Patent India

Trade Mark

Trademarks in India: Law & Procedure

Legislation

The Indian law of trademarks is enshrined in the Trade Marks Act, 1999. The Act seeks to provide for the registration of trademarks relating to goods and services in India. The rights granted under the Act, are operative in the whole of india.

What is a Trademark

A TRADEMARK is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs is used in the course of trade which identifies and distinguishes the source of the goods or services of one enterprise from those of others. A SERVICE MARK is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.
A trademark is different from a copyright or a patent or geographical indication. A copyright protects an original artistic or literary work; a patent protects an invention whereas a geographical indication is used to identify goods having special characteristics originating from a definite territory.

Classification of Goods and Services*

Almost all jurisdictions including India employ a classification system in which goods and services have been grouped into classes for registration. Most countries follow the same classification system, namely the International Classification of Goods and Services, which consists of 34 classes of goods and 8 classes of services. ( The WIPO recently revised the Nice Classification, adding three service classes (43, 44, 45) and restructuring Class 42, retaining certain services. This provision has not yet been implemented in India ).

For example, printed matter, newspaper and periodicals are classified in Class 16 while services in the field of publication comes under Class 41. Time Incorporated, USA is the registered proprietor of the trademark “TIME” in about 150 countries.

Rights conferred by registration

The registration of a trademark confers on the registered proprietor of the trademark the exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered. While registration of a trademark is not compulsory it offers better legal protection for action for infringement.

Who Can Apply For A Trademark

Any person can apply for registration of a trademark to the Trademark Registry under whose jurisdiction the principal place of the business of the applicant in India falls. In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company's favor.

Trademark Search

Before making an application for registration it is prudent to make an inspection of the already registered trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.

Filing and Prosecuting Trademark Applications

An application for trademark may be made on Form TM-1 with prescribed fee of Rs. 2500/- at one of the five office of the Trade Marks Registry located at Mumbai, Delhi, Kolkata, Chennai and Ahmedabad depending on the place where the applicant resides or has his principle place of business. The application is examined to ascertain whether it is distinctive and does not conflict with existing registered or pending trademarks and examination report issued. If it is found be acceptable then it is advertised in the Trade Marks Journal to allow others to oppose the registration. If there is no opposition or if the opposition is decided in favour of the applicant then the mark is registered and a certificate of registration is issued. If the applicant's response does not overcome all objections, the Registrar will issue a final refusal. The applicant may then appeal to the Intellectual Property Appellate Board, an administrative tribunal.

A common ground for refusal is likelihood of confusion between the applicant's mark with registered mark or pending prior mark. Marks, which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused registration. Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well.

Duration of a Trademark

The term of a trademark registration is for a period of ten years. The renewal is possible for further period of 10 years each. Unlike patents, copyrights or industrial design trademark rights can last indefinitely if the owner continues to use the mark. However, if a registered trademark is not renewed, it is liable to be removed from the register.

Use of the "TM", "SM" and "(R)" Symbols

Anyone who claims rights in a mark can use the TM (trademark) or SM (service mark) designation with the mark to alert the public of the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, (R) , may only be used when the mark is registered.

Remedies For Infringement And Passing-Off

Two types of remedies are available to the owner of a trademark for unauthorized use of his or her mark or its imitation by a third party. These remedies are: - ‘an action for infringement' in case of a registered trademark and ‘an action for passing off*' in the case of an unregistered trademark.

The basic difference between an infringement action and an action for passing off is that the former is a statutory remedy and the latter is a common law remedy. Accordingly, in order to establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required. In the case of a passing off action, proving that the marks are identical or deceptively similar alone is not sufficient. The use of the mark should be likely to deceive or cause confusion. Further, in a passing off action it is necessary to prove that the use of the trademark by the defendant is likely to cause injury or damage to the plaintiff’s goodwill, whereas in an infringement suit, the use of the mark by the defendant need not cause any injury to the plaintiff.

