Trademarks, more commonly known as brands include logo, words, company name, sign, symbol, sound, product design, product packaging etc. which can be graphically represented and which are innovative and distinct enough to indicate the source/ origin of the goods/services of one proprietor from that of others in market. Trademarks also include Service Marks (marks used for services), Collective marks (mark owned and applied collectively by a group of people), Certification Marks (marks which certify quality of goods/services, for example Woolmark) Such marks are governed under the Trademarks Act, 1999 in India. The below information is for most commonly used simple trademarks and service marks.
What can be a trademark?
o Company Name/ Division Name/domain name
o Product Name
o Logo/ Label/ Packaging
o Heading/ Signature
o Shape of goods/ design
o Combination of colours
o Trade Dress
o Combinations of above
o Sound clips
o Smell applied in unique way to products
What are the Benefit of Registration?
1. Registration is prima facie proof of ownership
2. Can take infringement action against imitators
3. Can file suits/actions at your location (jurisdiction) no matter where the defendant resides
4. Adds in value of trademark
5. Can help better market your products/services
6. Increase goodwill of company
7. Can sell or give rights to use and generate revenues
Who can apply?
The proprietor who is using or wish to use the trademark, which includes-
o Individual Person,
o Sole Proprietary Concern
o Two or more persons Jointly
o Partnership Firm through its partners
o Company or LLP
o Trust through its Managing Trusty
o Government Body
Note: MSMEs, Individuals and Start-ups (only registered under the Startup India Scheme) have half the Government Fees than other entities. Further, Start-Ups have special professional fee waiver offered by Trademark Facilitator Scheme (the writer here is also appointed as a Trademark Facilitator by Government of India)
What Trademarks are capable of Registration?
o Should not be devoid of Distinctiveness i.e. not capable to identify owner of the goods in market o Different from existing trademarks / earlier trademarks
o Should not be customary to current language/ Common to trade
o Should not hurt religious feelings of people of India
o Should not contain scandalous or obscene matter
o Should not indicate kind, quality, quantity, intended purpose or geographical origin of the goods (Trademark should not give any direct reference to goods or services)
o Should not be a name of chemical element or International Non-Proprietary Name o Should not violate Emblems and Names (Prevention of Improper Use) Act, 1950
o Should not cause confusion or deception among public at large in India
o Should not be contrary to other legal provisions of Trademark Law
Requirements for Registration:
1. Name, address, email id and phone number of the Applicant
2. Exact date of first use of trademark, if being used in India
3. List of goods/services for which trademark is applied and its appropriate class according to the International Classification of goods and Services
4. A JPEG format logo/label containing trademark-not larger than 8 x 8 cm (not required if you have word mark in standard characters. In that case exact spelling will be required)
5. Power of Attorney in favour of your agent/ attorney
6. Government fees and your agent/attorney fees, if any
7. An affidavit of Applicant with proof of use in India before Application, if Application claims for such prior use in India
8. Priority document if priority under Paris convention is claimed
Use of TM and ® ® indicates registered trademark and use of ® without registration is fraud and punishable under the law TM indicates a non-registered trademark and can be used freely to indicate your trademark even without filing an application in India as India follows common law and rights on a trademark are acquired by prior goodwill acquired by prior use.
Duration of Registration: 10 years and further renewals of 10 years each of payment of fees for perpetual time Classification: India follows International classification latest edition and is a part of TM CLASS.
Paris Convention: Yes, India is a member of the Paris Convention and claiming priority date is possible. For the same, Application has to be filed within six months of filing of National Application.
Madrid Protocol: India is a member of Madrid Protocol and International applications be filed by all member countries. Well-known Trademark: a trademark which has acquired well-known status has a broader protection and such owner can restrain others from using identical/similar trademark for even different set of goods/services.
As per Trademarks Rules 2017, an Application can be made to get the registration as a well-known trademark at the Trademark Registry Office with a Government Fees and proofs/evidence of acquiring well-known status among larger section of people in India.
Deceptively Similar Mark: “A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to or cause confusion.” Overall impression of trademarks as a whole on an average customer having imperfect recollection capacity, literacy of customer segment, nature of the product and other factual circumstances shall be considered keeping in view the visual, phonetical, structural similarity of trademarks, to decide if it is likely to deceive or cause confusion or not. For example, LIV-52 & LIV-T were held deceptively similar but LIPICOR & LIPICARD were not, giving weightage on other circumstances. Prior Use Wins Over Prior Registration: In case of dispute between two deceptively similar/identical trademarks, the prior user has better rights compared to the prior registration holder. Such subsequent registration is liable to be refused based on cancellation application by the prior user. Intention to Use Necessary: For registration of a trademark, genuine intention to use is necessary. Not using the trademark for many years even after the Application/registration, makes trademark vulnerable to lose rights/registration. Right use of trademark: Trademark has to be used in proper manner, unless it can lose its value and fail to identify your origin in the market, resulting in to loss of trademark. For example, Thermos, escalator, kerosene etc. were once famous brand names which now have become generic product names and has lost its value/ownership. Always have the ACID test (as explained on www.inta.org) to check if your trademark is being used correctly or not and take appropriate measures to correct it and educate people involved to use it in correct manner. A – use your trademark as ADJECTIVE to the product name C – CONSISTENT use, less variations in design/logo/mark. Mark should be used in the same way each time, as applied. I – IDENTIFICATORY- identify your trademark on your product/service by putting letters TM/ SM/ ® if registered or by using the trademark in bold, italic, prominent letters different from the descriptive and generic part. D – DISTINCTIVE –Distinguish your trademark from your generic product name. If your product is innovated one, also create a generic name for it. For example, THERMOS was a brand but the owners failed to create a name for an innovative product i.e. insulated bottle. Result, Thermos became the name of the product itself there by generic and open to be used by all. Correct use: Please photocopy these papers using XEROX TM copier machine Incorrect use: Xerox these papers Current Government Fees in India as amended w.e.f. 06/03/2017 as per new Trademarks Rules 2017 are as under: Govt. fee for filing an application for registration of one trademark in one class If the Applicant is an Individual person/ Start-up/ Small Entity (proof of start-up or small entity recognition required) 5000 INR offline/4500 online filing (approx 80 USD) Govt. Fees for filing of an Application for registration of one trademark in one class for Other than start-up/small entity/ individual person- 10000 INR offline/9000 online (approx 160 USD) (additional Govt. Fees of 4500/9000 for each additional trademark/ additional class) Govt. Fees for an Application for registration as a well-known trademark in India - 1,00,000 INR Stages of registration process: Filing of an application for registration of trademark Formality check and Vienna Codification and issue of formality check fail objections, which if not replied properly, application may be rejected/refused. Examination of application - either objections are conveyed or mark accepted for publication. If the objections are conveyed to the Applicant, proper reply within one month is required failing to which the Application may be treated as Abandoned. If reply to examination is convincing, application gets published in the Trademark Journal or an show cause hearing is given to the Applicant to convince the Registry for waiver of objection, after which, application gets published or refused depending upon the merits. After publication - 4 months mandatory waiting period for third party oppositions and if no opposition received/ opposition dismissed - registration certificate is granted. Every 10 years from the date of Application, a trademark needs to be renewed.
Hope, the above details will be useful to all. For any query, feel free to contact on info@skshahlegal.com
(C) Shruti K. Shah, 2017. All rights reserved.
