A trademark denotes the relationship between an owner and its trading goods/services. It identifies the goods/services to its ownership. A trademark can be represented in the form of a word, phrase, symbol, design, sound, smell, colour, adopted as an identification to distinguish them from products and services of others. The sole objective of a trademark is to prevent end users from becoming confused of the source or origin of a product or service. The consumers not only associate the trademark to the company from which it originates but also to the quality of the product or service.
Criteria for registration of a trademark:
The Trademark Act 1999 provides with criteria for registration of a Trademark. Amongst other criteria, a trademark must be distinctive so as to be capable of identifying the source of a particular good/service. In determining whether a mark is distinctive, the courts group marks into four categories, based on the relationship between the mark and the underlying product or service: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. Because the marks in each of these categories vary with respect to their distinctiveness, the requirements for, and degree of, legal protection afforded to a particular trademark will depend upon which category it falls.
Function of a trademark
A Trademark identifies the source of products or services, distinguishes products or services of one person from that of others, associates quality to a product or service, establishes good will to products or services sold under a mark and so on.
Registration of a trademark
Registration of a trademark is not mandatory. Registered trademarks have additional benefits in comparison to unregistered trademarks. Registration of trademarks acts as a substantial evidence in the court of law.
Who may apply to register?
Any person/entity claiming to be the proprietor of the trademark used or proposed to be used can apply for registration of a trademark.
The statute law of Trademarks was governed by the Trade and Merchandise Marks Act 1958, along with Rules 1959, which had undergone revisions to comply with various agreements-India, had signed during the course, and has now been replaced by Trademarks Act 1999. The procedure for registration of trademarks is contained in Sections 18-24 of Trademarks Act, 1999.
Applications received for trademark registration undergoes formal and substantive examination. Once accepted, the MARK is advertised in the Official Journal and opposition period of 4 months from advertisement is observed. Once the registration has been obtained, the owner may use the symbol ®.
Term of protection
The term of protection of a trademark is perpetual. Trademarks may be owned in perpetuity, provided that the initial registration and each subsequent renewal is for 10 years. But non-use 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.
Trademark infringement and passing off
If the use of a trademark is likely to cause confusion amongst the consumers about the origin of products or services, it will amount to misuse of the TM leading to an infringement action.
Can a foreigner apply for a trademark in India?
India has declared certain countries as convention countries whereby citizens of such convention countries are accorded similar privileges as granted to its own citizens. An applicant from a convention country, may within six months of making an application in his or her 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 his or her home country.
India is a signatory to Madrid agreement and accordingly International TM applications are administered at the TM Registry
- TM availability search
- Status report and TM Portfolios
- Standing watch
- Due diligence and TM valuation
- Preparing, filing and prosecution of Indian TM applications.
- Preparing, filing and prosecution of foreign TM applications.
- Prosecution of Madrid applications
- Opposition and rectification proceedings
- Post registration proceedings
- Drafting of Cease and desist notices, User Affidavit, License agreement and Assignment etc.
- Infringement and passing off actions
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