Complete information about Trademark

In this FAQ section we provide all questions and relevant answers addressing  all aspects of Trademark

What is the meaning of Trademark?

Trademark has been defined under Section 2 (zb) of the Trade Marks Act, 1999 as, “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.” A mark can include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any such combinations.

Is there a criteria to get a Trademark?

For the purpose of Registration of a Trademark, a trademark should be;

  • capable of being represented graphically;
  • capable of distinguishing the goods or services of one undertaking from those of others;
  • used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.

What is the meaning of Trademark registration?

Registration of a trademark with the Govt. Authority, gives rights to the proprietor to exclude others from using an identical/similar mark in relating to the identical/similar goods/services in a specific jurisdiction. Trademark registration act as the Prima facie evidence of ownership of a Trademark.

TM Vs Copyright? Are they same?

No. Copyright, as its name suggests, is a right conferred by the Copyright Law that protects the original piece of work and confers on the author/owner of a literary, dramatic, musical, artistic work, cinematographic film or sound recording an exclusive right over such work. On the other hand, a trademark manifests exclusive rights to the proprietor over their mark to use it and authorize another party to use the same for adequate consideration in the course of trade. It is used as the brand identity and separates it from other products and services in the market. Generally, Copyright protection is given for a lifetime to the rightful owner, plus an extra 60 years. Normally, a registered trademark is issued for a period of 10 years, but it can be renewed every 10 years as long as the proprietor wishes to on the payment of prescribed fees.

How to Trademark a new ‘brand name’?

A trademark application has to be filed with the Registrar of Trade Marks. It should be filed at the office of the Trade Marks Registry corresponding to the principal place of business of the applicant. An application can be filed by the proprietor of the business for use by the proprietor or his business and the mark shall be registered according to the corresponding laws of that Jurisdiction.

What is the best way to  choose a Trademark?

Identify a unique Trademark or a brand name that you want to register. Selecting a trademark often involves identifying the market for the goods/services and examining the competition. Such trademark may include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof and also includes a collective mark and certification trademark.

Why get a trademark for your brand?

In a business, trademarking or registration of a brand name is important as-

  • Registration is the easiest way to establish ownership in a brand name.
  • Registration confers on its proprietor an exclusive right to prevent all third parties from un-authorized using the same or similar signs, in the course of trade, for identical or related goods and/or services as those protected by the trademark.
  • A registered trademark can be a valuable asset if you decide to transfer business.
  • Registered trademarks are protected for the complete national territory, regardless of the actual geographic use made of the mark.
  • Registration of your mark may also prevent others from using that mark as an Internet domain name.
  • Protection can extend to Trademark Dilution – which may occur even without a likelihood of confusion; when there is a lessening of the capacity of a famous mark to identify and distinguish goods or services.

How can you identify class to which your Goods/Services belong?

When you file an application for registration of a trademark you need to mention the list of goods/services for which you intend to use your trademark. Most Jurisdictions follow the International system of classification called the “Nice Classification” according to which the goods and services are categorized into 45 classes, with goods covered in classes 1 to 34 and services covered under classes 35 to 45.

What is the meaning of  a  Trademark search?

Trademark search is to ascertain whether there are any other similar marks in the trademark register or in the market.

Where do we file the new Trademark application?

Since IP protection is always confined to the respective countries, it is essential that you identify the countries/jurisdictions where you wish to protect your Trademark. On identifying the Countries, one may either chose to file an application in the respective jurisdictions individually or if the chosen countries are part of the MADRID protocol, the proprietor may also consider filing one international application under the Madrid route and designate the chosen countries/jurisdictions. The Trademark applications will be processed as per the local laws of each country/jurisdiction and registered in accordance therewith.

How can you protect a Trademark is protected?

A Trademark can be protected by Filing an Application for registration of the Trademark. Trademark protection is Jurisdictional and a Trademark registration can provide protection only in that specific jurisdiction. To ensure complete protection of One’s Trademark it is essential that the Proprietor registers the mark in all the jurisdictions/countries where his business interest lies.  Also a trademark can be protected only with respect to the goods/services for which the Trademark is used or intended to be used.

What are TM classes?

The Fourth Schedule of Trademark Rules, 2002 classify goods/services into 45 different categories. India follows NICE classification systems (international treaty) for the classification of goods and services. The Nice Classification (NCL), established by the Nice Agreement (1957), is an international classification of goods and services applied for the registration of marks. The “Nice Classification” according to which the goods and services are categorized into 45 classes, with goods covered in classes 1 to 34 and services covered under classes 35 to 45. Each trademark application must mention the type of goods or services the trademark will represent under one or more of the classes, and trademark registration or protection is granted for that specific class of goods or services that the Trademark is used or intends to be used.

What is the definition for  Trademark infringement?

Infringement of a trademark is violation of the exclusive rights granted to the registered proprietor of the trademark to use the same. Any unauthorized use of another’s registered Trademark or use of an identical/ similar mark to the already registered Trademark amounts to infringement.

When is trademark infringed?

Any unauthorized use of a registered trademark amounts to infringement. Following are essentials constituting an infringement:

  1. Person infringing the trademark is not authorized to use the trade mark;
  2. The infringing trademark is either similar or identical or deceptively similar to the already registered trademark;
  3. The infringing trademark must be used in the course of regular trade in which the registered proprietor or user is already engaged;
  4. The use of infringing trademark must be printed or in case of usual representation of mark in advertisement, invoices or bills. Mere oral use of trademark is not infringement; and
  5. Using either whole of the registered trademark or an adopted one by making a few addition and alteration.

When do trademark rights begin?

Honest adoption of a trademark and its use in the course of trade, confers on a proprietor the right to protect its trademark from any unauthorized use or imitation. Though the registration of a trademark is not mandatory, registration of a Trademark confers on the proprietor an absolute right to initiate an infringement suit and the registration of a trademark shall act as the Prima facie evidence of ownership of a Trademark.

When can a trademark symbol be used?

The symbol ™ can be used on a mark anytime when one intends to use it as its trademark. In other words, you are merely notifying to the general public at large that a particular mark is your trademark. Once a trademark is registered, then the proprietor can start using the ® symbol next to the trademark. The ® symbol signifies that the trademark is registered and enjoys protection from infringement under the Trademark laws. However, use of the ® symbol after filing a trademark application or without obtaining trademark registration is unlawful.

When a trademark is dead, can I use it?

A dead trademark or abandoned trademark is the trademark which is no longer registered may be used by another party provided the dead trademark does not have any claim over it or has any goodwill attached to it. It is necessary to consult your IP Attorney before using a dead trademark,

Can trademark be sold?

A trademark may be Sold/Assigned/Licensed to a third party. A mark may be assigned in one of the following manner;

1) Complete Assignment to another entity.

2) Assignment to another entity but with respect to only some of the goods/services or with jurisdictional limitations.

3) Assignment with goodwill.

4) Assignment without goodwill.

Any assignment/transfer of a registered trademark has to be entered in with the concerned Trademark Office, where the Trademark has been registered and the subsequent proprietor shall be taken on record as the proprietor of the trademark.

Can you trademark a domain name?

Domain names are written representation of an internet address or ip address. Hence, it is common for businesses involved in ecommerce to spend significant amount of money for the building of brand name around a domain name. Such businesses or those wishing to trademark a domain name can apply for the same by filing a trademark application as a wordmark. And, it is permissible for a domain name to be trademarked under the laws of the relevant jurisdiction. However, mere registration of Domain does not make the mark eligible for trademark registration. The key test applied by the Trademark Examiner would be whether the wordmark proposed would be liable for registration, not simply as a domain name. While processing of the application, the Trademark Registrar would still subject the application to usual criteria and tests for registration of trademark. The elements of a domain name included as a part of the application would be not considered and only the reminder or the distinct part of the mark is considered.

Can you trademark a person’s name?

Yes and No. As per Section 14 of the Trademark Act, 1999; a trademark application for registration of a mark which falsely suggests a connection with any living person or a person who has died within the past 20 years, may be refused if the applicant is unable to provide a written consent of the concerned living person or the legal representative of the deceased person.  Though personal names can be protected it would be difficult to claim monopoly rights over the personal names.

Trademark how much does it cost?

The Trademark Offices usually charge official fee for each trademark in each of the classes for which the mark has been filed. Additionally, if the proprietor choses to engage a trademark attorney, the professional fees will be charged by the professionals in additional to the fee payable to the trademark Offices.

S.No

Fee Payable For

Fee after Amendment (INR)

   

E-Filing

Physical Filing

1

Application for registering a trademark in one class

 

Individual, startups and small companies

4500

5000

Other entities

9000

10000

2

For Notice of opposition or counter-statement in answer to a notice of opposition (Fee is for each class opposed or counter statement filed)

2700

3000

3

For renewal of registration of trademark in one class

9000

10000


Why trademark registrations are important in India?

Registration of a trade mark confers upon the owner an exclusive right to use the trade mark in relation to the goods or services in respect of which the mark is registered.  The exclusive right is however subject to any conditions entered on the register such as limitation of area of use etc.  Trademark serves as the prima facie evidence of its validity following registration and this can give you the exclusive right as the owner for using your trademark in commerce.

Which TM symbol to use?

There are two types of symbols that are used with respect to a trademark i.e.;

  1. The “®” symbol is used alongside of a registered mark to notify its registration.
  2. The symbol ™ can be used with a mark that you intend to use as your trademark. In other words you are merely expressing to the general public at large your intention of using your mark as a trademark. There is a common misconception that the symbol TM can only be used by a person who has applied for registration of the trademark but Using symbol TM with trademark simply means that one claims to be the proprietor of the trademark. There is no prohibition on the use of the symbol TM in India.

Which countries to TM in?

Decision to register a trademark completely depends on the business. If a proprietor has his business only in India he doesn’t need to register the mark outside India. However, if the business is to be taken outside India the mark should be registered in those particular jurisdictions as well.

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