March 14, 2023
Trademark v. Patent: Comparing the legal protection for your Intellectual Property
Overview
The term “Trademark” and “Patent” often get used interchangeably by those who are not aware of the difference that lies between them. At first look, they do seem to be quite similar because their essential use is protection but once one looks through the peels, the difference between the two becomes quite evident even to the naked and untrained eye.
Key Take away
In this blog, an attempt has been made to draw the stark difference between a Patent and a Trademark. Beginning with simple definitions, their importance and different types, it finally builds up to lay down the difference between the two in layman’s language and concludes with which one is best for your business. Additionally, a number of Frequently Asked Questions have also been listed.
Difference Between a Patent and Trademark?
What is a Patent?
You can obtain a patent as a form of intellectual property right if you create a brand-new, ground-breaking invention. It is granted by the nation in which you submit your patent application in the form of a legal certificate (Indian Patent Office in India). Patents are only issued following an extensive investigation by the patent examiner or officer, which confirms that no one else has already invented or produced a product that is similar to yours. Owners of patents have the full, exclusive right to make any use of their inventions and to profit financially from them. Additionally, patent owners have the right to demand monetary damages and impose restrictions on how corporations and other entities might use their inventions.
Why are Patents important?
It all boils down to protection when it comes to patents. With a patent registration, you get 20 years to develop and use the concept before your rivals get the access to the open rights to use it. The following are the main factors that make patents so important:
- Having a strong market position could make your new idea stand out among rivals.
- You’ll be viewed as a thought leader, increasing your credibility and reputation
- A higher rate of return on your investment is possible because you can make money by commercializing the invention by taking royalty or licensing it.
- Generating money for your company by appealing to investors if you have a patent that enables you to expand your market share.
- Getting a patent pending or patent granted could aid you when creating new contracts and gives you more negotiating power.
Types of Patents
In order to protect various types of inventions, various forms of patent applications are available. Smart innovators can use the various patent application types to obtain the legal protection they require for their discoveries. Though the most sought after patents are:
1. Utility Patent
More than two-thirds of all issued patents are utility patents, which are issued worldwide. It is given for a brand-new, practical, and original idea. Any device, procedure, produced good, material composition, or invention that improves upon an earlier one can be included.
There are three different sorts of utility: general utility, which is based on functionality, specific utility, which focuses on how the invention carries out the purpose, and moral utility, which ensures that the product is neither poisonous nor encourages improper use.
- Process Patent: where only a part/ process of a project or invention is patented.
- Product Patent: where the entire invention is patented.
2. Plant Patent
A plant patent does exactly what it says on the tin: it safeguards novel varieties of plants grown from cuttings or other nonsexual methods. Genetically modified species typically are not covered by plant patents and focus more on conventional horticulture.
What is a Trademark?
A Trademark is primarily any term, symbol, phrase, sound or appearance that acts as the of a brand’s identifier. Brands are often recognized by their distinctive names, emblems, sound, color combination and in unconventional scenarios the smell and texture also. Trademarks or service marks, aid in separating the goods and services offered by various brands. They are a type of intellectual property protection that is given to a brand for its distinctive presentation, similar to a patent. Brands do not, however, necessarily need to register a trademark, despite the fact that doing so may assist them to get exclusive protection rights, unlike patents. You can gain legally from registering a trademark for your brand in a number of ways as well.
Types of Trademarks
Although there are many different types of trademarks, they all serve the same objective, which is to let consumers recognize products and services coming from a particular manufacturer or service provider.
The trademark in general are distinguished on either the basis of protection or on the basis of types.
On basis of protection:
1. Fanciful: A mark which doesn’t have a dictionary meaning and is only created for the purpose of the brand. The well-known examples for such a mark can be Adidas, Kodak, Xerox, etc. They have the highest level of protection.
2. Arbitrary: These kinds of marks have a lower protection than fanciful marks as they have a dictionary meaning but it is not to the kind of goods or services they are being used for. For example, the mark “Apple” though refers to a fruit is used for phones.
3. Suggestive: These marks lie in the lower level of pedestal of protection as they describe the goods or services but the consumer has to use their imagination to understand the connection. The examples for such marks can be Airbus for Ariel vehicles manufacturing.
4. Descriptive: Descriptive marks have the least amount of protection and they have to justify as to whether they have acquired distinctiveness or not. Such marks directly describe the goods or services being provided under the mark.
On basis of its type:
1. Word Mark: A word mark is a simply a word or a lexical combination of words in the text form being applied for registration.
2. Device Mark: A device mark is an artistic representation of the mark in a stylized font and a particular color combination along with an artwork in some cases.
3. Label Mark: A label mark is usually the packaging of the product and the rights over such a mark is for the mark as a whole and no separate rights are given to any descriptive part of the mark.
4. Shape Mark: Shape Mark is only used to safeguard a product’s shape so that consumers can relate to it and choose to purchase it from a particular producer. Once a product is acknowledged to have a distinctive shape, its shape can be registered. The Coca-Cola or Fanta bottles, which have a particular shape associated with the brand, are examples of shapes.
5. Sound Mark: A sound mark is a noise that can be connected to a good or service coming from a specific vendor. People must be able to quickly and easily recognize the service, product, or show that the sound stands for in order for it to be registered as a sound mark. Examples for this can be the Nokia & NBC intro music.
6. Certification Mark: A certification mark is a symbol used by the organization to indicate a product’s origin, material, quality, or other specified information. The fundamental function of a certification mark is to highlight the product standard and provide buyers with assurances about the goods.
There are various unconventional marks that are up and coming as brand identifiers such as colour marks, texture marks, smell marks, etc which in international domain and as well as in few Indian scenarios been recognized for their rights.
Difference Between Trademarks and Patents
The six characteristics listed below illustrate the distinctions between patents and trademarks:
The governing laws that provide for the protection of patents and trademarks
The intellectual property laws of the countries where patents and trademarks are registered and filed, respectively, safeguard both of these property rights. In India, the Trademarks Act of 1999 protects trademarks, whereas the Patent Act of 1970 protects patents.
The Degree of protection given to patents and trademarks
A trademark safeguards a company’s distinctive name/mark that sets it apart from rival businesses in the public eye. Brands have the right to register a variety of identifying characteristics for their products, including but not limited to names, logos, slogans, colors, and shapes. On the other hand, an invention that is novel and unique and has an utility is protected by a patent.
The truth about patent and trademark validity
A 20-year validity period is included with patent which has to be renewed every year for the said period of 20 years without which the right over the patent ceases. On the other hand, while trademarks typically only have a 10-year lifespan, they can be renewed repeatedly before their expiration date to make them perpetual.
Obtaining a patent and a trademark takes time
A patent is normally awarded in India within the span of two to four years ideally which can increase if they are objections or oppositions. Several forms have to be filled out, the patent application is published patent journals and then the examination is conducted for which the examination report is issue and addressed by the Applicant.
Obtaining a trademark is also a lengthy process as the mark undergoes the checks as per the act and posts which if only the examiner is satisfied the mark is published. Subsequent to which the mark is open to opposition by third party for a period of 4 months. If a mark is opposed, the process can extend for 5-10 years.
In both the Patent and Trademark, there is provision for expedited examination which fastens the process.
Having to submit a provisional application
The sort of application is another area where patents and trademarks diverge. Within a year of submitting a provisional application, patent applicants are allowed to finish writing their patent specifications.
Application of patent and trademark rights
As per the Indian laws, the prior user is superior to the prior registrant and therefore though you have rights over your mark as soon as you start using it, the registration provides an extra layer of protection under the trademark act. When it comes to patents, the rights are granted from the date of application for a period of 20 years. The Office of Patent keeps the application a secret for 18 months post which anyone can apply for documents and inspection with a specified fee. Also a patent cannot be published pre application due to the idea of patent being novel and non-obvious, except certain situations.
What Suits Your Business- Patent or Trademark?
As established above, for novel and non-obvious inventions a patent is awarded, but in contrast, a trademark is awarded for a mark which is distinctive enough to distinguish one product from another in the market. Therefore, when deciding between the two the absolute question is- is whether there is an invention or is it a brand identifier?
Frequently Asked Questions
1. Is Google a Trademark or Patent?
“Google” is a brand name. Hence, it is trademark. At the same time, Google has numerous patents and patent applications related to its search inventions, and more.
2. Do Trademarks and Patents offer the same level of protection?
As discussed earlier, trademarks and patents are applied to different kinds of intellectual property. Therefore, while their essential duty remains the same, i.e. protecting intellectual property, their functions are quite different. Also, a registered trademark is valid for a 10-year period only, from the date of application, and can be renewed. Whereas, patent protection is valid for 20 years which is to be renewed every year after the first two years by paying the specific fees without which the patent ceases..
3. What is the cost of obtaining a trademark or patent?
The government fee for obtaining a trademark is ₹4500 for individuals/startups/Small Enterprises and ₹9000 for a Large Entity per mark per class. For a patent, it is ₹1,600 for an individual, small entities, startups or educational institute and ₹8000 for a large entity.
4. Are trademarks and patents recognized internationally?
Patents and Trademarks are territorial rights. In general, they are exclusive rights that are only applicable in the country or region in which they have been filed and granted. To obtain protection internationally, it is required that you must file an application in every country. But there are treaties and conventions that give the applicant to apply for registration in multiple countries at the same time. For trademark there is WIPO’s Madrid System whereas for Patent Application can be moved under Patent Corporation Treaty also known as PCT.
5. What is the role of a trademark or patent attorney in the application process?
A trademark lawyer offers advice and legal support to help a trademark proprietor or a potential applicant’s in determining whether their mark does not conflict with the rights of any other third party person. Not only that the Trademark attorney can help in representing the application during the objection as well as the opposition stage.
Patent attorneys assists in the patent application which consists of search, drafting of provisional and complete specifications of the invention as these are the most crucial element for registration.
About Author
Apoorva Sharma is an Advocate enrolled with Bar Council of Delhi. She is a Law Graduate from Vivekananda Institute of Professional Studies, GGSIPU.
Reviewed by Naseem Sheikh
Patent Related Fact checked by Prateek Shrivastava
February 11, 2023
Does AI affect Intellectual Property?
In today’s digital age, artificial intelligence (AI) is revolutionizing the way we think about innovation and creativity. AI functions on algorithms which are a set of rules that command how the AI can process data for simulating automated reasoning, complex calculations and also to develop its own algorithms. Once an AI is fed with the sophisticated algorithms, it can autonomously develops its own creations and innovations. As AI becomes more sophisticated, it raises important questions about how to protect and control the creations it produces. In this blog, we’ll explore the legal and ethical implications of AI on intellectual property, and discuss how the field is evolving to adapt to the new challenges it presents. So, whether you’re a tech enthusiast, a business owner, or simply someone interested in the future of innovation, this blog is for you. Get ready to dive into the world of AI and intellectual property, and discover how these two seemingly unrelated fields are connected in ways you never imagined.
Understanding the Relationship between AI and Intellectual Property
AI and intellectual property rights are two important and interconnected concepts that are shaping the future of innovation. As AI technology becomes more advanced, it is increasingly being used to assist or autonomously generate new ideas and creations, from music and art to software and inventions. This raises important questions about who owns and controls these AI-generated creations and how they should be protected under the existing intellectual property laws.
One of the key challenges in understanding the relationship between AI and intellectual property is determining authorship. In traditional creative processes, authorship is clear-cut, but with AI, it can be difficult to determine who is responsible for a given creation. Can an AI be considered a legal person and deemed the author of the work it creates is a question that needs to be addressed. This has led to calls for new legal frameworks that can better address the unique challenges posed by AI-generated works.
The relationship between AI and intellectual property has therefore become complex and multifaceted, and there is still much to be understood in terms of how best to protect and govern AI-generated creations. Another key issue to discuss is whether using copyrighted works for machine learning without permission would be considered a copyright violation and what effect that would have on the advancement of AI and the free flow of data to enhance innovation in AI. It is also important to decide whether an exception should be made for certain limited uses of such data in machine learning, such as the use in non-commercial user-generated works or the use for research.
It is also to be seen whether there can be any originality attributed to the artistic works created by AI. Since AI depends on pre-existing data and complexity of its programming, the work thus produced may qualify as original work and hence be copyright-protectable. However, there is another contention that the work so produced is only a collection made without any judgement or talent and hence cannot be treated as original.
The role of artificial intelligence in intellectual property
One of the key ways that AI is impacting intellectual property is by making it easier to create and monetize new works. AI algorithms and machine learning models can be trained to generate music, art, and even writing, which can be used to create new products and services. This is particularly relevant for startups and small and medium-sized enterprises (SMEs) looking to leverage AI to create new revenue streams and business models. According to a report by Accenture, the use of AI in the 16 industries alone is expected to drive $14 trillion in economic growth by 2035.
