Tuesday, September 26, 2017
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Trademark FAQs - India - USA - Europe - International
  1. What is a trademark?
    A trademark can be any word (PEPSI), name (TATA), symbol or device (Microsoft), slogan (Yeh Pyas Hai Badi & Thanda Matlab Coca Cola), package design (Coca-Cola bottle) or combination of these that serves to identify and distinguishes a specific product from others in the market place or in trade. Even a sound (Britania chimes) color combination, smell or hologram can be a trademark under some circumstances. The term trademark is often used interchangeably to identify a trademark or service mark.

    A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.

    Trademarks are words, names, symbols, or devices used by manufacturers of goods to identify their goods, and to distinguish their goods from goods manufactured and sold by others. A person who sells his goods under a particulate trademark acquires a sort of limited exclusive right to use the mark in relation those goods. Trademark law protects this right of the owner of a mark to use marks that distinguish his goods from others and to prevent others from using marks that are likely to cause confusion. Trademark law protects the goodwill of a business and also protects the consumers' ability to accurately ascertain the source of goods and services.

    A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

    The following type of marks can be registered as Trademark.
    • Word marks including letters, numbers or combination of letters, numbers and words;
    • Figurative marks, whether or not including words;
    • Figurative marks in colour;
    • Colours or combinations of colours;
    • Three-dimensional marks;
    • Sound marks;

    The application must contain a graphic representation of the mark.

  2. What is a Service mark?
    A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. A service mark is essentially the same thing as a trademark, only a service mark is used in the sale of services, whereas trademarks are used in the sale of goods. It appears to be common usage to refer to service marks as either trademarks or service marks. However, the reverse is not true; and you cannot refer to a mark affixed to goods as a service mark. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.

  3. What is a Collective mark?
    A collective mark is a sign used to distinguish goods or services produced or provided by members of an association or group of traders. The association or group generally establishes a set of criteria for using the collective mark and permits others who are members of the association or the group to use the mark if they comply with those standards.

  4. What is a Certification mark?
    A certification mark is a sign used to distinguish goods or services that comply with a set of standards defined by the owner of the certification mark (such as material, mode of manufacture and quality). They may be used by anyone whose goods or services meet these established standards.

  5. What is a Sub-brand?
    A branded product may sometime seek to transfer its product value with appropriate modification to different product. For example. Coco-cola has a sub-brand. DIET-Coke.

  6. What is House Mark?
    Some Trade Marks are called House Mark because they serve to link products originating from a firm/company in the mind of consumers with the retail outlet. This is fairly common in pharmaceutical trade. Some examples of house mark would be RELIANCE, RANBAXY, ALEMBIC, PFIZER, DABUR, VAIDHNATH and TATA.

  7. What is a well known trade mark?
    Certain types of trade mark are considered so well known with worldwide reputation that it is protectable in appropriate court of law of WTO member countries on the strength of its trans-border reputation. The trade marks Act, 1999 lays down some criteria to determine a trade mark is well known. TRIPS also mandate protection of well known marks. Some possible examples of well known Indian trademarks are PEPSI, COCA COLA, APPLE, TATA, NIRMA etc.

  8. Is registration of a trademark compulsory?
    No, registration of a trade mark is not compulsory .however, without registration the owner of a trademark cannot bring an action for infringement to protect his mark id it is used or copied by others. Suing for infringement of a registered trademark is much simpler than launching a common law action for passing to protect an unregistered trademark since the owner of a registered can base his case simply upon the fact that his mark has been registered.

  9. Which kind of marks and signs may be registered as Trademark ?
    A Trademark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

    Therefore, signs which may be registered as a trade mark include the following:
    • Word marks including letters, numbers or combination of letters, numbers and words;
    • Figurative marks, whether or not including words;
    • Figurative marks in colour;
    • Colours or combinations of colours;
    • Three-dimensional marks;
    • Sound marks;

    The application must contain a graphic representation of the mark.

  10. What kind of marks cannot be registered?
    The following marks cannot be registered:
    • marks that describe value, quantity, quality, or intended purpose of the goods or services;
    • marks that are deceptive;
    • marks that are contrary to public order or morality;
    • marks that consist of armorial bearings, flags and other emblems or official signs of States or international intergovernmental organizations;
    • Marks of such a nature as to infringe rights acquired by third parties in the country where protection is claimed (for example: marks that are identical or similar to earlier marks for identical or similar goods or services; or marks that are identical or similar to well-known marks).

