The Government of India has amended the Trademark Rules, 2002. Listed below is a summary of the changes.
1. The Classification of Goods and Services (Fourth Schedule of the Trademark Rules stands amended now. Initially, there were 42 classes but now three additional classes i.e Class 43, 44 and 45 have been added, w.e.f May 20, 2010. The main object achieved by this amendment is that the Indian trademark classification is now in line with the NICE Classification of Goods and Services, which is followed by a majority of countries. The new classes read as under:
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;
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: Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.
However, this amendment requires that for all pending applications filed in class 42, for specification of goods that now comes under any of the class 43, 44 and 45, the applicant has to file an application with the prescribed fee of Rs 500/- for change of specification of the services to the new appropriate class. Where the specifications in the original application includes services now falling under class 43 to 45 and some services continue to fall in class 42, an application fee of Rs 2500/- per class is to be paid to convert the application into different appropriate classes along with a request with appropriate fee of Rs 500/-to amend the original application. The date of filing of all applications will remain the same as that of the original application. With respect to already registered marks in class 42 which now fall into other classes, an application with prescribed fee of Rs 1000/-has to be filed for change to the new appropriate class. Similarly, as in the case of pending application, if the registered marks needs to be split into different classes, registered proprietor needs to file a request with application fee of Rs 2500/- for each class. Renewals for marks which require re- classification will be done only after the necessary conversion of specification in the appropriate class has been adhered to. Until all the applications for services in class 42 are transferred to the amended class as appropriate, a combined public search and a combined request for official search should be made in both class 42 and the amended classes. Thus, this amendment will facilitate India's joining in Madrid protocol.
2. Earlier, if an applicant, after completion of all formalities of prosecution does not receive a certificate of registration, he had to apply for a duplicate copy on payment of additional fees. Now after the amendment the Registered Proprietor of a trademark can now obtain duplicate registration certificate without paying any official fee, if he proves that he did not receive the original certificate.
Monday, August 30, 2010
Sunday, December 13, 2009
Frequently Asked Questions on Trademark Filing in India
1. WHAT IS A TRADEMARK?
A trademark may me a word, logo, symbol, letter, numeral, design, colour, name written in a particular style, or any combination thereof that is capable of distinguishing the source of a product or a service from the others.
2. WHY IS IT IMPORTANT TO REGISTER A TRADEMARK?
The Registered Proprietor of a trade mark can stop other traders from unlawfully using their trade mark, and even take legal action for damages.
3. WHAT RIGHTS DOES A TRADEMARK GIVE?
The registration of a trade mark confers upon the owner the exclusive right to the use of the registered trade mark and indicate so by using the symbol (R) in relation to the goods or services in respect of which the mark is registered and seek the relief of infringement in appropriate courts in the country.
4. WHEN SHOULD I FILE A TRADEMARK?
You can file for a trademark at anytime. Many businesses find it is best to apply for a trademark as soon as they decide on the name of their product or service. Once registered, a trademark can be used to stop others from using your name or logo in commerce, so it is often wise to protect as soon as possible.
5. WHAT IS THE PROCESS FOR FILING A TRADEMARK?
The trademark filing process is simple compared to other intellectual property filings. You should use Form-1 and enter detailed information like the owner information, the mark, the address for service. You must also pay the fee of Rs. 2500/- per class by cash or Demand Draft in favour of “The Registrar of Trademarks”
6. WHO CAN FILE A TRADEMARK?
A person who claims to be the proprietor of the trademark can apply for the registration of its mark for goods as well services. A person may apply for registration of a trade mark to the Trademark office under whose jurisdiction the principal place of the business of the applicant in India falls.
7. WHAT CAN I LOSE IF I DON’T FILE A TRADEMARK?
o Someone could start a business competing to yours in a neighbouring area and use your business name.
o Someone can create a similar name to yours and steal the goodwill you have worked hard to build with your customers.
o You may not be able to expand your business to other territories or cities, if someone obtains trademark rights before you do.
o You may not be able to register and maintain the domain name that you want unless you file a trademark before the registrant of a particular domain.
o Someone can create similar websites, buy similar domain names, and create similar Ad online and in print for their business and take your customers.
