Trademark Registration in India – Meaning | Process | Types

A trademark is a recognisable sign, design or expression which identifies products or services of a particular source from those of others.

A trademark may be located on a package, a label, a voucher or on the product itself. Trademark symbolises the business reputation.

Trade mark is valuable property of any business. Some of the well known trademarks are Coca Cola, Pepsi, Tata etc.

A trademark is intangible property.

Common benefits of trademark:

• It identifies the goods/or services and its origin.
• It guarantees its unchanged quality.
• It advertises the goods/services.
• It creates an image for the goods/services.

A trademark is a recognisable sign, design or expression which identifies products or services of a particular source from those of others.

A trademark may be located on a package, a label, a voucher or on the product itself. Trademark symbolises the business reputation.

Trade mark is valuable property of any business. Some of the well known trademarks are Coca Cola, Pepsi, Tata etc.

A trademark is intangible property.

Trademark [Section 2(zb)] – 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.

Following are the prerequisites for registration of a trademark:

• The selected mark should be capable of being represented graphically (that is in the paper form).
• It should be capable of distinguishing the goods or services of one undertaking from those of others.
• It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person.

Any startup needs to be cautious in selecting its trade name, brands, logos, packaging for products, domain names and any other mark which it proposes to use. You must do a proper due diligence before adopting a trademark. The trademarks can be broadly classified into following five categories:

1. Generic Trademark – Generic mark means using the name of the product for the product, like “Salt” for salt.
2. Descriptive Trademark – Descriptive marks mean the mark describing the characteristic of the products, like using the mark “Fair” for the fairness creams.
3. Suggestive Trademarks – Suggestive marks mean the mark suggesting the characteristic of the products, like “Habitat” for home furnishings products.
4. Arbitrary Trademarks – Arbitrary marks means mark which exist in popular vocabulary, but have no logical relationship to the goods or services for which they are used, like “Blackberry” for phones.
5. Invented/coined Trademarks – The invented/coined marks means coining a new word which has no dictionary meaning, like “Adidas”.

The strongest marks are easiest to protect are invented or arbitrary marks. The weaker marks are descriptive or suggestive marks which are very hard to protect. The weakest marks are generic marks which can never function as trademarks.

India follows the NICE Classification of Goods & Services for the purpose of registration of trademarks. The NICE Classification groups products into 45 classes (classes 1-34 include goods and classes 35-45 include services). The NICE Classification is recognised in the majority of countries and makes applying for trademarks internationally a streamlined process. Every startup, seeking to trademark a goods or services, has to choose from the appropriate classes, out of the 45 classes.

While adopting any mark, the startup should also keep in mind and ensure that the mark is not being used by any other person in India or abroad, especially if the mark is well-known.

Trademarks can be protected under the Trade Mark Act, 1999 and the common law i.e. under the remedy of passing off. If a person is using a similar mark for similar or related goods or services or is using a well-known mark, the other person can file a suit for violation of his intellectual property i.e. trademark rights irrespective of the fact that the trademark is registered or not.

Registration of a trademark is not a prerequisite in order to sustain a civil or criminal action against violation of trademarks in India. The prior adoption and use of the trademark is of utmost importance under trademark laws.

The relief which a Court may usually grant in a suit for infringement or passing off includes permanent and interim injunction, damages or account of profits, delivery of the infringing goods for destruction and cost of the legal proceedings. It is pertinent to note that infringement of a trademark is also a cognizable offence and criminal proceedings can also be initiated against the infringers.

Mark which is similar to well known trademark cannot be registered as trademark under the Trade Mark Act, 1999.

Well Known Trademark [Section 2(1)(zg)] – A well known trademark in relation to any goods or services means a mark which has become so to the substantial segment of the public which uses such goods or services such that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

Example – Mercedes Benz may not be known to many persons in India but still it is well known trademark.

Important points relating to well known trademark:

• The Registrar shall take into account factors laid down in Section 11(6) & (7) to determine whether trade Mark is well-known trademark or not.
• Where a trademark is well known in one part of India it is still regarded as well known trademark under the Act.
• The well-known trademark need not be used in India, need not be registered in India, even application for registration need not have been filed in India.
• Even if trademark has been registered outside India it can still be considered as well known trademark.