Balancing Innovation and Protection: AI and Intellectual Property
AI is driving innovation and creating new revenue streams, but it also raises legal challenges for intellectual property rights. Balancing the need to protect AI-generated works with the need to encourage innovation is crucial. Organizations such as WIPO are working towards creating guidelines and best practices for protecting AI-generated works under intellectual property laws.
i). Protecting Intellectual Property in the Age of AI
As artificial intelligence (AI) continues to advance and play a larger role in our economy, it’s important to consider the implications it has on intellectual property ownership. Talking about AI and intellectual property ownership with the ability of AI to create new works, from music to writing, determining authorship and protecting ownership rights becomes increasingly complex. It addresses questions including whether the law should allow or demand that an AI program be identified as the inventor, or whether a human should always be the inventor. It also takes into account the practical difficulties of determining human ownership or authorship if AI systems cannot be given ownership, and whether this decision should be left to private arrangements, such as corporate policy, with the possibility of judicial review by appeal in accordance with current laws concerning disputes over inventorship.
ii). AI's Effect on the Enforcement of Intellectual Property (effect on copyright and trademark)
One of the most significant effects of AI on intellectual property is its impact on the enforcement of copyright and trademark laws. AI-based tools can be used to identify and prevent intellectual property infringement, by scanning the web for instances of unauthorized use of copyrighted or trademarked material. This can help rights holders more effectively protect and monetize their intellectual property.
AI-based tools are used to have a streamline process of monitoring online platforms and identify instances of unauthorized use of images or videos. This can help rights holders take action against infringers more quickly and efficiently, and can also help platforms like YouTube and Facebook remove infringing content more effectively. So this gives a concrete relationship between AI and intellectual property protection that is a lot advantageous in many cases. Similarly, AI-based tools can be used to identify instances of trademark infringement, such as the unauthorized use of a brand name or logo, which can help rights holders protect their brand and prevent consumer confusion.
iii). AI and the Challenges to Protecting Intellectual Property
To address these challenges, some experts have suggested creating new legal categories, such as “electronic authorship” or “AI-generated works” to better protect and govern AI-generated creations. Additionally, organizations such as the World Intellectual Property Organization (WIPO) are actively working to develop new guidelines and best practices for protecting AI-generated works under intellectual property laws.
Artificial intelligence (AI) poses several challenges to protecting intellectual property. One of the main challenges is the difficulty in determining the authorship of AI-generated works. With the increasing use of AI in creative fields such as music and writing, it becomes increasingly complex to determine who should be credited as the author of a work. This can make it difficult to protect the rights of creators and also to monetize their work.
Another challenge is the ability of AI to create new works at an unprecedented speed and scale. This can make it difficult for rights holders to keep track of and protect their intellectual property. For example, AI-generated content such as videos, images and music could be created and distributed on the internet in a matter of minutes, making it challenging for rights holders to detect and prevent infringement. So this is another aspect that signifies the relationship between AI and intellectual property.
iv). AI and the Future of Intellectual Property
As AI technology continues to advance, it is likely to have a profound impact on the future of the intellectual property. One area where this impact is likely to be felt is in the realm of licensing.
With the increasing use of AI in various industries, there is a growing need for licensing agreements that can effectively govern the use of AI-generated works. This includes not only traditional forms of intellectual property such as music and writing but also newer forms such as AI-generated images and videos. As a result, there is a growing need for licensing agreements that can effectively govern the use of AI-generated works and protect the rights of creators.
Another area where AI is likely to have a significant impact on the future of the intellectual property is in the field of patent law. As AI-based systems become more prevalent, there is a growing need for patents that can effectively protect the rights of inventors and innovators. However, the complexity of AI-based systems can make it difficult to determine who should be credited as the inventor of a work, and this can create challenges for the patent system.
Conclusion
AI is rapidly transforming the way in which we create, consume, and protect intellectual property. From the generation of new works to the enforcement of existing rights, AI is having a profound impact on the intellectual property landscape. We must also work towards creating effective legal frameworks that can adapt to the new challenges posed by AI. This includes ensuring that creators are properly compensated for their works and that intellectual property rights are effectively enforced. Ultimately, the key to successfully navigating the relationship between AI and intellectual property will be striking a balance between innovation and protection.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India.
January 16, 2023
Trademark Rectification in India
Trademark Rectification in India
A trademark is an intellectual property right that provides protection for a brand’s unique mark, symbol, design, expression, and so on that differentiates it from any other products available on the market. The registered trademark must adhere to the Trademark Act’s requirements. Whenever there is a defect in registering the trademark or in contravention to the provisions of the act, a rectification procedure is followed to remove the trademark from the trademarks register.
Trademark Rectification is a legal process for rectifying or correcting any defect in the specifics of a trademark as recorded in trademark register. A trademark if incorrectly registered or if it is still available in the trademark register after the expiration of its registration period or has been malafidely applied and registered. Within each of these situations, the Indian Trademark Law enables its rectification of trademark applications.
When can a trademark be rectified?
If the proprietor of the trademark discovers small mistakes or determines that some modifications are required to correct errors once it has been registered, the applicant could thus file for rectification with the Registrar. The Act allows for rectification if a trademark is incorrectly registered or remains incorrectly in the register. Any person who is dissatisfied with the trademark may seek rectification or cancellation. An aggrieved person is someone whose interests are harmed by the existence of the entry within the register. The Registrar may also rectify/cancel a trademark on its own motion.
Grounds for trademark rectification in India
The following are the most common grounds for filing a rectification application:
- On grounds of non-use of trademark for at least 5 years.
- breach or failure to observe a condition entered in the Register in relation to the registration of the mark
- The mark registered is similar to an already registered mark.
- Error or defect in any entry made in the Register
- The particular removal of an entry, such as a disclaimer, a situation, or a restriction.
- The mark is incorrectly remaining on the register
- Whenever the renewal fee is not paid.
- A trademark may be removed from the register if it was obtained through fraud, concealment or by misrepresenting any material fact.
Who can file for trademark rectification?
Any person who is affected by a trademark entry on the register can file for rectification of trademark or the Registrar can also initiate the rectification proceedings on its own motion on any of the grounds specified above.
Important factors to consider when filing a trademark rectification
- Proper and detailed submissions: It is critical that a proper and detailed statement of case is made out in a trademark rectification application making out all the grounds for rectification and arguments in support along with detailed facts of the matter. By submitting a proper and detailed statement in support of the trademark rectification, one can significantly improve the probability of successful trademark rectification.
- There is no guarantee: Filing a trademark rectification doesn’t really guarantee trademark rectification. Trademark rectification is a procedure, and only the Trademark Registrar could allow rectification based on the facts and circumstances of each matter. As a result, one can only make their best efforts to make out their best case before the Trademark Registrar to get the outcome in their favor.
- Timeline: Following the filing of a trademark rectification, it sometimes necessitates a time-bound action from the rectification applicant or registered proprietor. As a result, it is essential to monitor the status of the rectification application on a regular basis and take the necessary actions until disposal of rectification.
How to prevent trademark rectification or cancellation in India?
In order to avoid rectification or cancellation of a trademark in India, a registered proprietor must:
- Renew their mark on a regular basis.
- Keep the mark’s distinctive and follow any conditions/ restrictions imposed while entering the trademark on the register.
- Not leaving the mark unused for a period over five years from the date of entry of the mark in the register.
Documents required for trademark rectification
The following documents are required to file a trademark rectification or cancellation:
- A duly filled Form TM-O for rectification/cancellation of a trade mark must be moved through online or physical mode before the concerned jurisdiction where the mark is entered in register.
- A case statement that outlines the facts supporting the claim, the relief sought, and the nature of the applicant’s interest.
How rectification affects the trademark?
The impact of trademark rectification is that if the Registrar accepts the application for Rectification, they could remove the mark, add conditions, add/amend the specifications or in worse case delete the trademark in which the rectification is filed.
Consequences of valid trademark rectification on your trademark
Whenever an application for rectification, cancellation or removal is filed, the Registrar notifies the registered trademark holder to submit a counter response after the rectification application is received. After the response stage, evidence of both parties is recorded and a hearing is held. After hearing both the parties and reviewing the documents on record, the rectification application is accordingly allowed or dismissed.
To defend your registered trademark from rectification, cancellation, or removal, you must take the necessary precautions, for instance renewing the trademark on a regular basis, or continuing to use the trademark and not leaving it unused for more than five years, etc.
frequently asked questions
1. How to apply for rectification?
The trademark rectification application online can be filed by filling the “TM-O” form for rectification/cancellation and pay the applicable fees.
2. What is the defensive registration in trademark rectification applications?
By general rule, a trademark is granted protection with respect to the goods or services it is used and granted registration for. To extend the protection over all classes, trademark owners file applications in all 45 trademark classes despite the fact that the mark is only used or ever intended to be used in a few and not all of the classes. This is known as defensive registration. The courts have also held in various cases as well against the practice of defensive registrations. As a result, if a trademark rectification is filed against such marks and it is demonstrated that the proprietor has no intention of using the mark for the products and services it is registered, the mark could be removed from the register.
3. What is the rectification of a trademark?
Trademark rectification in India is the legal procedure of correcting a mistake in a trademark registered with the Indian trademark registrar.
4. What is the effect of rectification?
Following the filing of the rectification application, if it is found that any of the grounds for rectification are met, the registrar may remove, decline, or rectify the trademark entry within the registry.
5. Who can file for trademark rectification?
Any individual who is distressed with a trademark that has been registered may seek rectification by demonstrating the inconsistencies in registration.
6. What is the cancellation of the trademark?
Trademark cancellation refers to an application to have a recently registered trademark removed from the register of trademarks.
7. How much does it take to file trademark rectification?
The preparation and filing of the trademark rectification in India takes 5-7 days.
8. What is the government fee for filing rectification/cancellation?
The government fee for filing rectification/cancellation is INR 2700/-.
9. Can an application for rectification be made when there is suit for infringement is pending before the civil court?
The application could be made, but if a suit for infringement is pending before the civil court, the result of the suit is contingent to the decision of rectification application with regard to the validity of the trademark.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India.
January 7, 2023
Trade mark litigation in India
What is Trademark Litigation?
Trademark litigation is approaching the court to adjudicate the dispute over a trademark. Though the trademark rights are territorial in nature but such litigation may be both domestic and international in nature.
What is trademark litigation in India?
Trademark litigation in India involves issues, matters, and disputes concerning trademarks. Trademark litigation has started to become one of the most sought after field of law due to the ever-increasing competitive marketplace and simpler means of duplicity. The Trademark litigation is mostly done for infringement or passing off cases. Anyone who is aggrieved by the misuse or misrepresentation of their trademark by using a nearly identical or deceptively similar trademark can approach the courts.
Trademark Infringement Litigation
Trademark litigation in India has several types, including civil and criminal. Furthermore, one of them would be trademark infringement litigation . Any of the duplicated marks or misuse of a trademark could be challenged in trademark infringement litigation by a third party. If the trademark holder notices that somebody else is affecting or misusing his or her reputation or goodwill, he or she may file a Trademark Infringement Litigation suit. A trademark holder is entitled to legal recourse against the infringer upon bringing a lawsuit for Trademark Infringement Litigation.
Trademark Infringement and passing-off
Trademark Infringement: If the rights of a registered trademark are violated then it comes under infringement. The violation can happened due to various reasons such as, use by an unauthorized person, using a mark identical or deceptively similar to the registered mark, using a mark that can cause deception or confusion due to similarity of goods or services used for, using the registered mark as trade name or a part of it, etc. Section 29 of the Trademark Act of 1999 makes reference to trademark infringement.
Passing-Off: The precise definition of passing off isn’t given in the act, but the courts have derived it from the principles of common law. Passing off basically means selling your goods or services as if they are of someone else’s. To establish passing off, the classical trinity test has to be passed which states that there has to be misrepresentation of trademark, that the misrepresented trademark has goodwill and reputation attached to it and the aggrieved party has undergone losses and damages because of such misuse and misrepresentation. The right against passing off is available to both the registered as well as unregistered trademark owners.
Types of Infringement
1. Direct Infringement: Infringement occurs when a registered trademark’s statutory rights are violated by using the registered mark or a mark identical or deceptively similar to it without permission. Section 29 of the Trademark Act, 2019 established the elements of infringement:
Registered Trademark – Only a registered trademark could be infringed. The common law principle of passing off will implement to an unregistered trademark.
Know The Difference between Register vs Unregister Trademark
Unauthorized person – The use of the Trademark should be by someone who isn’t the owner or the authorized representative but is still using the mark or a mark that is identical or deceptively similar to it.
Identical or deceptively similar mark- the test for assessing whether marks seem to be identical or similar is determined by seeing if there is any possibility of confusion or deception among the people of trade and customers.
Goods/Services – In order to demonstrate infringement, the infringer’s goods/services have to be similar or identical to the products which the trademark Registration represents.
2. Indirect infringement: Indirect infringement is derived from the principles of common law, which states that the person or organization might not be infringing the trademark but are:
Contributory Infringement- Either aiding or abetting the infringer .
Vicarious Liability- Having the control over the infringer or benefit from the infringement. Section 114 of the Act states that when a company commits a violation of this Act, the entire company is liable.
And therefore should be held liable for the same.
Who can sue for infringement of trademarks?
Anyone who is aggrieved by the misuse or misrepresentation of their registered trademark can file a suit for trademark infringement. Whereas any unregistered trademark owner can sue for passing off. It is important to know that for a suit of passing off, actual act should have had occurred. In cases when a registered trademark owner has to sue another registered trademark owner, a suit of infringement cannot be made as per law and only passing off is maintainable.