8. WHAT IS THE GOVERNMENT FILING FEES FOR FILING A TRADEMARK APPLICATION?
The govt. fees is Rs. 2,500 per class of goods or services.
9. HOW LONG WILL MY TRADEMARK LAST IN INDIA?
Term of registration of a trademark is ten (10) years, which may be renewed for a further period of ten years on payment of prescribed renewal fees.
10. WHERE CAN I FILE MY TRADEMARK APPLICATION IN INDIA?
Jurisdictions for Filing trademark application in India:
For applicant residing in State of Maharashtra, Madhya Pradesh and Goa, a trademark application may be filed at the address below.
Trade Marks Registry, Mumbai (Head Office)
Intellectual Property Bhavan, Near Antop Hill Head Post Office,
S.M. Road , Antop Hill, Mumbai 400037
Tel: 022-2410 1144, 24101177, 24148251, 24112211, Fax: 24120808, 24132295
For applicant residing in the State of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Union Territory of Delhi and Chandigarh, the application may be filed at the Trademark Office address below:
Trade Marks Registry, Delhi, Intellectual Property Bhavan,
Plot NO.32, Section 14, Dwarka, Delhi, Tel. 011-28082915/ 16/17
For applicants residing in the State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andamar & Nicobar Island, the application may be filed at the address below:
Trade Marks Registry, Kolkata, CP-2, Sector V, 5th floor,
I.P.Bhavan, Salt Lake, Kolkata-700091
For applicants in the state of Gujarat and Rajasthan and Union Territory of Daman, Diu, Dadra and Nagar Haveli, a trademark application can be filed at the Trademark Office address below:
Trade Marks Registry, Ahmedabad, 15/27 National Chambers,
1st floor, Ashram road,Ahmedabad-380 009, Tel: 079-26580567
For applicants in the state of Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and Union Territory of Pondicherry and Lakshadweep Island., a trademark application can be filed at the Trademark Office address below:
Trade Marks Registry, Chennai, IP building,
GST Road, Guindy, Chennai-600032, Tele: 044-22502041, Fax : 044-22502042
12. WHAT ARE THE CLASSES OF GOODS OR SERVICES FOR FILING A TRADEMARK APPLICATION IN INDIA?
The classes of goods and services are as follows:
Class 1. Chemical used in industry, science, photography, agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesive used in industry
Class 2 . Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordents; raw natural resins; metals in foil and powder form for painters; decorators; printers and artists
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; lubricants; dust absorbing, wetting and binding compositions; fuels(including motor spirit) and illuminants; candles, wicks
Class 5 . Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparation for destroying vermin; fungicides, herbicides
Class 6. Common metals and their alloys; metal building materials;
transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores
Class 7 . Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs
Class 8 . Hand tools and implements (hand-operated); cutlery; side arms; razors
Class 9 . Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus
Class 10 . Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials
Class 11 . Apparatus 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; explosives; fire works
Class 14 . Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and other chronometric instruments
Class 15. Musical instruments
Class 16 . Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks
Class 17 . Rubber, gutta percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal
Class 18 . Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery
Class 19 . Building materials, (non-metallic), non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
Class 20 . Furniture, mirrors, picture frames; goods(not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl, meerschaum and substitutes for all these materials, or of plastics
Class 21 . Household or kitchen utensils and containers(not of precious metal or coated therewith); combs and sponges; brushes(except paints brushes); brush making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes
Class 22 . Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes) padding and stuffing materials(except of rubber or plastics); raw fibrous textile materials
Class 23 . Yarns and threads, for textile use
Class 24 . Textiles and textile goods, not included in other classes; bed and table covers.
Class 25 . Clothing, footwear, headgear
Class 26 . Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers
Class 27 . Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings(non-textile)
Class 28 . Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees
Class 29 . Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats
Class 30 . Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces, (condiments); spices; ice
Class 31. Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt
Class 32 . Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
Class 33 .Alcoholic beverages(except beers)
Class 34 . Tobacco, smokers' articles, matches
SERVICES
Class 35 .Advertising, business management, business administration, office functions.
Class 36 .Insurance, financial affairs; monetary affairs; real estate affairs.
