A trademark can be described as a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service arises of one provider with that of other service providers.
The term “trademark” is often used to refer to both trademarks and service marks. Any distinctive design, graphics, logo, symbols, words, or any combination thereof that uniquely identifies a firm and/or its goods or services,
guarantees the item's genuineness, and gives the owner legal rights to prevent the trademark's unauthorized use, would be a good trademark or service mark , respectively with regard to the good or services. A trademark must be, distinctive instead of descriptive, affixed to the item sold, and registered with the appropriate authority to obtain legal ownership and protection rights.
Now the question arises as to what constitutes a distinctive trademark and a descriptive trademark?
As some people know, trademarks can be classified in a whole spectrum of trademark distinctiveness categories. Distinctive trademarks would be any fanciful, arbitrary marks which have been invented for the sole purpose of functioning as a trademark and have no other meaning or than acting as a mark or even having a common meaning which has no relation to the goods or services being sold. Examples for fanciful and arbitrary marks include: Exxon, Kodak, Xerox and Apple (for computers), Lotus (for softwares).
Descriptive trademarks on the other hand are any marks that merely describe the goods or services used in connection with that mark. Descriptive trademarks are not entitled to trademark protection. Some examples of descriptive trademarks include: If someone called a store that sold electronics, Electronics Land, it would likely be deemed descriptive. Similarly, an optics store known as Vision Center would also be deemed merely descriptive and not entitled to exclusive trademark protection. However, just because a mark is deemed descriptive, does not mean that it is entirely void of any protection in the future. If with considerable stretch of time the applicant is able to show that the mark has acquired distinctiveness, meaning that through use over a certain amount of time the consuming public has come to realize that the mark identifies the source of those goods or services rather than merely describes the goods or services used in connection with that mark, such trademark then, becomes entitled to protection under the Act, 1999.Example of such a trademark would be Windows for windows software, Sharp for Televisions & Digital for computers.
It is not mandatory for the purpose of law, that the trademark or the service mark shall be registered but, registration of the mark gives authoritative ownership over the registered trademark; authoritative and exclusive commercial or professional uses of the trademark; security and protection of the trademark; hiring and trading of the trademark with any national and foreign person or company; and selling of the registered trademark.
Types of Trademarks that can be registered:
As per the provisions of the Trade Marks Act 1999, following are the types of trademarks that can be registered in India:
● Product trademarks associated with particular good(s).
● Service trademarks associated with a particular kind of service such as insurance, building construction etc.
The Fourth Schedule of Trade Mark Rules, 2002 provides a comprehensive classification of the different types of trademarks associated with different goods and services that can be registered in India. The Trademark Act of India can be accessed here.
Duration of Trademark protection available 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.
· However, non-usage of a registered trademark for a continuous period of five years is a valid ground for cancellation of registration of such trademark at the behest of any aggrieved party.
Step 1: Making the trademark application
Trademark application can be filed for single or multi class. Applications claiming priority from some convention country can also be filed in India within six months from the priority date. The trademark application i.e. Form- TM 1 is to be filled and filed along with requisite government fees of INR 3500 and is a one time fee.
Along with the application, the under mentioned documents are also to be filed:
· Proprietorship concern: Full name and address of the proprietor and true copy of identity and address proof.
· Partnership concern: Full name and address of all partners and true copy of related documents.
· Company concern: full name and address of all directors and true copy of related documents.
· If one has claimed that the proposed mark has been in use before application in another country, then evidence for such claim has to be provided.
· An image of the brand logo in a standard size of 9 x 5 cms
Every application for registration of a trade mark shall be usually made in triplicate and shall be accompanied by five additional representations of the mark. The representations of the mark on the application and each of its copies and the additional representations shall correspond exactly with one another.
Step 2: Filling of the registration application
There are 2 ways to file the registration – manual filing or e-filling.
In case of manual filing, the appropriate trademark offices (either of Mumbai, Delhi, Kolkata, Chennai and Ahmedabad) are to be approached directly by the applicant, with the application form, supporting documents and the requisite fees. Receipt of acknowledgement of the application is usually received within 15-20 days of the filing.
An “appropriate office” of the Registry for this purpose would mean, within whose territorial limits, the principal place of business in India of the applicant is situate. In the case of joint applicants, the principal place of business in India of the applicant will be that of the person whose name is first mentioned as having a place of business. If the applicant has no principal place of business in India, he should file the application at that office within whose territorial jurisdiction, the address for service in India given by him is located. No change in the principal place of business in India or in the address for service in India shall affect the jurisdiction of the appropriate office once entered.
In e-filing system, the acknowledgement of the application is issued immediately. And after receipt of the acknowledgement, the (TM) symbol next to the brand name can be used.
Step 3: Examining the brand name registration application
After receiving the application, an examination is conducted by the registrar in respect of the distinctiveness, possibility of deceptiveness and conflicting trademarks. If an objection to registration is raised, an official examination report is will be issued by the registrar within three months to one year, depending upon the back log at the registry office. The registrar may accept or refuse the application subject to the provisions of the Trademark Act, 1999. An application can be objected or refused by the registrar on relative or absolute grounds.
A hearing is given to the applicant to explain why the objections raised by the Registry are not applicable in their case. If satisfied by the reasoning of the applicant, the application moves to the next stage.
Step 4: Advertisement in the Indian Trade Mark Journals
After examination and upon acceptance of the response by the registrar, the logo or brand name is advertised or published in the Indian Trade Mark Journal. It is published so as to invite the public for filing opposition as to the registration of the trademark.
Step 5: Opposition
Upon publication of the trademark in the trademark journal, any person can oppose the registration of the said trademark by filing a notice of opposition within the prescribed time limit of three months from the date of publication of the said trademark in the trademark journal. The time period for filing the notice of opposition can be extended by a maximum period of one month, by filing a specified request for extension of time, along with the requisite fees to the registrar, within the statutory time period of three months.
Step 6: Registration
The application shall proceed to registration where there is no opposition or in case of any opposition, it has been decided in favor of the trademark applicant. The mark is then registered for a period of 10 years from the date of the filing of the application and the certificate of registration is issued.
Step 7: Renewal
The trademark can be renewed from time to time for an unlimited period, by payment of the requisite renewal fees, failing which the mark becomes liable to be removed from the trademark register, due to non renewal of the same. Each renewal is for ten years.
The procedural forms for major trademark prosecution transactions
The First Schedule to the Trademark Rules, 2002 prescribes the different procedural forms and necessary amounts of fees required for all trademark-related transactions, of which some examples have been given below:
· For filing new applications- There are prescribed forms depending on the nature of application such as Form TM-1, TM-2, TM-3, TM-8, and TM-51 etc.
· To file a Notice of Opposition to oppose an application published in the Trade Marks Journal- (Form TM-5).
· For Renewal of a Registered Trademark-(Form TM-12).
· Surcharge for belated renewal - (Form -10)
· Restoration of removed mark - (Form TM-13)
· Application for rectification of a registered trade mark - (Form TM-26)
· Legal Certificate - (Form TM-46)
· Official search request for trademark - (Form TM-54)
· Preliminary advice of the Registrar as to the registrability of a mark - (Form TM-55).
· Copyright search request and issuance of certificate - (Form TM-60)
Approximate total cost involved in Trademark Registration
The total cost involved in a trademark registration depends upon the number of trademarks one registers, the number of classes in which he seeks registration, the opposition processes, the amount of lawyer’s fees for consultation and filing of applications. However, the Government fees prescribed for registration of a trademark is INR 3500 and INR 5000 for application of renewal of the trademark for another stretch of 10 years, both not inclusive of any of the above particulars.