This document provides an overview of different types of intellectual property, including copyright, related rights, patents, industrial designs, trademarks, and how they are protected under law. It defines copyright as protecting literary, artistic and scientific works, and related rights as protecting performances and broadcasts. Patents protect inventions, industrial designs protect the aesthetic design of useful articles, and trademarks protect signs that distinguish goods/services of one enterprise from another. The document also discusses in brief the registration process for trademarks, including conditions for registration, opposition, renewal and removal from the register. Registered trademarks confer exclusive rights and infringement occurs if an identical or deceptively similar mark is used without authorization for similar goods/services.

2. MOHAN AGARWAL
&
ADV. BHAGWATI AGARWAL
TRADE MARK ATTORNEY
CHARTERED ACCOUNTANT

3. TYPES OF INTELLECTUAL
PROPERTIES

4. TYPES
• For various administrative and historical reasons, intellectual property is
usually dealt with under the following main headings:
• Copyright
• Related Rights
• Patents
• Industrial Designs
• Trademark

5. COPYRIGHT
• Literary, artistic and scientific works e.g. books. Protection of this property
is governed by laws concerning Copyright.
• The domain of copyright is the protection of literary and artistic works.
These include writings, music, and works of the fine arts, such as
paintings and sculptures, and technology-based works such as computer
programs and electronic databases.

6. RELATED RIGHTS
• Performances, broadcasts e.g. concerts. Protection of this property is
governed by laws concerning Copyright's Related Rights.
• Assuming that we have an original song, it is, of course, protected for the
composer and the lyric writer as original copyright holders. The first of
these related rights then are the rights of those who perform the works,
namely the performers, singers, actors, dancers, musicians and so on.

7. PATENTS
• Inventions e.g. a new form of jet engine. Protection of inventions is
covered by laws concerning Patents.
• Patent protects an invention, and grants to the owner the exclusive rights
to use his/her invention for a limited period of time. And an invention may
be defined as a new solution to a technical problem.
• Example of inventions: band- aid, electric iron, safety pin, ball point pen,
telephone, etc.

8. INDUSTRIAL DESIGN
• Industrial designs e.g. the shape of a soft drinks bottle. Industrial Designs
may be protected by its own specialized laws, or those of Industrial
Property or Copyright.
• An industrial design is that aspect of a useful article which is ornamental
or aesthetic. It may consist of three-dimensional features such as the
shape or surface of the article, or two- dimensional features such as
patterns, lines or
• Examples: shapes or forms of chairs, telephones, cars, computers,
airplanes, TV, watches, cameras, etc. color.

9. TRADEMARK
• Trademarks, service marks and commercial names and designations e.g.
logos or names for a product with unique geographical origin, such as
Champagne. Protection is normally available under various laws. In this
course the laws are covered within the Trademark module.
• A trademark is a sign that individualizes the goods of a given enterprise
and distinguishes them from the goods of its competitors.
• A trademark may consist of words, designs, letters, numerals or
packaging, slogans, devices, symbols, etc.

10. INTRODUCTION
• Trademarks existed in the ancient world. As long as 3000 years ago,
Indian craftsmen used to engrave their signatures on their artistic
creations before sending them to Iran. With the flourishing trade in the
Middle Ages the use of trademarks increased.
• The growing importance of trademarks in commercial activities is due to
the increased competition among companies undertaking trade in more
than one country. Trademarks have been used to simplify the identification
by consumers of goods or services, as well as their quality and value.
Thus, a trademark may be considered as a tool of communication used by
producers to attract consumers.

11. MEANING OF TRADEMARK
• A trademark is basically a sign that is used to distinguish the
goods or services offered by one undertaking from those
offered by another.
• Therefore a formal definition of the term trademark could
be:
“A trademark is a sign that individualizes the goods of a given
enterprise and distinguishes them from the goods of its

12. FUNCTIONS OF A TRADEMARK
• It identifies the goods of one trader and distinguish them
from goods sold by others.
• It signifies that all goods bearing a particular trademark
come from a single source.
• It signifies that all goods bearing a particular trademark are
of an equal level of quality.
• It acts as a prime instrument in advertising and selling the
goods.

