Author: Dhruvi Bambal, Campus Law Center, Delhi University.
Intellectual property rights are given to persons for creations of their minds. It provides the creator with an exclusive right over the use of his/her creation for a certain period. These have become an integral part of the businesses in the competitive market. It is important to protect innovation and ensure that it does not infringe the rights of any third party. Trademarks form a part of intellectual property. A trademark is an ostensive virtual sign/symbol which distinctly identifies certain goods or services. A by The symbol TM or ® represents a trademark. Individuals, business organizations or any legal entity to identify themselves uniquely from other establishments to their consumers by a trademark. It assists in making communication with the consumers.
“An efficient and equitable intellectual property system can help all countries to realize intellectual property’s potential as a catalyst for economic development and social and cultural well-being. The intellectual property system helps strike a balance between the interests of innovators and the public interest, providing an environment in which creativity and invention can flourish, for the benefit of all.”
A registered trademark fulfills following purposes –
The primary function is that it prevents double identity where a third party might use the sign already registered trademark likely to create confusion for the consumers who end up buying completely different goods and services. Such things can hamper with commercial activities.
It protects the owner by guaranteeing the identity of the origin of the trademarked product. It prevents the unauthorized use of the trademark.
A modern approach to the usage of a trademark is that It also guarantees the quality to the consumers especially in the era of technological advancements when people place huge importance on the brand.
A trademark is a salesman in disguise. It helps in advertising the brand and leaves an impression on the public at large.
The trademarks act, 1999 has replaced the trademarks act 1959 which is in congruence with the latest development due to globalization and expansion of trade and Commerce. Trademark is defined under section 2 (zb)-
“ 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 the shape of goods, their packaging, and combination of colours …”.
The definition of the trademark has been enlarged to include the shape of goods, packaging and combination of colours as a trademark. It makes it illustrative of including features not mentioned in the above section. It also has introduced Service marks registration in the new Act. It is in tune to provide for the protection of trademarks in respect of services under the Paris convention [Article 1(2), read with Art. 6] and for registration under the TRIPS Agreement [Art. 15(4)], where India is a member.
Essential ingredients are –
One that can be represented graphically ‘Graphical representation’ has been defined under Section 2(1) (k) of Trademark Rules, 2007 as a representation of a trademark for goods or services represented or capable of being represented in paper form and include representation in digitized form. It means that the trademark can be put in a register Can also be published in a journal.
Capable of the distinguished from Other goods and services- That means that coming or not capable of distinguishing from Other goods and services will not be protected under the Act
it must be applied in relation to goods and services to show a connection Between the goods and services and the person who has the right to use The trademark. The identity of a person is unnecessary.
Types of trademarks that can be registered?
Product trademarks, service trademarks can be registered. certificate trademarks and collective trademark also allowed under the Indian law.
What Can Be Trademarked?
Therefore, according to the act names inventor of coined words, numerals, letters devices a combination of colours shapes of goods, Smell and sounds can be part of a trademark provided that they can be graphically represented. With technological advances, even domain names have become a part.
What Cannot be Trademarked?
The trademarks Act does not affirmatively provide what can be trademarked. However, it does provide a negative essence of what is barred from being accepted as a Trademark. Section 9 provides for the absolute ground of refusing a trademark whereas Section section 11 provides for relative grounds for refusal of a trademark.
According to section 9(1) (a), Mark needs to be distinctive to qualify for registration.
“… Distinctiveness can be of two types: Inherent and Acquired. To be distinctive or capable of distinguishing the goods, there may be some inherent qualities or distinguishing characteristics in the mark itself, which make it distinctive or capable of distinguishing the goods of one person from those of others.
In considering whether a trademark is inherently distinctive, one must look at the mark in isolation from any special surrounding circumstances and without regard to any extrinsic evidence of any such circumstances and consider whether looking at the mark by itself in that way, it could be said to be capable of distinguishing the goods of the applicants from similar goods of other traders. The Act also recognizes that a mark can acquire a distinctive character by its use, which will be discussed while explaining the proviso to Section 9(1).”
Names surnames numerals, geographical location if not distinctive, cannot be used as is a mark. Colour as a trademark might be rejected if it has been indicated that the available stock might be depleted according to section 10. Musical notes such as the bark of a dog are not acceptable. Smell has not been registered as a Trademark in India as it is not distinguishable.
Section 9( 1)( b) provides for a bar on registration which subsist solely of marks or indications, which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or rendering the service or other characteristics of the goods or service. It applies to both descriptive and non-distinctive goods and services.
Marks that have become customary in the present language or in the bona fide and established practices of the trade from being registered under the Act. Clause (c) to Section 9(1) has been inserted primarily to protect the free use of indications or marks which are already in use in the trade, from being monopolized as a trademark.
