What is Trademark? How to file Trademark Application?

WHAT IS TRADEMARK?

Abstract

A trademark is one of the elements of Intellectual Property Right and is represented by the symbol TM or ® or a mark which is a distinctive sign or indicator of some kind which is used by an individual, business organization or other legal entity to identify uniquely the source of its products and/or services to consumers, and to distinguish its products or services from those of other entities. This article shall discuss the meaning of trademark and its characteristic features. A trademark application is filed before the Office of the Registrar with relevant jurisdiction. This article will briefly discuss the procedure of filing an application for registration of a trademark. Moreover, this article will discuss the advantages of the registration of a trademark.

 

Introduction

Any distinctive Word, Letter, Numeral, Slogan, Picture, Shape, Colour, Logotype, Label, Name, Signature, Shape of Goods, Packaging, or Combination of Colours, which is capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others, can be registered as a trademark.

Trademark is defined in section 2(1) (zb) of  the Trademark Act, 1999 as,

“Trademark 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 the shape of goods, their packaging and combination of colours.” 

A trademark can be any distinctive feature of the brand which helps the common public to identify the said brand.

It helps consumers to identify products with desirable attributes quickly. It encourages firms to improve the quality of their product. In absence of any identification mark, it would be difficult to distinguish the duplicates from high-quality products. This will lower the incentive and value of the company to make high-quality products as the returns would be the same as that of inferior products.

For Example, Reliance entering retail marketing, entertainment industry, restaurants etc. Such brand extension strategies raise legitimate competition policy issues as a firm is essentially using an advantage acquired in other market to sell its products.

A trademark must be:

  1. Distinctive and not descriptive: A trade mark like ‘Blueberry’ for apparels may be regarded as distinctive because it has nothing to do with blueberry and hence not descriptive of the goods/services provided under the said trademark.
  1. Fanciful: Fanciful marks are considered to be the one strongest type of mark which have been invented, designed or created for the sole purpose of functioning as a trademark and have no other meaning than acting as a mark. So “Kodak” for camera equipment can be called a creative or coined trademark and even “Apple” for phones and computers.
  1. Suggestive: Suggestive marks suggest a quality or characteristic of the goods and services of a brand. Suggestive marks require some imagination, thought, or perception to reach a conclusion as to the nature of the goods. “Airbus” for airplanes or “24/7” for a departmental store falls under the category of suggestive marks as they suggest the kind of goods/services offered by the trademarks.
  1. Not generic: The word or combination of words making a trademark should not be generic words. Generic words can be described as those words which are used in general sense in common language. So a detergent manufacturing company cannot have trademark “detergent” or “soap” or “clothes cleaner” as its too generic and not inventive word.

PROCEDURE FOR REGISTRATION OF TRADEMARK

Registration of a trademark can be obtained for words, logo, numerals, slogan and many more under section 18 of the Trademark Act,1999. The registration of trademark is controlled by The Office of the Controller General of Patens, Designs & Trademark having branches at Delhi, Mumbai, Kolkata, Ahmedabad, Chennai. The application must be made according to the jurisdiction.

Following are the steps to follow for registration of a trademark:

  1. Public Search of Trademark: Prior to the registration of trademark, a public search must be conducted from the trademark database to obtain information regarding any identical or similar trademark that has already been filed with the registrar. A public search can be conducted by visiting https://ipindia.gov.in/ .
  2. Select trademark agent: Proprietors are allowed to file a trademark application if their place of business is in India otherwise, the trademark holder must file the application through an agent or attorney who will take care of all the trivialities including public search, filing of trademark and its prosecution.
  3. Trademark filing: After conducting the public search and selecting the agent or attorney, the application for registration of trademark can be made with the Registrar in the prescribed manner. The application must contain the Name and address of the proprietor, Logo or the Trademark, Trademark class along with Description of goods/services, Date of usage of trademark (if any). The application must be accompanied with relevant documents along with prescribed fee.
  4. Review and Advertisement: All the applications are duly reviewed by the registrar and a trademark application allotment number is provided within one or two working days. As soon as the application is made, the registrar shall advertise the application under section 20 of the Act for any objection by the third party.
  5. Objection: Objection of such application by any third party can be made under section 21 of the Act and must be made within four months of advertisement of the application. On objection, the applicant appears before the Trademark officer and address the objection but if application is approved and satisfied by the Registrar, then the trademark would be published in the trademark journal.
  6. Registration: If the Trademark is not opposed then months of publication in the Trademarks Journal, the trademark will proceed for registration under section 23 of the Act. Once the certificate of registration is issued, the trademark is considered to be a registered trademark of the owner. The owner would be granted an exclusive right to use the mark and would be allowed to use the ®  symbol next to the mark.

Advantages of registration of a Trademark

The trademark registration has benefits attached to it. A registered trademark has the following advantages:

  1. Exclusive rights to the Owner: Registration of a brand/company gives exclusive rights to the sole ownership of the trademark throughout the jurisdiction where the trademark is registered, thereby stopping others from the unauthorised use of the trademark for the products or services.
  2. Establish customer base: It helps to build brand/company’s goodwill and reputation by establishing trust among the customers in the market thereby helping in gaining customer base.
  3. Distinctive characteristic: Registered trademark helps to distinguish the brand/company’s products or services from that of others and helps the customers to identify the brand/company by its trademark. A trademark designates the characteristic of the brand/company.
  4. Intangible Asset: Registration of trademark forms an intangible asset which is the intellectual property of the brand/company, which can be further licensed, assigned or franchised to third parties in exchange of royalties.
  5. Legal Protection: Third party infringers can be restricted to the registered trademark and the brand owner can get the legal protection under the Trade Marks Act, 1999.

This article was prepared by Ms. Pooja, a Law Graduate from Delhi Metropolitan Education, affiliated to Guru Gobind singh Indraprastha University, and working with the Firm as Legal Executive.

 

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