  11. Are all trades marks registrable?
    A trade mark that capable of distinguishing the goods or services of one manufactures or trader From another cannot registered also, a mark shall not be registered if it deceives the public or causes confusion or likely to hurt religious susceptibilities or contains scandalous or obscene matter some name and symbols are not be used for commercial purpose under the name and emblem for commercial use, act -1950. Some marks cannot be acquired for distinctiveness like super, good, better, best, change, surname etc, like generic names. Further, a trade mark conflicting with a prior registered or pending mark or deceptively similar mark can come in the way of registration , however, this objection may be overcome with the consent of notification under section 23(1) of the trade marks act .1999 the certain names , device or logo for use as a trade mark.

  12. Who may file trademark application?
    Only the owner of the trademark may file an application for its registration. An application filed by a person who is not the owner of the mark will be declared void. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.

  13. Who can apply for a trademark registration?
    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.

  14. Is it advisable to conduct a trademark search before filing an application?
    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.

  15. What is the role of the trade mark search?
    Conducting a search is crucial when preparing trade mark applications in order to avoid filing trade marks that are already registered or applied for or trade marks that would be similar to any existing ones. Trade mark databases are available on most national or regional trade mark offices' web sites, including the WIPO. The proper search depends on the territory where the protection is sought (proper database needs to be chosen), classes of goods and services (they need to be chosen accurately) and the representation of the sign (its distinctiveness).

  16. How can I protect my mark?
    At the national/regional level, trademark protection can be obtained through registration, by filing the appropriate application form with the national or regional trademark office and paying the required fees.
    At the international level (for protection abroad), you have two options: either you may file a trademark application with the trademark office of each country in which you are seeking protection, or you can use the Madrid system and European Community Trademark System.

  17. Why protect your trade mark?
    The trade mark of a product or service can be synonymous with the branding and image of a company and can become an asset with monetary value that could increase. If you do not apply for protection others may benefit from your investments. The only way of obtaining the full right over a trade mark is by registering it.

  18. Why register a trademark?
    The registration of a trademark give exclusive rights to use the trademark in relation to the goods or services in respect of which the trademark is registered and it offers better legal protection for action for infringement

  19. Can sounds and smells be considered as marks too?
    As long as the sound or the smell serves to distinguish the goods or services of one enterprise from those of others, some countries may permit the sound or smell to be registered as a mark.

  20. What do the symbols ® and TM and SM mean?

    The symbols ® and TMand SM are common symbols associated with trademarks, although their use is not a requirement and generally provides no special legal protection. The ® symbol is used once the trademark has been registered. The TM symbol denotes that a given sign is used by the holder as a trademark and applied for the registration. The symbol SM is used for Service mark.

  21. What are the 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 others misuse the trademark 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.

  22. What is the duration of a trademark registration?
    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.

  23. What are the benefits of trademark registration in India
    • Constructive notice of ownership of the Trademark
    • TM and ® is Prestige of your Brand and your Company
    • Its ownership and get exclusive rights over your trademark.
    • You can sale your Trademark TM and ® and/or give license to other company to use your Trademark and get Royalty for the same.
    • The exclusive right to use the registered mark in commerce in connection with the goods or services specified in the registration
    • Establish the Goodwill and incontestability of rights in the registered mark
    • No one can make a copy of your trademark; if some one copy then you can take legal action against them and ask for damages.
    • Sue for counterfeiting of the registered mark and to obtain both civil and criminal penalties against counterfeiters
    • Similar advantages can be obtained from registering a trademark in most other countries of the world. In some countries, a registration is a requirement for any enforcement activities. Since the advantages necessarily vary from country to country.

  24. What is a multi class application?
    A multi class application is a single application for registration of a one trade marks made in different classes of goods or service. When registered, all the goods or services are recorded under a single trade marks number but fees to be paid for each class.

  25. Does registration in India give protection abroad or worldwide?
    No, It will to apply for registration separately in each of those countries where registration is required. but generally registration in the home country would strengthen applicants hand. The date of priority can be claimed in convention countries within 6 months.

  26. What is classification of goods or services?
    Every application for new trade mark has to be made in the appropriate class. There are in all 42 classes under which all goods or services fall. This is based on international classification of goods or services, (nice Classification). The abstract of classification of goods or services mentioned in schedule IV of trade mark rules 2002 is given at the end of this brochure. This serves as a short ready reckoned. In case of doubt enquiries may be made to the registry for correct classification. Filing an application in the wrong class may be refused. Hence its importance to file application in proper class

  27. What is the difference between a registered and an unregistered trademark?
    A registered trademark has been approved and entered on the Trademark Register held by any Trademark Office (National or Regional).

    An unregistered trademark may also be recognized through "common law" (in some countries) as the property of the owner.

