Trademark Registration in India
How often do you see brand labels being used on different products that are used in our daily lifestyle. We have come across copies of brands like Adidas, Nike, Puma, etc being marketed by a minor change in the name or it’s logo which ultimately leads to a dilemma, which in the eyes of law amounts to a ‘Trademark Infringement’.
Before I begin lets discuss two landmark cases related to Trademark and it’s infringement:
- ‘MAAZA’ case
– We all are familiar with this mango drink named ‘MAAZA’. This case battle was fought between Bisleri International Private Ltd. V The Coca Cola Company, wherein Bisleri had transferred all the trademark rights linked to ‘MAAZA’ to Coca Cola and gave them full authority to use the name, and manage its goodwill in India. At a later stage, Bisleri was found exporting their drink registered in Turkey by the name ‘MAAZA’ , that amounted to an infringement. The court in this regard put an interim injunction on Bisleri and banned them from using trademark name ‘MAAZA’ anywhere in the world.
- Starbucks v Sardarbaksh
– In a very awkward but witty case was filed by Starbucks for trademark infringement against another start-up named SardarBaksh that happened to be using almost identical logo and created an impression for the people as if this was too owned by one of the Starbucks owner.
The court ordered Sardarbaksh to alter its name to Sardarji Baksh and were also granted trademark rights over the name Baksh.
Meaning of Trademark
A trademark is a unique way of identifying a product or service. This is a kind of protection for your brand to differentiate the same with other products in the market. Trademark includes a symbol, word or words registered legally representing any company or a product.
This is governed under The Trademarks Act, 1999 which defines Trademark under section 2 (1)(zb) as – “ A mark that can be represented graphically and which is able to distinguish goods or services of one person from those of others, which may also include the shape of goods,their packaging and colors used in its combination.”
Types of Trademark
- Product Marks: These include all the products or goods but not services. These include the mark of origin and could be a whole product or a part of it that distinguishes it from other substitutes in the market. Trademark filings under the Trademark class of 1 – 34 represents product marks.
- Service Marks: These include all the kinds of services being provided excluding products. The main object of these type of marks is that they assist in differentiating service owners from other competitors in the same service. For eg, FEDEX, Reliance Telecom etc. Trademark filings under the Trademark class of 35-45 represents service marks.
- Collective Mark: This mark refers to a group of companies or associations collectively coming together to indicate their membership and to differentiate from the marks of non-members.. For eg. Designation of a CA, etc.
- Certification Mark: This mark indicates that the product has been certified by the owner in respect of its origin, material, mode of manufacturing, quality, accuracy and other features. For eg. ISI mark.
- Well known marks: When a mark is recognized by a large percentage of population it is termed as a well known mark. These type of marks enjoy greater protection.
- Unconventional trademarks: These are the marks that get their recognition for their inherently distinctive feature. Such as:
– Colour mark: For eg. Dairy milk product packaging
– Sound mark: These sound marks attain recognition with time and are identified as soon as the sound is played. For eg. IPL music or Nokia ringtone etc.
– Shape Mark: This kind of mark is trademarked to allot a particular shape of the product specific to its type and cannot be used by any other manufacturer. And further helps customer s differentiate the product easily by its shape. For eg. Coca Cola bottle etc.
Advantages of registering a Trademark:
- Backed by law: When you have a unique mark or product that you wish to get trademarked so that no other manufacturer could use the same product or mark. In case somebody tries to imitate your product you can claim damages under infringement of your trademark. When you file a trademark application for your product you are eligible to use ‘TM’ symbol with your product and once it’s registered you are eligible to use ‘R’ symbol with your product.
- Product Distinction: Trademark enables differentiating products of yours and your competitors. And this will also help the customers to identify your product and being trademarked also adds a sense of authenticity to the customers, which ultimately helps in enhancing goodwill and customer support.
- Brand Value: Trademark registration helps in building brand image and value. Customers start recognizing your products with its logo and being trademarked assists in adding a unique feature to the product.
- Trademark as an Intangible Asset: When you get your product trademarked, it adds as an asset for accounting and income tax purposes. These come under the ambit of Intellectual Properties and accounts to some value related to the product they represent. As when the business is sold, even the trademark value is added into to attain the total selling cost.
- Protection for a period of 10 years: Once you get your trademark registration you are enrolled for up to 10 years and on the expiry this can be renewed. The protection cost and the registration cost is very minimal.
The process for the application for the registration of Trademark is explained in Chapter 3 of The Trade Marks Act, 1999 under section 18 and 23. The process has been updated with time and the filing mode has been changed from offline to online as well. The online process too is a bit complicated but we at LawSimpl aims at making the job easier for you.
Step 1: Search for Trademark
– In order to register your trademark we are supposed to see whether there exists any similar mark already existing in the Trademark database. To understand the type of mark you want to register you need to state a few basic details such as the type of industry and others as our expert deems necessary.
Step 2: Selection of Class/Classes and Documentation
– The very next step is to select relevant class/classes based on the type of product. Various products may fall under more than one class which is totally fine. Our experts will be assisting you in selection of relevant class/classes and further will ask for documents to be filed along with the application.
Step 3: Trademark application filing and Review
– The next step is filing the application with all the documents and then the Trademark office verifies all the details and checks for any incomplete information, if none, a registration number is allotted.
Step 4: Approval from the Trademark Authority
– Within a period of 3 months the Trademark office approves the Trademark and is published in the Trademark Journal and the authority would proceed issuing the Trademark certificate.
In case of objections to the application:
– If the Registrar office found any discrepancies in the application or any incomplete information or if a similar trademark application was pending before them, the Registrar grants a 3 month time period to rectify the information in the application and make the necessary changes and submit their reply.
The Registrar may a;so reject your application based on the following reasons, if:
- it is against public policy or creates confusion for the buyers; or
- it harms any religious community with its mark, color or shape; or
- it contains something obscene or scandalous; or
- Any other as the Act defines under section 9 and 11.
– If due to any other reasons the Registrar rejects the application after scrutinizing the examination report, the applicant if unsatisfied should file an appeal to the Intellectual Property Appellate Board.
– In few cases, a case of ‘Trademark Opposition’ may arise. This is a case where another trademark holder objects to another trademark they believe is violating or impacting their trademark in some way, in consequence to which they may file a written notice to the Registrar. A counter reply would be expected from the suspected Trademark holder. If any remedy can be sought mutually, the case can be dismissed or otherwise the Registrar would call both the parties for hearing and decide on the basis if merits. If any of the parties are unsatisfied by the decision, they can appeal to the Intellectual Appellate Board within 3 months of the decision made public.
List of Documents required:
- Signed Form-48
- Copy of Logo
- Identification proof of the applicant
- Address proof
- Incorporation certificate (in case of a Company/LLP)
- Business proof
- An affidavit in case the mark has been used by the business since long as a proof validating that the mark was first used by your business.
– For filing a new application for a Trademark the referred forms are TM-1, TM-2, TM-3, TM-8, TM-51, etc and the fee for these is Rs.4000/-
– To renew a registered trademark, the fee amounts to Rs.5000/- , and form to be filed will be TM-12