Class 37 . Building construction; repair; installation services.
Class 38. Telecommunications.
Class 39. Transport; packaging and storage of goods; travel arrangement.
Class 40. Treatment of materials.
Class 41. Education; providing of training; entertainment; sporting and cultural activities.
Class 42. Providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services, legal services, scientific and industrial research; computer programming; services that cannot be classified in other classes.
A trademark may me a word, logo, symbol, letter, numeral, design, colour, name written in a particular style, or any combination thereof that is capable of distinguishing the source of a product or a service from the others.
2. WHY IS IT IMPORTANT TO REGISTER A TRADEMARK?
The Registered Proprietor of a trade mark can stop other traders from unlawfully using their trade mark, and even take legal action for damages.
3. WHAT RIGHTS DOES A TRADEMARK GIVE?
The registration of a trade mark confers upon the owner the exclusive right to the use of the registered trade mark and indicate so by using the symbol (R) in relation to the goods or services in respect of which the mark is registered and seek the relief of infringement in appropriate courts in the country.
4. WHEN SHOULD I FILE A TRADEMARK?
You can file for a trademark at anytime. Many businesses find it is best to apply for a trademark as soon as they decide on the name of their product or service. Once registered, a trademark can be used to stop others from using your name or logo in commerce, so it is often wise to protect as soon as possible.
5. WHAT IS THE PROCESS FOR FILING A TRADEMARK?
The trademark filing process is simple compared to other intellectual property filings. You should use Form-1 and enter detailed information like the owner information, the mark, the address for service. You must also pay the fee of Rs. 2500/- per class by cash or Demand Draft in favour of “The Registrar of Trademarks”
6. WHO CAN FILE A TRADEMARK?
A person who claims to be the proprietor of the trademark can apply for the registration of its mark for goods as well services. A person may apply for registration of a trade mark to the Trademark office under whose jurisdiction the principal place of the business of the applicant in India falls.
7. WHAT CAN I LOSE IF I DON’T FILE A TRADEMARK?
o Someone could start a business competing to yours in a neighbouring area and use your business name.
o Someone can create a similar name to yours and steal the goodwill you have worked hard to build with your customers.
o You may not be able to expand your business to other territories or cities, if someone obtains trademark rights before you do.
o You may not be able to register and maintain the domain name that you want unless you file a trademark before the registrant of a particular domain.
o Someone can create similar websites, buy similar domain names, and create similar Ad online and in print for their business and take your customers.
8. WHAT IS THE GOVERNMENT FILING FEES FOR FILING A TRADEMARK APPLICATION?
The govt. fees is Rs. 2,500 per class of goods or services.
9. HOW LONG WILL MY TRADEMARK LAST IN INDIA?
Term of registration of a trademark is ten (10) years, which may be renewed for a further period of ten years on payment of prescribed renewal fees.
10. WHERE CAN I FILE MY TRADEMARK APPLICATION IN INDIA?
Jurisdictions for Filing trademark application in India:
For applicant residing in State of Maharashtra, Madhya Pradesh and Goa, a trademark application may be filed at the address below.
Trade Marks Registry, Mumbai (Head Office)
Intellectual Property Bhavan, Near Antop Hill Head Post Office,
S.M. Road , Antop Hill, Mumbai 400037
Tel: 022-2410 1144, 24101177, 24148251, 24112211, Fax: 24120808, 24132295
For applicant residing in the State of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Union Territory of Delhi and Chandigarh, the application may be filed at the Trademark Office address below:
Trade Marks Registry, Delhi, Intellectual Property Bhavan,
Plot NO.32, Section 14, Dwarka, Delhi, Tel. 011-28082915/ 16/17
For applicants residing in the State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim , Tripura and Union Territory of Nagaland, Andamar & Nicobar Island, the application may be filed at the address below:
Trade Marks Registry, Kolkata, CP-2, Sector V, 5th floor,
I.P.Bhavan, Salt Lake, Kolkata-700091
For applicants in the state of Gujarat and Rajasthan and Union Territory of Daman, Diu, Dadra and Nagar Haveli, a trademark application can be filed at the Trademark Office address below:
Trade Marks Registry, Ahmedabad, 15/27 National Chambers,
1st floor, Ashram road,Ahmedabad-380 009, Tel: 079-26580567
For applicants in the state of Andhra Pradesh, Kerala, Tamil Nadu, Karnataka and Union Territory of Pondicherry and Lakshadweep Island., a trademark application can be filed at the Trademark Office address below:
