By Ramesh Gajria, Advocate and Solicitor, Gajria and Co.,
firstname.lastname@example.org | Dec 8, 2020
A major part of growing your business is developing a strong brand and, thereafter, protecting it.
What is a Mark?:
• The Trade Marks Act, 1999 defines a “mark” to includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.
• “Trade mark” means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours;
There are several benefits to trademarking.
• The main purpose of a trademark is that it distinguishes the goods/services of one person from those of another.
• It builds customer recognition and brand loyalty.
• It can become a valuable asset over the years, if proper care is taken of its use and protection.
• It provides the purchaser an indication of the quality of the goods/services that you provide.
• A trade mark can last forever if it is renewed regularly from time to time.
Selecting a Trade Mark:
• There are various categories of trade marks with varying levels of strengths and distinctiveness.
• These are the marks which have no meaning and are not dictionary words eg. KODAK, BATA or EXXON. These are considered to be strong and highly distinctive of all marks.
• These are dictionary or known words but have no connection with the goods/services. Eg. APPLE for Computers, MANGO for readymade garments.
• These suggest a meaning or relationship with the goods/services but do not describe them. Eg. AIRBUS or NETFLIX.
• These marks are very weak as they describe the goods/services or its characteristics and it may not be possible to enforce such marks. Descriptive marks, however, may acquire distinctiveness and secondary meaning by long use. Eg. SHOELAND for a shoe shop.
• Are words that express praise or commendation. Marks like BEST, SUPER, A-1 are laudatory and are considered to be descriptive.
• A generic term is a commonly used term that describes the product or service. These marks are the weakest and can never acquire any distinctiveness. Eg. Salty for salted biscuits.
• The Trade Marks Act, 1999 also lists out trade marks that cannot be registered. Viz. – marks that are devoid of any distinctive character – marks which designate the kind, quality, quantity, intended purpose, value, geographic origin of the goods or services – marks that have become customary in the current language or in the bonafide or established practice of the trade – marks containing scandalous matter – marks which will deceive the public – marks that will hurt public sentiments – marks prohibited under the Emblems and Names Act – the shape of goods which results from the nature of the goods themselves or which is necessary to obtain a technical result or where the shape gives substantial value to the goods.
• A mark will also not be allowed to be registered if it is:
identical with another mark already on the register for similar goods
similar to another mark already on the register for identical goods and there is likelihood of confusion
identical with or similar to a mark already on the register and the goods are not similar but the earlier mark is a well known mark and the use of the latter without due course will take unfair advantage of the well known mark or is detrimental to the distinctive character or repute of the well known mark.
The trademarking process
• The first step is to ascertain under which class the goods/services can be categorised. There are 45 different classes out of which 11 classes i.e. classes 35 to 45 are service classes. This can be ascertained from the link provided on the website of the Trade Mark Registry.
• The next step is to take a search of the TM records from the link also provided on the TM Registry. However, this may not be sufficient and one must also conduct an independent search on the web to ascertain whether any other person is using the same or similar trade mark.
• Once satisfied that the mark does not offend any existing mark, one can start the process for filing the trade mark application.
• Form TM-A which is the form of application for registration of the Trade Mark has to be filled up and filed before the relevant Trade Mark Registry along with payment of the requisite fees as per the Schedule. Currently individual applicants pay 50% of the fees paid by partnerships, LLP’s and Companies. There is also a rebate for MSME’s. The Application is to be filed in the appropriate office of the Trade Mark Registry having jurisdiction. Presently the TM Registry is situate at N. Delhi, Mumbai, Calcutta, Chennai and Ahmedabad.
• Once filed, the application is examined by an Examiner who issues his Examination Report setting out his objections, if any. A reply is to be filed within a period of 1 month. If the Registrar is not satisfied with the compliance, a show cause hearing is fixed. After the hearing, the application is either accepted or rejected or may be withdrawn. If it is accepted, the mark is advertised in the Trade Mark Journal which is published every 15 days and is available on the website of the Registry. After the mark is advertised, if the mark is unopposed within 4 months, it proceeds for registration. If it is opposed, then parties have to file their respective Counter Statements and Affidavits of Evidence. Once the pleading are complete the Opposition is fixed for hearing. If the mark is not opposed, it proceeds for registration and Registrar issues the Registration in due course.
Protection and enforcement of Trade Mark Rights
• Once registered a trade mark may become generic over the years because of various reasons and the owner fails to take steps to prevent it e.g. ESCALATOR. “The loss of the brand name was partly the company’s own fault — it was ruled that Otis had used the term “escalator” generically in its own advertising.”
If the mark is used as a verb, there is a risk of it becoming generic. If a trade mark is being used in a generic manner e.g. XEROX (instead of Photocopy), the owner must take immediate steps to correct the same and educate the consumer. Non-enforcement of trade mark rights may also lead to a mushrooming effect where several persons copy the mark and the mark ultimately becomes common to the trade. Generic use presents an inherent risk to effective enforcement of trademark rights.