However, the registration cannot upstage a prior consistent user of trademark in India, for the rule followed is ‘priority in adoption prevails over priority in registration`. In many other jurisdictions like Saudi Arabia, Nepal etc. where the first party to register a trademark is considered the party to own the mark, regardless of prior use of the mark.

* Passing off originated with the tort of deceit. The doctrine is based on the principle that one trader is not to sell his goods under the pretence that they are the goods of another trader. Historically, marketplace has been concerned with guaranteeing consumers the quality of goods that they had come to rely upon in the course of trade. To further that guarantee, the common law developed the tort of passing off, which helped to assure that a person was representing his goods as being his and not the goods of someone else.

Safeguards to be taken by the proprietor of a registered trade mark to protect his rights : -

The proprietor should use and renew the trademark regularly and in time. If the trademark is misused by others he should file a suit for infringement and passing off and also take criminal action.

The proprietor should keep a watch in respect of trademarks published in the Trade Marks Journal and institute opposition proceedings if identical or deceptively similar trademarks are advertised. He should initiate rectification proceedings if an identical or deceptively similar trademark is registered.

Use of Trademarks In Foreign Countries

Trademark rights are granted on a country-by-country basis. An Indian registration provides protection only in India and its territories. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws.

International trademark protection

There is no system as yet wherein a single trademark application is sufficient to protect the trademark right internationally. However, Paris convention * provides certain privileges to member countries in trademark registration. A party that files their first trademark application in a member state of the Convention, such as India, can within six months of that filing date file applications in other member countries claiming the priority of the first application. If such a trademark is accepted for registration it will be deemed to have registered from the same date on which the application is made in the home country.

It is also possible to utilize multinational filing systems in certain regions in order to obtain trademark protection. For example, Belgium, the Netherlands and Luxembourg have a single trademark registry, commonly referred to as the Benelux Trademark Register. The European Union consisting of 15 countries has adopted its own trademark system, known as the Community Trademark. The African Organization for Intellectual Property (OAPI), a group of African nations, have replaced their national trademark offices with a common trademark office which offers a single trademark registration valid in all of the member states.

Almost all countries have trademark offices in which applications may be filed. Therefore, when contemplating trademark protection in various countries, it is most helpful to start with a list of countries where registered trademark protection is available. Deciding where to register a trademark involves various considerations. Countries where a trademark is currently in use, but prior use of trademark is not recognized, should be the first to be considered for seeking registered protection. If commencing use shortly or expanding use to other countries within a few years, then such countries should also be included. The last group of countries should be those have a history of unauthorized registration of other's trademarks.

* Paris Convention is the most basic and important multilateral convention relating to intellectual property, including trademarks, of which India is a member. It defined the meaning and scope of industrial property rights protection and established basic principles and rules

*Classification of Goods & Services for the Purposes of the Registration of Trade Marks

According to the International Classification system for the purpose of registration of the trademarks, established under the NICE agreement of June 15, 1957, as revised and amended from time to time, Goods are classified from Class 1 to 34 and Services are classified in classes 35 to 45.