Remediesagainst Trademark Infringement or Passing Off
Civil remedies: Section 135 of the Act provides civil remedies such as injunctions, delivery up, profit of accounts.
- Temporary/Ad-interim Injunction: If the aggrieved is able to establish that there is prima facie case of infringement or passing off, the balance of convenience lies in their favour and if the injunction is not granted he will bear irreparable loss, then the court can grant an interim injunction till the disposal of suit.
- John Doe Orders: These orders issued by the court against the defendants that are not known or cannot be traced.
- Permanent Injunction: It is the final order of the court to refrain the infringing party from conducting activities permanently.
- Appointing Local Commissioner: On the request of the aggrieved, the court can direct the appointment of a local commissioner for conducting a raid at the known/ unknown premise of the infringing parties to seize the infringing goods, accounts, any promotional material, stationary, etc. and make a report of everything that is found.
- Damages or Accounts of Profits: The aggrieved can ask for the Damages for the loss incurred due to the misuse or misrepresentation of the mark, whereas theAccounts of profits requires the infringer to provide the actual profit that they have made because of the infringing act.
- Delivery-up and Destruction: The infringing goods are provided to the Plaintiff who has the right to destruct them.
Criminal remedies: Section 102 and 103 of the Act specifies the criminal liability and its penalty. The penalty for falsifying or applying false trademark is 6 months to 3 years of imprisonment with a fine of 50,000 to 2,00,000 rupees. Though if the court is of a reason it can also impose imprisonment for less than 6 months and a fine lesser than 50,000/-.
Naseem Sheikh is a trademark enthusiastic and has been practicing in intellectual property law for close to six years.
December 20, 2022
Documents Required For Trademark Registration In India
INTRODUCTION
There has been a rapid expansion of industries and business because of the technological developments in every field. The people and entities are therefore looking for trademark registration as the trademark becomes synonymous to the brand. Securing protection and holding exclusive right over the distinctive marks, devices, sound, shape, slogan, etc. becomes the important part of the business strategy. Both physical and digital filing of trademark application is accepted by the Registry. To support the Trademark Application, documents are required without which the Trademark Registration would be incomplete and difficult to get a registration for.
WHO CAN SEEK TRADEMARK REGISTRATION IN INDIA?
Anybody (a person or an entity) can file a trademark, such as:
- Individual
- Start-up
- Small, medium, and micro enterprises (MSME)
- Proprietorship
- Limited Liability partnership or a partnership firm
- Company
- Undivided Hindu Family
- Non-profit Institution
DOCUMENTS REQUIRED FOR TRADEMARK REGISTRATION:
Common documents/details required for application by any individual or entity are:
1. A duly executed Power of Attorney for the trademark application that is being handled by an attorney or a registered trademark agent.
2. Graphical/Artistic representation of the mark if it is a device mark.
3. 30 Second Sound recording in MP3 format and its graphical representation if it is a sound mark.
4. A User Affidavit has to be attached along in the Trademark Application if the applicant asserts that the trademark has been in use since a date prior to application date. The affidavit is notarized and is annexed with the supporting documents to establish the use of the trademark since the date as mentioned.
What can be included as a supporting document?
- Advertisements
- Social Media Extracts
- Invoices
- Extracts of E-commerce Platform if the goods are sold there.
- Pictures of events/activities if the mark is being used for a service.
- News Articles if any
- Pictures of Goods bearing the trademark.
5.The Udyam Aadhar Certificate/ Registration if the entity is an MSME or the certificate of registration of DPIIT. These certificates are beneficial for entities as the government fee for trademark application is reduced by 50% by producing the respective certificate.
Specific documents required For Trade mark:
1. INDIVIDUAL/ SOLE PROPRIETOR– At the time of Application, no specific document is required from the Applicant other than the common documents as mentioned above. It is though suggested that the Application should be filled carefully without any spelling errors as well as appropriate columns/categories are to be selected to prevent objections.
2. START-UP – When registering a trademark in India as a startup, one must submit the certificate of registration of DPIIT (Department for promotion of industry and internal trade). To submit the Application as a startup this certificate is necessary.
3. MICRO, SMALL, AND MEDIUM ENTERPRISES – A Micro, Small, or Medium-Sized Enterprises has to furnish its Udyam Aadhar Registration Certificate with the relevant goods/services as per the trademark class applying for in order prove that they are an MSME.
4. PARTNERSHIP FIRM/ LIMITED LIABILITY PARTNERSHIP – At the time of Application, no specific document is required from the Applicant other than the common documents as mentioned above. It is though suggested that the Application should be filled carefully and the name of the firm as well as names of all the partners should be mentioned in the form.
5. COMPANY – The Company isn’t required to furnish any specific documents at the time of the Application.
6. HINDU UNDIVIDED FAMILY (HUF) – When a HUF submits a trademark application, the name of the Karta is important to be mentioned.
7. SOCIETY – For Society, no specific documents are required to be submitted in the application.
8. TRUST – While submitting the application as a trust, it is important that the names of the Trustees are important.
It is not mandatory or suggested to upload personal documents such as ID Proofs (Aadhar Card, PAN Card, GST, etc) at the time of filing the Trademark application as the portal is of public domain and anyone can have the access to the documents. The Applicant therefore should be aware of this fact that these documents aren’t required for filing the application and should not be shared.
But if a TM-M is filed for any address change/ name change or there is any transfer or assignment, then in that situation documents to support that change are required to be attached along with the form.
CONCLUSION
Before attempting the filing of trademark registration, it is crucial to cross-check all the documents and information as the correction of error/s may be difficult to implement as another form has to be filed to amend such clerical/ typographical errors which then might in some cases require a hearing before the Examiner. If the Trademark Application is incomplete, it usually fails the formality check which prolongs the Trademark Application procedure. It is therefore preferred to reach out to the trademark attorney to assist you during and after the filing of trademark application.
Nagma Kacchi is a graduate of Mumbai University and she has an in-depth knowledge of branding and value proposition and has participated in various Intellectual Property webinars and is interested in exploring the legal world.
November 19, 2022
Know Difference between Trademark and Design Registration
What is Trademark Registration?
A trademark in India is a symbol, brand, or logo that separates one business or organization from everyone else. In other words, it’s a powerful tool that offers brand image and safeguards to the goods and services it really is connected to. Having mark that is a combination of letters/ numbers/ words’/ phrase/or has a graphical representation,or in different circumstances has a sound registered as a trademark allows a business or individual to use it to identify its goods or services. A registered trademark offers a legal defense against infringement.
What is Design Registration?
Design refers to the aesthetic qualities of a good, such as its pattern, arrangement, shape, ornament, the structure of lines or colors, or their combination, implemented to it by an industrial process. A design maker, originator, or craftsperson could apply for design registration in India as the owner of the design to prevent others from using the same design on their goods without their approval.A design’s ability to stand out from the competition is protected by a design registration, which also serves as a distinctive selling point for an item. Customers occasionally buy products for both their appearance and their intended use. The product’s outward appearance is legally protected thanks to the design registration.
To get the design registered, it must, however, be new and not priorly published.
Difference Between Trademark And Design Registration
| Trademark Registration | Design Registration |
|---|
The logo that represents the company is protected by trademark registration. | Design registration safeguards the unique appearance of the goods that acompany sells. |
Based on the class as well as the name the applicant chooses, their trademark registration application is assessed. | During the procedure of registering a design, the examiner assesses the item's novelty, creativity and appeal in the applied class.
|
The Trademark needs to be Distintive (inherent or acquired) for being able to be registered. | The Design Application has to be filed with the statement of Novelty as well as a disclaimer if needed for succesful registration.
|
Trademarks are safeguarded by the Trademark Act,1999. | Design is protected under the Design Act,2000. |
The Trademark Registry, oversees trademark registration in India. | The Patent office oversees design registration in India. |
In India, trademark registrations are valid for ten years and can be renewed indefinitely after that.
| The registration of a design is good for 10 years. It may be prolonged for an additional five years only.
|
For Eg: the red and white logo of coca cola | For Eg: the shape of the bottle of coca-cola |
Benefits of Trademark And Design Registration
- Whenever a Trademark or design is protected, its owner—the individual/entity who owns the registered design—has the sole authority to stop unauthorized third parties from duplicating it.
- By enabling consumers to instantly recognize the appearance and associate it with the creator, design registration helps the owner of the design increase the trademark’s financial benefit.
Overlap between Trademark & Design Laws
- The unconventional trademarks such as shape and texture have enabled the situation in which the lines between these two laws are blurred. The issue in such cases arises during the establishment of protection against infringement and passing off. As it is evident that there is no law regarding the passing off of a design.
It was held in Mohan Lal and Ors.V. Sona Paint &Hard wares and Ors. [AIR 2013 Delhi 143] that in a case of a registered proprietor of design, who is also using the said design as a trademark, he would be entitled to institute an action of passing off in respect of the same if the requirements of triple identity test are met. But in Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd. [AIR 2019 Delhi 23] it was stated that the Mohan lal case ignored Section 19(1)(e) which provides that a design may be cancelled if it is not a design as defined under the Act but stated that the larger legal formulation of Mohan Lal, regarding a passing off action, one that is not limited to trademark use alone, but the overall get up of trade dress is correct.
Finally in Crocs Inc. USA vs. Aqualite India Ltd and Anr., it was held that a registered design cannot be a trademark.
If you’re interested in learning more about intellectual property rights, check out our latest post on trademark vs patent
Conclusion
Although both the design and trademark registrations are important in their own sphere, it is important for the applicant to understand in which application will the brand gain more value. Trademarks are essential to build the brand value but it cannot be denied that sometimes a unique design becomes the USP of the business.
Naseem
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India
October 29, 2022
Benefits of Copyright Registration
What is Copyright?
Controlling access to the use and distribution of certain creative works and digital content is copyright in law. In layman’s words, copyrighting is safeguarding one’s original work. Copyright laws restrict the selling and utilization of intellectual property, such as literary and artistic works, to ensure that the owner of such intellectual property has full rights to monetize his/her IP (Intellectual property).
Copyright is crucial for people as it protects them from the unfair usage of their IP and gives them the liberty to decide who can use their IP.
Through the grant of protection under the Copyright of Intellectual property, the copyright’s primary goal is to encourage and compensate writers for producing new work and making such work accessible to the general public for enjoyment and accordingly giving artists certain exclusive rights that enable them to safeguard their creative work from theft.
Although Copyright law does not require authors to make their protected works accessible, and it is also imperative that they are granted the same protection over their work irrespective of whether the work is published or not, however, copyright law does serve the goal of enhancing the wider public interest through the availability of artistic content and safeguarding such content upon publication.
The Copyright Act
In India, copyright law is governed by the Copyright Act of 1957. The Act has been in force since January 21, 1958. India’s history with copyright laws traces back to the British Empire’s colonial rule.
The Indian Copyright Act of 1847, passed by the British during the reign of the East India Company, was India’s first copyright legislation and was intended to implement English copyright regulations there. It was replaced by the Copyright Act of 1911, which extended to other British territories, including India.
It was further changed in 1914 by the Indian Copyright Act 1914, which continued in effect in India until the Copyright Act of 1957 was adopted by the parliament of independent India. According to the Copyright Act of 1957, the owner has the negative rights to forbid others from using his works in specific ways and to seek compensation for the usurpation of that right. This Act grants the owner two rights: economic and moral.
The Copyright Act of 1957 was India’s first copyright law post-independence, and it has undergone six amendments to ensure the copyright law is refined over time in conformity to the changing times. The Copyright (Amendment) Act of 2012 was the most recent amendment made in copyright law. The majority of significant international treaties controlling the field of copyright law, including the Rome Convention of 1961, the Universal Copyright Convention of 1951, and the Contract on Trade-Related Aspects of cognitive Property Rights, are signed and ratified by India (TRIPS). India originally declined to sign up for the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), but the treaty was ultimately signed in 2013.
Additionally, the 1999 International Copyright Order was approved by the Indian government. This Order accords the same status to works initially published in any nation that is a signatory to any of the aforementioned agreements as if they were published in India.
Advantages of Copyright Registration
For the reasons listed, the copyright holder must promptly register a work:
- The ability to impose copyrights through filing a copyright infringement case: The registration certificate is prima facie proof that the creative expression is original and belongs to the person who registered it as a copyrighted work. If the copyright owner seeks an injunction against a copyright infringement, this document is crucial and necessary.
- Control over economic rights: Copyright registration also grants the creators and artists certain economic benefits related to their IP if they have the copyright registration of their creation, such as monetization of their IP, which the owner of the IP completely controls.
- Letting others know who owns what: In copyright disagreements, ownership is usually questioned. Even if the alleged infringer denies authorship, the owner of the copyrights must demonstrate his rightful ownership of the rights to succeed in a copyright infringement lawsuit. A public record of the ownership of a copyright is created via copyright registration. The registration record may also be helpful if a potential violator considers utilizing the work without authorization while unlawfully attempting to register a copyright claim for himself/herself.
