A TRADEMARK is a sign or combination of signs that distinguish goods or services of one person or enterprise from those of another. The trademark law in India is a first to file system that requires no evidence of prior use of the mark commerce. A trademark application can be filed on a proposed to be used or intent to use basis or based on use of the mark in commerce. The term use under the trademarks act, 1999 has acquired a broad meaning and does not necessarily mean the physical presence of the goods in India. Presence of trademark on the internet and publication in international magazines and journals having circulation in India are also considered as use in India.
ONE of the first landmark judgments in this regard is the “Whirlpool case” [N. R. Dongre v. Whirlpool Corporation 1996 (16) PTC 583] in which the Court held that a rights holder can maintain a passing off action against an infringer on the basis of the trans-border reputation of its trademarks and that the actual presence of the goods or the actual use of the mark in India is not mandatory. It would suffice if the rights holder has attained reputation and goodwill in respect of the mark in India through advertisements or other means.
The Trademark Registration in India are in compliance with the Indian Trademarks Rules which was passed in the year 2002, and the Indian Trademarks Act which was passed in the year 1999. These rules and act were designed to register services and or goods under the Trademark. There have been a few amendments ever since the act was formulated and passed. Companies can operate under the Trademark Act anywhere in India.
A Trademark registration in India gives exclusive proprietary rights to the rights holder for protection of their trademark in India. However as the Indian legal system is based on the common law system, even an unregistered trademark is entitled to protection and the right holder of the unregistered trademark can initiate action against a third party under the law of passing off.
What is Trademark
As the name suggests, a Trademark becomes the identity of a company, which distinguishes it from others. There may be many symbolisms related to this act, and they could be anything like graphical representation, a tagline, a registration number, a company logo, or even a few letters. A Trademark could also be a combination of any of those nomenclatures or symbolisms.
How do the companies get benefited with the registration of their trademark in India ?
A trademark is associated with goods and services that consumers buy. When they see a product with a unique trademark, they can identify it easily and know about whom they are buying from. The same goes for services as well. The person or entity that has a registered trademark represents a certain goodwill and quality and nature of the product. A trademark helps the producers or providers in differentiating their products from others. It also makes their goods more identifiable and marketable.
A trademark on goods and services is generally indicated with the symbol TM or ®. The owner of the trademark has the sole right to use it on products and services offered by him. Other traders cannot legally use the same trademark to sell their own products. If others are found doing so, they can be legally stopped form using it by lodging a case of trademark infringement. The trademark is a clear indication about who produces the goods or services, and therefore its use cannot be diluted. The trademark owner can sue the infringing party and recover profits, losses and costs that are a direct result of the infringement. A trademark registered in India can also be registered in other countries by using the registration documents from India.
What kind of marks can be registered as trademarks in India?
Not all marks can be registered as trademarks in India. You can register a trademark only if the submitted mark meets certain strict requirements. Knowing about the requirements should help make the process of creating and registering of trademarks easier.
The law in India states the following requirements for trademark registration:1. The mark should be clearly different from other marks, so that goods and services can be distinguished in a more obvious manner
The law in India states the following requirements for trademark registration:1. The mark should be clearly different from other marks, so that goods and services can be distinguished in a more obvious manner
The mark should have a connection to the goods and services sold by the entity, so that it indicates the ownership when the goods and services are being traded.
There should be a unique graphical representation of the mark.
What are the kinds of marks that cannot undergo successful trademark registration India ?
Just as there are rules for marks being registered, there are certain marks that are explicitly prohibited. When designing a trademark, these rules should be strictly applied.
Marks are not registrable if they fall under the following descriptions:-
They contain elements that may hurt religious
sentiments of people from any section or class in India.- They contain elements that are considered to be
obscene or likely to create scandals - They cause confusion among consumers as to the
nature of products and ownership - The mark is one of those that are prohibited under the
Emblems and Name Act, 1950, that seeks to prevent
improper use of trademarks.
What are some of the reasons for which the registration of trademark is refused to the registrant ?
When a trademark is refused for registration, the grounds for the action are clearly stated. The reasons can be either absolute or relative.
- The marks are not clearly distinguishable and do not
have a unique representation, so are likely to cause
confusion among consumers of goods and services in
question. - The marks describe the quality of the product, which
may or may not be true. - The marks are already used customarily in that
particular trade or language, and therefore can be easily
confused with other products. - The marks contain generic terms such as the names of
chemicals that are commonly used and those that are
used internationally in a non- proprietary capacity. - The marks are likely cause confusion among
consumers by deceiving. - The marks may hurt religious and personal sentiments
of people from any section or class in India - The marks are very similar or identical to the actual
shape of the product and can cause confusion. - The marks directly indicate the nature of the product, in
which case they can cause confusion - The marks that artificially increase the perceived and
monetary value of goods. - The marks contain matter considered to be obscene.
The following are the relative grounds on which the trade name registration can be refused ?
- The marks are either identical or very similar to existing
trademarks for products and services in the same or
similar trade. - The marks are either identical or very similar to existing
trademarks, but which are registered in a different
trade. In such a case, a trademark registration in India is
rejected only if there is opposition from the existing
owner of the said trademark. - The registration of trademark in India is also refused if
the marks infringe the copyright of another entity or
person.