CLASSES 1 - 34: GOODS

Class 1	Chemical products used in industry, science, photography, agriculture; horticulture, forestry; artificial and synthetic resins; plastics in the form of powders, liquids or pastes for industrial use; manures (natural and artificial); fire extinguishing compositions; tempering substances and chemical preparations for soldering; chemical substances for preserving foodstuffs; tanning substances; adhesive substances in industry.
Class 2	Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colouring matters, dyestuffs; mordents; natural resins; metals in foil and powder form for painters and decorators.
Class 3	Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Class 4	Industrial oils and greases (other than edible oils and fats and essential oils); lubricants; dust laying and absorbing compositions; fuels (including motor spirit) and illuminants; candles, tapers, night lights and wicks.
Class 5	Pharmaceutical, veterinary and sanitary substances; infant's and invalid's foods; plasters, material for bandaging; material for stopping teeth, dental wax; disinfectants; preparations for killing weeds and destroying vermin.
Class 6	Unwrought and partly wrought common metals and their alloys; anchors, anvils, bells, rolled and cast building materials; rails and other metallic materials for railway tracks; chains except driving chains for vehicles; cables and wires (non-electric); locksmiths' work; metallic pipes and tubes; safes and cash boxes; steel balls; horseshoes; nails and screws; other goods in non-precious metal not included in other classes; ores.
Class 7	Machines and machine tools; motors (except for land vehicles); machine couplings and belting (except for land vehicles); large size agricultural implements; incubators.
Class 8	Hand tools and instruments; cutlery, forks and spoons; side-arms.
Class 9	Scientific, nautical, surveying and electrical apparatus and instruments (including wireless); photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; coin or counterfreed apparatus.
Class 10	Surgical; medical, dental and veterinary instruments and apparatus (including artificial limbs, eyes and teeth).
Class 11	Installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Class 12	Vehicles; apparatus for locomotion by land, air or water.
Class 13	Firearms; ammunition and projectiles; explosive substances; fireworks.
Class 14	Precious metals and their alloys and goods in precious metals or coated therewith (except cutlery, forks and spoons); jewellery; precious stones; horological and other chronometric instruments.
Class 15	Musical instruments (other than talking machines and wireless apparatus).
Class 16	Paper and paper articles, cardboard and cardboard articles; printed matter, newspaper and periodicals, books; book-binding material; photographs; stationery, adhesive materials (stationery); artists' materials, paint brushes; typewriters and office requisites (other than furniture); instructional and teaching material (other than apparatus); playing cards; printers' types and clichés (stereotype).
Class 17	Gutta-percha, india-rubber, balata and substitutes, articles made from these substances and not included in other classes; plastics in the form of sheets, blocks and rods, being for use in manufacture; materials for packing, stopping or insulating; asbestos, mica and their products; parasols and walking sticks; whips, harness and saddlery.
Class 18	Leather imitations of leather, and articles made from these materials and not included in other classes; skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Class 19	Building materials, natural and artificial stone, cement, lime, mortar, plaster and gravel; pipes of earthenware or cement; road making materials, asphalt, pitch and bitumen; portable buildings; stone monuments; chimney pots.
Class 20	Furniture, mirrors, picture frames; articles (not included in other classes) of wood, cork, reeds, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum, celluloid, substitutes for all these materials, or of plastics.
Class 21	Small domestic utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (other than paint brushes); brush-making materials; instruments and material for cleaning purposes; steel wool; unworked or semi-worked glass (excluding glass used in buildings); glassware, porcelain and earthenware not included in other classes.
Class 22	Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks; padding and stuffing materials (hairs, kapok, feathers, seaweed, etc.); raw fibrous textile materials.
Class 23	Yarns; threads.
Class 24	Tissues (piece goods); bed and table covers; textile articles not included in other classes.
Class 25	Clothing, including boots, shoes and slippers.
Class 26	Lace and embroidery, ribbons and braid; buttons, press buttons, hooks and eyes; pins and needles; artificial flowers.
Class 27	Carpets, rugs, mats and matting; linoleums and other materials for covering floors; wall hanging (non-textile).
Class 28	Games and playthings; gymnastic and sporting articles (except clothing); ornaments and decorations for Christmas trees.
Class 29	Meat, fish poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and other dairy products; edible oils and fats; preserves, pickles.