13. OBJECTIVES OF A TRADEMARK
• It protects the public from
confusion and deception by
identifying the source or
origin of particular products.
• It protects the trademark
owner’s trade and business
as well as the goodwill
which is attached to his
trademark.

14. HOW DO I SELECT A TRADEMARK?

15. DIFFERENT KINDS OF TRADEMARK
A trademark is a symbol used by businesses to represent their brand, product
service. This could be a name like “PepsiCo”, or a word, a phrase like “Just
number, label or even a colour combination.
Virtually, anything can be trademarked today. Any word from the dictionary or
word that is invented, like Google for example.
Let us understand different symbols that can be trademarked:

16. NAME
• Any name, either of the applicant or a name of value to
them, like More Brothers or Jalan Brothers (JBs) can be
trademarked. Of course this could also be a brand name or
just a surname. Name may also include a domain name.

17. WORD OR PHRASE
• Any word can be trademarked. For example, Nike is a
trademarked word. A set of words can also be trademarked,
like ‘Just do It’.

18. NUMBERS OR ALPHANUMERIC
Symbols containing just numbers or a mixture
of letters and numerals can be trademarked
as well.
For example, Market99 is a trademarked
alphanumeric symbol. And almost all numbers
between 1-100 are registered trademarks.

19. IMAGES/LOGO
This might surprise some, but images can
be trademarked as well.
These are logos, or visual representations of a
brand that uniquely identify them. For
example, the domino for Domino’s Pizza. Or
Nike’s tick symbol.

20. LABEL
A label may refer to a composite mark
containing various features including devices
and words usually printed on paper which
can be attached to the goods themselves or
their containers.

21. SIGNATURE
Signature means signature of an
individual.

22. COMBINATION OF COLOURS
Any combination of marks can be
trademarked.

23. GOODS AND SERVICES
A trademark may be registered of goods and
services. ‘Goods’ means anything which is
the subject of trade or manufacture. ‘Service’
means service of any description which is
made available to the potential users such as
banking, education, lodging, entertainment,
construction etc.

24. WELL KNOWN TRADEMARK
The term 'well-known trademark' refers to a mark
which has become so well-known to the substantial
segment of the public through its extensive and
continuous use.
Well-known trademarks are protected specifically
under the Trademarks Act and Section 11(2)
specifically mentions that even where the
subsequent deceptively similar mark is for different
goods/services, if the prior mark is well-known, then
the subsequent mark shall not be registered.

25. CLASS
•Trademarks are categorized as classes based
on different fields of services and products.
Out of a total of 45 classes, 34 are for
products and 11 for services.

26. TYPES OF TRADEMARKS

27. WHO CAN APPLY
Any person claiming to be the
proprietor/owner of a trademark used or
proposed to be used by him , may apply
for Trademark registration.

28. CONDITIONS FOR REGISTRATION OF A
TRADEMARK
• It should be distinctive: To be distinctive it must by its very nature be able to
distinguish goods and services. I think a good example would be the word “apple”.
While “Apple” is a very distinctive trademark for a computer, because it has
absolutely nothing to do with computers, it would not be distinctive for actual
apples. In other words, someone who grows and sells them could not register the
word ‘apple’ as a trademark and protect it, because his competitors have to be able
to use the word to describe their own goods. So in general terms a trademark is not
distinctive if it is descriptive. It is descriptive if it describes the nature or identity of
the goods or services for which it is used.
• It should not be deceptive: Typically a deceptive trademark would be one that says
that the goods for which it is used have certain qualities when they don’t. An

29. PROCESS FOR REGISTRATION
A single application may be made for
registration of a trademark for different classes
of goods and services and fee payable therefor
shall be in respect of each such class of goods
or services.

