India: Trade Marks: Identity that Demands Protection

Trademark means a mark adopted by a trader, manufacturer or service provider as a distinctive mark of authenticity. It indicates a connection between the goods or services to which the mark is applied and some persons having the right to use the mark. It offers an assurance to the buyers as to the source of origin of goods that they are buying.

Mark includes a device, brand, heading, label, ticket, name or an abbreviation of a name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof used in relation to goods or services. Provided it must be capable of being represented graphically and capable of distinguishing the goods or services of one person from those of others so as to indicate the source of the origin of goods or services.

Trademarks are a distinct form of property, which are entitled to protection under the law, irrespective of its value in money so long as it has some business or commercial value. Not merely the interest of the owner but also the interests of the public are the subject concern of trademark legislation. It is statutory and not compulsory to register a trademark. However by Registration ones get the title over the mark and he does not have to prove his title in case someone infringes his mark, on the other hand if the mark is not registered the only way one can protect his right over the mark is by way off passing off action, where have to establish his title on the basis of prior use and his mark’s distinctiveness with respect to his goods or services.

The provisions that govern trademarks laws in India are covered under the Trade Mark Act, 1999 ("Act") and Trade Mark Rules, 2002 ("Rules"). The object of the Act is to provide for registration and better protection of trademark for goods or services and for prevention of the use of fraudulent marks. The Act has been enacted to ensure that the registered proprietor of the mark enjoys its monopoly right over the mark. The cardinal principle behind the trademark law is that no man shall be permitted to represent his goods as those of others by way of indication through a mark in which he has no right. The Act recognizes the following types of marks:

• Collective mark: means a trademark distinguishing the goods or services of members of an association of persons (not being a partnership within the meaning of the Indian Partnership Act, 1932), which is the proprietor of the mark from those of others.

• Service Marks: means those marks used in connection with providing services of any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as banking, communication, education, financing, insurance, real estate, chit funds, transport, storage, material, treatment, processing, supply of electrical or other energy, boarding, lodging, entertainment, amusement, construction, repair, conveying of news or information and advertising.

• Well -known trademark: means a mark used in relation to goods or services and which has become well known to the substantial segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

Any person or company who claims to be the proprietor of a trademark may apply for registration with the Trademark Registry under whose jurisdiction the principal place of the business of the applicant in India falls. Those persons or company who have any business in India but are interested to start a business or enterprise may file the application with the Trademark Registry within whose jurisdiction their address of service of communication falls.

However it is recommended that before moving an application for registration, a trademark search may be conducted in order to ascertain that the mark for which the registration is to be sought is neither identical with nor deceptively similar to any of the registered trademark(s) and/or prior pending trademark(s) application.

In order to bring it within the ambit of statutory definition, a trademark should satisfy the following essential requirements:

1. It must be a mark, that is a device, brand, heading, label, ticket, name or an abbreviation of a name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof;
2. It must be capable of being represented graphically;
3. It must be capable of distinguishing the goods or services of one person from those of others;
4. It must be in use or propose to be used in relation to goods or services;
5. The use must be 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 having the right to use the mark either as proprietor or by way of permitted user as the case may be.

The Act expressly lays down certain grounds on the basis of which the mark applied for registration may be refused registration, meaning thereby that the mark applied for registration if not hit by any of these grounds would qualify for registration. Theses grounds may be broadly categorized into following two heads:

The Act expressly stipulates that the mark chosen for registration should not be a mark:

1. which is devoid of any distinctive character viz. not capable of distinguishing the goods or services of one person from another;
2. which consists exclusively of marks or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or rendering of the services or other characteristics of the goods or services;
3. which consists exclusively of marks or indications which have become customary in the current language or in the bona fide and established practice of the trade.

However the registration shall not be refused on the basis any of the grounds mentioned above (i-iii), if the mark has acquired a distinctive character as a result of the use made of it or is a well-known trademark, before moving the registration application.

4. which is of such a nature that may deceive public or cause confusion.
5. which contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India.
6. which comprise or contain scandalous or obscene matter.
7. the use of which is prohibited to be used under the Emblems and Names (prevention of improper use) Act, 1950.
8. which consist exclusively of the shapes of goods

• which results from the nature of the goods themselves; or
• which is necessary to obtain a technical result; or
• which gives substantial value to the goods.

The act lays downs that except in case where honest and concurrent use or any other special circumstance which in the opinion of the Registrar of Trademarks is proper, no trademark shall be granted registration:

1. if the mark submitted for registration is identical with or deceptively similar to the registered trademark(s) and/or prior pending trademark(s) application and the goods or services covered by the mark are identical or similar to the goods or services of the registered trademark(s) and/or prior pending trademark(s) application, that there exist a likelihood of confusion on the part of public, which includes the likelihood of association of the mark with the registered trademark(s) and/or prior pending trademark(s) application.
2. If the mark is merely a reproduction or imitation of a well known mark.
3. Where goods or services covered by the mark are not similar but the mark is identical with or deceptively similar to the registered trademark(s) and/or prior pending trademark(s) application or the use of the mark is without any reasonable cause with a motive to take an unfair advantage of or be detrimental to the distinctive character or repute of the registered trademark(s) and/or Well known mark.
4. If its use in India is liable to be prevented by laws of passing off or copyright.

