By Vaishali Chaubey
Published On: November 17, 2021 at 19:10 IST
A distinctive mark that is used for trade, acts as the most valuable asset of a business. Every product or service we use every day has a brand name that is called trademark in legal term. Trademark is now a part of everyday life. We see and hear number of trademarks every day. It protects customers trustworthy products or services so that they can purchased repeatedly.
Trademark identifies real source of product and distinguishes it from other sources. Nike, Puma, Bajaj, Adidas, Coca-Cola, Maggi, Kodak are some examples of trademark. Registration of most valuable asset of a business prevents others from using a similar trademark and gives right to sue in case of infringement. It shelters business investment.
What is trademark and its types?
Trademark Act 1999, defines trademark under Section 2(1)(zb) trade mark means 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 shape of goods, their packaging and combination of colours.
Types of Trade Mark:
- Word
- Letters
- Numerical
- Device and Shape
- Logos
- Sound Mark
- Colour Mark
- Olfactory Mark
- Collective Mark
- Certification Mark
- Trade Dress
Step by step process of registering trademark in India
Trademark being the sole identity, builds a business. It helps to build goodwill of business and increases brand value of goods or services. Easy way to protect is by registering it. Registration grants statutory protection under Trade Mark act 1999 and gives exclusive right to owner to exploit it for economic benefits and protects from unauthorize use. Protection is granted for a period of 10 years and can be renewed after payment of prescribed government fees on expiry of 10 years.
- Choose a trademark
- Select appropriate class
- Conduct a trademark search
- File an application form
- Examination Report
- Publication
- Registration
First step towards registering a trademark is to choose a unique and distinctive trademark that is not in use. A mark may include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.[i]
After choosing trademark it is beneficial to identify proper class in which good or services fall. Classification of goods and services is according to NICE international classification, there are 45 class where 1-34 class are for goods and 35-45 class are for services. Particular class is there for each good and services. While selecting class it is always important to select trademark for finished goods and not for raw material. There is no need to file separate application form a single application can be filed for multiple class after paying prescribed government fee for each class.
Next prime step is trademark search. Trademark search is fundamental step before filling trademark application form to initiate the process of registration. To register a trademark, it is must that trademark is unique and distinguishing, thus conduct of trademark search is expedient to check if there extant any similar, identical or registered trademark. As trademark registration process is tedious and costly it is always advisable to conduct an intensive trademark search to save time, money and labour.
Filing an application is the next step. After checking trademark availability and finding appropriate class one must file an application after assembling all documents required. Application can be filed online, by post or by visiting appropriate office by owner or a person authorised by owner to do.
Trademark office and its jurisdiction
| Location | Jurisdiction |
| Mumbai, Head Office | The State of Maharashtra, Madhya Pradesh, Chhattisgarh and Goa. |
| Ahmedabad | The State of Gujarat and Rajasthan and Union Territories of Daman, Diu, Dadra and Nagar Haveli. |
| Kolkata | The State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim, Tripura, Jharkhand and Union Territories of Nagaland, Andaman & Nicobar Islands. |
| New Delhi | The state of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Uttarakhand, Delhi and Union Territories of Chandigarh. |
| Chennai | The state of Andhra Pradesh, Telangana, Kerala, Tamil Nadu, Karnataka and Union Territories of Pondicherry and Lakshadweep Island. |
Person who can file application under Section 18(1)of Trade Mark Act 1999 include-
- A Natural Person
- A Body Incorporate
- A Partnership Firm
- HUF, Association of Persons, Joint Proprietor
(in case of collective Trademarks)
- A Trust
- A Society
- A Government Authority/Undertaking
Section 18(1) of Trade Mark Act 1999 states that trademark must be already in use or proposed to be used or intended to be used or intended to be assigned to a company that is about to be formed and registered under Companies Act 1956 with a view to use thereof in relation to those goods and services by the company that is being applied for registration.
Application must contain the following information[ii]–
- Name of the proprietor(s)
- Valid email id
- Principle place of business
- Address for service
- Type of Mark
- Two additional representations of the mark
- Description of the trade mark
- Class numbers with specification of goods and services
- If applied mark contains words in a language other than English/Hindi and/or characters other than Roman/Devanagari: translation and transliteration of the applied mark.