30. WHERE THE APPLICATION IS TO BE FILED
The application for registration of a trademark is to be
filed in the office of the Trade Marks Registry within
whose territorial limits the principal place of business
of the applicant is situated.
In case of joint applicant, the principal place of the
first applicant is relevant.

31. ACCEPTANCE OR OBJECTION
The application filed passes through the examination
stage. The Registrar may, subject the provisions of the
Trademarks Act, 1999, either accept the application or
may raise objections.

32. CORRECTION OR AMENDMENT
The Registrar may, at any time, whether before or
after acceptance of an application, permit the
correction of any error in the application or may
require any amendment also.

33. WITHDRAWAL OF ACCEPTANCE
After the acceptance of an application but before its
registration, if the Registrar is satisfied that the
application has been accepted in error, he may withdraw
the acceptance at any time

34. ADVERTISEMENT OF APPLICATION
Where an application has been accepted for
registration, the Registrar shall cause the application
to be advertised as accepted in the Trade Mark
Journal.

35. OPPOSITION TO REGISTRATION
A notice of opposition may be given to the Registrar
by any person opposing registration within four
months from the date of advertisement of application.

36. COUNTER-STATEMENT FROM THE APPLICANT
The applicant shall send a counter-statement of the
grounds on which he relies for his application within
two months from the receipt of the copy of the notice
of opposition. If the applicant fails to do so, he shall
be deemed to have abandoned his application.

37. SUBMISSION OF EVIDENCES AND
FINAL DECISION
•Any evidence upon which the opponent and the
applicant may rely is to be submitted to the Registrar
within the prescribed time.
•The Registrar shall decide after hearing the parties
and considering the evidence, as to whether and
subject to what conditions or limitations, if any, the
registration is to be permitted.

38. REGISTRATION
•When an application for registration of a trademark
has been accepted and either the application has not
been opposed and the time for opposition has expired;
or the application has been opposed and the
opposition has been decided in favour of the applicant,
the Registrar shall register the said trademark.
•The date of application is to be deemed to be the date
of registration.

39. ® SYMBOL
•Any trademark that has been successfully
registered, i.e., the application of trademark stands
approved and the registration process is complete
can use the ® symbol. This symbol represents a
thorough and complete protection against
infringement. The R here represents the

40. ™ SYMBOL
•A trademark for which application has been filed, but
the approval and registration has not been yet
completed can use the ™ symbol (tm symbol). This
is to indicate that the trademark application exists
with the government, and therefore limits anyone
else from copying it. The TM here represents
“TradeMark”.

41. ℠ SYMBOL
SM stands for Service Mark, and the ℠ symbol
identifies a trademark for a service, not a product.
Since services could be related to communication,
they are also allowed to use sound, graphic content
for trademarks. Like MGM’s lion.

42. DESIGNATION OF TRADEMARK

43. PRELIMINARY ADVICE AS TO
DISTINCTIVENESS
On an application made by any person who proposes
to apply for the registration of a trademark, the
Registrar may give advice as to whether the trade
mark appears to him prima facie to be distinctive.

44. DURATION OF REGISTRATION
The duration of a trademark is 10 years. But, it may
be renewed from time to time.

45. RENEWAL OF REGISTRATION
On an application made by the registered proprietor of
a trademark in the prescribed manner and within the
prescribed period and subject to the prescribed fee,
the Registrar shall renew the registration of the trade
mark for a period of 10 years.

46. RESTORATION OF REGISTRATION
Where trademark has been removed from the register
for non-payment of the prescribed fee, the Registrar
shall on receipt of an application and on payment o
the prescribed fee between six to one years from the
expiration of the last registration of the trademark,
restore the trademark to the register and renew the
registration of the trademark for a period of ten years.

47. REMOVAL OF TRADEMARK
The Registrar may remove the trademark from the
register if at the expiration of the prescribed time,
prescribed conditions have not been duly complied
with. The Registrar shall advertise the fact forthwith in
the Trade Mark Journal

48. EFFECT OF REMOVAL FROM
REGISTER
Where a trademark has been removed from register
for the non-payment of the renewal-fee, it shall for the
purpose of any application for the registration of
another trademark during one year next after the date
of the removal, be deemed to be a trademark already
on the register.