The proviso in the above section applies to both non-distinctive and descriptive trademarks. proviso shows that the distinctiveness can also be acquired as a Result of-of its use or if it is a well-known trademark. In Keystone Knitting Mills Ltd.’s TM [(1928) 45 RPC 193] case the court held that the mark should be analyzed by looking at the word, not in its strict grammatical significance, but as it would represent itself to the public at large are to look at it and to form an opinion what it connotes. A descriptive mark can be registered if it has gained secondary meaning. The burden of proof lies on the plaintiff it has gained a secondary meaning. Generic terms are not protected even if they have acquired secondary meaning. The plaintiff has to prove that by a long term of use of that sign consumers identifies it with the producer and not the product. Various factors are taken into account while determining that the mark has acquired distinctiveness such as length of time in use, the volume of goods marketed, the extent of service provided, use of an advertising slogan, use in combination of other marks, advertising expenditure, evidence of trade and consumer surveys.
Section 9 (2) prohibits-
Marks that can cause deception and confusion in the minds of people
A mark that is likely to hurt the sentiments of a religious class or section of the society.
about that contains obscene or scandalous matter.
A mark prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950).
According to Section 9(3) of the Trade Marks Act, 1999, a mark shall not be registered as a trademark if it consists exclusively of-
The shape of goods which results from the nature of the goods themselves; or
The shape of goods which is necessary to obtain a technical result; or
The shape which gives substantial value to the goods.
That has introduced a new definition “well-known trademarks” Under section 2( 1)( zg) to Provide enhanced protection from registration of the mark that are an imitation of well-known trademarks. Registration can be prevented in connection with trademarks of goods and services Which are identical or similar to the well-known trademark and might cause an undue advantage or could be detrimental to the original product.
According to section 11 Registration can be refused if-
If it has a similarity with some other trademark
According to section 11 Registration can be refused if-
If it has a similarity with some other trademark, goods or services which can create confusion.
The test of likelihood of confusion is provided under the case of Amritdhara Pharmacy v Satya Dev Gupta by Hon’ble Supreme Court-
A trademark is likely to deceive or cause confusion by its resemblance to another mark if it is likely to do so in the course of its legitimate use in a market the two marks are assumed to be in use by traders in that market. In considering the matter, all the circumstances of the case must be considered.
For deceptive resemblance two important questions are: (1) who are the persons whom the resemblance must be likely to deceive or confusion, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer, who, on seeing the mark, thinks that it differs from the mark on goods which he had previously bought, but is doubtful whether that impression is not due to imperfect recollection.
The question has to be approached from the point of view of a man of average intelligence and imperfect recollection who would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. He would consider the word as a whole without splitting the name into its component parts and not going to its etymological meaning.”
B If it is to be registered is similar to some earlier mark or Mark similar but provides for different goods and services will not be registered if it is detrimental to the distinctive character of the earlier mark.
c) Trademark will not be registered if it is protected by virtue of the law of passing off or copyright law.
Section 11 has also provided certain provisions that prevent refusal of registration From subsection 4 to 11. In section 12 to 17 provides various instances under which a Trademark can be registered subject to various conditions
Trademarks registery ( section 5 and section 6)
Trademark registry is established under trade and Merchandise marks act, 1958. The head office is provided as per the central government and the territorial jurisdiction can be provided by notifying in the official gazette. A record call the register is maintained and kept at the head office of the Trade Marks Registry, wherein shall be entered all registered trademarks with the names, addresses and description of the proprietors, notifications of assignment and transmissions, the names, addresses and descriptions of registered users, conditions, limitations and such other matter relating to registered trade marks as may be prescribed. the head office is present in Mumbai and various other branches are established at Delhi Kolkata, Chennai and Ahmedabad. The new act provides for a single register of trademark and also provides for simpler registration procedure.
The procedure of registration of a trademark
Prerequisites for filing for registration
Proper research is required for finding out a unique trademark for your business. We also need to identify the class of The trademark and whether such Unique Identification mark is available or not. Many entrepreneurs do not comprehend the importance of a trademark search. One cannot avoid a trademark search just because they think that their design stands out. Therefore, a trademark search is paramount to check similar trademarks available. It gives a fair picture of whether your trademark stands a chance to be registered, sometimes a forewarning of the possibility of trademark litigation. Hence preliminary advice and search are important. Indian Trademark Office Search: The Indian Trademark Office provides a free online search of its database. You can also do generic research on google and yahoo. One cannot proceed in case if there is similar mark in the same class or classes if it matches a well known mark.
Step 1: Filing of an application
The process of entering The trademark in the register is known as registration. The application can be made to the registrar having jurisdiction .once the application is filed successfully. A single TM can be used for one or multiple class of goods and services. information and documents required for filing of an application are –
the applicant’s name, address and nationality, the name of all partners if its a partnership firm.
the state or country of incorporation If it is a company.
a description of the trademark of the goods and services for which it is required. Along with the soft copy.