‘EcoSustain World’ can protect its well-known Trademark in India.

Well Known Trademark [Section 2(1)(zg)] – A well known trademark in relation to any goods or services means a mark which has become so to the substantial segment of the public which uses such goods or services such that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first-mentioned goods or services.

Example:

(1) Mercedes Benz may not be known to many persons in India but still it is well known trademark.

(2) Google has been registered as a well-known trademark of Alphabet Inc., which thereby means only Alphabet Inc. can register the term ‘Google’ for any category of goods and services. Even if the service is not related to the Internet industry, no other company but Alphabet Inc. can register ‘Google’ as its trademark.

Significance of a well-known trade mark – The well-known trademark need not be used in India, need not be registered in India, even application for registration need not have been filed in India.

Even if trademark has been registered outside India it can still be considered as well known trademark.

Why Registrar will protect a well-known trade mark – A well-known trade mark has been vouchsafed with extraordinary protection and safeguards against passing off and infringement of such trademarks. Well-known trademarks are recognized in India on the basis of their reputation, nationally, internationally and the cross-borders. Unlike other trademarks whose goodwill and reputation is limited to a certain specified geographical area and to a certain range of products, well-known trademarks have its goodwill and reputation protected across the nation and across categories of goods and services. It is law that restricts the Trade Mark Registry to allow and register any mark as a trademark which is deceptively similar to any of the well-known trademark.

The Supreme Court in Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd. & Others observed that:

1. For inherently distinctive marks ownership is governed by priority of use for such marks. The first user of sale of goods/services is the owner who is senior to others.
2. These marks are given legal protection against infringement immediately upon adoption and use in trade.
3. Some courts indicate that even prior sales of goods – though small in size with the mark – are sufficient to establish priority, the test being to determine continuous prior user and the volume of sale or the degree of familiarity of the public with the mark.

Therefore, the proprietorship of the trademark is decided by the date of usage of the mark by a person in business transactions.

Absolute grounds for refusal of registration [Section 9(1)] – Following trademarks cannot be registered:

• Which are devoid of any distinctive character i.e. not capable of distinguishing goods or services of one person from those of another person.
• Which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service.
• Which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.

However, if a trade mark has acquired a distinctive character as a result of the use made of it or is a well-known trade mark, its registration shall not be refused.

In short, a trademark which has been demonstrated to be distinctive in the marketplace shall be regarded as distinctive in law as well and be registrable.

Marks which cannot be registered as trademark [Section 9(2)] – Following marks cannot be registered as trademark:

1. Which is likely to deceive or cause confusion.’
2. Which contains any matter likely to hurt the religious susceptibilities.
3. Which contains scandalous or obscene matter.
4. If its use is prohibited under the Emblems & Names (Prevention of Improper Use) Act, 1950.

Shape that cannot be registered as trademark [Section 9(3)] – Following marks cannot be registered as trademark:

1. Shape of goods which results from the nature of the goods themselves.
2. Shape of goods which is necessary to obtain a technical result.
3. Shape which gives substantial value to the goods.

Relative grounds for refusal of registration:

(1) Likely to cause confusion in case of similar goods [Section 11(1)] – Trademark shall not be registered if there is likelihood of confusion on the part of public because of –

(a) Its identity with an earlier trade mark and similarity of goods or services covered by the others trademark.

(b) Its similarity to an earlier trademark and the identity or similarity of the goods or services covered by the others trademark.

(2) Dissimilar goods but trademark already registered [Section 11(2)] – In case of dissimilar goods, a identical or similar trademark will not be registered if earlier trademark is a well known trademark in India and use of mark proposed to be registered would be unfair or detrimental to proprietor of the well known trademark.

(3) No registration due to law of passing off or copyright [Section 11(3)] – A trademark shall not be registered if its use in India is prevented by the law of passing off protection or by law of copyright.

(4) When trademark can be registered even if similar or identical [Section 11(4)] – A trademark can be registered if proprietor of earlier trademark gives consent to registration of new mark.

(5) No refusal unless opposed [Section 11(5)] – Registration of any trademark shall not be refused unless registration is opposed by proprietor of earlier trademark.

(6) Section 11(6) lays down the factors that are to be considered by the Registrar to determine whether ‘a trademark is a well-known trademark or not’.