Trade Marks Registry, Chennai, IP building,
GST Road, Guindy, Chennai-600032, Tele: 044-22502041, Fax : 044-22502042
12. WHAT ARE THE CLASSES OF GOODS OR SERVICES FOR FILING A TRADEMARK APPLICATION IN INDIA?
The classes of goods and services are as follows:
Class 1. Chemical used in industry, science, photography, agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesive used in industry
Class 2 . Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordents; raw natural resins; metals in foil and powder form for painters; decorators; printers and artists
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; lubricants; dust absorbing, wetting and binding compositions; fuels(including motor spirit) and illuminants; candles, wicks
Class 5 . Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparation for destroying vermin; fungicides, herbicides
Class 6. Common metals and their alloys; metal building materials;
transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores
Class 7 . Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs
Class 8 . Hand tools and implements (hand-operated); cutlery; side arms; razors
Class 9 . Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus
Class 10 . Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials
Class 11 . Apparatus 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; explosives; fire works
Class 14 . Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and other chronometric instruments
Class 15. Musical instruments
Class 16 . Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks
Class 17 . Rubber, gutta percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal
Class 18 . Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery
Class 19 . Building materials, (non-metallic), non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
Class 20 . Furniture, mirrors, picture frames; goods(not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl, meerschaum and substitutes for all these materials, or of plastics
Class 21 . Household or kitchen utensils and containers(not of precious metal or coated therewith); combs and sponges; brushes(except paints brushes); brush making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes
Class 22 . Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes) padding and stuffing materials(except of rubber or plastics); raw fibrous textile materials
Class 23 . Yarns and threads, for textile use
Class 24 . Textiles and textile goods, not included in other classes; bed and table covers.
Class 25 . Clothing, footwear, headgear
Class 26 . Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers
Class 27 . Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings(non-textile)
Class 28 . Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees
Class 29 . Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats
Class 30 . Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces, (condiments); spices; ice
Class 31. Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt
Class 32 . Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
Class 33 .Alcoholic beverages(except beers)
Class 34 . Tobacco, smokers' articles, matches
SERVICES
Class 35 .Advertising, business management, business administration, office functions.
Class 36 .Insurance, financial affairs; monetary affairs; real estate affairs.
Class 37 . Building construction; repair; installation services.
Class 38. Telecommunications.
Class 39. Transport; packaging and storage of goods; travel arrangement.
Class 40. Treatment of materials.
Class 41. Education; providing of training; entertainment; sporting and cultural activities.
Class 42. Providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services, legal services, scientific and industrial research; computer programming; services that cannot be classified in other classes.
Sunday, October 11, 2009
The Power of Trademarks
What is a Trademark?
What if someone starts using your business name? Can you stop him from using your logo or product name? Can you claim compensation for the loss to your business because of a misuse of your brand name? The good news is you can. The law of TRADEMARKS in India protects business owners, who register their names under the Trademarks Act, 1999, against possible misuse of their trademarks by third parties. No matter, which business you are into, you must protect your company name, product name, logos and other unique identifying features that differentiate your business from that of your competitors.
What is a trademark, you will ask? Most of you may not be familiar with the term ‘trademark’, but I can guarantee you’re familiar with the actual trademarks of different companies, like Nirma’s dancing girl or the red Lifebuoy sign on their soaps.
A trademark is simply a name or a logo used to distinguish the goods or services offered by one company, from those offered by another. Take for example, Coca Cola and Pepsi. Just by looking at the bottle it would be impossible to tell that the bottle was filled with Coca Cola and not Pepsi, had it not been for the distinctive RED ‘Coca Cola’ sign. A trademark is thus the name or a symbol associated with a particular product through which the consumer identifies the source of the product.
Why are Trademarks so important?