- Signature and full name of signatory.
Trademark number is issued after filling an application.TM symbol means an unregistered trademark that is used with trademark after receiving trademark application number to protect it under common law. Registration is not completed in this stage.
Trademark Examination Report
Trademark applicant ones filed is forwarded for process of examination by an examiner who is an expert. Examination process take 1-2 months. Examiner after scrutinizing the application may accept it or object it. This is not a direct rejection, but the registrar is looking for a valid explanation and reason for the trademark and its registrability.
Within 30 days from date of receipt of examination report a reply must be filed otherwise application will be considered as abandoned. Applicant or authorized agent/attorney can file reply to examination report. An examination report with documents if required can be submitted on website or through email on [email protected] or by submitting in office or by post at appropriate trademark office.
Grounds on which objection can be raised include all, any or two of below stated objection-
Procedural objection that may include:
- Incorrect Trademark form.
- Incorrect trademark applicant name.
- Incorrect address on trademark form.
- TM-48 OR GPA form not filled.
- Wrong details filled.
- Incomplete details
Substantive objection:
- Absolute grounds
- Relative grounds
Other objections:
- Disapproved on grounds of accepted standards of morality and decency.
- Detrimental to a particular religion.
- Forbidden and restrained under the Emblem & Names Act, 1950.
Examination report issued by examiner is mandatory and it is must to reply within prescribed time.
Advertisement in Trademark Journal
Every application that is accepted will be published officially by trademark office and all these applications published are open for opposition.
It is mandatory to fill Form TM-O to file an opposition notice supported by evidence filed in support of contention and must be submitted within 4 months from date mentioned in journal.
Details mentioned in Trademark Journal includes-
- Trademark Journal Number
- Date of Publication
- Trademark Class
- Image of trademark proposed to be used or in use
- Proprietor Name
- Proprietor address
- Address of service /agent
- Trademark
- Appropriate Trademark office
- Trademark used since that is its date/ Proposed to be used
- Class/goods and service details
Trademark opposition means objection filed against registration of a trademark by any person being third party in the prescribed manner as given in trademark rules and trademark act at appropriate office or online after payment of prescribed fee.
After receiving opposition by third party, trademark registry then reviews it and send it to applicant for a reply. After receiving opposition through mail, other party files a counter-statement within 2 months of opposition mail with payment of prescribed fee.
To solve this, the registrar fixed a hearing date after receiving opposition, counter-statement and evidence submitted by both parties. Within 14 days from the date of receiving hearing notice, both parties must notify their intention to appear before registrar.
After hearing both the parties, registrar can allow applicant’s registration process to proceed if registrar believes that evidence is in favour of applicant. Further it can also accept with amendment or can reject registration if registrar believes in evidence of opposition party.
Once trademark is accepted by registrar a registration certificate under seal of trademark office is issued. Owner of trademark now has right to use ® mark that means registered trademark. Registered trademark is protected under Trademark Act 1999. Trademark is after registration is protected for 10 years from the date of filling application.
Trademark Status
Trademark status must be checked periodically while government is processing application.
| STATUS | MEANING |
| Formalities Chk Pass | Application is filed correctly. |
| Formalities Chk Fail | Application is not filed correctly. Some corrections are needed. |
| Marked for Exam | Application will be examined. |
| Objected | Application is objected by examiner and reply is needed. |
| Exam Report Issued | Application accepted or need slight modification. |
| Ready for Show Cause Hearing | Application issued for hearing. |
| Abandoned | If reply or modification is not done on time then application is marked as abandoned. |
| Advertised bef acc | Published in TM Journal without any user evidence |
| Accepted & Advertised | Published in TM Journal with user evidence |
| Opposed | Opposition filed by third party |
| Refused | Application not accepted by TM office |
| Invalid | Application fees not paid |
| Withdrawn | Applicant has withdrawn applicant |
| Removed | TM removed due to non-payment of renewal fees |
| Opposition Withdrawn | Opposition filed by third party is withdrawn |
| Accepted | TM accepted without evidence that was pending to publish in Journal |
| Registered | TM is registered |
Landmark Cases
- Imperial Tobacco Co. of India Ltd Vs Registrar of Trademark and Anr [iii]
Facts: Appellant applied for label bearing the device of snow-clad hills in outline and the word “Simla” written prominently in various panels of the label as trademark. Registration was rejected by registrar due to failure to provide strong evidence for proving distinctiveness of trademark.