(7) Section 11(7) lays down the factors that are to be considered by the Registrar to determine whether ‘a trademark is known or recognised in a relevant section of the public’.

As per Section 9(1) of the Trade Marks Act, 1999, trademarks cannot be registered which are devoid of any distinctive character i.e. not capable of distinguishing goods or services of one person from those of another person.

As per Section 9(2), marks cannot be registered as trademark which contains any matter likely to hurt the religious susceptibilities.

In the case of Amritpal Singh v. Lal Babu Priyadarshi, Intellectual Property Appellate Board (IPAB) the word RAMAYAN was refused registration on the grounds that – Firstly, it was not capable of distinguishing the goods of the applicant and Secondly, that it was likely to hurt religious sentiments of a class of society.

Thus, Priya will not succeed in registering such a trademark RAMAYAN under the Trade Marks Act, 1999.

Absolute grounds for refusal of registration [Section 9(1)] – Following trademarks cannot be registered:

• Which are devoid of any distinctive character i.e. not capable of distinguishing goods or services of one person from those of another person.
• Which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service.
• Which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.

However, if a trademark has acquired a distinctive character as a result of the use made of it or is a well-known trade mark, its registration shall not be refused.

In short, a trademark which has been demonstrated to be distinctive in the marketplace shall be regarded as distinctive in law as well and be registrable.

Application for registration [Section 18]:

1. Any person claiming to be the proprietor of a trademark used or proposed to be used can apply to the Registrar in prescribed manner for the registration of his trademark.
2. A single application may be made for registration of a trademark for different classes of goods and services but separate fees are payable for each class.
3. Application shall be filed in the office of the Trademark Registry under whose territorial jurisdiction the principal place of business of proprietor is situated.
4. The Registrar may refuse or accept application subject to such amendments, modifications, conditions or limitations, as he may think fit.
5. In the case of a refusal or conditional acceptance, the Registrar shall record in writing the grounds for such refusal or conditional acceptance.

Registration [Section 23]:

• After deciding on opposition and hearing parties, Registrar can register trademark within 18 months of the filing of the application. Date of application shall be deemed to be date of registration.
• On the registration of a trade mark, the Registrar shall issue a certificate in the prescribed form sealed with the seal of the Trademarks Registry.
• If registration is not completed in 12 months due to fault of applicant, Registrar can treat the application as abandoned.
• Register of trademark can be amended by the Registrar for clerical error or on obvious mistake.

Duration, renewal, removal and restoration and registration [Section 25]:

1. The registration of trademark shall be valid for 10 years. It can be
   renewed from time to time.
2. On application by the registered proprietor of a trademark in prescribed manner and within the prescribed period, the Registrar shall renew the registration of the trademark for a period of 10 years from the date of expiration of the original registration or of the last renewal of registration, as the case may be.
3. Before the expiration of last registration, the Registrar will send a notice in the prescribed manner to notify proprietor of a registered trademark for the renewal of registration and fee to be paid for renewal. If fees are not paid or prescribed conditions are not fulfilled, the trademark will be removed from register. However, trademark will not removed if fees plus surcharge is paid within 6 months from the date of expiration of registration.
4. If a trademark has been removed from the register for non-payment of fees, the Registrar can restore the trademark on receipt of an application in the prescribed form and on payment of the prescribed fee for a period of 10 years from the expiration of the last registration subject to such conditions or limitations as he thinks fit.
5. Such restoration can be made if proprietor of a registered trademark applies after six months and within one year from the expiration of the last registration of the trademark.

Infringement of registered trademarks [Section 29] – A registered trademark is ‘infringed’ when a person other than registered proprietor or a person using by way of permitted use, uses in course of trade.

Following constitutes infringement of registered trademark:

1. Use of a mark which is identical with or deceptively similar to other registered trademark.
2. Use of a mark which likely to cause confusion because of identity or similarity with other registered trademark.
3. Use of identical or similar registered trademark on goods which are not similar.
4. Use of registered trademark as trade name or name of business.
5. Unauthorised use of trademark for labelling or packing of goods or advertising goods or services.
6. Using a mark in advertisement to take unfair advantage or which is detrimental to its distinctive character or is against the reputation of trademark.

Following are the main points of difference between infringement of trademark and passing off: