2. OVERVIEW OF
PRESENTATION
Definition of Trademark
Types of Trademark
Function and Value of Trademark
Practical Aspects
What to avoid and remember when selecting a TM
India Trademark Law
Trademark Classification in India
Trademark Registration
Tenure and Infringement
Types of Trademark in detail
TRIPS provisions on Trademark
Conclusion
3. Trademark:
• A trademark is a distinctive sign or indicator
of some kind which is used by an individual,
business org. Or other legal entity to
uniquely identify the source of its products
and/or services to consumers, and to
distinguish its products or services from
those of other entities.
• A sign distinguishing goods or
services produced or sold by one
enterprise(from those of other enterprises).
• A trademark is made of any distinctive
words, letters, shapes, numerals, colors,
logotypes, labels etc.
4. Types of Trademarks
:
• Trademarks : To distinguish goods
• Service marks : To distinguish
services
• Collective marks : To distinguish
goods or services by members of
association
• Certification marks
• Well known marks : benefit from
stronger protection
• Tradename(Brand name)
5. Function and Value of Trademark :
Function :
• Allows companies to mark
a TERRITORY, EXPRESSING
specific functions among similar
products in the market.
• Ensures that consumers can
identify a line of products.
• Ensures extension of the mark
through licensing or franchising
process.
Value :
• A marketing tool.
• A source of revenue through
licensing .
• A crucial component of
franchising agreements.
• Useful for obtaining banks or
third part finance.
• A valuable business asset.
6. Practical
Aspects :
Enforce Enforce your trademark(s), innovate (develop new
products)
Use and
maintain
Use and maintain your trademark(s) (paying fees,
following notification of refusals, extending territory)
Protect
Protect your trademark through your national or
regional office and then extend it to the world (WIPO
Madrid & Protocol System)
Create or
buy
Create or buy a trademark (after searching worldwide to
find out that there are no similar registered ones -avoid
claims- refusals or oppositions)
7. What to avoid or remember when selecting
a trademark :
Avoid :
• Generic terms : CHAIR to sell chairs
• Descriptive terms : SWEET to sell
chocolates.
• Deceptive terms : “ORWOOLA” or
“Pure wool” for 100% synthetic
material.
• Marks and terms contrary to public
order/morality.
• Do not use flags, armorial bearings,
official hallmarks, emblems without a
legal authorization.
Remember :
• Create inherently distinctive mark.
• Think about fanciful names as: “Kodak” –
Arbitrary marks and logos as: “apple” for
computers – Suggestive marks as : SUNNY
for heaters
• A mark easy to memorize and pronounce,
with a positive connotation and that fits
product or image of the business
• Has no legal restrictions or reasons for
rejection – TM search>not identical or
confusingly similar to existing
• Suitable for export markets with a
corresponding domain name which is not
already used
8. Indian
Trademark Law :
• Indian trademark law provides protection to trademarks
statutorily under the Trademark Act, 1999 and also under
the common law remedy of Passing Off
• Passing off is a common law tort which can be used to
enforce unregistered trademark rights. The tort of passing
off protects the goodwill of a trader from a
misrepresentation that causes damage to goodwill
• Statutory protection of trademark is administered by the
Controller General Of Patents, Designs and Trade Marks, a
government agency which reports to the Department of
Industrial Policy and Promotion(DIPP), under the Ministry of
Commerce and Industry
• The law of trademark deals with the mechanism of
registration, protection of trademark and prevention of
fraudulent trademark
• The law also provides for the rights acquired by registration
of trademark, modes of transfer and assignment of the
rights, nature of infringements, penalties for such
infringement and remedies available to the owner in case of
such infringement.
9. Trademark Classification in India : Trademark in India is classified in about 45 different classes,
which includes chemical substances used in industry, paints, lubricants machine and
machine tools, medical and surgical instruments, stationary, lather, household, furniture,
textiles, games, beverages preparatory material, building material, sanitary material, and
hand tools, other scientific and educational products. These classes again are further
sub-divided. The main objective of trademark classification is to group together the
similar nature of goods and services. Here are the classes for product and for services.
