India: Registration And Protection Of Trademarks- In India And Abroad

Last Updated: 12 June 2014
Article by Ashwin D. Rajan and Mohit Porwal

Introduction

Anything which clearly distinguishes a product or service of a company from that of other companies in the concerned jurisdictional market, is generically termed as a trademark or service mark, respectively. The term "Trademark" is generally applied to distinguish goods or products of a company from those of other companies; while the word "Service Mark" is commonly and particularly used for differentiating service of a service-proving company or firm, from the services of other service organizations, particularly in the same marketplace. Thus, a trademark or service mark is nothing but a distinctive mark, word or wording, figure or logo, a sign or signature, or any other indication, which can unambiguously and scintillatingly distinguish a product or service of a company in the specified national or international jurisdiction.

The most common, prominent, and popular trademarks and service marks in countries of the world over, are made up of any one or more (a unique combination) of the following things --- a letter or word, numeral, sign or symbol, design or graphic image, phrase or phrasing, 2D or 3D shape, a unique combination of certain colors, label, a distinctive packaging, or a distinct sound or smell. The most important thing here is, that any trademark must be distinctly different and unique, from the trademarks of other companies, and ought to be capable of being represented graphically. Even the partial similarities, phonetic similarity, or resemblance in appearances between the trademarks of two different people or companies, can give rise to the cases of trademark opposition or trademark infringement litigation. For example --- Encore and Anchor; Ambal and Andal; or Saffola and Savola; etc, as these similarities may create the likelihood of confusion or deception to the customers.

To differentiate trademarks in one economic field from the trademarks in other economic fields, there is available an internationally recognized and adopted Trademark Classification List. This trademark classification list contains 45 different classes, which represent trademarks and service marks pertaining to various fields of the broad economic sectors of businesses and industries, professions, and services. Again, to ensure and fortify that any particular trademark or service mark is properly registered with any national or international trademarks office, Trademark Symbols are used. The trademark symbols used for goods and products of companies, for this purpose, are ® [an encircled capital R] and TM; while for the services of the service-providing companies, the trademark symbols utilized are ® and SM. The universal trademark symbol ® can never be used for representing an unregistered trademark or service mark. Any of the above-mentioned trademark symbols for products and services, is generally placed to the upper right of the preceding trademark or service mark, in the superscript style. During the time-period existing between the filing of application for trademark registration, and grant of the registration certificate, a company can use the symbol TM or SM, for the purposes of making commercial dealings or advertisements.

Functions of a Trademark or Service Mark

A trademark or service mark not only distinguishes the product or service of a company or firm from the products and services of other companies in the given jurisdictional marketplace, but also represents the identity and reputation of the company, and certain impressive qualities of the concerned product or service. The following are the main and most significant functions of a trademark or service mark:

  • It differentiates products or services, and also the companies connected with these.
  • It creates a favorable and impressive image (about the product or company) in the minds of consumers and customers.
  • It makes products or services prominent
  • It assures customers of certain unique, satisfying, and unchanged qualities of products or services.
  • It advertises products or services, making these increasingly popular.

Proper and lawful registration of a trademark with the concerned national or international trademarks office, gives some legitimate and privileged rights to the owner of the registered trademark, which are related with the authoritative ownership over the registered trademark; authoritative and exclusive commercial or professional uses of the trademark; security and protection of the trademark; hiring and trading of the trademark with any national and foreign person or company; and selling of the registered trademark.

Trademark Registration in India

In India, trademarks and service marks are registered under the federal registration system, with support of five regional trademarks offices, which are well-established in Mumbai, New Delhi, Kolkata, Ahmedabad, and Chennai. These zonal trademark registry offices register, regulate, and protect trademarks and service marks as per the rules, regulations, and provisions given in the Trade Marks Act of 1999, and the Trade Marks Rules of 2002, taking into accounts all amendments made to these so far. Flawless registration of any newly created trademark or service mark with any of these zonal trademarks offices, gives complete protection to all the trademark rights of the trademark owner in places all across India. Here, it may also be added that, proper and perfect registration of a trademark with the immediately concerned national trademark office, forms the primary basis for all international trademark registrations worldwide. Noteworthy here also is the fact that, as India is a respected member of most of the international conventions and treaties related with trademarks in the world over [mentioned in the last section], the trademark classification list followed in India [given in the Fourth Schedule of the Trade Marks Rules of 2002] also contains 45 classes, out of which eleven are associated with services in diverse sectors, and the remaining 34 are allotted to goods and products of various economic fields.

