A trademark refers to any symbol, design or phrase that is used by a company to identify its brand or products. It is quite distinct from patents and copyrights in that it does not refer directly to the idea or its expression but more to the mark or design associated with the idea in order to make it recognizable. There are two main types of marks used- trademarks and service marks. Trademarks have been described above. Service marks are similar to trademarks except for the fact that it is associated with the source of the brand as opposed to the products.
What is a trade mark?
Comment: – 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.
How to select a trade mark?
- 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 trade mark?
Comment: Under modern business condition a trade mark 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 trade mark and how ?
Comment: Any person claiming to be the proprietor of a trade mark 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 trade mark in respect of particular goods or services?
Comment: 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 trade marks available for adoption?
Comment: 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 trade mark 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 life style or fashion statement
Who benefits from a trade mark?
The Regd.Proprietor: The Regd.Proprietor of a trade mark can stop other traders from unlawfully using his trade mark, sue for damages and secure destruction of infringing goods and or labels.
The Government: The Trade Marks Registry is expected to earn a revenue of nearly Rs.40 crores during the current year and which is perpetually on the rise.
The Legal professionals: The Trade Marks Registration system is driven by professionals and legal and para legal advisors(Agents) who act for the clients in the processing of the trade marks application
The Purchaser and ultimately Consumers of trade marks goods and services.
What are the benefits of registering a trade mark?
Comment: The registration of a trade mark confers upon the owner the exclusive right to the use of the registered trade mark and indicates 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 is the difference between “use in commerce” and “intent to use” in commerce?
Comment: The basic difference between these two filing bases is whether you have used the mark on all the goods/services. If you have already used your mark in commerce, you may file under the “use in commerce” basis. If you have not yet used your mark in commerce, but intend to use it in the future, you must file under the “intent to use” basis. An “intent to use” basis will require filing an additional form and fee that are unnecessary if you file under “use in commerce.”
How long does a trademark registration last?
Comment: The registration is valid as long as you timely file all post registration maintenance documents. You must file a “Declaration of Use under Section 8” between the fifth and sixth year following registration. In addition, you must file a combined “Declaration of Use and Application for Renewal under Sections 8 and 9” between the ninth and tenth year after registration, and every 10 years thereafter. If these documents are not timely filed, your registration will be cancelled and cannot be revived or reinstated. For more information see
Where should I place the ® symbol?
Comment: There are no specific requirements on where the “®” symbol should be placed relative to the mark, but most businesses use the symbol in the upper right corner of the mark. The “®” symbol indicates that you have federally registered your trademark with the Trademark Registry Office. It puts the public on notice that your mark is registered and that you have nationwide rights in it. You may only use the registration symbol with the mark on or in connection with the goods/services listed in the federal trademark registration and while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires). Note: Because several foreign countries use “®” to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.
Are there any restrictions on use of the “®” symbol?
Comment: There are three important restrictions on use of the “®” symbol: (1) it may only be used after the mark is registered (you may not use it during the application process); (2) it may only be used on or in connection with the goods and services listed in the federal registration; and (3) it may only be used while the registration is still alive (you may not continue to use it if you don’t maintain the registration or it expires). Note: Because several foreign countries use “®” to indicate that a mark is registered in that country, use of the symbol by the holder of a foreign registration may be proper.
What if someone else is using my registered mark on related goods and services?
Comment: You may challenge use of your trademark by someone else in several ways, depending on the factual situation. You should consider contacting an attorney specializing in trademark law. Local bar associations and phone directories usually have attorney listings broken down by specialties.
Once you receive a serial number for your application, you can check the status of your application through the Government Website : www.ipindia.nic.in through online system. If you do not have access to the Internet, you can call the Trademark Assistance Center at +91-9595467555 to request a status check. You should check on the status of your pending application every 3-4 months. If the Registry has taken any action, you may need to respond promptly.
How long will it take for my mark to register?
Comment: The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application. You may view the application processing timelines here.
What is a collective mark?
Comment: A collective mark is any word, phrase, symbol or design, or a combination thereof owned by a cooperative, an association, or other collective group or organization and used by its members to indicate the source of the goods or services.
Must I register my trademark?
Comment: No. You can establish rights in a mark based on use of the mark in commerce, without a registration. However, owning a federal trademark registration on the Principal Register provides several important benefits.
Is assignment of a trademark possible?
Comment: The assignment/licensing of trademarks is restricted, because unrestricted licensing has been considered as trafficking in the mark which is against public interest. This is because, a trademark indicates the origin of the goods to the consumer and unrestricted licensing can lead to confusion and deception among the public as to the nature of the goods. According to the law, the assignment of a trademark should not result in the creation of concurrent exclusive rights in more than one person with respect to the use of the same/similar mark in respect of same/similar goods. Confusion or deception can be avoided by territorial limitation or limitation of the goods.