What is trademark?
Trademark is the “identification mark” for representing and differentiating the goods/services of one business from another.
The trademark can be a logo, word, symbol, mark which would distinguish the products or services of an entity.
What is the basic use of trademark registration?
Trademark helps to distinguish the goods of one party from another. It indicates the source of goods and acts as a tool to advertise the product.
What are the features of a good trademark?
The essential features of a good trademark are:
• The trademark must not be descriptive; rather it should be distinctive.
• The trademark must be fanciful.
• The trademark must be suggestive of the goods/services of the brand.
• The trademark should not be a generic mark.
What are the types of trademark?
• Service marks
• Collective marks
• Well-known trademark
• Certification mark
• Colour mark
• Sound mark
How to classify a trademark before filing?
There are 45 classes of trademark (34 goods and 11 services). The Applicant/authorized attorney decides on which class the trademark is to be filed depending on the applicant’s goods and services.
Is it possible to get trademark registration in more than one class?
Yes, it is possible to get trademark registration in more than one class. The Applicant needs to file the application in the category of Multiclass application (class 99).
Difference between registered trademarks and applied trademarks
Registered trademark confers exclusive right upon the registered proprietor and has the advantage of statutory law remedy. It is represented by the symbol ®.
Applied trademarks are also protected and until their registration can be represented by the symbol
Who can make an application for registration of trademark?
An application for registration of trademark can be filed by any individual claiming to be the proprietor of the mark, used or proposed to be used by him.
Is it obligatory to get trademark registered?
It is not obligatory to get trademark registered however, registration confers exclusive rights to the registered proprietor.
Which act governs the trademark system in India?
The trademark system in India is governed by the Trade Marks Act, 1999 and Trade Mark Rules, 2007.
Where the application of trademark is to be filed?
The application of trademark is to be filed in the Trade Marks Registry Office under whose territorial jurisdiction the principal place of business is situated.
The Indian Trade Mark Offices are situated in Mumbai, Ahmedabad, Kolkata, New Delhi and Chennai.
What is a well-known trademark?
A trademark which is famous and known to a considerable section of public and which uses such products or gets such services, that the use of that trademark in relation to other goods/services would be shown as an association or connection in the course of trade/rendering of such services between those goods/services and the goods/services used by the registered proprietor.
At present, there are 97 well known trademarks in India.
When can a registrar remove a trademark from the register?
A notice of expiration of the trademark is been served to the registered proprietor, mentioning conditions for payment of requisite fees for renewal of the mark.
In case of non-payment of fees by the registered proprietor within the stipulated time period, the registrar would be bound to remove the trademark from the register.
What are the advantages of trademark registration?
• Trademark gives recognition of the product to the public and helps to distinguish the goods and services of one party from another.
• Trademark provides an exclusive right to the registered proprietor and prevents other from using the similar mark.
• Trademark establishes trust and goodwill among customers in market.
• In case, someone tries to use the similar mark, the registered proprietor can file suit of infringement, and ask for damages or accounts of profit.
What is the term for a registered trademark?
A registered trademark is valid for a time period of 10 years.
However, renewal of the mark can be done every ten years on payment of the requisite fees.
What cannot be registered as a trademark?
The criteria under which trademark cannot be registered in India:
• Any mark which is going to mislead the general public or create chaos.
• The mark is going to hurt religious sentiments of any class or resident of India.
• The mark contains shameful/obscene issue and if the utility is forbidden by the Emblems and Names Act, 1950.
Can domain name be registered as a trademark?
Yes, domain name can be registered as a trademark as it refers to business in the virtual world, that is internet.
Why is trademark search important?
It is always advisable to conduct a proper trademark search before filing of the application for registration to avoid unnecessary business distraction, wastage of time and money at a later stage.
What is honest and concurrent use in trademark?
If the applicant can prove to the Registrar of trademark that the mark is honestly adopted and is being used continuously, then the Registrar may permit the registration of the mark and it can co-exist with other similar/identical mark by more than one proprietor.
What is passing off?
Passing off is a common law remedy which can be used for unregistered trademarks. The criteria for passing off is the mark should be well-known in market and the mark should be used much prior to that of the opponent’s mark.
What are the remedies available for infringement of trademark?
There are two types of remedies available for infringement of trademark:
– Civil Remedies:
• Temporary or permanent injunction.
• Account of Profits
– Criminal Remedies:
What is the process for registration of trademark in India?
The step-by-step process to get a trademark registered in India:
• Trademark Search
• Filing of Application
• Issuance of Examination report by the Trademark Registry
• Reply to examination report.
• Show-cause hearing
What is the time limit for an infringement suit to be filed?
An infringement suit should be filed within 3 years from the date of infringement.