1. An application in a prescribed form is required to be filed with the Trade Marks Registry along with the requisite statutory fee.

Following information is required to be furnished in the application:

• Full name & Address of the Applicant;

• Class under which the registration is to be sought;

• Description of Goods or Services in relation to which registration is sought;

• Whether the mark is already in use in India or is it proposed to be used; if the mark is already in use, the date since when and the person by whom the mark has continuously been used;

2. Application must be accompanied with necessary representation of the mark.

3. If the application is to be moved through a trademark agent then in that case the Power of Attorney shall be required to be executed in agent’s favor.

4. Once the application is filed, the application for registration is allotted a serial number also known as reference number.

5. The Registrar upon the receipt of the application conduct the Examination with respect to mark’s registrability whether it satisfies the requirements of the Act and Rules.

6. If the application satisfies the requirement of the Act and Rules then it shall be allowed to be advertised in the trademark journal before acceptance.

7. If upon the examination it turns out that the application doesn’t meet the requirement of the Act and Rules in that case the Registrar by way of issuance of Examination Report may raise objections and/or seek clarifications from the applicant.

8. The Registrar may also require the applicant to agree to follow such terms and condition /association as deemed fit and proper.

9. The replies to the Examination report is required to be filed, in writing, within one month from the date of the communication of the Examination report.

10. If any of the objections still persist the applicant may request a hearing to discuss and resolve the matter, which the Registrar may grant.

11. Upon the filing of replies to the examination report and/or making submission during the hearing the registrar shall reconsider the registrability of the mark in the light of replies filed and submission made.

12. If satisfied the Registrar shall pass order for advertisement of the mark in the trademark journal before acceptance.

13. The mark accepted for advertisement in the trademarks journal shall be published in Trademarks journal in due course of time.

14. Once advertised in the trademarks Journal, the mark shall remain open for objection for a period of 3 months, which is extendable by 1 month upon request in order to give an opportunity to any person who may have an objection to the registration of the mark, to move an opposition against registration of the mark.

15. If no objection is raised during this period the mark shall be granted registration and accordingly the registration certificate shall be issued.

A trademark has a perpetual time period subject to its renewal from time to time. Under the Act the initial term of registration of a trademark is ten (10) years, after which it is to be renewed for further periods of ten (10) years upon the payment of prescribed renewal fee.

Following rights are vested upon the applicant once the application is moved for registration of a trademark:

• Bonafide evidence of adoption and selection of a trade mark for selected goods or services;

• Priority against identical or similar marks, pending registration for the same or filed after the date of application.

• Preservation of filing date within six months of priority period in all other convention countries.

Registration confers upon the proprietor of the trademark the following rights / benefits:

1. Exclusive right to use the mark in relation to the goods or services in respect of which the mark is registered.
2. To stop others from using the identical or deceptively similar marks with respect to same or similar goods or services and where the mark is a well known mark one can stop the use of identical or deceptively similar marks not only with respect to same or similar goods or services but also in case of dissimilar goods or service where the use of which would take unfair advantage or be detrimental to the distinctive character or reputation of the earlier trademark.
3. The owner of the registered mark is not required to prove the title, reputation of the mark or damages like in passing off action.
4. Except the registered or unregistered permitted user, no other person could use or obtain the registration of same or deceptively similar mark in relation to the same or similar goods or services in relation to which the trademark is granted registered.
5. Restrain such advertisements which may:
• take an undue advantage of the registered mark
• which is contrary to honest practices in industrial or commercial matters and,
• which is detrimental to the distinctive character or reputation of the registered mark.
6. Retrain import of such goods or services having mark, which is identical or deceptively similar to a registered mark.
7. Restrain use of the mark as trade name or part of a trade name or name of business concern dealing in the same goods or services.
8. Seek registration of any person as a permitted/registered user.
9. To avail Civil, Criminal and Administrative Remedies in case of infringement.

The progressing economy of India, while accommodating a prolific foundation for those wanting to explore emerging markets, deals with multifarious challenges faced by trademark owners. With wide spread brand proliferation and numerous individuals/entities manufacturing or trading in similar products or services, it obviates the proprietors to reap the benefits of the time and money spent on the tedious brand building process. It is paramount to secure trademark protection to the achieve success in any venture. Once you secure such rights you may be in a strong negotiating position to take advantage of profit sharing or earning royalties. Indian trademark laws are in complete harmony with the international norms, which on one hand give simplified procedure and on the other hand levy hefty fines and punishments to infringers.

Actual resolution of legal issues depends upon many factors, including variations of fact and laws of the land. Though the firm has taken utmost care in the preparation of this article, the information contained herein is not intended to constitute any legal advice and the firm cannot accept any responsibility towards those who rely solely on the contents of this article without taking further specialist advice. The reader should always consult with legal counsel before taking action on matters covered by this article.