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A trademark is a brand name connected with a product or service that distinguishes the goods and services of one manufacturer from others. It can be a logo, name, design, symbol or any combination of these. A trade mark should be such that the consumers are able to identify your product from those of your competitors.

Importance of a trademark

Trademarks perform various important functions such as:
  • It identifies products/services and its origin
  • It creates an image of the product/service
  • It certifies its unchanged quality
  • It advertises the goods and services

Understanding trademarks

Types of trademark
  • Any name including personal or surname of the applicant or forerunner in business or the signature of the person.
  • Letters, numerals or their combination
  • Monograms
  • Any self-composed word or any dictionary word or words, which are not directly describing the character or quality of the product/service.
  • Combination of colors or a single color in combination with words, numerals or devices.
  • Shape of goods or their packaging
  • Marks constituting a 3-dimensional design
  • Sound marks described in words by being graphically represented.
Essentials of a trademark
  • If it is a word it should be easy to spell, speak and remember
  • It should be capable of explaining the motto of the business
  • It should not be identical to a trademark which is already registered
Types of trademarks that can be registered
  • Product trademarks: These are adjoined to identity goods.

  • Service trademarks: These are used to identify the services of an entity.

  • 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, and the method of manufacture, the quality or other specific features.

  • Collective trademarks: These are registered in the name of the groups or other organizations for the use of its members in their commercial activities to highlight their membership of the group.
A person who claims to be the owner of the trademark can apply for the registration of its mark for products as well services.A person under whose administration the principal place of the business of the applicant lies in India can also apply for a trademark to the Trademark Office.In case when the formation of the company is in the pipeline, anyone in his name can apply for the subsequent assignment of the registration of the trademark in the company's account.

Note: Since the Trademarks Act does not allow anyone to register a trademark which is identical or in resemblance to an existing trademark therefore it is necessary for the applicant to conduct a preliminary trademark search in the Trademark Office.

Benefits of registration
The registration of a trade mark accords upon the owner the exclusive right to use the registered trademark and indicate it by using the symbol (R) in relation to the products/services in account of which the mark is registered and seek the relief of infringement in suitable courts in the country. The registration of the trademark serves as a proof of the ownership of the mark.

Life of a trademark
A trademark is registered in India for a period of ten years. After the expiry of the duration it can be renewed for a further period of ten years upon the payment of prescribed renewal fees.

Legal requirements

The legal requirements to register a trademark under the Trademarks Act are:
  • The selected mark should be capable of being depicted graphically.
  • It should be able to distinguish the goods or services of one manufacturer 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.

Remedies in case of trademark infringement

  • Infringement Action: It is a statutory remedy which depends upon the validity of the registration of the mark. In case of infringement one has to just prove himself as the true owner of the mark and that the infringing mark is deceitfully similar to the registered mark. No further proof is required.

  • Passing off Action: It is a common law which is not defined in the Trademarks and Merchandise Marks Act. In this proving that the mark used by the defendant is deceptively similar is not sufficient. Here it is necessary to prove that the use of similar mark by the defendant has caused injury to the plaintiff's goodwill.

Trademarks Registration

  • Register of trademark
    The register of trade mark is maintained in an electronic form. It contains the following: the class and goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred or disclaimers, if any; the address of the owners; particulars of trade or other description of the proprietor; where a trade mark has been registered with the consent of proprietor of an earlier mark or earlier rights, that fact.

  • Scope for amendments in the register of trademark
    Yes, changes can be made in the register of trademark but the trademark applied for should not be substantially altered by making significant changes so that its identity is affected.

  • Symbol
    This symbol can be used only by the proprietors whose trademark has been registered in India. Using this symbol without registration is not permitted by law.

  • Symbol TM
    Using this symbol with the trademark means that one is claiming to be the proprietor of the trademark.

Penalty for infringement of a trademark

Applying for a false trademark and selling and providing services under it is a punishable offense. Any policy officer can seize articles bearing deceptive trademarks or labels without warrant. The Trademarks Act has raised the penalty of such offenses; now the defendants are subject to a term of not less than six months up to a maximum of three years and are also liable to pay a fine of not less than ` fifty thousand which can extend to ` two lakhs.

Steps to be undertaken by foreign investors to register a trademark in India.

Registering a trade mark in India is not a tough job. Indian courts have come up with various legislations which protect the foreign investors against infringement of their trademarks.

To get their mark registered in India foreign investors can undertake the following steps:
  • Get trademark searches conducted in the classes of your interest in the Indian Trademarks Registry.

  • Go for common law searches, this includes the market surveys, yellow pages etc. It is conducted to find out whether any third party is using your trademarks and if so, than to what extent.

  • On the basis of this information and through other analysis decide if the trademark is available for use or not.
  • If available for use, straight away apply for the registration.

  • The rights holder should constantly ensure inspection of the trademark journals in order to keep themselves aware about any publicized and deceptively identical trademarks that might affect him/her.

  • Once the right holder owns the trademark and acquires goodwill, it is recommended that along with filing of the trademark application in India, foreign investors should also make press releases, and advertise the mark to make sure that the targeted section of the public is aware that they are creeping in the Indian market.

  • The rights holder should also take instant steps to register their domain names including country coded top level domain names in India.

  • If the rights holder discovers that their trademark is being infringed, they should take immediate steps to protect their trademark.