Trademark Registration

TRADEMARK

TRADEMARK

Trademark is an invaluable asset in today’s business world. In this increasingly brand-conscious world, in order to build a unique business empire, it is essential to get a trademark registration either for your business logo or business name or for both at the earliest.

A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. Trademarks are protected by intellectual property rights (IPR).

A trader may use either a word, design or a number as the name of his business. To create a business logo, a trader uses a different color, two dimensional or three-dimensional shapes or a combination of both to distinguish his business from the others. This different logo or business name differentiates a trader’s products or services from that of his/her competitors. Normally, consumers connect with a product or service through the logo or business name and a successful firm usually creates goodwill with its customers over a period.

The Trademarks Act, 1999, is the statute that lays down the laws for Trademarks in India. The Section 2(1) (zb) of the Trademarks Act, 1999, defines a trademark as follows: "A trademark means a mark capable of being represented graphically and which is capable of distinguishing

the goods or services of one person from those of others and may include a shape of goods, their packaging, and a combination of colors". A mark can include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any such combinations.

So, a trader uses a trademark to differentiate his business with those of his competitors.

With the globalization of trade, brand name, trade names, marks etc. have attained an immense value that requires uniform minimum standards of protection and efficient procedures for enforcement. Keeping this in mind, the new Trade Marks Act, 1999 was enacted. Trademark Registration is a legal procedure provided under the Trade Marks Act (TM Act), 1999. Trademarks can be availed upon satisfying the registration requirements under the TM Act. Through trademark registration, you get the ownership of the logo / name / brand by which you earn the power to protect your brand or logo from others using the same. The trademark registration process in India is required if a company or individual intends to protect their logo from the misuse by the third party. Trademark registration would provide a legal right to initiate an action against the third party in case of infringement of trademark.

The Trade Marks Registry is established for the purpose of registration of trade marks in India. A trademark is considered as registered if it gets a registration certificate from the Trademark Registry. Registration is allowed for a trademark if it satisfies the registration requirements under the TM Act.

The Head Office of the Trade Marks Registry is at Mumbai and branch offices are at Ahmedabad, Chennai, Delhi and Kolkata. For the purposes of functions related to international applications and registrations under the Madrid Protocol, an International Registration wing is set up in the Head Office of the Trade Marks Registry at Mumbai.

A “registered trademark” confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark in relation to the products or services. Registration gives a monopoly right to the mark in a particular territory. It allows the owner of a registered trademark to prevent unauthorized use of his mark in relation to products or services. The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin. The infringement of registered trademarks can lead to legal suits and the burden of proof of the plaintiff is eased due to registration.

A registered trademark may prove to be a valuable assets for your company / Business. These assets keeps on appreciating over time. As your business grows over time, the value of the trademarks gets scaled up automatically. So, if your business grows, your trademark also grows in value.

Registration of a trademark is not a mandatory requirement in India. An “unregistered trademark” is one that does not possess legal benefits. But in some cases, an unregistered trademark may get common law benefits.

There are different symbols representing both the registered and unregistered trademarks. A registered trademark is represented by the symbol ®.

Trademark registration applications can be filed online on the Registry’s website. But you can't register a Trademark that has already been registered. So first of all, you have to make sure through Trademark search that your logo or brand name is unique. Though a simple process, the Trademark search helps you to know whether there is any trademark similar to that of your new one.

The following documents are required along with the trademark registration application in the Registry:

Power of attorney;

Certified copy of the priority application, if priority is claimed; and

Affidavit of use along with supporting documents, if the trademark’s prior use in India is

A trademark is registered for a period of 10 years and is subject to renewal. The Trademarks Act 1999 governs the whole process of registration.

The Registrar of the Trademark shall register a mark unless it is restricted by sec: 9 of the Trademarks act 1999 and the absolute grounds for refusal are:

1) The trade marks- (a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person; (b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service; (c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered: Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.

2) A mark shall not be registered as a trade mark if- (a) it is of such nature as to deceive the public or cause confusion; (b) it contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; (c) it comprises or contains scandalous or obscene matter; (d) its use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).

(3) A mark shall not be registered as a trade mark if it consists exclusively of- (a) the shape of goods which results from the nature of the goods themselves; or (b) the shape of goods which is necessary to obtain a technical result; or (c) the shape which gives substantial value to the goods. Explanation. For the purposes of this section, the nature of goods or services in relation to which the trademark is used shall not be a ground for refusal of registration.

Appearing before the authority

The applicant or his/her representative should appear before the Registrar when there is any opposition from any side.

Finally, the Registrar of trademark would register the mark and provide a certificate of registration.