What is a Trademark ?
A trade mark (popularly known as brand name) in laymans 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.
The legal requirements to register a trademark under the Act are:
How to select a Trademark ?
- If it is a word it should be easy to speak, spell and remember.
- The best trade marks are invented words or coined words.
- Please avoid selection of a geographical name. No one can have monopoly right on it.
- 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.
What is the function of a Trademark ?
Under modern business condition a trademark performs four functions
- It identifies the goods / or services and its origin.
- It guarantees its unchanged quality
- It advertises the goods/services
- It creates an image for the goods/ services.
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 trade mark, the goods/services, name and address of applicant and agent (if any) with power of attorney ,period of use of the mark and signature. The application should be in English or Hindi. It should be filed at th appropriate office
How to apply for a Trademark in respect of particular goods or services ?
It is provided under the Trade Marks Act,1999 that goods and services are classified according to the International Classification of goods and services. Currently schedule IV of the Act provides a summary of list of such goods and services falling in different classes which is merely indicative. The Registrar is the final authority in the determination of the class in which particular goods or services fall. The Schedule IV of the Act is annexed at the end of this questionnaire on trade marks. For detailed description of other goods and services please refer to the International Classification published by WIPO or contact the local office for assistance.
What are different types of Trademark available for adoption ?
- Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for trade to adopt as a mark.
- An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
- Letters or numerals or any combination thereof.
- The right to proprietorship of a trade mark may be acquired by either registration under the Act or by use in relation to particular goods or service.
- Devices, including fancy devices or symbols
- Combination of colors or even a single color in combination with a word or device
- Shape of goods or their packaging
- Marks constituting a 3- dimensional sign.
- Sound marks when represented in conventional notation or described in words by being graphically represented.
What purpose the Trademark system serves ?
- It identifies the actual physical origin of goods and services. The brand itself is the seal of authenticity.
- It guarantees the identity of the origin of goods and services.
- It stimulates further purchase.
- It serves as a badge of loyalty and affiliation.
- It may enable consumer to make a lifestyle or fashion statement.
Who benefits from a Trademark ?
The Registered Proprietor of a trade mark can stop other traders from unlawfully using his trademark sue for damages and secure destruction of infringing goods and or labels.
What are the benefits of registering a Trademark ?
The registration of a trade mark confers upon the owner the exclusive right to the use of the registered trade mark and indicate so by using the symbol (R) in relation to the goods or services in respect of which the mark is registered and seek the relief of infringement in appropriate courts in the country. The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc. Also, where two or more persons have registered identical or nearly similar mark due to special circumstances such exclusive right does not operate against each other.
What are the sources of Trademark laws ?
- The national statue i.e., the Trade Marks Act,1999 and rules thereunder .
- International multilateral convention.
- National bilateral treaty.
- Regional treaty.
- Decision of the courts.
- Office practice and rulings
- Decision of Intellectual Property Appellate Board.
- Text books written by academician and professional experts.
What does the Register of Trademark contain ?
The register of trade mark currently maintained in electronic form contains interalia the trade mark the class and goods/ services in respect of which it is registered including particulars affecting the scope of registration of rights conferred; the address of the proprietors; particulars of trade or other description of the proprietor; the convention application date (if applicable); where a trade mark has been registered with the consent of proprietor of an earlier mark or earlier rights, that fact.
Can any correction be made in the application or register?
Yes. But the basic principle is that the trade mark applied for should not be substantially altered affecting its identity. Subject to this changes are permissible according to rules detailed in the subordinate legislation.
Can a registered Trademark be removed from the register?
Yes. It can be removed on application to the Registrar on prescribed form on the ground that the mark is wrongly remaining on the register. The Registrar also can suo moto issue Notice for removal of a registered trademark