Did you know that?
Your trade mark can be a valuable business asset. Trade marks have come to represent not only actual goods and services, but also the reputation of the business.
Some companies spend millions nurturing their corporate identities.
Companies like Michelin, Levi Strauss and Intel consider their trade marks their most valuable assets? The President of Coca-Cola stated that the corporation's buildings, machinery, equipment, vehicles and physical property could all be destroyed, but that the business would have no trouble getting back on its feet, provided the trade mark survived.
What is a trademark?
Trademarks are concerned with brand identity - they can be distinctive words, marks or other features, the purpose of which is to establish, in the mind of the customer, a link between the particular products or services and the company.
A trade mark is a sign by which a business identifies its products or services and distinguishes them from those supplied by competitors.
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.
What can be registered as Trademarks?
Any sign capable of being represented graphically. Thus marks may be one or a combination of words (including slogans), letters, and numerals. They may consist of drawings, symbols, three-dimensional signs such as shape and packaging of goods, audible signs such as music or vocal sounds, fragrances, or colours. Generally, trade marks are protected for specific classes of products and services for periods of 10 years, renewable indefinitely.
What are the requirements for registering a trade mark?
- Your trade mark must be distinctive meaning that a customer seeing the mark can immediately link the goods or services to a particular manufacturer/ supplier. Thus commonly used words are generally not acceptable except in a slogan.
- Your trade mark must not be deceptive. It must not be such that it would deceive the public as to the geographical origin or to the nature, quality, or other characteristics of the product or service.
- Your trade mark must not be descriptive. It cannot describe the product or service.
- Your trade mark must not belong to the exclusions provided by the law e.g. photographs, drawings or names of people or places unless they can be shown to be particularly distinctive.
- Your trade mark must be in conformity with public order and morality.
Remember that registration of a company name, a business name or a domain
name is not the same as registering a trade mark. The requirements are different.
In common law countries it is possible to acquire some legal rights to a mark simply through usage. A trade mark, which is well known benefits from some kind of protection even if it is not registered. This protection does not only refer to similar products or services, but also dissimilar ones. To benefit from that kind of protection, you have to prove the reputation of your trade mark. Good practice, however, requires that a trade mark is registered which provides you with a better and stronger protection.
How to obtain trademarks?
You must file an application for registration with the appropriate national or regional trade mark office. The application must contain a clear reproduction of the mark filed for registration, including any colours, forms, or three-dimensional features. The application must also contain a list of goods or services to which the mark would apply. Upon receipt of the application in the national office a filing date will be assigned and the application will then be examined as to its registrability.
The right to a trade mark may be obtained in two ways:
By Use of Trademark
The right to a mark belongs to whoever uses a specific sign for the first time in an effective way to designate products or services on the market.
Some legislation includes the protection of non-registered marks if they have certain popularity in the market and are recognized by consumers.
By Registration of Trademark
The creation of the exclusive right to a mark is obtained by registering the sign at a Mark Office.
Through registration, the holder obtains the right to exclusive use of the mark, as well as the right to forbid third parties to use identical or similar signs.
The protection granted by the registration of a mark is broader than the protection conferred by its simple use. Hence, the enforcement options associated with a trade mark are more effective because it is easier to prove who the holder is
Using your Trademark
Registrations can be cancelled if the holder is not using a mark. It is important therefore to indicate on goods or services that the mark is a registered one. The symbols R or TM are normally used in association with the mark to show this. You should contact your national office which handles applications for trade mark registrations in order to obtain an application form and details of the precise requirements, procedures and fees applicable in your country.
Trademark Registration 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.
Trademark Registration in Europe: European Community trademark
If you do business in Europe then you should consider applying to the Office for Harmonisation in the Internal Market (OHIM), for the registration of a Community Trade Mark. Community Trade Marks are legally enforceable and enjoy uniform protection throughout the territory of the European Union. Applications should be made on the form drawn up by OHIM. The single filing may be made at the OHIM, located in Alicante, Spain; by post, courier or fax, and can also be filed at the national trade mark office. OHIM is responsible for examining the applications.
International Trademark Registration by WIPO
If you are the owner of a trade mark and wish to consider obtaining trade mark protection internationally, the Madrid system of international registration of trade marks gives you the possibility to have your trade mark protected in several countries by simply filing one application with a single Office, in one language, with one set of fees in one currency (Swiss francs). An international registration produces the same effects as an application for registration of the mark made in each of the countries designated by the applicant. To apply for a registration of an international trade mark it is necessary to be owner of a registered trade mark or to have filed a request for an identical national trade mark. For further information concerning the Madrid System, consult the WIPO website.
