TRADEMARKS IN INDIA - FAQ'S

WHAT IS COVERED UNDER TRADEMARKS

A trademark is a mark used in relation to goods or services so as to indicate a connection in the course of trade between the goods or services and some person having the right as proprietor to use the mark.

WHAT IS THE FUNCTION OF A TRADEMARK

Under modern business condition a trade mark performs four functions:

• It identifies the goods / or services and its origin.
• It guarantees its unchanged quality
• It advertises the goods/services
• It creates an image for the goods/ services.

 

HOW TO SELECT A TRADEMARK

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

 

WHAT ARE THE TYPES OF TRADEMARKS THAT CAN BE REGISTERED 

Under the Indian trademark law the following are the types of trademarks that can be registered:

• Product trademarks: are those that are affixed to identify goods.
• Service trademarks: are used to identify the services of an entity, such as the trademark for a broadcasting service, retails outlet, etc. They are used in advertising for services.
• Certification trademarks: are those that are capable of distinguishing the goods or services in connection with which it is used in the course of trade and which are certified by the proprietor with regard to their origin, material, the method of manufacture, the quality or other specific features
• Collective trademarks: are registered in the name of groups, associations or other organizations for the use of members of the group in their commercial activities to indicate their membership of the group.
   

WHAT ARE DIFFERENT TYPES OF TRADEMARKS AVAILABLE FOR ADOPTION

• Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.
• An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
• Letters or numerals or any combination thereof.
• The right to proprietorship of a trade mark may be acquired by either registration under the Legislation or by use in relation to particular goods or service.
• Devices, including fancy devices or symbols
• Monograms
• Combination of colors or even a single color in combination with a word or device
• Shape of goods or their packaging
• Marks constituting a 3- dimensional sign.
• Sound marks when represented in conventional notation or described in words by being graphically represented.

 

WHO CAN APPLY FOR A TRADEMARK

A person who claims to be  the proprietor of the trademark can apply for the registration of its mark for goods as well services.
A person may apply for registration of a trade mark to the Trademark office under whose jurisdiction the principal place of the business of the applicant in India falls.
In case, the principal place of business is outside India, then the application can be filed in the Trademark office under whose jurisdiction the office of the lawyer appointed by you is located.
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.
Before making an application for registration it is prudent to conduct a trademark search in the Trademark office in context 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.

 

WHO CAN USE A TRADEMARK

The right to use a mark can be exercised either by the registered proprietor or a registered user. 

 

WHAT ARE LEGAL REQUIREMENTS FOR REGISTRATION OF TRADEMARK IN INDIA

The legal requirements to register a trade mark under the Legislation are:

• The selected mark should be capable of being represented graphically (that is in the paper form).
• It should be capable of distinguishing the goods or services of one undertaking from those of others.
• 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.

WHAT IS THE DURATION OF A TRADEMARK IN INDIA?

Term of registration of a trademark is ten years, which may be renewed for a further period of ten years on payment of prescribed renewal fees.

Non-user of a registered trademark for a continuous period of five years is a ground for cancellation of registration of such trademark at the behest of any aggrieved party.

CONVENTION APPLICATION AND INTERNATIONAL TREATIES

India has declared certain countries as convention countries, which afford to citizens of India similar privileges as granted to its own citizens. A person or company from a convention country, may within six months of making an application in the home country, apply for registration of the trademark in India. If such a trademark is accepted for registration, such foreign national will be deemed to have registered his or her trademark in India, from the same date on which he or she made application in the home country.

Where the applications have been made for the registration of trademark in two or more convention countries, the period of six months would be reckoned from the date on which the earlier or earliest of those applications was made.

Although the recovery of damages for infringement of a trademark is possible only if the infringement takes place after the date of filing application for registration with the concerned trademark office in India, yet the deemed seniority in making application in home country may entitle the applicant to initiate an action in India for injunction, delivery of impugned labels and so on.

 

WHAT ARE BENEFITS OF TRADEMARK REGISTRATION

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.

REMEDIES FOR INFRINGEMENT OF TRADEMARK IN INDIA 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

While former is a statutory remedy, the latter is a common law remedy. In an action involving infringement or passing off, a court may grant relief of injunction and/or monetary compensation for damages for loss of business and/or confiscation/destruction of infringing labels and tags etc. 
Although registration of trademark is prima facie an evidence of validity of a trademark, yet the registration can not upstage a prior consistent user of trademark, for the rule is ‘priority in adoption prevails over priority in registration`.