A Trademark is mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. It may also include shape of goods, their packing and combination of colors.

In the commercial world, trademarks carry a great amount of importance and value. The most essential for a brand is the trademark through which the brand is projected. That brings the importance in creating and protecting a trademark for any organization, irrespective of its size. With the increase in globalization and introduction of foreign brands in India, there is an increasing need for international protection of brands and trademarks.

The Trademarks Act, 1999 governs legal aspects of trademarks and brand protection in India. The Trademarks Act, 1999 came into force on September 15^th 2003. The Trademarks and Merchandise Act, 1958 was repealed on the same date.

The Trademarks Act, 1999 is legislated keeping in mind the transformation in international trading and commercial practices, increased globalization, foreign investment in India and introduction of foreign brands in the Indian Market. The promulgation of the new legislation encourages the licensing and franchising business model resulting in increased commercial exploitation of trademarks. The new trademarks act is in compliance with the TRIPS agreement and is in par with international standards.

A mark, symbol, shape of good, packaging of good and even combination of colors associated with a business which are capable of distinguishing the product or service of one person from another can be registered as trademark in India.  

Classification

In India goods and services are classified according to international classification of goods and services (Class 1-34 for Goods and Class 34-45 for Services). Service marks are also made registerable in India with the introduction of the Trademarks Act, 1999. One of the main features of the new act is that it provides for filing of single application for registration of goods and services in more than one class.

Classification of Goods and Services found here.

 The present act also provides for registration of:

• Collective marks

Collective Marks distinguishes the goods and services of members of an association of persons who are the proprietors of such marks from those of others.

• Certification Trademarks

They are those marks, which are certified by the proprietor of the mark in respect of origin, material, accuracy, quality, performance of goods etc.

Penal Provision

 The Trademarks Act similar to the Copyright Act also envisages penal provisions under Chapter XII.

Registration of Trademarks

Registration of trademark is not a statutory requirement under the Trademarks Act, 1999. However, registration of trademark offers unbridled pack of advantages for any commercial enterprises. The advantages may split under the heads of increased protection for businesses and various options for commercial exploitation of the trademarks.

Brand protection is of great significance for any enterprise, which is having multiple markets and is on the verge of expansion. Nothing would survive for a business when it’s goodwill in the name is not being guarded selfishly. The loss of the name of the business might amount to collapse of the organization itself.

Domain Name and Trademark registration

A registered trademark enjoys advantage over unregistered trademark in domain name disputes in arbitration under UDRP (Uniform Dispute Resolution Policy). Where an organization (or person) wishes to exhibit his right over a particular domain name, he would be required to demonstrate his rights over the trademark in question. Where the trademark has been registered, it shall prima-facie mean that the person owning it has rights over it. Whereas, in case of an unregistered trademark, the person claiming rights over it has to first prove he has been putting to trademark to use; and that he has gained rights over trademark due to his extensive use. The country where the trademark has been registered shall not be determining issue for the purpose of UDRP (Uniform Dispute Resolution Policy). Read more...

Choosing of a trademark

Generally trademarks are deemed to be good if they are simple and easy to remember and pronounce. By and large geographical names will not be registered because no individual can claim a monopoly over it. However this is not the case always. It differs from case to case depending upon the circumstances. Mandatorily a trademark must be distinctive in order to register able. In many case distinctiveness is acquired through use. On the safer side a search should be conducted at the trademark office with regard to existing trademarks to determine if such similar mark is used in the market.

Generally the following trademarks shall be register-able:

• Monograms
• Personal names, surnames of the applicant
• Sound marks when represented with conventional notation
• Marks consisting three dimensional sign
• Combinations of colours with a word etc.

The act states that a trademark, registered or unregistered, can be assigned or transmitted with or without the goodwill of the business.

Grounds of Refusal:

The trademark act prohibits registration of certain kinds of marks. Such marks may be refused absolutely or relatively.

Absolute Grounds:

A trademark shall absolutely not be registerable if:

• It lacks any distinctive character
• It consists of marks which have become customary in practice
• It is of such a nature to deceive or cause confusion among the public
• It hurts the religious sentiments of any class of people
• It contains any obscene matter
• It is barred under the Emblems and Names ( Prevention of Improper use) Act, 1950

Shape Trademarks are also prohibited where such shape is necessary to perform the designated function or where the shape results from the nature of goods itself or where the shape gives substantial value to the goods.

Relative Grounds

Except in case of honest concurrent use a trademark shall relatively not be registerable if:

• It is identical or similar with any earlier trademark or the goods and services covered by it and where such similarity or identity is likely to cause confusion among the public.
• It is similar to a well known trademark even though the goods and services covered by the trademark in question are different. (A trademark shall be ascertained as well known or not taking into account its recognition among public, its duration, geographical area etc.)
• It contravenes any law in particular the law of passing off or the law of copyright.

Similarly names of chemical elements and those names declared by the WHO as International Non-Proprietary names shall not be registered.

Where an application is for the mark which portrays a connection with a living or a dead person whose death takes place 20 years prior to the filing of the application shall not be registerable unless the consent of such living person or the legal representative, as the case may be, is furnished.

Rectification and cancellation

Any person aggrieved may file an application in the registry for removal of the trademark in the form of TM-26accompanied by a fee of Rs.

The following are the grounds on which a trademark can be cancelled:

• No bonafide intention to use the mark
• When the mark is devoid of any distinctive character at the time of its registration
• When there is non-use of the mark for a continuous period of 5 years.
• When it is deceptively similar to an existing trademark.

After receipt of the application the registrar serves a notice to the registered proprietor asking him to file a counter statement. Then the registrar gives the parties an opportunity of being heard and decides the case on merits.

An appeal from the registrar shall lie in the Intellectual Property Appellate Board.

Deceptively Similar

The term deceptively similar has not been defined in the act. However a trademark is deemed deceptively similar when it resembles another mark in such a manner to deceive or cause confusion among a section of the public.

While ascertaining whether a trademark is deceptively similar or not factors such as its nature, its extent of similarity, its visual or phonetic similarity must be taken into consideration.

For example filing an application for registration of the mark RIBOK (deceptively similar to REEBOK) or POMA (deceptively similar to PUMA).