How Parker & Parker help you for your Trademark Registration in India and worldwide?
Parker & Parker Company has one of the largest trademark prosecution and enforcement programs in the India. Our trademark agents and attorneys represent a complete spectrum of clients in trademark matters, ranging from billion dollar corporations to start-up companies. We represent a wide range of clients, from those in high technology and biotech industries to restaurants, cosmetic companies, bicycle companies and retail establishments, to name a few. Our attorneys work with clients to select the most appropriate and strongest trademarks, trade names, and service marks. Our services include Indian and foreign registration of trademarks and service marks, all appropriate searches to determine priority and availability of these marks, and negotiation and drafting of licenses, assignments, and other agreements relating to these marks. If disputes arise in the India, our skilled trial attorneys represent clients in resolutions and all phases of litigation.
We have valued relationships with trademark firms and agents around the world selected for their proven ability to offer the most efficient and high-quality services. Our colleagues can be quickly mobilized to make emergency filings or address problems of infringement and piracy in virtually every jurisdiction. As a result, our trademark presence extends around the globe.
Parker & Parker Company attorneys work collaboratively with their clients in the mark selection process. Once marks have been identified for protection, Parker & Parker Company helps companies develop a coherent branding strategy through drafting of trademark usage guidelines. Finally, Parker & Parker Company offers educational seminars to its clients so that those selecting and protecting marks within the company are fully advised of the laws and strategies in trademark selection and protection.
Due to the intertwined connection between trademarks and domain names, Parker & Parker Company attorneys have also developed a breadth of expertise in domain name analysis. Our attorneys have dealt with infringement and assignment issues affecting domain names worldwide resulting in a wealth of experience in dealing with the ever-changing rules surrounding this field. The Parker & Parker Company trademark program is organized into client teams consisting of an attorney and paralegal. Each devote 100% of their time to trademark prosecution. The result is that attorneys focus on the high level strategic issues facing the client and the highly-trained trademark paralegals perform most of the routine prosecutorial work. This arrangement is very efficient and cost-effective for the Parker & Parker Company’s client. It allows attorneys to focus on the more significant issues facing the client, and to work with the client in developing a coherent global strategy. This depth of experience also ensures an attorney or paralegal is always available to the client.
Our attorneys and agents and paralegals actively monitor the global trends in trademark law and keep our clients informed with periodic updates. Trademark laws worldwide are ever-changing. Parker & Parker Company has developed strong working relationships with its foreign associates to ensure that international registrations, negotiations, and litigation are handled at the most competent, cost-effective level possible for our clients.
Parker & Parker Company's enforcement efforts include the use of watch services which provide comprehensive information on either a national or worldwide basis regarding potentially conflicting trademark applications. Also, as part of our ongoing trademark maintenance, we routinely review the Patent and Trademark Office Official Gazette for trademarks that may potentially conflict with our clients' marks. We also use private investigators to investigate potentially infringing trademarks and conduct periodic searches of the Internet for third parties who may be improperly using clients' trademarks. We also engage outside search agencies to conduct Internet searches for Web sites which contain infringing domain names or Web site content.
Upon discovery of infringing trademarks in the India or abroad, we provide our clients with an analysis of the infringement situation and options for taking action against such infringement. Such efforts may include research of the infringing third party, investigation into the scope and strength of their trademark rights, if any, and sending cease and desist letters to the infringing party outlining the client's trademark rights, the infringement situation and settlement options. We always seek to negotiate cost-effective resolutions that adequately protect the client's trademark interests while reducing, as much as possible, the level of consumer confusion which would result from the third party's use of a client's trademark. This may entail negotiation of a co-existence agreement between the respective parties based on geographic areas or consumer markets, a license allowing the third party to use the client's trademark, or complete cessation of use by the third party.
If we are unable to negotiate an amicable settlement of a trademark dispute, we can pursue a number of alternative avenues to protect our client's trademark rights, including initiation of opposition or cancellation proceedings against trademark applications and registrations, filing complaints for trademark infringement, or filing domain name disputes with ICANN.
If you require more information, please contact us, we are available any time.