- Legal evidence of possession and ownership: The ability to inform the public that a certain person owns a piece of work is the copyright registration’s most significant advantage. The second most significant advantage is the subsequent legal validity it offers from a legal standpoint. Copyright registration will defend the original owner if an unauthorized third party remixes or disseminates a copyright-protected work. Additionally, the Copyright Act still supports the copyright holder’s position if they only show that the infringer had access to the raw source and that their creations are comparable as evidence of originality.
Benefits of Copyright
1. No need to renew the copyright again and again- This means that the lasting period of the copyright is about 60 years. However, if the owner has a copyright for any original literary, dramatic, musical or artistic works, the 60 years period is counted from the date of demise of the copyright holder. In other cases, the 60 year period is counted from the date of publication. When making modifications to the details of the assets, the person must yet go to the Registrar of Copyright.
- Elimination of financial losses: One of the main benefits for the authors or the owners of the original works is that they have control over the distribution of their intellectual property. Limiting losses brought on by duplicating the original work is one of the benefits of copyright registration. The definition of piracy is simple; it is used to describe the violation of the copyright of a person. In India, most people are familiar with this phrase because it is regularly used in conjunction with physical goods.
3. Assists in copyright infringement : When addressing infringement issues, copyright also specifies the period of publication of the work. One of the most important things when a lawsuit for infringement is filed is to determine when the invention was first registered and when the alleged infringement first occurred.
4. Benefits via additional royalties : A copyright permits the owner to demand compensation and royalties when a trademark’s work is translated, modified, or changed. The utilization of remixed songs in music videos is common. Nowadays, YouTube is where copyright is most frequently used because there is a high chance that the artists might steal from one another, and it is important to prove who originally owned the work.
5. Helpful in transfer of copyright : Transfer of copyrights from one country to another can be executed much easier using copyright as this allows the owner to complete the process hassle-free.
6. Safeguards your original creation : Copyright serves as a top layer of protection to safeguard the ownership of a person’s creativity. Since creativity is the foundation of development, no civilized society can disregard the necessity of fostering it. Creativity is a necessary component of a society’s economic and social development.
The Takeaway
It is very important to have your intellectual property safeguarded by owning the copyright of it and having proof of your possession just in case anything goes off or there is any conflict associated with the ownership of the IP. Copyright also helps clarify if there is any unjustified utilization of your IP without your permission. In this modern era, it is very important to safeguard your creation from theft and misuse.
IPR/Trademark Consultant
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October 27, 2022
Trademark Classes in India
What are Trademark Classes?
When you apply for trademark registration online, you must specify the class of goods or services for which your trademark is used. Trademark classification is a method by which trademark officeidentifies and organizes the trademark based on the description and scope of the goods or services to which the trademark is applied. Trademark classification mainly serves two purposes, firstly it provides an organized maintenance of the Register and secondly, it helps identify potential trademark infringers. A trademark generally affords protection for the goods, services and class that is specified in the application.
Trademark Classes - Trademark Classification of Goods:
Class 1. Chemical used in industry, science, photography, agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesive used in industry
Class 2. Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordents; raw natural resins; metals in foil and powder form for painters; decorators; printers and artists
Class 3 . Bleaching preparations and other substances for laundry use; cleaning; polishing; scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions, dentifrices
Class 4 . Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels(including motor spirit) and illuminants; candles, wicks
Class 5 . Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; materials for stopping teeth, dental wax; disinfectants; preparation for destroying vermin; fungicides, herbicides
Class 6. Common metals and their alloys; metal building materials;transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores
Class 7 . Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs
Class 8 . Hand tools and implements (hand-operated); cutlery; side arms; razors
Class 9 . Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus
Class 10 . Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials
Class 11 . Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying ventilating, water supply and sanitary purposes
Class 12 . Vehicles; apparatus for locomotion by land, air or water
Class 13 . Firearms; ammunition and projectiles; explosives; fire works
Class 14 . Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and other chronometric instruments
Class 15. Musical instruments
Class 16 . Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers’ type; printing blocks
Class 17 . Rubber, guttapercha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal
Class 18 . Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery
Class 19 . Building materials, (non-metallic), non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
Class 20 . Furniture, mirrors, picture frames; goods(not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl, meerschaum and substitutes for all these materials, or of plastics
Class 21 . Household or kitchen utensils and containers(not of precious metal or coated therewith); combs and sponges; brushes(except paints brushes); brush making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes
Class 22 . Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes) padding and stuffing materials(except of rubber or plastics); raw fibrous textile materials
Class 23 . Yarns and threads, for textile use
Class 24 . Textiles and textile goods, not included in other classes; bed and table covers.
Class 25 . Clothing, footwear, headgear
Class 26 . Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers
Class 27 . Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings(non-textile)
Class 28 . Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees
Class 29 . Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats
Class 30 . Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces, (condiments); spices; ice
Class 31. Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt
Class 32 . Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
Class 33 .Alcoholic beverages(except beers)
Class 34 . Tobacco, smokers’ articles, matches
Trademark Classification of Services:
Class 35. Advertising, business management, business administration, office functions.
Class 36. Insurance, financial affairs; monetary affairs; real estate affairs.
Class 37 . Building construction; repair; installation services.
Class 38. Telecommunications.
Class 39. Transport; packaging and storage of goods; travel arrangement.
Class 40. Treatment of materials.
Class 41. Education; providing of training; entertainment; sporting and cultural activities.
Class 42. Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
Class 43. Services for providing food and drink; temporary accommodation.
Class 44. Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Class 45. Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.
Important Blogs on Trademark Registration
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India & Delhi High Court .
October 27, 2022
COMMON TRADEMARK ISSUES
India is developing in the area of intellectual property rights (IPR), and several business owners are now registering for trademarks to protect their brands from infringement by others. The Trademark Act, of 1999 serves as the foundation for trademark law in India. In just a few years, India has seen a dramatic increase in trademark registration applications. Apart from that, there are increasing difficulties encountered during trademark registration. Some of the common trademark issues are mentioned below.
1. Choosing a Trademark without Research
Most businesses sometimes rush to finalize their trademark, avoiding all the research and dismissing it all as mere formalities. But if, after all of your hard work creating and registering a trademark, you discover that another company is already using one similar to yours? You will be unable to use it again, effectively rendering all of your effort and time invested in the process useless.
2. Not Evaluating Your Trademark's Strength
This is in your long-term interest as a business to understand the trademark’s strength. Frequently, businessmen overlook this issue, just to discover later the existence of numerous other brands with similar names, save for the replacement of one or two alphanumeric characters. Because however almost the same trade mark has been used by many organizations, this may mislead your customers and cause confusion.
3. Incorrect Use of the TM Symbol
The applied trademark Trademark issue cannot be identical or similar to an existing registered trademark or a symbol for which a registration application is pending with the Registrar. The term similar refers to any graphic or phonetic resemblance. When determining the similarity of trademarks implemented under classes denoted for goods, the Registrar also consider the nature of the goods, the purpose of the goods, and the channel of trade for the goods. However, when determining the similarity of trademarks applied under classes marked for services, the Registrar think about the nature of services, the goal of services, the uses of services, as well as the regular business partnership.
4. Smaller Brands Exploiting Your Trademark
Trademarks have handed control to company owners who don’t qualms regarding exploiting trademarks of well-known brands to boost their revenues as media and the web osphere have advanced. These companies attempt to try and emulate your brand’s practices, giving the appearance that both trademarks relate to the same company. Also, they sell their goods at cheaper prices, reducing your market share. Keep your eyes peeled for such brands!
5. Laying out an Unclear Trademark and IP Protocol
This problem occurs while businesses or organizations are careless in establishing rules concerning the use of their trademark via other organizations and partners. Way to set lax or just no rules in this regard puts you at risk of being eaten by sharks. If you agree to allow a third party to use your intellectual property and trademark, make absolutely sure that all these partnership documents are documented legally. Experts must review these files for inconsistencies or the possibility of scams by either party.
Not only must your company’s trade mark be legally protected, but so must its copyright and patent policies. Before signing any contract, make sure to read it thoroughly to protect your company’s secret information and private information.
6. Failing to file a trademark registration
Trademarks that have not been registered under the Act are considered unregistered. Unregistered trademarks can be utilized to be used in connection with products and services, but they are not very effectively protected by the Act. This can be a lot harmful to a business that is relying on its trademark for the most part of its functioning and sales.
7. Failure To Re-Register/Renew Trademark Before It Expires
TM renewal is required every ten years, so the company will experience an even larger increase in overall trademark registrations in the coming years. The renewal application shall be submitted to the Trademark Office and the duration for it should be no less than one year before the mark’s expiration date. Also, the businesses must complete and submit the application form by the deadline that is given. However, the businesses can extend their protection for another decade but conditioned it should be the timely renewal. In case an individual or company fails to renew its trademark, the mark will become liable for the process of removal, and the holders will be required to restore their trademark in order to retain its extended protection.
8. Role of Attorney in trademark registration
You should look for a TM attorney with a thorough understanding of trademark laws who can offer you legal support at every stage of registration, from choosing the right mark to receiving a registered certificate. Only they can, after learning about your company, select the precise categories under your class for your enterprise. To reduce the risk of the objection, an experienced TM attorney should be able to comprehend your business and submit the application only for the specific categories that pertain to it.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India & Delhi High Court .
October 26, 2022
Know your Intellectual Property Rights as Social Media Influencers
Differentiating itself from conventional print and electronic media, social media is equipped with a variety of tools. Tools for sharing as well as disseminating material and data around the world, as well as tools for communication and information exchange, are two distinctive elements of social media. Social media is a tool that has greater influence than conventional media because of these two factors. Social media influencers or content producers are individuals that are well-known, influential, and qualified enough to persuade those within their online social circle. They use social media platforms like Instagram, Facebook, YouTube, Twitter, Snapchat, Reels, and Pinterest, among others, to earn money from advertising, product promotional opportunities, as well as other revenue streams.
What types of intellectual property should influencers register?
- Copyright – Among the most vital strategies for safeguarding content posted on social media seems to be copyright. This is due to the fact that original literary, artistic, composer, dramatic, and cinematic works of all sorts fall under the purview of copyright. Everything is therefore covered by copyright Act, 1957, whether it’s your original reel, a piece of music, a Video posted on youtube, an artwork you published, or a piece of writing you produced as an influencer of social media. As a piece of literature, even a tweet is safeguarded by copyright. There is a copyright on all original content. When users create fresh, unique content, copyright law is used to safeguard it. However, it is constantly advised to submit an application for copyright registration to obtain official documentation of ownership, the certificate of registration is prima facie evidence of ownership. However, the registration of copyright is not mandatory under law.
- Trademark – A distinct brand identification is crucial in today’s marketplace for all types of businesses. Social media influencers who profit significantly from digital marketing must also safeguard their own brand identities. The most efficient way to accomplish this is by filing for a trademark Registration. Trademarks cover usernames on different social media sites, YouTube channels, and Instagram manages.
Other ways in which Intellectual Property Rights are important for your online content
- Prevent others from using your original material as their own.
- Obtain ownership documentation from the authorities.
- Safeguard your own content not just at home but also abroad.
- Construct intangible resources
- Make a name for yourself in the industry.
- Maintain your unique brand identity.
How can Influencers Protect their IP?
To ensure that their original content, which is available free to millions of individuals online, is protected, social media influencers, makers, and YouTubers must also take this step. Influencers are able to perform their Intellectual Property as well as register. Online aliases, symbols, slogans, logos, series names, and even hashtags might all qualify for trademark protection. Copyrights may be applicable to original audiovisual works such as films, images, textual content, artistic work, audio recordings, and videos. In addition, a right of publicity can be established to prevent the unauthorized utilization of an influencer’s name, image, or likeness.
Who holds the rights for IP’s created for the purpose of Influencer Marketing?
Social media influencers enter into contracts with various brands under which they agree to produce original content for the brands in order to promote their goods. Who holds the right to a particular piece of content is typically decided by the deal signed between both the influencer and the brand they are promoting. Except otherwise specified in the agreement, the brand/business must therefore own the rights to all forms of content created for marketing. The original artist, i.e., the Influencer, holds the rights to their content if there is no specific clause in the agreement. That is among the justifications for having a professional draught a service-level agreement.
The Future of Digital Content Protection on social media.
Recently, there has been increased discussion regarding how NFTs may affect the safeguards of content creators’ and influencers’ intellectual property. NFTs, or “non-fungible tokens,” appear to be blockchain-based rewards for proving the authenticity of online physical goods like pictures, music, and videos, as well as visual elements (and other digital content). Content creators are still safeguarded by copyright law regardless of whether NFT is their original work or if they recommend combining copyrighted works with the work of another artist.
CONCLUSION
Since the social media world gave us all the opportunity to share content and post our own works, the laws governing intellectual property cases have changed significantly. Although the problem of intellectual property on social sites is complicated, it can be successfully handled by taking the necessary precautions for compliance and safeguards. Likewise, the infringer’s unauthorized utilization of one’s trademark registration in a way that endangers their unique feature or legacy is incompatible with ethical business or industrial practices.
Naseem
Naseem Sheikh is a trademark enthusiastic and has been practicing intellectual property law for close to six years.
August 23, 2022
Everything You Should Know About Trademark and Logo
WHAT IS A TRADEMARK?
A subset of intellectual property rights is Trademark. Individuals are able to keep ownership rights to their original works of art and creative endeavors because of intellectual property laws. The intellectual property is restricted by a number of fees for registration and fees for violation since it was made possible by human labor. Trademarks, Copyright Acts, Patent Acts, Designs Acts, etc are examples of intellectual property.
A trademark can also be considered a great marketing mechanism to increase the revenue generation of a company. Although a brand is always a trademark, a trademark isn’t really necessarily a brand. A name, term, or symbol that distinguishes goods from those of other businesses is known as a trademark. With a trademark, product recognition is guaranteed and made simpler, making the process of marketing products or services much easier. A trademark might be a phrase, a logo, or a pictorial mark.
There was no trademark law in force in India before 1940. Which led to the emersion of a large number of registered and unregistered trademark infringement problems that were resolved in line with Section 54 of the Specific Relief Act of 1877. The Trademark Act was replaced by the Trademark and Merchandise Act in 1958. The Act allows for trademark registration, giving the holder of the mark a legal right to its sole use. The Indian government updated this earlier Act with the Trademark Act, 1999. In instances of trademark infringement, the police are authorized to make arrests under the 1999 Trademark Act.
WHAT ARE THE TYPES OF TRADEMARKS WHICH CAN BE REGISTERED IN INDIA?
Several types of trademarks could be registered in India, including the ones listed below.
- Symbols and logos: Printed characters, painted designs, or painted figures that represent a company’s name, service, or product are known as logos and symbols.
2. Sound Mark: It’s a sound that can be associated with a good or service provided by a certain company. The notion of visual representation, a prerequisite for trademark registration, includes sound markings. Trademark registration for a sound must be presented in a way that makes it distinctive and recognizable to the customer.
3. Service and Word Mark: Service and word marks are mostly used to help differentiate their owners’ businesses from those of other firms that provide the same services. A service mark is used to distinguish services from products, much like a product mark is.
4. Series Marks: A series mark refers to a group of marks that all have the same common name but differ according to specific attributes like value, quality, and cost.
5. Collective Marks: Not only one specific commodity or service but a number of persons are associated with these marks. The primary owner of these trademarks is a company, institution, or organization. Members of the group might utilize them to show themselves as an integral element
6. Mark of certification: The certification mark is another kind of trademark that is frequently used in India to indicate the company’s ownership of particular standards of quality. The public is made more aware of the trader’s certified products and services thanks to certification markings.
CAN A LOGO BE A TRADEMARK?
Although a logo can get trademark rights, it is not always a trademark. After creating a unique logo, you might want to consider trademarking it. It is very advised to trademark the logo because it serves as a physical representation of your business. A logo is easier for your consumers to remember than a name. For example, The Nike “swoosh” is a fantastic illustration of a trademark logo. The first step in your proactive strategy for remaining one step ahead of its competitors is to use a trademarked name and logo for your corporation or business. Industry experts claim that company trademark names and logos have an impact on customers as well. Each business that is legally registered under the 1956 Act has a unique company name and corporate logo that are acquired from rivals according to the 1999 Trademark Act.
Logo registration online is a common choice for business visionaries due to its simplicity and clear tactics. You can get assistance through the logo registration procedure from a trademark attorney or other legal expert.
WHAT IS THE DIFFERENCE BETWEEN A LOGO AND A WORDMARK?
Word Mark: It is referred to be a wordmark if a corporation, like Reliance, Hero Motors, or Parle, has only trademarked its official name. This implies that the trademark would still be allowed even if there is an existing company using the same name as the toy maker but in a different industry unless the rival business can demonstrate that its customers are unsure who owns the trademark of the toy producer.
Logo Mark: If you want your customers to know you by your distinctive, catchy logo, you should submit a logo trademark registration. Consumers may easily recognize the logos of many popular firms, making them well-known.
The second-broadest protection against unwanted infringers when used as a word mark. However, whether a company applies a word mark or a logo registration will entirely depend on the business plan, as long as the logo mark is sufficiently unique, the company can proceed with registering just the logo. Your brand should stand out, whether it takes the form of a word, a logo, or a hybrid.
CAN WE REGISTER A WORDMARK AND A LOGOMARK TOGETHER?
Every company owner must take into account the importance of trademark acquisition as a necessary step in securing the integrity of their brand. The procedure is, however, not much expensive in India comparative to other countries, as everybody who has glanced into it is aware. It also takes a lot of time.
Thus, it is unsurprising that one of the most common questions on logo and trademark arises when business owners seeking to register a trademark for their company is whether they should register both their business name and logo on the same application.
You may register together and save money and possibly time. However, there are situations when going with the easier and less expensive alternative can end up costing you considerably more in the long run.
WHY TRADEMARK AND LOGO REGISTRATION IS IMPORTANT?
Once your company starts to take off, logo registration has several benefits. Although registering a logo requires some work, it will allow you to use the registered trademark logo as legal evidence of your ownership in court. Additionally, registering a logo prohibits other companies operating in the same industry as yours from registering logos that are identical to yours. Additionally, during their intellectual property audit, any investor would be interested to know if you have a registered logo.
It offers defense in court against bogus and dishonest goods. Because of the product’s name or emblem, the consumer may quickly recognize it. It develops for the owner an intangible asset with transferable, marketable, and franchisable potential. Because of the confidence and goodwill that trademarks foster in the memory of customers, many of them remain devoted to the product.
COMMON MISTAKES PEOPLE MAKE AT FILING LOGO TRADEMARK APPLICATIONS.
The most frequent error individuals make when filling out a trademark application for a logo is that they do not finish the explanation section properly, which renders the application less helpful for the officials to review and evaluate. The explanation part of the application must be concrete and straightforward with all the relevant information.
Also read our latest blog on Difference Between Trademark and Patent
CONCLUSION
A registered trademark gives the owner an exclusive right and distinguishes the product from similar products created by other businesses. A trademark serves as an owner’s intangible asset and long-term brand protection. The only person who is permitted to use those certain words, symbols, and slogans is the owner of a trademark. It is essential for a brand to be safeguarded and preserved in an economy like India. Therefore, it is crucial to acquire a trademark registration in India, not out of requirement but rather out of necessity.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India.
August 22, 2022
Difference between trademark and logo
Difference between trademark and logo
What is a Trademark?
A trademark is a type of intellectual property that consists of a recognizable sign, devices, or expression that identifies and distinguishes products or services from other sources. The owner of a trademark can be an individual, a business organization, or any legal entity.
What is a logo?
A logo is a graphic/artistic mark, emblem, or symbol that is used to aid in public identification and recognition. It can be abstract or figurative in design, or it can contain the text of the name it represents, as in a wordmark.
Can a Logo Be a Trademark?
In general, logos and devices used as brand identities for businesses are protected as trademarks.
What is the difference between logo & trademark?
A trademark can be a slogan, phrase, word, company name, logo, or design that identifies a business and/or its products. A logo is a symbol or device used by a business that may be protected by trademark laws. Many companies choose to seek trademark protection for their logos. So, logo consists a part of the trademark.
Why logo registration/Trademark Registration Online is Important?
A trademark registration establishes ownership of a brand, name, or logo. It safeguards your brand against unauthorized third-party use. The registered trademark establishes that the product is entirely yours, and you have the sole right to use, sell, and modify the brand or goods in any way you see fit.
Common Mistakes
Few common mistakes regarding trademark registration are-
- Incorrect use of the TM and R Symbol.
- The Trademark is not being used in commerce.
- Looking for Trademarks That Are Similar.
- Lack of a Distinctive Trademark.
- Choosing the Incorrect Trademark Class.
- Uploading a picture of a different mark with different wording
- Choosing wrong category
- Filling wrong Applicant details etc
Frequently Asked Questions:
What protection comes with a registered trademark?
Registering a trademark grants you the following rights and protections:
- The right to take legal action in court against alleged trademark infringement.
- Your trademark registration is made public.
- You are legally presumed to be the owner of the trademark and to have exclusive rights to use it in connection with the goods and/or services listed in your registration.
Can we register our logo as a Trademark?
Yes.
Can I put ™ on my logo?
Yes. The TM symbol can be used anytime you adopt to use it. It is just an impression to public that it’s a trademark and is used to indicate that a trademark exists and serves as a warning to infringers and counter-fitters.There is no need to file or register a trademark to use the TM symbol. However, using the symbol ‘R’is not permissible until the mark is registered. It is always recommended to file for a trademark once you adopt it as a brand.
Should I trademark my business name or logo?
Yes, file for word as well as logo as it confers a protection against infringement of the same.
Naseem Sheikh is a trademark enthusiastic and has been practicing in intellectual property law for close to six years.
August 15, 2022
Azadi ka Amrit Mahotsav and TradeMark
Azadi ka Amrit Mahotsav and TradeMark
What is ‘Azadi Ka Amrit Mahotsav’?
Owing to the celebration of the country’s people, vast culture and associated achievements on the occasion of the country’s 75th anniversary of independence, the government of India has launched a new program known as “Azadi Ka Amrit Mahotsav”. It is dedicated to the Indian people, who have been essential in bringing India thus far in its evolutionary path and possess the power and capacity to realize the vision of activating India 2.0, fueled by the energy of Aatmanirbhar Bharat (Self-dependent India).
Azadi Ka Amrit Mahotsav had begun on March 12, 2021, and will conclude a year later on 15 August 2023. This is a 75-week countdown owing to the 75 years of independence.
Aim of Azadi ka Amrit Mahotsav
The ‘Azadi Ka Amrit Mahotsav’ has been initiated by the government of India with the sole purpose of creating a vision for India and its citizens in 2047. The Mahotsav is being commemorated on the basis of its five pillars: the 75-year struggle for independence, 75-year thoughts, 75-year successes, 75-year deeds, and 75-year goals. These pillars are intended to educate the next generation about the history and battle for freedom.
It would also motivate people to take action and accomplish their goal of an independent India. Amrit Mahotsav has been categorized as a celebration of our independence soldiers and for the occasion of the Indian liberation movement.
Azadi ka Amrit Mahotsav and IPR
We are well aware about the current situation with the Indian IPR matters and a huge backlog pending for processing.
Due to large number of pendency of Trademark Applications before Trademark Registry, the Trademark Office is taking initiative to run a special drive for disposal of IP disputes wherein the office has directed the parties to dispose the pending opposition and rectification cases and also the parties who have already settled their cases amicably should notify the Trademark Registry vide a formal settlement of the dispute.
Pursuant to this, the registry has launched a link in order to report such settled cases as https://ipindiaonline.gov.in/trademarkefiling/OppositionSettlementRequest.aspx and this link is available from August 02, 2022 to October 02, 2022.
This is very beneficial for the trademark applicants because now they can submit the documents online without any further hassle of going to the trademark registry. Moreover, the disputes that have not been solved yet are required to be resolved using alternate mechanisms.
What is trademark opposition? How to settle Trademark Opposition?
A trademark opposition arises at the level when the registrar has approved or accepted the application for the following trademark and then the mark is advertised seeking public opposition and when a third party makes an objection to the application of the trademark which is similar to the existing trademark for the purpose of preserving the rights of the already registered trademark.
Final words
The ‘Azadi Ka Amrit Mahotsav’ event commemorates India’s tremendous progress during the last 75 years. This festival inspires us to rediscover our hidden capabilities and to take honest, collaborative action to reclaim our rightful place in the community of nations. We at MarkShield encourage parties under dispute to settle the matter amicably as this will not only help in reduction cost to the applicant’s spent on such disputes but also will corroborate in declination of pendency of trademark processing.
Nagma Kacchi
IPR/Trademark Consultant
July 23, 2022
What is Sound Mark?
What is Sound Mark?
Exploration, exploitation and protection of sound markings in India undoubtedly expand the field of branding. Without the exception of sound markings, all trademarks in India are controlled under the Trademark Act, 1999. Businesses can now enjoy greater exclusivity for their musical or cacophonic branding and marketing strategies to entice, attract, and appeal to consumers in today’s highly disruptive market, especially with the explicit recognition of sound as a trademark under the fresh Trade Marks Rules 2017 as issued on 6 March 2017. The 2017 trademark regulations made certain adjustments to the registration process, but most crucially they make it simpler for businesses to apply for the registration of a strong brand.
Sound marks are registrable and deserving of complete protection under the Trade Marks Law if they are distinctive and can serve the function of trademarks, which is to exclusively identify and associate the goods and/or services as coming from a specific undertaking also known as a source identifier. Many sound marks have previously been registered in India, including the Yahoo yodel and the ICICI Bank corporate chink. Both the former and the latter were the first sound marks to be registered in the name of an Indian organization. The first sound mark that was awarded registration in India was the former.
Advantages of a Sound Trademark
- Brand Protection: In this case, the brand is considered what the consumer associated with the business as a whole. The song or music connected to a company is protected by the sound trademark. The entity has the right to file a lawsuit against anybody who infringes such rights when the sound trademark is registered. In the event that a third party makes use of the sound mark without your consent, to counter this you can easily file a lawsuit in the court.