  28. Is it necessary / compulsory to register a mark in order to protect it?
    No, it is not necessary or compulsory but In certain jurisdictions, it is. In others, you may acquire rights over a mark that you have used, but not registered. And that is take more time to prove that you are owner of marks, so registration give you rights and proof of owner of the trademark.

  29. What is the purpose and function of a trade mark?
    A trade mark it is shorthand description for the goods or services sold for easy identification of the origin or trade source of goods or services. The consumer can count a similarity of composition and consumer and quality of goods/services bearing the trade mark, it acts as an instrument of sales promotion and consumer information thus facilitating repeat orders. It helps manufactures to acquire new market, stimulates trade and helps to promote economic activity beyond national borders. Registration gives right to a presumptive evidence of the right of the registered proprietor
    To the exclusive use of the goods or services specified. The register of trade mark protects the public against deception and rival traders are given notice by the rights claimed in the registered mark.

  30. What right do registration of a mark confer?
    Once a trade mark is registered in respect of goods or services, it is prima facie proof of the legal ownership of the mark. The production of title of the registered mark would enable the registered proprietor to seek injection from appropriate court against pirates. Registration confers the exclusive right to take legal action against others who may infringe the registered trade mark in relation to similar goods or services. In some circumstances, infringement action can be initiated in respect of unrelated goods provided the registered trade mark has reputation in India and the use of the infringing mark is without due cause and unfair advantage of or is detrimental to the distinctive character or repute of the registered trade mark and well known marks.

  31. How is registration obtained in India?
    By filing application an application in the appropriate form with fee and registered office and company in one of the five office of the trade marks registry located at Ahmedabad, Mumbai ,Chennai , Delhi, Kolkata depending on the place where the applicant has his principal place of business and in case of foreign application and if the applicant does not carry on any business in India the application shall he failed in the registry within whose territorial limits the place mentioned in the address for service in India is situated. The applications are then numbered followed by data entry, scanning and codification of figurative marks in computer. The application is examined to ascertain whether the trade mark is capable of being respected graphically (that is in paper from) and also whether the trade mark is capable of distinguishing the goods or services and to check that it does not conflict with exiting registered or pending trademarks and its registration is not prohibited under other provisions of the act and an examination report is issued. If it is found to be acceptable then the marks applied for is published in the trade mark journal to allow any party to oppose its registration. If no opposition is filed or if the opposition is decided in favour of the applicant then, the mark is registered and a certificate of registration is issued in the name of applicant.

  32. Does a trade marks have to be in use before it is registered?
    No, It is possible to register a Trade Mark which is proposed to be used and intend to transfer to a company within six months under Section 46 of the Act.

  33. Is trademark registration necessary even when the mark has been in use for many years?
    In countries which have a legal system based on common law, “prior use” is generally sufficient for claiming rights over a given trademark in case of dispute. In civil law countries, however, this is usually not the case. Only trademark registration will provide legal certainty on exclusive rights to the use of the trademark regardless of how many years an enterprise has been using the name. Even in the first case, it is highly advisable to register a trademark, as registration will reinforce the position of the right holder in case of litigation.

  34. Does trademark protection apply to any and all types of goods and services
    No. You must indicate in the trademark application form the list of goods and/or services for which you are seeking protection.

  35. If I am exporting, do I have to register my mark in other countries as well
    Trademark protection is territorial, that is, your rights are confined to the country in which your mark was applied for and registered. Consequently, if you are in the export business, you should register your mark in the countries to which you are exporting.

  36. What is the difference when trademark is compared with Copyright, Patent and Geographical Indication?
    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.

  37. What forms of protection are available for trademarks?
    There are two forms of legal protection that are available for trademarks. Under the Trade and Merchandise Marks Act, 1958, the procedure for registration of trademarks is prescribed in order to afford protection for the same. The most effective trademark protection is obtained by filing a trademark registration application in the Registrar of Trademarks. Once the trademark is registered, infringement can be easily established. In case of unregistered marks and marks which are not registerable, the only form of protection is the common law remedy of passing off. The plaintiff would have to prove sufficient use of the mark so as to create valuable goodwill of the business connected with the goods bearing the mark.

  38. Do I need an attorney to file my application?
    No, although it may be advisable to employ an attorney who is familiar with trademark matters. An applicant must comply with all substantive and procedural requirements of the Trademark Act and the Trademark Rules of Practice even if he or she is not represented by an attorney.

  39. On what bases can a foreign applicant file an application for registration in India ?
    1. Proposed to be use and/or use in interstate commerce or commerce between the United States and a foreign country.
    2. Bona fide or good faith intention to use the mark in interstate commerce or commerce between the India and a foreign country.
    3. Ownership of an application filed in a foreign country (if within six months of the foreign filing date).
    4. Ownership of a foreign registration (with a copy).