Products :
Class 1 (Chemicals) ◈ Class 2 (Paints) ◈ Class 3 (Cosmetics and
Cleaning Preparations) ◈ Class 4 (Lubricants and Fuels) ◈ Class 5
(Pharmaceuticals) ◈ Class 6 (Metal Goods) ◈ Class 7 (Machinery)
◈ Class 8 (Hand Tools) ◈ Class 9 (Electrical and Scientific Apparatus)
◈ Class 10 (Medical Apparatus) ◈ Class 11 (Environmental Control
Apparatus) ◈ Class 12 (Vehicles) ◈ Class 13 (Firearms) Class 14
(Jewelry) ◈ Class 15 (Musical Instruments) ◈ Class 16 (Paper Goods and
Printed Matter) ◈ Class 17 (Rubber Goods) ◈ Class 18 (Leather Goods)
◈ Class 19 (Non-metallic Building Materials) ◈ Class 20 (Furniture and
Articles Not Otherwise Classified)
10. Services :
Class 35 (Advertising and Business) ◈ Class 36 (Insurance
and Financial) ◈ Class 37 (Building, Construction and Repair)
◈ Class 38 (Telecommunication) ◈ Class 39 (Transportation
and Storage) ◈ Class 40 (Treatment of Materials) ◈ Class 41
(Education and Entertainment) ◈ Class 42 (Computer,
Scientific and Legal) ◈ Class 43 (Hotels and Restaurants)
◈ Class 44 (Medical, Beauty, and Agricultural) ◈ Class 45
(Personal and Social Services)
11. Trademark
Registration
WHAT ARE THE TYPES OF TRADEMARKS THAT
CAN BE REGISTERED ?
Under the Indian trademark law the following are the types of
trademarks that can be registered:
• Product trademarks: are those that are affixed to identify
goods.
• Service trademarks: are used to identify the services of an
entity, such as the trademark for a broadcasting service,
retails outlet, etc. They are used in advertising for services.
• Certification trademarks: are those that are capable of
distinguishing the goods or services in connection with
which it is used in the course of trade and which are
certified by the proprietor with regard to their origin,
material, the method of manufacture, the quality or other
specific features.
• Collective trademarks: are registered in the name of
groups, associations or other organizations for the use of
members of the group in their commercial activities to
indicate their membership of the group.
12. Advantages of Trademark
Registration
Protects your hard earned goodwill in the business
Protects your Name / Brand Name from being used in a same or similar fashion, by any
other business firm, thus discourages others from cashing on your well-built goodwill .
Gives your products a status of .Branded Goods.
Gives an impression to your customers that the company is selling some standard
Products or Services
The exclusive right to the use of the trade mark in relation to the goods or services in
respect of which the trade mark is registered.
To obtain relief in respect of infringement (misuse by others) of the trade mark.
Power to assign (transfer) the trade mark to others for consideration.
13. Procedure/Steps
for Trademark
Registration
1. Filing of an application for registration by a person claiming
to be the proprietor of a trademark, in the office of the Trade
mark Registry, within the territorial limits of the place of
business in India.
2. Examination of the application by the Registrar to ascertain
whether it is distinctive and does not conflict with existing
registered or pending trademarks and examination report is
issued.
3. Publication of the application after or before acceptance of
the application in the Trademark Journal.
4. After publication if any person gives notice of his opposition
to the registration within three months which may be
extended to the maximum of one month.
5. If the opposition has been decided in favour of the applicant
of the registration of trademark, the Registrar shall register
the Trademark.
6. On the registration of the Trademark the Registrar shall issue
to the applicant a Trademark Registration
7. Today, as per the Trademark Rules, 2002, the application fees
(similar to a tax) are Rs. 3500 per trademark.