It is particularly important to protect your logo or brand name when consumers start identifying your company through it. If your logo is not protected, then there is nothing to stop some other person from copying your logo and duping consumers into thinking they are buying your products. This person is, in essence, riding on your success to sell his own product; something that no company would want. The easy solution to this is to get your logo or brand name registered as a trademark under Indian law.
It’s easy enough to come up with a trademark. It could consist of words, designs, letters, slogans, symbols, or even a sound. Remember the Britannia ting, ting, ta-ting? You might be in the dining room eating dinner when this ad comes on the bedroom TV, and you’ll still know that the ad was for Britannia, without having to actually see the ad. What about the Microsoft Windows sound? The next time you boot your computer listen carefully to the tune played when Microsoft Windows opens. These sounds could very well be used as trademarks. Who knows, in the future maybe even smells will be used as trademarks! The only thing you have to make sure while coming up with your own trademark is that it is distinctive and does not resemble the trademark of any other company in such a way as to confuse consumers between the two.
A common fault made by most people is using descriptive names as trademarks. People tend to think that by using a descriptive name as their trademark it will be easier to remember or to connect it with their products. The law, on the other hand, feels very differently about this. One of the requirements of a trademark is that it must be distinctive. When a trademark is descriptive, it is not distinctive. The trademark should have no direct reference to the quality or character of goods. A trademark is said to be descriptive if it describes the nature of identity of the goods or services for which it is used. Take for example Fair & Lovely. Using Fair & Lovely as a product name to launch a cream that is suppose to make you fair and lovely is hardly distinctive. It is in fact too descriptive to be a good trademark. On the other hand, brand names like Cinthol for a soap, Lakme beauty products, Colgate toothpaste… all these are good trademarks, because though the products are recognized by the name, these names do not describe the actual product. Have you ever actually stopped and thought about what ‘Bata’ means? If you ask anyone on the road the meaning of ‘Bata’, they’ll tell you it means Bata shoes. But how is the term ‘Bata’ even connected with shoes? That’s the power of a trademark. The word might make no sense, but everyone still knows its meaning.
The best way to guarantee a distinctive trademark is to make up a word. Just make sure the word is easy to pronounce, not too difficult to spell and is not descriptive in nature.
How can I get Trademark protection?
There is a twin fold goal of trademark law. One is to protect the business owners from people taking advantage of their business, and the other is to protect the consumers and prevent them from buying sub-standard quality products while under the false impression that they are buying it from a well reputed business.
The best way to protect a trademark is by FILING AN APPLICATION FOR REGISTRATION OF A TRADEMARK under the Trademarks Act, 1999. This application has to be filed with the Trademarks Registry, which has its offices in Delhi, Mumbai, Chennai and Kolkata. Though it is not compulsory under the Indian law to register your trademark, the legal protection you obtain when you do so is much stronger than in cases where the trademark is unregistered. The usual protest against any form of registration is the financial burden. Yes, a person wanting to register his trademark will have to pay a small amount, but the benefit he obtains from protecting his trademark far outweighs the problems he might face if he doesn’t. Registration is for a lifetime; the trademark will not expire as long as you use it. All that is necessary is to renew the trademark every ten years by paying a nominal fee to the government.
As soon as you file an application for a trademark, it automatically gets some protection while the application is still pending. The tiny ™ next to the logo or brand name is a way for the world to realize that you have a trademark application pending and if they copy your trademark it will lead to infringement. Once it is registered the symbol ® will be added to your trademark to show that it has been recognized by the government. Be careful, if you pretend that your trademark has been registered before it actually has been you can be punished under law.
What do I do when my trademark is infringed?
If you’ve already registered your trademark, the legal battle ahead of you is fairly straightforward, but even an owner of an unregistered trademark does have some recourse in law. He can always file a case in court to get compensation for the infringement of his registered trademark. However the fact remains that an unregistered trademark is far more vulnerable, especially for those marketing new products, and the remedies open to unregistered trademark owners can be claimed only after infringement has taken place.
Once a trademark has been registered, the owner of the trademark has legal rights to prohibit others from using it. It is very easy to avail this protection. If he can prove that the infringing mark is deceptively similar to his and because of this is causing confusion in the market, then there is a high probability of success in his action for infringement. It is not even necessary for him to show that he has suffered actual loss, just the likelihood of it is sufficient.
Once infringement takes place, the owner has the option of filing a civil suit to seek compensation for himself. He may even decide to institute criminal proceedings against the infringer to punish him. Both actions can be initiated simultaneously.
In any case, a trademark becomes effective and valuable only if the owner actually uses the trademark and takes prompt action against any infringer. If no action is taken, there is a likelihood of the trademark becoming a generic word. The distinct nature of the mark will be lost if every Tom, Dick and Harry starts using it to describe their goods. A good example of this is ‘Aspirin.’ I’m sure, at some point of time, you’ve been told to take an aspirin when you’ve had a headache, though no one really specifies what exactly they mean when they say “take an aspirin.” It’s a little known fact that, at one time, ‘Aspirin’ was a registered trademark. Over the course of time because of unchecked usage by others it has lost its unique character and is no longer identified by the company that originally filed for the trademark.
Conclusion
The ultimate aim of any company is to be recognized, and with a new company starting every day, it’s becoming harder and harder to remain unique amidst a sea of similar businesses. The only way of standing out in the crowd is by having a distinctive trademark, through which a consumer can identify your product. It’s a simple marketing strategy followed the world over. Recognition equals Sales equals Profit.
In the end a well chosen and well protected trademark is the greatest identification of a company. Be creative, come up with the wackiest thing imaginable, and make sure you register it with the Trademarks Registry so that you’re protected under law. After all, seeing is believing.
What if someone starts using your business name? Can you stop him from using your logo or product name? Can you claim compensation for the loss to your business because of a misuse of your brand name? The good news is you can. The law of TRADEMARKS in India protects business owners, who register their names under the Trademarks Act, 1999, against possible misuse of their trademarks by third parties. No matter, which business you are into, you must protect your company name, product name, logos and other unique identifying features that differentiate your business from that of your competitors.
What is a trademark, you will ask? Most of you may not be familiar with the term ‘trademark’, but I can guarantee you’re familiar with the actual trademarks of different companies, like Nirma’s dancing girl or the red Lifebuoy sign on their soaps.
A trademark is simply a name or a logo used to distinguish the goods or services offered by one company, from those offered by another. Take for example, Coca Cola and Pepsi. Just by looking at the bottle it would be impossible to tell that the bottle was filled with Coca Cola and not Pepsi, had it not been for the distinctive RED ‘Coca Cola’ sign. A trademark is thus the name or a symbol associated with a particular product through which the consumer identifies the source of the product.
Why are Trademarks so important?
It is particularly important to protect your logo or brand name when consumers start identifying your company through it. If your logo is not protected, then there is nothing to stop some other person from copying your logo and duping consumers into thinking they are buying your products. This person is, in essence, riding on your success to sell his own product; something that no company would want. The easy solution to this is to get your logo or brand name registered as a trademark under Indian law.
It’s easy enough to come up with a trademark. It could consist of words, designs, letters, slogans, symbols, or even a sound. Remember the Britannia ting, ting, ta-ting? You might be in the dining room eating dinner when this ad comes on the bedroom TV, and you’ll still know that the ad was for Britannia, without having to actually see the ad. What about the Microsoft Windows sound? The next time you boot your computer listen carefully to the tune played when Microsoft Windows opens. These sounds could very well be used as trademarks. Who knows, in the future maybe even smells will be used as trademarks! The only thing you have to make sure while coming up with your own trademark is that it is distinctive and does not resemble the trademark of any other company in such a way as to confuse consumers between the two.
A common fault made by most people is using descriptive names as trademarks. People tend to think that by using a descriptive name as their trademark it will be easier to remember or to connect it with their products. The law, on the other hand, feels very differently about this. One of the requirements of a trademark is that it must be distinctive. When a trademark is descriptive, it is not distinctive. The trademark should have no direct reference to the quality or character of goods. A trademark is said to be descriptive if it describes the nature of identity of the goods or services for which it is used. Take for example Fair & Lovely. Using Fair & Lovely as a product name to launch a cream that is suppose to make you fair and lovely is hardly distinctive. It is in fact too descriptive to be a good trademark. On the other hand, brand names like Cinthol for a soap, Lakme beauty products, Colgate toothpaste… all these are good trademarks, because though the products are recognized by the name, these names do not describe the actual product. Have you ever actually stopped and thought about what ‘Bata’ means? If you ask anyone on the road the meaning of ‘Bata’, they’ll tell you it means Bata shoes. But how is the term ‘Bata’ even connected with shoes? That’s the power of a trademark. The word might make no sense, but everyone still knows its meaning.