Held: Court upheld registrar decision and said that a trademark would be considered a good mark when it is distinctive. The word distinctiveness was held to be some quality in the trademark which earmarked the goods marked as distinct from those of other products or such goods.
- Indian Association of Thermometry Vs Hicks Thermometers 1981.[iv]
FACT: Plaintiff has registered trademark ‘Hick’ that was later used by defendant on non- payment of renewal fees. Plaintiff than filed a case against defendant.
Held: Court held that if a proprietor has abandoned his registered TM by not renewing it, the person who picks up the mark may (in the absence of other circumstances), claim
proprietorship.
- S.M. Dyechem Ltd. Vs Cadbury (India) Ltd.
Fact: Plaintiff claimed that it has been using registered trademark PIKNIK since 1987 and defendant Cadbury Indian Ltd was using trademark PICNIC for chocolates. Plaintiff files a suit against defendant seeking temporary injunction for passing-off and infringing its registered trademark.
Held- Court held that mark was not deceptively similar as they are different in appearance and composition of words.[v]
- M/S. ITC Limited Vs Nestle India Limited[vi]
Fact: Plaintiff said that Nestle India Limited has launched a new product “Maggi xtra-delicious Magical Masala” which is an infringing trademark of ITC Limited’s product Sunfeast Yipee Noodles which contains “Magic Masala”. Plaintiff said that “Magic Masala” is an essential part of their product and that Nestle has just modified the name as “Magical Masala” and using it to confuse people with their product. Defendant argued that the word “Magic.
Held: Court after considering the statement of both the parties and section 2(zb)[4] of the act, held that there is no scope of confusion regarding the packaging of both the product and there is no misrepresentation on the part of the defendant as there is no visual or ocular similarity between both the products. Court also held that no laudatory term can be protected under trademark because they are not distinctive in nature.
- Mr.A.D.Padmasingh Isaac Vs Aachi Cargo Channels Private Limited[vii]
Fact: Common word was “Aachi” which means grandmother in Tamil. In this case, Aachi Masala Foods Pvt. Ltd said that Aachi Cargo Channels Private Limited has infringed its trademark and thus is liable for compensation.
Held: Madras high court in this case held that the word “Aachi” is very common in nature and there cannot be a monopoly over the usage of this word.
Conclusion
Trademark registration though is time consuming but it has many benefits. Registration is economical. Registration grants legal protection and exclusive right to owner. It helps customers to buy their trusted brand over and over that directly multiplies the business economy. It is the easiest way to secure the most valuable asset of a business. Court remedies are available in case of unauthorised use of a registered trademark.
It helps customers to buy their trusted brand over and over that directly multiplies the business economy. It is the easiest way to secure the most valuable asset of a business. Court remedies are available in case of unauthorised use of a registered trademark.
ABOUT THE AUTHOR
Vaishali Chaubey has completed PG diploma in IPR from Government Law College, Maharashtra. She is always looking for opportunities to learn new things. She is inquisitive about legal research. She believes that through consistency and hard work anything can be achieved.
Edited by: Aashima Kakkar, Associate Editor, Law Insider
References
[i] Trade Mark Act 1999, s. 2(5)(m)
[ii] User manual for Trademark filing
[iii] Imperial Tobacco Co. of India Ltd Vs Registrar of Trademark and Anr AIR 1968 Cal 582, 73 CWN 169
[iv] Indian Association of Thermometry Vs Hicks Thermometers 1981 20 (1981) DLT 246, 1981 RLR 646
[v] Judicial review of Trademark filing process
[vi] M/S. ITC Limited Vs Nestle India Limited C.S.No.231 of 2013
[vii] Mr.A.D.Padmasingh Isaac Vs Aachi Cargo Channels Private LimitedAIR 2014 Mad 2