14. Term/Duration of Trademark :
The term of registration of trademark is 10 (Ten) years, but
may be renewed subject to the payment of the prescribed
fee, in accordance with the provisions of the Trademarks Act,
1999. An application for renewal of a trademark can be filed
within six months from Constantia (Body) the expiry of the last
registration of trademark.
Use of the .TM. and ® symbols
Generally, one who has filed an application (pending
registration) can use the TM (trademark) designation with the
mark to alert the public of his exclusive claim. The claim may
or may not be valid. The registration symbol, ®,may only be
used when the mark is registered.
15. Term/Duration and Infringement of Trademark
:
•Trademark Infringement is a violation of exclusive rights
attaching to a trademark without the authorization of the
trademark owner or any licensee. Trademark infringement
mostly occurs when a person uses a trademark which may
be either a symbol or a design, with resembles to the
products owned by the other party. The trademark owner
may begin a legal proceeding against a party, which
infringes its registration.
17. Service Mark :
• A service mark is the same as a trademark, but instead
of a particular product, it identifies and differentiates the
source of a service. For example, a company such as
Yahoo may brand certain products with a trademark, but
use a service mark on the internet searching service that
it provides. It is denoted by ‘SM’.
• A service mark is nothing but a mark that distinguishes
the services of one proprietor/owner from that of
another. Service marks do not represent goods, but the
services offered by the company. They are used in a
service business where actual goods under the mark are
not traded. Companies providing services like computer
hardware and software assembly, restaurant and hotel
services, courier and transport, beauty and health care,
advertising, publishing, etc. are now in a position to
protect their names and marks from being misused by
others. The rules governing for the service marks are
fundamentally the same as any other trademarks.
18. Collective Mark :
• These are the trademarks used by a group of companies and can
be protected by the group collectively. Collective marks are used to
inform the public about a particular characteristic of the product for
which the collective mark is used. The owner of such marks may be
an association or public institution or it may be cooperative.
Collective marks are also used to promote particular products
which have certain characteristics specific to the producer in a
given field. Thus, a collective trademark can be used by a more
than one trader, provided that the trader belongs to the
association.
• The trader associated with a particular collective mark is
responsible for ensuring the compliance with certain standards
which are fixed in the regulations concerning the use of the
collective mark, by its members. Thus, the purpose of the collective
mark is to inform the public about certain features of the product
for which the collective mark is used. One example of the collective
mark is the mark “CPA”, which is used to indicate members of the
Society of Certified Public Accountants.
19. Certification Mark :
• It is a sign indicating that the goods/services are
certified by the owner of the sign in terms of origin,
material, quality, accuracy or other characteristics. This
differs from a standard trademark whose function is to
distinguish the goods/services that originate from a
single company.
• In short, certification marks are used to define the
standard. They guarantee the consumers that the
product meets certain prescribed standards. The
occurrence of a certification mark on a product indicates
that the product has gone through the standard tests
specified. They guarantee the consumers that the
manufacturers have gone through an audit process to
ensure the desired quality of the product/service. For
example, Food products, Toys, Cosmetics, Electrical
goods, etc. have such marking that specifies the safety
and the quality of the product.
20. Shape Mark :
• According to the Indian Trademarks Act, 1999, a trademark
may also include the shape of goods, their packaging, so
long as it is possible to graphically represent the shape
clearly. This helps in distinguishing the goods sold under
such trademark from those of another manufacturer. The
new Trade Marks Ordinance (Cap. 559) continues to allow
registration of such marks.
• When the shape of goods, packaging have some distinctive
feature it can be registered. For example, Ornamental
Lamps. In certain cases, the (three-dimensional) shape of a
product or packaging can be a trademark (for example a
specially designed bottle of perfume).
• In a nutshell, Shape Mark has facilitated promotion of
products and emerged into the trademark type after the
technological advancement of graphics. Any graphical
representation which is able to make a difference amongst
the products can be shape marked.