- The Exclusive Usage: The primary advantage of sound trademark registration is that it grants you exclusive rights to the mark, making you the only one in the nation that is able to introduce or market goods or services under the same name brand.
- Exclusiveness is the main benefit of brand registration: According to this, you are the only one in the nation who will advertise or sell goods or services under the same brand name. It is crucial for the prospective growth and success of the business that the brand of the firm is developed early on. A firm legal foundation that is protected by trademark registration is a terrific way to elevate the reputation of your company in the marketplace. These advantages can help you and your company stands out in the competitive, modern corporate environment.
- Builds the company’s reputation:Consumers respond favorably to the sound, jingle, or music connected with a company, which also represents the image of the brand. A company’s jingle or sound is remembered by consumers, which increases the company’s appeal.
- Creating the sound mark: It’s crucial to create the sound mark’s final version before beginning the sound mark registration process. It appeals to consumers and embodies the perception you want your business to have. Following the successful testing of the early prototypes, it will be preferable to conduct focus group testing of the audio recording.
Checklist of a Soundmark
- The sound must be described, for example, by listening to its notes or by the audible counterpart of the sound, including an animal noise.
- The trademark application must clearly declare that it is for the registration of a sound mark in India
- An electronic sound recording in the form of a MP3 file which should not be more than 30 seconds in duration; registration will not be accepted in any other format.
- The sound must be represented graphically in a design or picture, such as a waveform or a note sheet with exact information about where the notes are lying.
Process of Sound Trademark Registration in India
A sound trademark is not defined in the Indian Trademarks Act, 1999 (‘Act’). To prevent infringement, it is preferable to register the sound mark if a company’s product has distinctive music and is well-liked by the general public. If you wish to register a sound trademark in India then follow the steps that are given below:
- To begin with, the applicant must establish the “Factual Distinctiveness of the Sound” for each and every sound mark before it can be registered.
2. The business must submit an applicationto the office of the trademark registrar if it desires to register its sound markby the way of filing form TM A available on IP India portal.
3. The applicant must identify the mark in this application as a sound mark; if they do not, it will be assumed that they are referring to another mark or device mark.
4. The graphical representation of the sign by a musical notation expressing the relative value, sharps, flats, etc. should support the sound mark.
5. The aforementioned information must now be added in mp3 format with a sound mark that is no more than 30 seconds in duration on any medium. It aids the registrar in repeatedly reproducing the sound for a thorough examination procedure.
6. If the registrar is dissatisfied with the sound mark, they may require more information from the applicant and additional supporting documents.
7. The sound mark will also be registered and protected if it has a distinct tone and does not overlap with any other sound marks already in use.
Documents Required to register a Sound Trademark
The registration process of sound mark in India requires the following documents:
- Name and Address of the Applicant.
- In case of a Partnership firm, LLP – Name of the firm with Partner’s Names.
- Applicant’s signed power of attorney, if the application is filed through an Attorney.
- Udhyam Aadhar/ MSME certificate in case of a small enterprise and DIPP Certificate in case of a start up in order to claim waiver in the government fees.
- Oral and graphical representation of the sound mark.
Examples of Sound Trademarks
There are some examples of the registered sound trademark in India mentioned below:
- The soundtrack for Twentieth Century Fox features the sounds of trumpets, violins, and percussion.
2. The voice uttering Yahoo is known as the “Yodel of Yahoo.”
3. the ICICI bank’s corporate jingle music.
4. When turning on the Nokia cell phone, there is a guitar sound.
5. A.R. Rahman created the Airtel ringtone.
6. The ringing of Britannia Industries’ four bells.
Conclusion
At this moment, several issues might arise that will be dealt with and resolved in the near future due to the dynamic introduction of new legislation providing demonstrable acknowledgment and clarification on sound trademarks. Due to the significant impetus for brand formation in this industry, the legal structure governing such non-traditional trademarks will undoubtedly expand and advance as a result. There is a long and varied background of successes and failures for sound mark trademarks.
It is crucial to keep in mind that actioning these marks demands a keen eye and perhaps more work than standard trademarking. The payoff, however, is unquestionably worthwhile and multiplies the company’s brand’s reach. Every prosperous and cutting-edge business has registered a sound at least once or twice throughout the course of its existence.
Currently, sounds can be registered as trademarks under The Trade Marks Act, 1999in the same way as logos, brand names, and other non-traditional mark like shape of goods can. Whether a sound is or has become a unique sign connected to one undertaking will determine whether registration of the sound under the Trademark Act is granted.
Yes, the sound mark can be categorized under the trademark. You can file a trademark application in India for a sound that is represented by a series of musical notes. An example of a sound trademark is one that uses sound to serve as the trademark for the sole purpose of clearly identifying the commercial source of goods and services that belong to the rightful owner.
A trademark is a form of Intellectual Property that consists of a recognizable symbol, design or expression that is used to identify goods or services that signifies a single source and set them apart from those offered by other parties. However, copyright can be defined as a sort of Intellectual Property that grants its owner the only authority to reproduce, transmit, modify, exhibit, and perform creative work. Often for a certain period of time. In recent years, the usage of sounds as trademarks has grown significantly. So one can articulate sounds in the trademark category.
In India, you can apply for a trademark with or without words for a sound that is represented by a series of musical notes. In the US, sound trademarks are fairly well-known, and in India, knowledge of sound trademarks is growing quickly. In India, the sound that is visually represented by a succession of musical notes, with or without words, is protectedunder The Trade Marks Act, 1999,.
Since 2017, the usage of sound markings as a branding strategy has been expanding quickly all over the world. An example of a sound trademark is one that uses sound to serve the trademark’s purpose of clearly identifying the commercial source of goods and services. In recent years, the usage of a sound mark as a trademark has grown significantly. It is a distinctive trademark. A product or service’s origin or trade origin can be classified using sounds.
Trainee Trademark Attorney at Markshield
July 21, 2022
Amazon brand registry and Trademark
What is Amazon brand registry?
Amazon Brand Registry is a service that assists brand owners in protecting their intellectual property and product content on Amazon. The most significant advantage of the program for manufacturers is the direct influence on their detail pages/listings. It also provides registered Amazon sellers with a plethora of optimization tools.
Documents required for Amazon brand registry in India-
A current registered or pending trademark, which can be text-based or image-based.
- A prominent image of the brand’s logo.
- A Principal Trademark Registration or Serial Number issued by the government.
- Images of your products and packaging showing trademark.
- The product category (or list of product categories) in which your brand should be listed.
- A country-specific trademark registration number, depending on where you intend to sell on the marketplace.
Benefits of registering a amazon brand registry -
- Greater control over product detail pages (such as titles, product descriptions, and images).
- The ability to provide advanced seller support.
- Access to machine learning-based predictive automation.
Eligibility requirements for Amazon brand registry-
To be eligible for Amazon Brand Registry, your brand must either have an active registered trademark in each country where you want to enroll or a pending trademark application filed through a registered Trademark Attorney or by self. Brand Registry also accepts brands with pending trademark registrations in a subset of trademark offices (see country-specific requirements section). Your brand’s trademark must be a text-based mark (word mark) or an image-based mark with words, letters, or numbers (device mark
Process of registering a brand
Sign in to Amazon Brand Registry
Applications for the Brand Registry must be submitted by the trademark owner. Please have the trademark owner enroll the brand first, and then add your account as an additional user if you are an authorized agent. Sign in with your existing Seller or Vendor Central credentials if you meet the eligibility requirements. Using the same username and password grants access to Brand Registry features and benefits associated with Vendor and Seller services.
Enroll your brand
Your brand name with an active registered trademark; your brand’s active registered trademark must appear on your products or packaging. The Intellectual Property Office’s Online trademark registration number. No application numbers will be accepted. A list of product categories (for example, clothing, sporting goods, and electronics) in which your brand is present.
After you submit this information, they will verify that you are the trademark’s rights owner and look for a contact who meets our criteria. This individual will be given a verification code. To complete the enrollment process, you must return this code to Amazon.
Once they have verified the provided information, you will have full access to the Amazon Brand Registry’s benefits and features that will assist you in protecting your brand.
How trademark registration can help you in Amazon brand registry-
The more information you provide to Amazon’s Brand Registry organization about your brand and its intellectual property, the better Amazon can help you protect your brand.
Register your Trademark
Amazon brand registry trademark infringement/unauthorized use-
Many different versions of the same product are frequently sold on Amazon by numerous companies, with varying degrees of quality and reliability. Other parties can try to persuade customers to buy their products instead of yours in a variety of ways. Some sellers may try to sell competing goods by using your company name or trademark. This can include recreating and selling something that has a similar appearance or name. Customers may believe they are purchasing your product when, in fact, they are purchasing an inferior knockoff or mappers. This results in customer dissatisfaction and negative reviews.
The Report Infringement form on Amazon is designed for intellectual property owners and their agents to use to notify Amazon of alleged intellectual property infringements such as copyright and trademark concerns. Amazon will not be able to process complaints submitted through this form if you are not the owner of intellectual property rights or their agent. Please report your concerns to Amazon Brand Registy via the following channel:
- Sellers can use this Report Infringement formto report inappropriate listings, other sellers, policy violations, and other issues.
- Buyers can use this Report Infringement form to report order problems, seller policy violations, and so on.
Role of an attorney in this problem-
Parties may believe your actions are illegal. You may legitimately own a trademark and be accused of infringing on the rights of others—and they may ask you to stop using your name or brand.
Infringement claims should never be ignored because they can quickly escalate. If an infringement is alleged, you may receive notification that Amazon has removed your items, and you may even be banned from the website as a seller. We understand that every day can mean lost revenue in these situations.
An attorney can examine the claims against you and determine:
- Whether you had prior use rights to the trademark.
- Whether the trademarks or goods and services are sufficiently distinct or unrelated to constitute infringement.
- The validity of any trademark registration at issue.
Even if you are certain that you did not infringe on the trademark of another party, you must still resolve the complaint with Amazon. A counter-notice to Amazon is sometimes the appropriate response.
Related Article :- Remove Hijackers on your Amazon and Flipkart Listings
Frequently asked questions:
Yes. The active registered trademark for your brand has to appear on your products or packaging.
It usually takes around 2 to 10 days for Amazon to validate all the information received and activate the brand registry account.
No, it is not compulsory to have your trademark registered in order to sell on Amazon/Flipkart, but it is advised to get trademark to avoid brand hijack.
Naseem Sheikh is a trademark enthusiastic and has been practicing intellectual property law for close to six years.
July 18, 2022
All about Copyright and Copyright Laws.
What is Copyright?
Controlling the rights for the use and the distribution of specific creative works and digital content is referred to as copyright in law. In layman’s words, copyrighting is the process of safeguarding one’s original work. Historically, copyright laws have been put in place to strike a balance between authors of works of art, literature, music, and the like who want to monetize their creations by limiting who can make and sell copies of their work, and cultures who want to use and reuse creative works to create “copyright work.”
It might be beneficial to think of these rights as a bunch of sticks, with each stick standing for one of these rights, to better understand how they can be used or leased. The owner of the copyright has the option of keeping each “stick” for themselves, giving them to one or more individuals individually, or giving them all to one or more persons collectively. In essence, copyright gives the owner the freedom to decide how to make his or her works accessible to the public.
Through the grant of intellectual property rights, the copyright’s main goal is to encourage and compensate writers for producing new works and making those works accessible to the general public for enjoyment. According to the argument, giving artists certain exclusive rights that enable them to safeguard their creative works from theft.
Although it’s crucial to realize that copyright law does not require authors to make their protected works accessible, it does serve the goal of enhancing the wider public through the availability of artistic content.
The Copyright Act
In India, copyright law is governed by the Copyright Act 1957, as modified. The Act is effective as of January 21, 1958. India’s history with copyright laws dates back to the British Empire’s colonial rule. The Copyright Act of 1957 was India’s first copyright law following independence, and six amendments have been made since then. The Copyright (Amendment) Act 2012, which was passed in 2012, was the most recent amendment. The majority of significant international treaties controlling the field of copyright law, including the Rome Convention of 1961, the Universal Copyright Convention of 1951, and the Contract on Trade-Related Aspects of cognitive Property Rights, are signed and ratified by India (TRIPS). India originally declined to sign up for the WIPO Copyright Treaty (WCT) and the WIPO Performances and Phonograms Treaty (WPPT), but the treaty was ultimately signed in 2013
Additionally, the 1999 International Copyright Order was approved by the Indian government. This Order accords the same status to works that were initially published in any nation that is a signatory to any of the aforementioned agreements as if they were published in India. The Indian Copyright Act, 1847, passed by the British during the reign of the East India Company, was India’s first copyright legislation and was intended to implement English copyright regulations there. It was replaced by the Copyright Act of 1911, which also extended to other British territories, including India.
It was further changed once again in 1914 by the Indian Copyright Act, 1914, which continued in effect in India until the Copyright Act, 1957, was adopted by the parliament of independent India. According to the Copyright Act of 1957, the owner has the negative rights to forbid others from using his works in specific ways and to seek compensation for the usurpation of that right. This Act grants the owner two different kinds of rights: economic and moral.
How does Copyright registration Help you?