  40. What is the procedure to be followed for the registration of a trademark?
    Any person/entity who claims to be the proprietor of a trademark can apply for registration. Before applying for registration, the applicant may apply for a report from the Registrar of Trademarks, as to whether the mark or one similar to it has already been registered or applied for. The applicant can also conduct private searches using the records maintained in the Registry. Thereafter, the application for registration should be filed in Form TM-1, under the Trade and Merchandise Marks Rules, 1959 ("Rules"). The Rules also prescribe the classes of goods with respect to which registration can be applied for (in the Fourth Schedule). If applications are made for registration of the mark in respect of more than one class of goods, then separate applications should be filed for each class. The application should be accompanied by the prescribed fee. After the application is received, the Registrar of Trademarks will examine the same and communicate any objections to the applicant. The objections will mainly be with regard to distinctiveness and similarity with already registered trademarks. The applicant can put forward his case in writing or at a hearing. If the submissions are accepted, the application will be advertised in the Trademarks Journal. In case any objections are received, the Registrar will conduct a hearing and give a decision regarding the same. If no objections are received, the Registrar will enter the mark in the Register of Trademarks and issue a certificate of registration to the applicant. The certificate of registration is valid.

  41. When applying for a Trade Marks check that you have included?
    • Name & address of the proprietor.
    • Name and address of the Agent, or the address for service.
    • A clear representation of the Trademark.
    • The goods and/or services the Trade Mark will be used, on and
    • The appropriate class/es
    • The different Registry offices are responsible for processing applications from the different states of India. Applicant should only lodge applications at the appropriate office as per jurisdiction.

  42. How necessary is to get professional help?
    As registration of Trade Mark is specialized area of work it may be necessary to employ the services of a Trade Mark agent or attorney. However, this is not compulsory and the applicant may correspond directly with the Trade Marks Registry and handle the matter. A list of registered Trade Marks agent would be providing on request.
    It is advisable that Trade Mark should be registrable and no same or similar mark for same or similar description of goods should not be on record. TM-54/TM-55

  43. What does constitute infringement of a trademark?
    A registered trademark is infringed if a person uses the same/deceptively similar mark in the course of trade, in respect to the same goods. The test for deceptive similarity is whether the defendant's use of a mark is likely to cause confusion, i.e., whether an appreciable number of reasonably prudent consumers are likely to be confused or deceived as to the source, affiliation or sponsorship of the parties and their goods and services. The plaintiff need not demonstrate actual confusion or intent to confuse. The 'likelihood of confusion' analysis encompasses an evaluation of a variety of interconnected market factors, relating to the likely expectation, perception and memory of consumers.

  44. What are remedies that the court may grant in an infringement suit?
    The relieves in a suit for infringement include: - Injunction, restraining the further use of the trademark; - Damages or an account of profits; and - An order for delivery of the infringing labels and marks for destruction. If the infringement committed was innocent only nominal damages will be awarded. However, criminal action is possible if fraudulent intention on the part of the infringer is proved.

  45. Where should I file an infringement suit?
    A suit for infringement of registered trademark must be filed in the District Court having jurisdiction or in the High Court that has original jurisdiction to try such suits. The jurisdiction and procedure are governed by the Civil Procedure Code. The period of limitation for filing the suit is three years from the date of infringement.

  46. What are the remedies available against 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.

  47. What are the common grounds for refusal of trademark registration?
    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.

  48. Is assignment of a trademark possible?
    The assignment/licensing of trademarks is restricted, because unrestricted licensing has been considered as trafficking in the mark which is against public interest. This is because, a trademark indicates the origin of the goods to the consumer and unrestricted licensing can lead to confusion and deception among the public as to the nature of the goods. According to the law, the assignment of a trademark should not result in the creation of concurrent exclusive rights in more than one person with respect to the use of the same/similar mark in respect of same/similar goods. Confusion or deception can be avoided by territorial limitation or limitation of the goods.

  49. What are assignments of trade marks?
    Assignments or transmission of the ownership of a trade mark occurs when.
    Ownership of a trade mark is passed from one party to another along with goodwill of the business or not.
    The registered proprietor of the trade mark is absorbed or merged into another entity trade marks to he assigned may be.
    Registered- assignment is recorded in the register
    Pending- assignment is recorded on the trade marks data base only.

  50. Can a trade mark be removed from the register because of it not being in use after registration?
    Yes, if a trademark , which has been registered and has not been used for a continuous period of five years and three months ,it can be removed on an application made in prescribed manner by filing request before Trademark Office in India.

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