The best way to guarantee a distinctive trademark is to make up a word. Just make sure the word is easy to pronounce, not too difficult to spell and is not descriptive in nature.
How can I get Trademark protection?
There is a twin fold goal of trademark law. One is to protect the business owners from people taking advantage of their business, and the other is to protect the consumers and prevent them from buying sub-standard quality products while under the false impression that they are buying it from a well reputed business.
The best way to protect a trademark is by FILING AN APPLICATION FOR REGISTRATION OF A TRADEMARK under the Trademarks Act, 1999. This application has to be filed with the Trademarks Registry, which has its offices in Delhi, Mumbai, Chennai and Kolkata. Though it is not compulsory under the Indian law to register your trademark, the legal protection you obtain when you do so is much stronger than in cases where the trademark is unregistered. The usual protest against any form of registration is the financial burden. Yes, a person wanting to register his trademark will have to pay a small amount, but the benefit he obtains from protecting his trademark far outweighs the problems he might face if he doesn’t. Registration is for a lifetime; the trademark will not expire as long as you use it. All that is necessary is to renew the trademark every ten years by paying a nominal fee to the government.
As soon as you file an application for a trademark, it automatically gets some protection while the application is still pending. The tiny ™ next to the logo or brand name is a way for the world to realize that you have a trademark application pending and if they copy your trademark it will lead to infringement. Once it is registered the symbol ® will be added to your trademark to show that it has been recognized by the government. Be careful, if you pretend that your trademark has been registered before it actually has been you can be punished under law.
What do I do when my trademark is infringed?
If you’ve already registered your trademark, the legal battle ahead of you is fairly straightforward, but even an owner of an unregistered trademark does have some recourse in law. He can always file a case in court to get compensation for the infringement of his registered trademark. However the fact remains that an unregistered trademark is far more vulnerable, especially for those marketing new products, and the remedies open to unregistered trademark owners can be claimed only after infringement has taken place.
Once a trademark has been registered, the owner of the trademark has legal rights to prohibit others from using it. It is very easy to avail this protection. If he can prove that the infringing mark is deceptively similar to his and because of this is causing confusion in the market, then there is a high probability of success in his action for infringement. It is not even necessary for him to show that he has suffered actual loss, just the likelihood of it is sufficient.
Once infringement takes place, the owner has the option of filing a civil suit to seek compensation for himself. He may even decide to institute criminal proceedings against the infringer to punish him. Both actions can be initiated simultaneously.
In any case, a trademark becomes effective and valuable only if the owner actually uses the trademark and takes prompt action against any infringer. If no action is taken, there is a likelihood of the trademark becoming a generic word. The distinct nature of the mark will be lost if every Tom, Dick and Harry starts using it to describe their goods. A good example of this is ‘Aspirin.’ I’m sure, at some point of time, you’ve been told to take an aspirin when you’ve had a headache, though no one really specifies what exactly they mean when they say “take an aspirin.” It’s a little known fact that, at one time, ‘Aspirin’ was a registered trademark. Over the course of time because of unchecked usage by others it has lost its unique character and is no longer identified by the company that originally filed for the trademark.
Conclusion
The ultimate aim of any company is to be recognized, and with a new company starting every day, it’s becoming harder and harder to remain unique amidst a sea of similar businesses. The only way of standing out in the crowd is by having a distinctive trademark, through which a consumer can identify your product. It’s a simple marketing strategy followed the world over. Recognition equals Sales equals Profit.
In the end a well chosen and well protected trademark is the greatest identification of a company. Be creative, come up with the wackiest thing imaginable, and make sure you register it with the Trademarks Registry so that you’re protected under law. After all, seeing is believing.
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