For getting one's newly-invented trademark registered in India, application is to be sent to the immediately concerned zonal trademarks office, based on the location of the applicant company. The major and main tasks or activities connected with registration of a trademark [or service mark] are --- Creation of Trademark; Trademark Search and Infringement Analysis; Filing of Trademark Application [Form TM-1]; Official Examination and Verification; and Trademark Prosecution for registration. Generally, any divisional trademark registry office of India completes the process of registration well within one year. However, based on the condition and status of the originality and uniqueness of the forwarded trademark, and situations of opposition or infringement allegations by other companies, the process of registration of the trademark may take longer time. The governmentally prescribed fee for getting a trademark registered in India is INR-3,500/- at present [this fee does not cover the consultation fee, lawyer's charge for preparing and filing the application for registration, fee for tackling opposition cases, and the service charge for trademark prosecution]. Such initial registration of a trademark stands valid and effective for a period of ten years, counted from the date of its registration. The application for Trademark Renewal is filed well within the expiration of this period in Form TM-12 with the concerned regional trademark office, together with a prescribed renewal fee of INR-5,000/-, for securing trademark rights for next ten years.

The new Indian Trade Marks of 1999, and the Trade Marks Rules of 2002, now include provisions for the following tasks and facilities:

  • The Classes for Service Marks have been increased to eleven classes, ranging from class 35 to class 45, as per an amendment in the Trade Marks Rules of 2002, made in year 2010.
  • Multi-Class Application --- A Single application can now be filed for registering trademarks belonging to different classes.
  • Registration of the Collective Marks is possible
  • The Shape of Goods, Designing of Packaging, and a certain unique Combination of Colors, have been included in the purview of definition of a trademark, under the Section 2(1) (zb) of the Trade Marks Act of 1999.
  • The time-period for the validation of the initial registration of a trademark or service mark, has been extended to ten years from seven years.

Trademark Registration and Protection Worldwide

For extending one's businesses to international horizons, proper registrations of the concerned trademarks under one or more international trademark treaties are pre-requisite. Today, for protecting the due rights of the owners of trademarks in international arenas, there are four most significant and influential international trademark conventions or treaties in the entire world. These magnificent and globally reputed treaties are the following:

  • The TRIPS Agreement (Agreement on Trade Related Aspects of Intellectual Property Rights): --- This international agreement which came into existence in the year 1995, is efficiently and prudently administered by the World Trade Organization (WTO), and has at present over 150 member countries of the world over.
  • Berne or Paris Convention: --- The Berne Convention has the great credit for being the oldest convention in the whole world, for protection of intellectual property. In 1971, this Berne Convention of 1886 was modified in Paris. This famous convention has been signed by as much as 170 countries, which are located in regions all across the whole world.
  • Madrid Protocol: --- This protocol resulted from the Madrid Agreement of 1989, and came into force in the year 1995. This highly significant system in connection with international businesses is administered by the International Bureau of the World Intellectual Property Organization (WIPO), Geneva, Switzerland. At present, there are 91 member countries to this Madrid Protocol in the world over. In year 2013, India also became a member to this international treaty for trademarks to provide a unique opportunity to all domestic companies to protect their mark across the world jurisdictions by filing one application with one set of fees.
  • European Community Trademark (CTM): --- Any company can readily obtain registration and protection of his trademark in anyone or all member countries of the European Union, with a single application filed with the CTM Office in Alicante, Spain.

Any company or firm who desires to extend his businesses to any targeted country of the world, can select any of the above-mentioned international treaties for trademarks, to which the desired country is a member. As noted above, each of these treaties has a large number of party countries as members. Again, each of these treaties enables an applicant company to obtain easily and expeditiously registration and protection of its trademark in anyone or all party countries, through filing just a single application.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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