21. Pattern Mark :
• These are the marks consisting of a pattern which is
capable of identifying the goods or services as
originating from a particular undertaking and thus
distinguishing it from those of other undertakings. Such
goods/services are registrable as Pattern Marks.
• The procedure of evaluating uniqueness of pattern
marks is same as that of other types of marks. Pattern
marks that are descriptive or indistinctive are
objectionable because they fail to serve as an identifier
of trade source. Such goods/services would not be
accepted for registration without evidence of
uniqueness. In cases where the pattern mark has
become identified in the minds of the public with a
particular undertaking’s goods or services, it receives
acquired distinctiveness and can register for Pattern
Mark.
• Thus, Pattern Trademark is a trademark wherein the
pattern is able to distinguish the product from other
brands.
22. Sound Mark :
• Sometimes, the sound that plays in the
advertisement becomes so well known that when
people hear it they immediately know what
product/service it refers to. In such cases, the
sound may be regarded as a trademark and is
eligible for registration.
• A sound mark is a trademark where a particular
sound does the function of uniquely identifying
the origin of a product or a service. In the case of
sound marks, a certain sound is associated with a
company or its product or services — for example,
the MGM’s roar of a lion.
• The sound logo, technically referred to as audio
mnemonic, is one of the tools of sound branding,
along with the brand music. A sound logo is a
short distinctive melody mostly positioned at the
beginning or ending of a commercial. It can be
seen as the acoustic equivalent of a visual logo.
Often a combination of both types of logo is used
to enforce the recognition of a brand.
23. TRIPS provisions on Trademark :
The obligations of members with respect to the availability, scope and
permissible limitations of trademark protection are contained in
Articles 15 to 21 of Part II of the TRIPS Agreement, and also include
the substantive provisions of the Paris Convention incorporated into
the Agreement by the reference in Article 2.1. These provisions also
have to be read in the context of provisions in other parts of the
TRIPS Agreement.
1. What subject matter is to be protected and what are the conditions for registration?
(a) Subject matter of trademark protection
24. (i) Distinctive signs According to Article 15.1 of the TRIPS Agreement, any sign, or any combination of signs,
capable of distinguishing the goods and services of one ‘undertaking’ from those of other undertakings
must be eligible for trademark protection. These signs could be words including personal names, letters,
numerals, figurative elements and combinations of colors, as well as any combination of signs. This means
that in principle there is no limitation on the type of signs that can constitute trademarks under the TRIPS
Agreement. Rather, the emphasis is on distinctiveness – i.e. the ability of the signs to distinguish products of
one enterprise from those of others. Members can require that signs be visually perceptible to be registered
as trademarks, leaving them free to determine whether or not to allow the registration as trademarks of
signs such as smells and sounds. The latter are often referred to as ‘non-traditional’ trademarks.
(ii) Trade names The notion of a trade name is interpreted in different ways in existing legislations – the term
‘business name’ is sometimes used. It can generally be defined as being the name or designation identifying
the enterprise of a natural or legal person – for instance, Maria Luisa might call her bakery ‘Marisa’s
Cakeshop’. The protection of trade names has been held by the Appellate Body to also fall within the scope
of the TRIPS Agreement by virtue of the incorporation of Article 8 of the Paris Convention into the TRIPS
Agreement by its Article 2.1. 37 Neither the Paris Convention nor the TRIPS Agreement specify in detail the
level of protection that must be applied, so national practice can differ considerably, but it is clear that no
formalities are required, and that essentially the same protection must be available to foreign nationals’
business names as for those of domestic nationals.
