire new market, stimulates trade and helps to promote economic activity beyond national borders. Registration gives right to a presumptive evidence of the right of the registered proprietor
To the exclusive use of the goods or services specified. The register of trade mark protects the public against deception and rival traders are given notice by the rights claimed in the registered mark.

30. Rights conferred by registration.

Once a trade mark is registered in respect of goods or services, it is prima facie proof of the legal ownership of the mark. The production of title of the registered mark would enable the registered proprietor to seek injection from appropriate court against pirates. Registration confers the exclusive right to take legal action against others who may infringe the registered trade mark in relation to similar goods or services. In some circumstances, infringement action can be initiated in respect of unrelated goods provided the registered trade mark has reputation in India and the use of the infringing mark is without due cause and unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark and well known marks.

31. Crystal Clear Procedure for registration of trade mark in India?

By filing application an application in the appropriate form with fee and registered office and company in one of the five office of the trade marks registry located at Ahmedabad, Mumbai ,Chennai , Delhi, Kolkata depending on the place where the applicant has his principal place of business and in case of foreign application and if the applicant does not carry on any business in India the application shall he failed in the registry within whose territorial limits the place mentioned in the address for service in India is situated.

The applications are then numbered followed by data entry, scanning and codification of figurative marks in computer. The application is examined to ascertain whether the trade mark is capable of being respected graphically (that is in paper from) and also whether the trade mark is capable of distinguishing the goods or services and to check that it does not conflict with exiting registered or pending trademarks and its registration is not prohibited under other provisions of the act and an examination report is issued. If it is found to be acceptable then the marks applied for is published in the trade mark journal to allow any party to oppose its registration.

If no opposition is filed or if the opposition is decided in favour of the applicant then, the mark is registered and a certificate of registration is issued in the name of applicant.

33. Is trademark registration necessary even when the mark has been in use for many years?

Yes, registration of trade mark is necessary in India to prove your prima facie case and take action for infringement of trade mark.

34. Does trademark protection apply to any and all types of goods and services

No. You must indicate in the trademark application form the list of goods and/or services for which you are seeking protection.

35. If I am exporting, do I have to register my mark in other countries as well

Trademark protection is territorial, that is, your rights are confined to the country in which your mark was applied for and registered. Consequently, if you are in the export business, you should register your mark in the countries to which you are exporting.

36. What is the difference when trademark is compared with Copyright, Patent and Geographical Indication?

A trademark is different from a copyright or a patent or geographical indication. A copyright protects an original artistic or literary work; a patent protects an invention whereas a geographical indication is used to identify goods having special characteristics originating from a definite territory.

37. What forms of protection are available for trademarks?

There are two forms of legal protection that are available for trademarks. Under The Trade Marks Act, 1999, the procedure for registration of trademarks is prescribed in order to afford protection for the same. The most effective trademark protection is obtained by filing a trademark registration application in the Registrar of Trademarks. Once the trademark is registered, infringement can be easily established. In case of unregistered marks and marks which are not registered, the only form of protection is the common law remedy of passing off. The plaintiff would have to prove sufficient use of the mark so as to create valuable goodwill of the business connected with the goods bearing the mark.

38. Do I need an attorney to file my application?

No, although it may be advisable to employ an attorney who is familiar with trademark matters. An applicant must comply with all substantive and procedural requirements of the Trademark Act and the Trademark Rules of Practice even if he or she is not represented by an attorney.

41. When applying for a Trade Marks check that you have included?

  1. Name & address of the proprietor.
  2. Name and address of the Agent, or the address for service.
  3. A clear representation of the Trademark.
  4. The goods and/or services the Trade Mark will be used, on and
  5. The appropriate class/es
  6. The different Registry offices are responsible for processing applications from the different states of India. Applicant should only lodge applications at the appropriate office as per jurisdiction.

43. What does constitute infringement of a trademark?

A registered trademark is infringed if a person uses the same/deceptively similar mark in the course of trade, in respect to the same goods. The test for deceptive similarity is whether the defendant's use of a mark is likely to cause confusion, i.e., whether an appreciable number of reasonably prudent consumers are likely to be confused or deceived as to the source, affiliation or sponsorship of the parties and their goods and services. The plaintiff need not demonstrate actual confusion or intent to confuse. The 'likelihood of confusion' analysis encompasses an evaluation of a variety of interconnected market factors, relating to the likely expectation, perception and memory of consumers.

44. What are remedies that the court may grant in an infringement suit?

The relieves in a suit for infringement include: - Injunction, restraining the further use of the trademark; - Damages or an account of profits; and - An order for delivery of the infringing labels and marks for destruction. If the infringement committed was innocent only nominal damages will be awarded. However, criminal action is possible if fraudulent intention on the part of the infringer is proved.

45. Where should I file an infringement suit?

A suit for infringement of registered trademark must be filed in the District Court having jurisdiction or in the High Court that has original jurisdiction to try such suits. The jurisdiction and procedure are governed by the Civil Procedure Code. The period of limitation for filing the suit is three years from the date of infringement.

46. What are the remedies available against Infringement and passing-off?

Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party. These remedies are: - ‘an action for infringement' in case of a registered trademark and ‘an action for passing off*' in the case of an unregistered trademark.

The basic difference between an infringement action and an action for passing off is that the former is a statutory remedy and the latter is a common law remedy. Accordingly, in order to establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required. In the case of a passing off action, proving that the marks are identical or deceptively similar alone is not sufficient. The use of the mark should be likely to deceive or cause confusion. Further, in a passing off action it is necessary to prove that the use of the trademark by the defendant is likely to cause injury or damage to the plaintiff's goodwill, whereas in an infringement suit, the use of the mark by the defendant need not cause any injury to the plaintiff.

However, the registration cannot upstage a prior consistent user of trademark in India, for the rule followed is ‘priority in adoption prevails over priority in registration`. In many other jurisdictions like Saudi Arabia, Nepal etc. where the first party to register a trademark is considered the party to own the mark, regardless of prior use of the mark.

47. What are the common grounds for refusal of trademark registration?

A common ground for refusal is likelihood of confusion between the applicant's mark with registered mark or pending prior mark. Marks, which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused registration. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well.

48. Is assignment of a trademark possible?

The assignment/licensing of trademarks is restricted, because unrestricted licensing has been considered as trafficking in the mark which is against public interest. This is because, a trademark indicates the origin of the goods to the consumer and unrestricted licensing can lead to confusion and deception among the public as to the nature of the goods. According to the law, the assignment of a trademark should not result in the creation of concurrent exclusive rights in more than one person with respect to the use of the same/similar mark in respect of same/similar goods. Confusion or deception can be avoided by territorial limitation or limitation of the goods.

49. What are assignments of trademarks?

  1. 1. Assignments or transmission of the ownership of a trade mark occurs when.
  2. 2. Ownership of a trade mark is passed from one party to another along with goodwill of the business or not.
  3. 3. The registered proprietor of the trade mark is absorbed or merged into another entity trade marks to he assigned may be.
  4. 4. Registered- assignment is recorded in the register
  5. 5. Pending- assignment is recorded on the trade marks data base only.

50. Can a trade mark be removed from the register because of it not being in use after registration?

Yes, if a trademark , which has been registered and has not been used for a continuous period of five years and three months ,it can be removed on an application made in prescribed manner by filing request before Trademark Office in India

NOTE: The above information are also available on Government website www.ipindia.nic.in