49. RIGHTS CONFERRED BY
REGISTRATION
The registration of a trademark provides exclusive
rights to the registered proprietor of the trademark to
use the trademark in relation to the goods or services
in respect of which the trademark is registered. It also
makes the registered proprietor entitled to obtain relief
in respect of infringement of the trademark.

50. LIMITATIONS ON REGISTRATION
Proprietary rights in a trademark acquired by use are
superior to rights obtained by registration under the
Act. Prior user of the marks are protected against
monopoly rights conferred by the Act. A trademark
has no meaning even if it is registered unless it is
used in relation to goods or services.

51. INFRINGEMENT OF REGISTERED
TRADEMARKS
When an unauthorized person uses a trademark that is 'identical' or
'deceptively similar' to a registered trademark, it is known as
infringement.
A registered trademark is said to be infringed in case of the
following situation:
• If the mark in dispute is identical with or deceptively similar to the
registered trademark and is in relation to the same or similar
goods or services;
• If the identical or similar mark can cause confusion in the minds of

52. INFRINGEMENT OF REGISTERED
TRADEMARKS
• If the registered trademark is used as a part of trade name or
business concern for goods and services in respect of which the
trademark is registered
• If the trademark is advertised and as a result it takes unfair advantage
or is contrary to the honest practices or is detrimental to the distinctive
character and reputation of the registered trademark.
• If the registered trademark is used in the material meant for packaging
or labelling of other goods or as a business paper without due
authorization of the registered user.

53. DILUTION OF A TRADEMARK
It occurs when unauthorized use of a famous mark
weakens or impairs the distinctiveness of the mark. A
hypothetical example may be use of GOOGLE as a
mark on toothpaste, such that consumers who
previously associated the GOOGLE mark solely with
the tech giant's products begin to also associate the
mark with toothpaste.

54. TRADEMARK DISPARAGEMENT
Trademark disparagement means building the
reputation of its brand by damaging the reputation of
the rival mark. “When one trader makes a statement
that his goods are better than his opponent's goods
because the opponent's goods are below standards
or adulterated, it would be termed as trademark
disparagement.

55. WHEN A REGISTERED TRADEMARK IS
NOT INFRINGED
There is no infringement of trademark when:
1.When the mark is used to indicate quality, the kind, quantity, etc
• When the allegedly infringing mark is used to indicate the kind, quality,
or quantity of the goods and services rendered. For example, the
proprietor of RICH’S WHIP TOPPIN filed a case of infringement
against the proprietor of BELLS WHIP TOPPING. The court, however,
ruled against the complainant saying that the ‘whip topping’ was
indicating the sort of goods it sold and the services it rendered, and
hence did not amount to infringement.

56. WHEN A REGISTERED TRADEMARK IS
NOT INFRINGED
2. When the mark is used outside the scope of registration
• For instance, if ‘XYZ Garden Market’ can be registered with the condition
that the registered proprietor may not have exclusive rights to the words
‘garden’ and ‘market’. The use of the latter terms by anyone else will not
amount to infringement.
3. When there is implied consent of use
• Where a person uses the mark in relation to goods and services for
which the registered user had applied for the trademark and may not
have removed it or has at any time expressly or impliedly consented to
the use of the trademark.

57. WHEN A REGISTERED TRADEMARK IS
NOT INFRINGED
4. When a registered trademark is used in relation to accessories and
parts
• If a registered trademark for any goods and services is in relation to parts
and accessories to other goods and services. Such usage is reasonably
necessary and the effect of such usage may not be considered as
the deceit of the original
5. When two registered trademarks are similar to each other
• Such usage of a trademark is one of two or more registered trademarks,
which is identical or similar, the exercise of the right to the use of that
registered trademark does not amount to infringement.