25. (iii) Collective marks and certification marks According to Article 7bis of the Paris Convention, members must also
accept the registration of signs as collective marks. This means that signs can be registered not only with respect to
products from one enterprise, but also with respect to those of a group of enterprises or an association. These
enterprises can then own, use and defend the trademark collectively. The collective mark may be used to show that
an individual producer or trader is a member of a trade or industry association, and to distinguish its products from
those of other undertakings. Such marks are often used to distinguish the geographical origin or other common
characteristics of products of different enterprises which use the collective mark under the control of its owner, or to
certify that the product bearing the mark has certain characteristics, such as a particular mode of production,
regional or other origin, or fulfils certain standards of quality. Such marks are similar to certification marks or
guarantee marks – marks that certify or guarantee certain properties or the origin of a product – but are technically
different under some national laws. For example, a certification mark could be owned by a separate certifying
authority, rather than an association of traders. But these kinds of marks are often grouped together as having a
similar character and function. Examples of terms that have been registered as collective marks in the European
Union are ‘Bayerischer Bier’, ‘Royal Thai Silk’ (figurative) and ‘Madeira’.
(b) Conditions for registration as a trademark
(i) Priority The right of priority ensures that on the basis of a regular first trademark application filed in a member,
the applicant (or the successor in title) may, within a specified period of time, apply for registration of his or her
trademark in another member using the same priority date as the first application. According to Article 4 of the
Paris Convention, the priority period for trademarks is six months from the date of the first filing of that trademark
in a member. During the six-month priority period, applications of the owner for the same trademark in all other
members will be regarded as if they had been filed on the same day as the first application and therefore enjoy
priority status with respect to any actions (such as use) or applications for similar trademarks that occurred since
the date of the first application.
26. (ii) Publishing requirement According to Article 15.5 of the TRIPS Agreement, members must publish a trademark
either before, or promptly after, it is registered. They must further provide for a reasonable opportunity to request
the cancellation of the trademark, so that interested parties can challenge a registration. In addition, members may,
but are not obliged to, allow for trademark opposition, a procedure practiced in many members where a trademark
can be challenged after it is accepted by the trademark office, but before it is registered.
(iii) Reasons which may not constitute grounds for refusal of trademark registrations According to the rules laid
down in the Paris Convention and the TRIPS Agreement, a number of reasons may not constitute grounds for the
refusal of a trademark registration in a member:
‘Failure to register in the country of origin’
‘Form of the mark, if already registered in other Member countries’
‘Nature of the goods or services identified by the trademark’
‘Actual use of the trademark at the time of registration’
(iv) Reasons which may constitute grounds for refusal of trademark registrations The TRIPS Agreement recognizes
in Article 15.2 that members may also refuse the registration of a trademark in their territory on grounds other
than those addressed in Article 15.1 (e.g. lack of distinctiveness or visual perceptibility), provided they do not
derogate from the provisions of the Paris Convention.
(v) Reasons which must constitute grounds for refusal or invalidation of trademark registration Finally, the regime
of trademark protection under the TRIPS Agreement provides for a number of situations in which members must
refuse or invalidate the registration of a trademark
‘Well-known marks’ ‘Geographical indications’ ‘State emblems and official hallmarks’
27. 2. What rights are to be conferred?
(a) General The TRIPS Agreement also stipulates which rights a trademark owner must enjoy in a member (Article 16)
and what type of exceptions to these rights are permissible (Article 17). As noted in Module I, the TRIPS Agreement is
a minimum standards agreement. This means that the rights described here only constitute the minimum level of
protection required by this international agreement, and that members may – and in many cases actually do –
provide for higher or more stringent protection in their national legislation. Therefore, in order to establish what
rights a trademark owner has in any individual member, reference should be made to the domestic laws of that
member.
(b) Trademark rights
‘exclusive right to prevent’ ‘from using in the course of trade’ ‘where such use would result in the likelihood
of confusion’
(c) Rights with respect to well-known trademarks well-known trademarks are those that, without necessarily
being registered in a member, are well known as belonging to a particular trademark owner. Such marks enjoy
stronger protection than normal trademarks. According to Article 6bis of the Paris Convention, as incorporated
into the TRIPS Agreement, the registration of a sign as a trademark must be refused or cancelled, and its use
prohibited in a member, if that trademark is liable to cause confusion with a mark that is considered well known
in that member and used for identical or similar goods – whether or not the well-known trademark is registered
in that country. Such refusal, cancellation or prohibition of use should be affected ex officio by the competent
authority of a member if its legislation permits its authorities to act on their own initiative. Otherwise such action
must be available at the request of an interested party (such as the owner of the well-known mark).