For the reasons listed, the copyright holder must promptly register a work:
- The ability to impose copyrights through the filing of a copyright infringement case: The registration certificate is one of the prime proofs that the creative expression is original and belongs to the person who registered it as a copyrighted work. If the owner of the copyright seeks to get a preliminary injunction against a copyright infringement, this document is crucial and necessary.
If you wish to safeguard your work from unlawful usage, or piracy then copyright registration is important as copyright registration works as a prima facie evidence at the time of filing a copyright infringement complaint. Though the copyright holder can file a lawsuit for copyright violation if the work has still not been legally registered but a Registration Certificate works as a major and important proof of ownership and one can assert that they originated the work.
- Letting others know who owns what: In copyright disagreements, ownership is usually in question. Even if the alleged infringer denies authorship, the owner of the copyrights must demonstrate his rightful ownership of the rights to succeed in a copyright infringement lawsuit. A public record of the owner of a copyright is created via copyright registration. The registration record may also be helpful if a potential violator is considering utilizing the work without authorization while dishonestly attempting to register a copyright claim for himself/herself.
- Legal evidence of possession and ownership: The capacity to inform the public that a piece of work is owned by a certain person is the copyright registration’s most significant advantage. The second most significant advantage is the subsequent legal validity it offers from a legal standpoint. Copyright registration will defend the original owner if an unauthorized third party remixes or disseminates a work protected by the copyright. Additionally, the Copyright Act still supports the copyright holder’s position if they only just show that the infringer had access to the raw source and that their creations are comparable as evidence of originality.
- There are no ongoing fees or registration renewals: You do not have to keep paying recurrent payments to renew a copyright registration because it has lifelong validity. When making modifications to the details of the assets, the person must yet go to the Registrar of Copyright.
- Elimination of financial losses: Copyright registration has a lot of advantages for the authors or the owners of the original works. Limiting losses brought on by the duplication of the original work is one of the certain benefits of copyright protection. The definition of piracy is simple; it is used to describe the violation of copyright registration. In India, the majority of people are familiar with this phrase because it is regularly used in conjunction with physical goods.
- When addressing infringement issues, copyright registration also specifies the period of publication of the work. One of the most important things when a lawsuit for infringement is filed is to determine when the invention was first registered and when the alleged infringement first occurred.
- A copyright registration permits the owner to demand compensation and royalties when a trademark’s work is translated, modified, or changed. Utilization of the remixed songs in music videos is common. Nowadays, YouTube is where copyright is most frequently used when artists steal from one another and it is important to prove who originally owns the work.
- Exports and imports of copyrighted works are made easier by copyright registration. When the owner of creation is specified, hence it facilitates the process of importing and exporting in a lot simpler or hassle-free way.
- Copyright guarantees a minimum level of protection for writers’ rights over their works, fostering and fostering innovation. Since creativity is the foundation of development, no civilized society can disregard the necessity of fostering it. Creativity is a necessary component of a society’s economic and social development.
The Takeaway
The protection is provided for 60 years by the Copyright Act of 1957. The moral right of an author as a right against deformation is applicable even after the period of copyright has expired, taking into consideration the requirements of the act and the norms formed therewith. Copyright guarantees a minimum level of protection for writers’ rights over their works, fostering and fostering innovation. Copyright holders must evaluate and identify the different forms of infringement and protect their cognitive property through the methods which are provided by the statute.
India has robust and efficient copyright protection that can safeguard the concerned person’s copyright. The protection covers both the classic meaning of copyright as well as its contemporary use. Thus, even if they are not explicitly stated, online copyright concerns are equally well covered. The judiciary should actively participate in defending these rights, especially the copyright because the nation has such a solid and robust legal framework for their protection.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India.
April 28, 2022
What happens when a trademark becomes generic?
The Trademarks Act of 1999 allows for the registration of trademarks, which are markings that may be graphically displayed and differentiate one person’s goods and services from those of another. Section 9 of the Act makes it abundantly clear that a mark must be sufficiently distinctive to be registered. However, registered trademarks are subject to general usage and eventually become part of the public domain. As a result, the trademark owner loses all rights to the mark.
Trademark Genericide is the loss of trademark rights when a phrase becomes widely used and customers begin to associate it with a specific product rather than its source. When a trademark becomes a product’s “common descriptive name”, the trademark owner loses his or her exclusive right to use it.
Table of Contents
What is a Generic Trademark?
Generic trademarks are phrases often used to identify products or services, such as “shoes” for a shoe company. No one may register generic trademarks since they describe a product. These trademarks are not protected in any way.
Brands can utilize a variety of trademarks, but those that fall under the generic umbrella provide no protection. For example, a local shoe business that simply labelled itself “Shoe Store” would not be entitled to use that identity.
Any brand may freely utilize these phrases in creating, marketing, promotion and other parts of making and selling their products or services since they define conventional vocabulary for specific sectors. Genericization can cause strong trademarks to become generic over time. This procedure makes it possible for anybody to use the trademark without permission.
Examples of Generic Trademarks
Aspirin, Cellophane, Zipper, Kleenex, Thermos, Popsicle, Jeep, Colgate, XEROX, Surf, Cadbury and more prominent trademarked names have now become generic due to improper and on-going public usage.
Aspirin: Acetylsalicylic acid is found in aspirin, a pain reliever. In 1917, Bayer AG trademarked the name by combining two German terms. In 1919, aspirin lost its trademark status, and it is currently used generically.
Cellophane: Cellophane is a made-up word formed by combining the words “cellulose” and “diaphane” (transparent). In 1912, chemist Jacques E. Brandenberger registered the phrase as a trademark. Cellophane is now a generic term in the United States, while still a trademark in other countries.
Escalator: In 1900, the Otis Elevator Company trademarked the phrase. When the USPTO found that Otis had used the word generically in its patents, “escalator” became a generic term.
Heroin: In 1898, Bayer AG trademarked the term heroin. This drug’s name is derived from the German word “heroisch,” which means “strong.”
Linoleum: When Frederick Walton invented Linoleum in 1864, he never trademarked it. Genericide spread quickly: by the late 1870s, the term had become widely accepted.
Reasons Behind Trademark Genericide
Trademark genericide has a simple explanation. The trademark gets genericized as a result of the public’s continued usage of the word to refer to a specific product rather than its source. The more popular a product is, the more likely it will die a generic death.
There are a variety of reasons why a trademark becomes generic over time. The first possibility is that the product was unique and had monopolistic market power, and hence the public connected the brand with the good rather than the source of the good. The word “genericide” is occasionally used to describe a process in which a trademark owner actively contributes to the degradation of the trademark’s uniqueness, sometimes inadvertently. Another cause for trademark genericide is the absence of an acceptable alternative word for the good, as demonstrated by the lack of a suitable substitute name for the product.
‘Escalator’ is a name used to describe a type of escalator. The word ‘escalator’ is snappy and imaginative, and it’s a lot simpler to pronounce than the word ‘escalator,’ which refers to a moving stairway made by the Otis Elevator Company. Another cause of trademark genericide is firms’ contradictory behaviour when it comes to their trademark. Companies want their products to be well-known, but they don’t want the public to mistakenly associate the brand with the product rather than the source. Trademarks such as Kleenex, Trampoline, and others have become generic phrases due to inept promotion and insufficient control methods.
How to Protect Your Trademark to be Genericide?
Trademark protection, brand value, and profit are lost when a brand name becomes generic. A brand can take a few steps to avoid genericization:
You can add the word “brand” after the trademark on the packaging of the product
Poland Spring, Lysol, and Deer Park are just a few examples of brands that adopt this method.
- Add a short description.
By combining your trademark with a descriptive term/phrase, you may protect your brand by indicating that the brand name should not be used as the product’s generic name.
A number of brands have utilized this method. “Kleenex brand tissues” is printed on Kleenex packaging, whereas “Jell-O® brand gelatin” is printed on Jello’s. Other examples are “Play-Doh – modelling substance” and “Via from Starbucks – ready brew.”
- Make a precise plan.
It’s critical to decide early on how you and your workers will use the trademark and when to use the proper sign (TM or ®).
Never use your trademark as a verb or a noun (for example, “to google”); instead, use it as an adjective followed by a generic word (“a Ferrari car”). Make the following term plural, not the trademark itself, if you need to utilize your trademark in the plural form (for example, “Fanta drinks”, not “Fantas”). Also, unless the trademark is possessive (“McDonald’s®”), don’t use it in a possessive form.
- Spread your business
Genericization can be avoided by expanding a brand’s product portfolio. The Band-Aid trademark was initially intended to be used just for sticky bandages, but as the term became a generic name, the company responded by extending its business. With the same name, Band-Aid now distributes foot care items as well as germ-killing medications.
- Don’t advertise the trademark much.
The use of the phrase “to google” to refer to an online search has been discouraged by Google. Tylenol has launched a campaign to differentiate its brand of acetaminophen from other acetaminophen alternatives. These businesses may be able to use this advertising in court to show that their consumers continue to use their trademark in connection with their brand.
However, this method does not always work. For example, Xerox, a photocopier maker, spent millions of dollars promoting the broad word “photocopy” and advertising that Xerox is a registered trademark that you should only use in conjunction with a general phrase. It wasn’t enough: the Oxford English Dictionary now recognizes “to xerox” as a verb.
- Be cautious about infringement against your trademark.
- When competitors start utilizing the trademark to promote their products, this is known as genericide. You must defend your trademark against this type of usage, even if it involves suing competitors for infringement.
Keep a lookout for sites and media that are misusing your trademark. In this instance, contacting the media directly is preferable to bringing a lawsuit.
Conclusion
A brand owner should avoid picking a generic mark that cannot be registered while choosing a trademark and simultaneously keep the use of the mark as a brand in the mark and stop dilution of the mark by stopping infringers and copycats. The brand owner will need to defend its trademark from genericization with time and success. Following these principles will assist in maintaining the brand’s strength.
If you still have questions regarding generic trademark, feel free to contact us. We will be more than happy to assist our clients for their betterment.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India.
April 14, 2022
Trademark Registration for E-Commerce
Trademark Registration for E-Commerce
E-commerce refers to the trend of purchasing and selling items through the internet. E-commerce enterprises, on the other hand, are not required to register their trademarks. However, an e-commerce retailer should file for registration to get intellectual property rights to achieve a competitive advantage. People prefer to buy your things online or invest in your business if you have a registered trademark. This article will apprise you of how trademark registration for e-commerce can benefit your Business.
Trademark for E-Commerce in India
Trademarks are critical in the commercial world. They’re there to keep you and your brand safe. Your Trademark protects your brand from being illegally copied or duplicated.
Because of the increasing use of the internet, every brand, its goods or services and types are now available to the entire globe online. As a result, having a distinctive trademark for one’s business is critical for an e-commerce seller or corporation. A trademark or logo makes it easier for the general public or consumers to recognize the e-commerce seller’s or firms’ items.
Consumers will remember an e-commerce seller’s or company’s trademark, seek it, and buy it again if they remember the Trademark of a product. It will aid in the expansion of the company’s goodwill and popularity. Unique trademarks and their related items will be easily recognized worldwide.
Is Trademark Registration Mandatory for an E-Commerce Firm?
Now, this is the most common question that arises not only in your but in everyone’s mind. So let us clear this for you. An e-commerce dealer or firm doesn’t need to register a trademark. However, trademark registration is preferred since gives you exclusive right over your brand which will further help you to protect your brand from unauthorized use and gives several benefits to trademark owners. For example if you adopt a brand name, you market it, you spent money efforts to bring it to next level and someone else get it registered with the Trademark Registry, you may lose your exclusivity over the mark. Also, though the prior user and adopter is the actual owner of the trademark but it will leave you a difficult task to fight and prove your right over the mark.
Now that we’re talking about benefits, let us assist you to know what a registered trademark can benefit you with:
Prior Use: The entity that initiates the first use of a trademark has priority under trademark law. It implies that if a corporation or seller can demonstrate proof of previous use of a trademark, it will offer them an advantage over another person or competitor who is using the same mark, regardless of whether or not it has been registered. In most cases, proof of earlier use of a trademark takes precedence over registration. As a result, it is suggested to begin using the Trademark as soon as the firm begins and register it to have documentation of prior use.
Legal Rights to Transfer the Trademark: The trademark registration allows the trademark owner to assign his or her trademark rights to another party. The ability to award a trademark aids start-ups in attracting customers or investors. Companies that have achieved a trademark registration are viewed favourably by investors.
Now you may wonder about the procedure to avail of these fantastic benefits, don’t worry, we got you covered.
Procedure for Trademark of E-commerce Companies/sellers
Thorough Search on Intellectual Property Database:
As Indians, we elude with off-the-cuff ideas from our friends and family with the purpose of concocting a brand name for the company. There is also a social obligation to consult network leaders and other religious persons in one’s area while choosing a brand name. As a result, business owners overlook the relevance of securing a trademark to come up with a name that is not unique but gives insight into the likelihood of facing trademark litigation in the future. As a result, choosing a memorable brand name isn’t enough and it doesn’t negate the need to conduct a trademark search; instead, a trademark search informs one of whether similar trademarks are available and it provides a reasonable idea of where one’s brand stands in comparison to other brands in a similar class.