58. PASSING OFF
If a person sells his goods as the goods of another” then the
trademark owner can take action as this becomes a case of
passing off. Passing off is used to protect or safeguard the
goodwill attached to an unregistered trademark. When the
trademark has been registered by the owner and
infringement happens, then it becomes a suit for
infringement, but if the trademark has not been registered by
the owner and infringement happens then it becomes a case
of passing off.

59. CIVIL REMEDIES IN CASE OF
INFRINGEMENT
The most common civil remedies for trademark infringement
include:
Monetary compensation. The classic legal remedy in any
type of litigation is monetary compensation. In trademark
infringement cases, monetary damages are a form of legal
remedy that can be sought by an injured plaintiff. Plaintiffs may
request actual damages (e.g., from lost
sales), defendant’s profits from sales made from using the
infringed trademark, and costs.

60. CIVIL REMEDIES IN CASE OF
INFRINGEMENT
• Court-ordered injunction. Plaintiffs can request that the court issue an order
mandating that the infringer cease any and all infringing activities, including use of the
infringing trademark. The injunction could require that the infringer stop all sales of
infringing products immediately, or could require that sales of the infringing product
cease after the conclusion of a reasonable sell-off period. Injunctions can be
preliminary in nature (meaning that the injunction is only valid for the duration of the
trademark infringement lawsuit), or permanent (meaning that the injunction is issued at
the conclusion of the trademark infringement lawsuit). Injunctions may also be limited in
terms of geographical scope (e.g., defendant cannot use the trademark within 100
miles of a particular city), field of use (e.g., defendant is prohibited from using the
trademark in the field of athletic apparel), or channels of trade (e.g., the defendant is
excluded from using the trademark when distribution involves wholesalers).

61. REMEDIES IN CASE OF INFRINGEMENT
• Court-ordered forfeiture or destruction of the infringing
goods. Plaintiffs can also ask the court to issue an order that
requires the infringer to forfeit or destroy the infringing goods.
The order may allot a particular time period in which the
defendant must produce/forfeit or destroy the infringing goods.
• Payment of plaintiff’s attorneys’ fees. In some cases, it may be
appropriate for the plaintiff to request and be awarded payment
for their attorneys’ fees by the defendant in addition to whatever
other remedy is awarded.

62. CRIMINAL REMEDIES IN CASE OF
INFRINGEMENT
Trademark infringement is a cognizable offence under The Trademark act,
1999, and police are empowered to file a First Information Report (F.I.R.)and
start an investigation.
• Sections 103 of the Act states the criminal remedy for the infringement of the
trademark of any person or business which specifies a period of 6 months of
imprisonment which could be extended till a time frame of 3 years for
infringing trademark rights.
• Section 104 of the Act also states penalties that need to be granted as a
sanction against an infringement. The section lays down a penalty of fifty
thousand rupees which could be increased to an extent of two lakhs in case
any person is found to contravene the trademark rights.

63. LIMITATION PERIOD
Trademark infringement is a continuing offence so
there is no limit on the period for filing a suit.

64. JURISDICTION
No suit for the infringement of trademark can be filled
in any court which is inferior to the district court. The
trademark owner can file a suit in the district court
falling within the local limits under and which have
jurisdiction to try the suit.

65. VALIDITY
•After the issuing of the trademark registration
certificate, a trademark is valid for 10 years. During
the last year of validity, it is important to apply for a
renewal in case one wants to retain that trademark.
Post the expiration, the trademark certificate will
stand null and void and the owner will have to

66. REGISTERED TRADEMARKS ARE LEGALLY
PROTECTED
A registered trademark has
legal protection under
intellectual property.
Therefore, in case of
infringement, the owner of a
trademark can sue and
exercise their legal rights that

67. INTERNATIONAL TRADEMARK
Depending on your
business type and the
market you’re catering to,
you can also apply for an
international trademark.

68. TRADEMARK IS AN ASSET
Trademarks are treated as
a valuable asset by most
businesses. Since it is a
public representation of
your brand value, it
deserves protection and
due diligence.

69. THANK
YOU
Phone: +91-98648-57565
eMail:
mohanagarwalca@gmail.com