28. (d) Licensing and assignment of rights The TRIPS Agreement provides in Article 21 that, while it is up to each
member to prescribe conditions on the licensing and assignment of trademark rights, an owner of a registered
trademark must always be able to assign the trademark with or without the transfer of the business to which the
trademark belongs. Before the introduction of the TRIPS Agreement, quite a number of countries allowed the
transfer or assignment of trademark only with the transfer of the corresponding business or goodwill located in the
relevant territory, which effectively barred trademark rights from being traded as independent assets. While countries
are free to regulate this aspect in their national legislation under the Paris Convention (Article 6quater), it has
become an obligation under the TRIPS Agreement to allow the assignment of trademarks independently from the
corresponding business operation.
(e) Other requirements According to Article 20 of the TRIPS Agreement, use of the trademark in the course of trade
must not be unjustifiably encumbered by special requirements, such as use with another trademark (so-called
‘twinning’ requirements), use in a special form, or use in a manner detrimental to the trademark’s ability to
distinguish the goods or services of one undertaking from those of other undertakings. As explained by the Panels in
Australia – Tobacco Plain Packaging (DS435, 441, 458, 467), this provision reflects the balance that the drafters of the
TRIPS Agreement intended to strike between the legitimate interest of trademark owners in using their trademarks in
the marketplace, and the right of members to adopt measures for the protection of certain societal interests that
may adversely affect such use.
3. What exceptions are permissible?
29. (a) Permissible exceptions Article 17, entitled ‘Exceptions’, stipulates that members may provide for exceptions to
the rights conferred by a trademark, provided that such exceptions are (1) limited, (2) take account of the
legitimate interests of the owner of the trademark and of those of (3) third parties. Article 17 cites ‘fair use of
descriptive terms’ as an illustrative example of a limited exception.
(b) No compulsory licensing permitted Article 21 of the TRIPS Agreement makes it clear that members’ legislation
shall not permit any compulsory licensing of trademarks. This reflects the view that, unlike in the patent area, there is
no public policy rationale for allowing compulsory licensing in the area of trademark rights and governments may
not, therefore, permit the use of a trademark without the authorization of the right holder.
4. What is the minimum term of protection?
According to Article 18 of the TRIPS Agreement, the initial registration and each renewal of registration shall be for
a term of no less than seven years. It also stipulates that the registration of a trademark must be renewable
indefinitely. This means that trademark rights, in contrast to copyright or patent rights, can last for an indefinite
period of time, provided the right owner renews the registration at the expiry of each term and pays the required
renewal fees.
If members require the actual use of a trademark in order to maintain registration, Article 19 of the TRIPS
Agreement provides that cancellation of a trademark may only occur after an uninterrupted period of three years
of non-use. This means that even if a country wants to require use of a trademark as a condition for renewal, it
must allow for a period of at least three years of uninterrupted non-use before the trademark can be cancelled for
that reason.
30. Conclusion :
• The trade mark is for protecting the name of the
product or services rather the product itself;
• Trade mark assures the customer about the source of a
product, though the quality of the product is not
assured by the trade mark
• The trade mark should be distinctive;
• Deceptively similar marks, geographical names etc.
cannot be registered as a trade mark;
• In India, the Trade Mark Act of 1999 is presently in force;
• The term of trade mark protection is 10 years, which can
be renewed from time to time, indefinitely;
• Trade mark can be assigned or transmitted;
• Using deceptively similar marks, falsifying the mark or
using unregistered mark cause infringement under Trade
Mark Act; and
• The penalties against offences related to trade mark can
range from fine to imprisonment.