If the mark is not an English word then its translation in English will be required
the power of attorney Signed by the applicant. though it is not required at the time of filing of an application can be filed at a later stage also.
statement of the user about the dates of first use. If use is claimed, an affidavit of use and documentary evidence must be filed electronically;
a statement of intention to use;
the official filing fee;
if the application wants priority over earlier filed convention applications a copy of that document will also be required. A duly certified copy or a notarized copy can be submitted.
Filing of trademark application requires the following forms to be completed: a) TM1
b) TM48 (In case you are acting as an agent/ attorney of the applicant)
The application fee and charges are provided under the first schedule, trademark rules 2017. It provides separate charges for physical filing and e filing Of which the latter is cost effective. Online registration can be done at https://ipindiaonline.gov.in/trademarkefiling/user/frmLoginNew.aspx. The application is received At The trademark head office or the branch office having jurisdiction.
Maharashtra, Madhya Pradesh and Goa
Gujarat, Rajasthan, Daman, Diu, Dadra and Nagar Haveli
According to “The International Nice Classification” established under the Nice Agreement, World Intellectual Property Organization – WIPO in 1957 all the goods and services should fall into a total of 45 classes. Classes 1-34 include ‘goods’, and classes 35-45 include ‘services’ as per the latest update the applicant can choose from the 45 classes. More information can be gathered from https://www.wipo.int/classifications/nice/en/.
Step 2: granting of application allotment number
Application allotment number is provided To the owner after which we can affix the symbol ™ to the distinct identification mark. the whole application procedure can be tracked online.
Step 3: Vienna codification
once the allotment number is provided, the trademark Registrar will apply for Vienna codification. This type is applicable for the non-text trademark application that contains a logo or an artwork. Such figures and logos are codified in accordance with the Vienna agreement. (https://www.wipo.int/classifications/nivilo/vienna/index.htm)
Step 4 Examination of The trademark
The application is allotted to the examination trademark officer to check the application. The trademark officer has a right to accept the application or raise an objection. A Preliminary Examination Report (“PER”) together with Formalities Check Report (“FCR”) to the applicant wherein the Registrar would call upon the applicant to remedy the deficiencies and departmental objections.
Case 1: When no objections are raised
The application goes directly for Publication in the journal.
case 2: When objections are raised
As soon as the Applicant receives the examination report a Reply is to be filed within 30 days of raising the objection. It can be a form of a simple reply or in the form of an affidavit. If the Examiner is not satisfied he can issue ‘hearing notice’. It is given in the form of an affidavit. The applicant has to justify that that the mark is original and there is no overlapping with any other Mark. The hearing is quasi-judicial in nature. The hearings can be attended by the applicant or by his attorney. If the application is rejected again the appellants have a right to appeal in the Intellectual Property Appellate Board. The new Act provides for the establishment of an Intellectual Property Appellate Board for speedy disposal of appeal from Registrar orders and decision.
Step 5: advertisement Of Trademark journal
Once the application is accepted it is published in the trademark journal. The trademark journal is published weekly and contains all the trademarks that have been accepted by the Trademark Registrar.
Step 6: the issue of registration certificate
The registrar can put limitations and conditions for the filing of the trademark if accepted. the public has a right to raise an objection by payment of a fee. They need to show some material grounds for their Objection. the proceeding is Quasi-judicial in nature. If it is found satisfactory after 4 months time period is given public objection the application moves for Issuance of the registration certificate. For the registered trademark symbol, ‘R’ has to be used. The new app has transferred the final authority for registration of certification of trademarks to the Registrar.
Rights acquired when a trademark gets registered-
Registration of a trade mark is not a mandatory requirement in India. However a “registered trademark” enjoys some exclusive rights upon registration apart from including the right to exclusive use of the mark in relation to the products or services. A trademark is registered for a period of 10 years and is subject to renewal.
“The Trademarks Act also provides certain incentives for registration through its various provisions. Chapter 4 of the Trademarks Act deals with the Effects of Registration. Section 27 of the act provides that no action for infringement can be taken for an unregistered trademark. But for a registered trademark, an action for infringement lies where the aggrieved can be sought civil and criminal reliefs. Moreover, section 28 of the act confers certain benefits on registration. Registration of a trade mark gives to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or service. Further, the registered trademark can obtain relief in respect of infringement of the trade mark in the manner provided by the Act. Section 31 of the act enables registration to be a prima facie evidence of validity.” (source:
Rights of an unregistered trademark –
An unregistered trademark is still protected and can take civil relief. However, an unregistered trademark does not enjoy the statutory right of violation. Hence, it is prudent to get trademark registration owing to the incentives given.
The timeperiod of a trademark registration is for a period of 10 years. The renewal can be availed for a further period of 10 years each. Unlike patents, copyrights whose life is for 20 yrs and 70 years respectively, trademark rights can last indefinitely if the holder continues to employ the mark. The proprietor should use and renew the trademark regularly. If the trademark is misused by others, he should file a suit for the violation and passing off and also take criminal action. The proprietor should stay updated in respect of trademarks published in the Trade Marks Journal and institute opposition proceedings if identical or deceptively related trademarks are displayed.