Class 30	Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour, and preparations made from cereals, bread, biscuits, cakes, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard, pepper, vinegar, sauces, spices; ice.
Class 31	Agricultural, horticultural and forestry products and grains not included in other classes; living animals, fresh fruits and vegetables; seeds; live plants and flowers; foodstuffs for animals, malt.
Class 32	Beer, ale and porter; mineral and aerated waters and other non-alcoholic drinks; syrups and other preparations for making beverages.
Class 33	Wines, spirits and liqueurs.
Class 34	Tobacco, raw or manufactured; smokers' articles; matches.
CLASSES 35 - 42: SERVICES
Class 35	Advertising and business (e.g. accounting, advertising, auction sales, auditing of accounts, bookkeeping, burglar alarm services, business consultants, business management, copying of documents, decoration, directories, duplicating, copying of material for publicity, employment agency, fire alarm service, housing agents, labour exchange, management of commercial or industrial enterprises, patent offices, printed matter (commercial), publicity agents, radio (commercial), real estate agents & brokers, typing agencies.)
Class 36	Insurance and financial (e.g. agents and brokers for bonds & other securities, assurance, banking brokers (insurance), building societies, debt recovering agencies, estate agents, financing, fire insurance, insurance, insurance agents, insurance brokers, investment, lotteries, pawnbroking, rents (for flats, etc.), issuing of travellers' cheques.)
Class 37	Construction and repair (e.g. construction and/or installation and/or repair and/or maintenance) of air conditioning units, buildings, business & office machinery & equipment, cars, clothing, electric apparatus, heating, houses, irrigation systems, machinery, motor cars, naval shipbuilding, office & business machines, photographic apparatus, tyres (vulcanization), vehicles, watches; also window cleaning; cleaning of buildings; dry cleaning (chemical cleaning); garage service; motor car washes; plumbing; restoration; wallpaper hanging; weed killing; washing.)
Class 38	Communication (e.g. broadcasting, information offices, news agencies, delivering of post, radio programmes.)
Class 39	Transportation and storage (e.g. air transport, car hire, car transport, diving service, forwarding agents, furniture removal, furniture upholstering, transport of goods, hire of motor cars, newspaper delivery, parcel delivery, hiring of parking places, passenger transport, railway transport, tourist agency, transporting services, travel agents, warehouses, water supplying.)
Class 40	Material treatment (e.g. dyeing of textiles, metal plating, photograph developing, treating of textiles, wood working.)
Class 41	Education and entertainment (e.g. amusement centres, animal training, cinemas, correspondence courses, day-nurseries, delivery of & subscriptions for magazines & newspapers, education, entertainment, film hire (cinema films or video films), film studios, subscription for newspapers, orchestras, publication of books & magazines, radio or television entertainment, recreations services, theatres, universities, video film hire.)
Class 42	Miscellaneous (e.g. accommodation services (for hotels & boarding houses), animal breeding (including fur-skinned animals), architecture, interior architecture, attorneys, beauty salons, boarding houses, cafes, camping services, catering, chemical research, chemists, chiropractors, clinics, hire of clothing, computer programming, consulting engineer, dentistry, detective agencies, hire of electric apparatus, engineering work (surveying), funerals, garden designing, gardening, geological surveys, hairdressing (ladies' or gentlemen's), health institutions, health resorts, hospitals, hotel management, hotels, industrial designs, interpreting services, legal services, hire of machinery, magazine publication, marriage bureau, material testing, massage rooms, supplying of meals, medical doctors, medical specialists, night watchmen's agency, nurseries for plants, opticians, photography, physicians, professional consultation (not of business), restaurants, shops, stores, supermarkets, translation services.)
*Restructuring of Class 42 and Additional Service Class Headings: The WIPO has revised the Nice Classification (8 th edition), adding three service classes (43, 44, 45) and restructuring Class 42, retaining certain services, but having others re-categorized, as follows: Class 42 - Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services; Class 43 - Services for providing food and drink; temporary accommodation; Class 44 - Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; and Class 45 - Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals.
Note: Certain services have also been transferred from the above Class 42 classification to other service classes, including, for example, rental of vending services to Class 35, offset printing to Class 40 and photography to Class 41 etc. Some jurisdictions, including currently India , have not implemented the above restructuring of Class 42 including the creation of Classes 43 to 45.