What is a trademark: A trademark (popularly known as brand name) in layman’s language is a visual symbol which may be a word signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking.
How to select a good trademark : If it is a word it should be easy to speak, spell and remember. The best trademarks are invented words or coined words or unique geometrical designs. Avoid selection of a geographical name, common personal name or surname. No one can have monopoly right on it. Also 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 to ascertain if same/similar mark is used in market.
Who can apply for a trademark and how : Any person, claiming to be the proprietor of a trademark used or proposed to be used by him, may apply in writing in prescribed manner for registration.The application should contain the trademark, the goods/services, name and address of applicant and agent (if any) with power of attorney, the period of use of the mark.The application should be in English or Hindi.It should be filed at the appropriate office.The applications can be submitted personally at the Front Office Counter of the respective office or can be sent by post.These can also be filed on line through the e-filing gateway available at the official website.
The legal requirements to register a trademark under the Act are:
What are different types of trademarks that may be registered in India?
TRADEMARK - A trademark, is a distinctive name, word, phrase, logo, symbol, design, image, or a combination of these elements or indicator used by an individual, business organization or other legal entity to be identified by its targeted consumers that the products or services on or with which the trademark appears originate from a unique source, designated for a specific market, and to distinguish its products or services from those of other entities.
WORDMARK - A trademark where the trademark owner is claiming rights only in the word, letters or numbers themselves, without claiming any right in the manner how these words are presented is known as a wordmark. For Example “Corporate Professionals”, ‘AMUL’,‘MOTHER DAIRY’
SERVICE MARK - A service mark is a word, phrase, symbol or design, or a combination thereof that identifies and distinguishes the source of a service rather than goods. For Example “Corporate Professionals” will be a service mark for Legal and Financial Services it provides.
CERTIFICATION MARK - A Certification Mark is a mark capable of distinguishing the goods or services in connection with which it is used in the course of trade which are certified by the proprietor so as to differential with respect to. For example WOOLMARK, ISI etc. fall in the category of Certification Marks. These marks can be used only in accordance with defined standards.
COLLECTIVE MARK - A collective trade mark is a mark that distinguished the goods or services of the members of an association of persons. Such association of persons is the proprietor of the mark in such a case. For example, ‘CA’ used by ‘The Institute Of Chartered Accountants of India’, ‘CS’ used by ‘The Institute of Companies Secretaries Of India'.
SOUND TRADEMARKS. A sound can be a distinctive indicator and can also be protected. A sound trademark, therefore, is a sound or melody with a distinctive recognition effect. In order to able to protect it, the sound must be reproducible graphically, for example, using notes. A well-known sound trademark is the jingle of the ICICI bank.
3-DIMENSION MARK IN INDIA- In India definition of mark includes shape of goods and therefore three dimensional or 3-Dimensional or 3D Marks can be registered under the provisions of Indian Trademark Act, 1999.
Trademark registration process
Upon filing of the application, the registry will issue you with an official receipt with the filing date and number allotted to the application. The application is then formally examined by the Indian Trade Marks Office, as to its inherent registrability and/or any similarity with existing marks. If an objection to registration is raised, an official examination report will issue. To overcome the objection, it is necessary to file a written response or presenting evidence of acquired distinctiveness and in most cases, an interview/hearing with the examiner is posted. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used. If, following examination, the trade mark application is considered allowable, a Letter of Acceptance (TLA order) will issue, after which the trademark will be published in the Trade Marks Journal. If there are no oppositions within 4 months from the date of advertisement in the Trade Marks Journal, then the trademark registration certificate will issue. Trademark Registration is a tedious process and it takes around 18-24 months to obtain registration in a straight-forward case, without any objections or oppositions. However, once the trademark application is filed, an application number is allotted immediately and the priority starts from the date of application. Once the trademark is registered, it is valid for a period of 10 years from the date of application. The registration can then be renewed indefinitely as long as the renewal fees are paid every 10 years.
Requirements for filing a trademark application
Trademark coexistence describes a situation in which two different enterprises use a similar or identical trademark to market a product or service without necessarily interfering with each other’s businesses.It frequently happens that two traders find themselves using the same or a similar trademark with respect to the same or similar goods in different parts of the world. They may remain genuinely unaware of each other’s existence for years until one of them expands the business and starts using the trademark or files a trademark application in the country in which the other operates.What happens then? At that point, a trademark office may refuse the application on the grounds that it conflicts with the earlier rights acquired by the other trader. The latter may also object to the application in the course of opposition proceedings, or bring an invalidation action after the mark has been registered.It should be stressed that prevention is better – and cheaper – than cure. One of the most basic precautions when selecting and registering a new trademark, is to undertake as comprehensive a search as possible, using professionals skilled at the task. A thorough trademark search should minimize the risk of a business coming face to face with a similar mark once on the market.