Trademark Application Filling:
The starting step is to file a trademark application with the nearest trademark office, which may be found in various states around the country. Mumbai, Delhi, Ahmadabad, Chennai, and Kolkata are the Indian trademark offices. Furthermore, in recent years, the majority of documentation has been done online. Following the completion and presentation of the application, an authorized receipt is immediately given for future reference.
Trademark Examination:
The officer examines a Trademark Application for Trade Mark Registration for Ecommerce Business once it has been recorded for any flaws. The examination report may take 1-2 months from the date of filing an application to get issued. The examiner may partially or wholly accept the trademark application, or it may be permitted with restrictions, or it may be contested or dismissed entirely. If the application is accepted, the Trademark enters into opposition period and is published in the Trademark Journal. If there is any objection issued in the exam report, then the requirements are to be met or the objections to be addressed. Close to 30 days will be given to meet the terms or respond to the complaints. The Trademark is published in the Trademark Journal when the reply has been reviewed and the mark is accepted. If the response isn’t recognized, the person can request a hearing. If the experts believe the Trademark meets the criteria for registration during the hearing phase, it is immediately marked for publication in the Trademark Journal.
Trademark Publication:
As mentioned above, one a trademark application overcomes the objection and is accepted at any stage by the Trade Marks Registry it is then published under the trademarks journal TM-J. If any party has any kind of obligations or objections to the Trademark being registered, there is an equal opportunity to prevent it from being registered by filing Trademark opposition in that application within the prescribed time limit. Once a trade mark is published it is open for opposition for 120 days or 4 months from the date of publication. After the Trademark is distributed, if there is no opposition, the Trademark is continued to proceed for Registration; otherwise, it goes through an impartial opposition proceedings concluding the final decision at a hearing, and the Registrar makes an “unprejudiced” decision.
Registration and Certification:
Once a trademark is registered and published in the Trademark Journal, a registration document or Registration Certificate with the Trademark Office’s seal is issued.
Class-35: This should essentially be the signing class for registering your E-trade Business because it covers e-commerce business, publicizing, business administration, business organization and office abilities.
Class-42: is also relevant since it refers to logical and inventive administrations, research, and configuration relating to current investigation and research administrations, as well as the design and development of PC equipment.
Documents required for Trademark of an E-trade firm?
The following is a list of all the necessary paperwork for E-Commerce companies to register their trademarks:
- Send a copy of the Trademark, brand name, logo, or other design that the applicant intends to use as their Trademark.
- Applicant’s name in case of Individual/proprietorship firm or company’s name in case of Private limited, Partnership, LLP or others.
- Address preferably the one the applicant wishes to be printed on the Registration Certificate.
- If a firm is filing for a trademark that is already published and in use, then the first date of use along with its evidence proving the use.
- A copy of Power of Attorney.
- Copy of MSME/Udyam Certificate or DIPP certificate for availing waiver in fees as MSME or Start-ups respectively.
Benefits of Trademark Registration for E-Commerce
Safeguard your Business:
Trademarked brand and its goods, services and products are protected from infringement. The company name or logo is protected against unauthorized third-party use. A registered trademark protects a company against infringement by preventing others from utilizing the trademarked product.
E-commerce Marketplace
Amazon, Flipkart, eBay, and Walmart, among other e-commerce marketplaces or platforms or web stores, provide the ability to register with a registered trademark. A Brand Registry service is available on several marketplaces, such as Amazon. The Brand Registry offers Amazon sellers and organizations participating in the program various additional marketing opportunities and analytical data. It is important to have your application number procured from the Trade Marks registry to register on these platforms and become a seller.
Protects your Brand Value
E-commerce retailers or enterprises can register their trademarks to protect their products, goods and services nationally and globally. They gain the benefits of brand awareness, protection and injury prevention.
Difference between Name Approval under Companies Act 2013 and Trademark Act 1999:-
A registered company’s name cannot be considered as a trademark registration. When a name is unique, it can be used as a trademark. A trademark can also be a combination of a company’s name and a symbol. However, a trademark registered under the Trademark Act of 1999 is not the same as a company name registered under the Companies Act of 2013.
The Registrar must approve a company’s name of Companies (ROC) before it can be registered. If the business name is too similar to another registered firm, the ROC will reject it. The ROC’s approval of a company name does not guarantee that name’s Intellectual Property Rights (IPR).
A corporation must file for trademark registration under the Trademark Act of 1999 in order to gain IPR on its name. If the firm name granted by the ROC is similar to another registered trademark or is not distinctive, the Trademark Registry may reject it. An e-commerce firm should file a trademark registration application under the Trademark Act to protect its brand.
Final Words
I hope that the above information was useful and it served the purpose of utilising your valuable time reading this article on how important it is to register your brand for E-commerce business.
Do leave us a comment for any queries and clarifications.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India & Delhi High Court Bar Association
April 8, 2022
Documents Required for Copyright Registration in India
Documents Required for Copyright Registration in India
Copyright registration in India is the way to go if you want to safeguard your work from unauthorized access and takeover. The nice aspect is that Copyright registration is only necessary once. That implies that once your work is protected by copyright law, you won’t have to go around to the authorities every year to renew it. We at MARKSHIELD promote such ideas for the betterment of society, and we’ll be glad to assist you in registering your first COPYRIGHT in India. It is valid for a lifetime and provides extensive protection for your work against unauthorized access or infringement. This article will reveal the list of documents necessary for copyright registration.
What Kind of Work can be Registered Using a Copyright? Which Documents are required?
Copyright is an intellectual property right (IPR) that gives the author of a unique creative work the only legal right to use it. Copyright protects original works of authorship comprising literary, theatrical, musical, and creative works, such as a painting, a sculpture, poetry, books, movies, songs, computer software, and architecture.
1. Literary Work
The development of original literature in any form, including fiction, biographies, technical books or papers, dramatics, scripts, theses, research papers, tables, compilations, and computer programs, including databases, comes under this category. It can be claimed regardless of the work’s quality, style, or literary worth.
Which Documents are required?
- Two copies of the work
- If the applicant has no relation to the publisher or published work, the publisher’s NOC is required.
- If an attorney files the registration application on behalf of the applicant, the attorney must accept the applicant’s power of attorney. A power of attorney must include the applicant’s signature.
- For payment of appropriate fees based on the type of the work, use an IPO (Indian postal order) or a Demand draught (DD), you can also make online payment choosing Net Banking, UPI, Credit or Debit card.
2. Artistic Work
The copyright in artwork exists in an original artistic work that includes paintings, sculptures, graphics, cartoons, etchings, lithographs, photography, drawings, plans, maps, diagrams, charts, buildings, models of buildings, molds, and casts for sculptures, according to section 2 of the Copyright Act.
Which Documents are required?
- If the candidate or applicant is not the author, the author’s NOC is required.
- If the work has been published and the publisher is not the same as the applicant, the publisher’s NOC is required.
- If the work is being used on the products or is capable of being used on the goods, a search certificate from the trademark office (TM-C) is required.
- NOC from the person whose photo appears on the piece
- If the application is being submitted with the assistance of an attorney, the applicant must sign, and the attorney must accept an extraordinary power of attorney.
- For payment of appropriate fees based on the type of the work, use an IPO (Indian postal order) or a Demand draught (DD), you can also make online payment choosing Net Banking, UPI, Credit or Debit card.
3. Cinematograph Film
A cinematograph is a piece of the visual and sound recording created by any technique, conventional or digital, including video films. It covers visual recordings made on any media and stored in any manner. Every recorded work with moving visuals/images is termed a cinematograph.
Which Documents are required?
- Two copies of the work.
- NOCs from various copyright holders or a copy of the contract (deed of assignment).
- If the work has been published and the publisher is not the applicant, the applicant must get a letter of authorization from the publisher.
- An original copy of a ‘Power of Attorney signed by the applicant and acknowledged by the attorney is required when filing an application through an attorney.
- For payment of appropriate fees based on the type of the work, use an IPO (Indian postal order) or a Demand draught (DD), you can also make online payment choosing Net Banking, UPI, Credit or Debit card.
4. Dramatic Work
Any composition for recitation, an arrangement for performing a play, work of choreography or dumb show entertainment, a scenic performance, or the work of acting based on a fixed written work is considered a dramatic work. However, a cinematograph film is not included.
Which Documents are required?
- Two copies of the work
- If the candidate is not the author, the author must provide an authorization letter.
- If the candidate is not the author, the author’s NOC is required.
- An original copy of a ‘Power of Attorney signed by the applicant and acknowledged by the attorney is required when filing an application through an attorney.
- For payment of appropriate fees based on the type of the work, use an IPO (Indian postal order) or a Demand draught (DD), you can also make online payment choosing Net Banking, UPI, Credit or Debit card.
5. Music Work
A musical work is a separate copyrightable work that does not include sound or lyrics. Although sound recording works are dependent on the musical piece, a particular application must be relocated with the musical work to safeguard it. The author of the sound recording must obtain permission from the composer of the music.
Which Documents are required?
- Work is duplicated twice (graphical notes).
- If the work has been published and the publisher is not the applicant, the applicant must get a letter of authorization from the publisher.
- If the candidate is not the author, the author’s NOC is required.
- An original copy of a ‘Power of Attorney signed by the applicant and acknowledged by the attorney is required when filing an application through an attorney.
- For payment of appropriate fees based on the type of the work, use an IPO (Indian postal order) or a Demand draught (DD), you can also make online payment choosing Net Banking, UPI, Credit or Debit card.
6. Sound Recording
Sound recordings include songs that feature a singer’s voice with or without music, a recorded speech or audio, or a podcast. This encompasses any endeavor that involves sound recording, regardless of the method or storage used. If the sound recording includes music, authorization from the music work’s creator is required.
Which Documents are required?
- Two copies of the work.
- There is no copyright holder’s objection certificate or assignment deed.
- If the applicant has no relation to the publisher or published work, the publisher’s NOC is required.
- If an attorney file Copyright registration application on behalf of the applicant, the attorney must accept the applicant’s power of attorney. The applicant’s signature is required on a power of attorney.
- For payment of appropriate fees based on the type of the work, use an IPO (Indian postal order) or a Demand draught (DD), you can also make online payment choosing Net Banking, UPI, Credit or Debit card.
FOR MORE INFORMATION, PLEASE FEEL FREE TO CONTACT US ON BELOW
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Email: info@markshield.in
Nagma Kacchi is a graduate of Mumbai University and she has an in-depth knowledge of branding and value proposition and has participated in various Intellectual Property webinars and is interested in exploring the legal world.
March 31, 2022
Eligibility for Trademark Registration in India
Eligibility for Trademark Registration in India
Trademark registrations are commonly used to protect a person or entity’s brand, slogans, or invented terms. Individuals, corporations, and non-profit organizations can all apply for trademark registration. However, when it comes to submitting a trademark application, each kind of person or company has its own set of criteria.
For Individual
An individual who is not in the business of selling goods or services is also entitled to file a trademark application and get trademark registration for a term or symbol that he or she intends to use in the future. The applicant’s real name is essential when filing a trademark application as an individual.
Joint Owners
If two people join together and decide to file a trademark application, both of their names must be listed on the trademark application.
Proprietorship Firm
A sole proprietorship firm is not a distinct legal body and the individual who operates the business is entirely liable for its obligations. It is one of the simplest business types in terms of cost, degree of maintenance, and set-up. As a result, a proprietorship firm can submit a trademark application in its proprietor’s name but not in the business and proprietorship names. Those elements will be reviewed separately if the application includes a proprietorship name and a business name.
Partnership Firm
In a partnership company filing a trademark application, all of the partner’snames must be included in the application. As partnership businesses are not regarded as independent legal entities, the trademark application must include the names of all partners. The name of the guardian representing the minor should also be given if the partnership company comprises a minor.
Limited Liability Partnership or LLP
When a Limited Liability Partnership files a trademark application, the application must be filed in the name of the LLP. As an incorporated entity, an LLP has its own identity. As a result, the Partner cannot be the applicant alone, as an LLP must own the Trademark.
Native Company (Indian Company)
If a private limited business, a one-person company, or a limited company applies for a trademark, the application must be filed in the entity’s name. Because a corporation, unlike its directors, has its own identity. A company director cannot be the applicant; however, the application can be signed and filed by the Director or any officer authorized by the company.
Foreign Company
If a foreign incorporated firm files a trademark application in India, it must do so in its corporate name, as it is registered in the foreign nation. It is necessary to identify the kind of registration, the country of incorporation, and the statute under which the business is established. If the foreign firm does not have a significant place of business in India, the application should provide the applicant’s address for service in India.
Society or a Trust
Trustor Society organizations are those founded with the goal of providing social benefit rather than profit. If a trust is established based on a formal agreement in which a beneficiary retains the property and names trustees to manage the assets and activities, it is known as a trust. If a group of people get together for a common goal, it can be recognized as a society.
Both Trusts and Societies are allowed to register trademarks as long as they are done on behalf of the Trust or Society. The Chairman, Managing Trustee, and Secretary’s names are included in the application.
Documents Required for Trade Mark Registration
For Individuals and Sole Owners-
- Name and Address of the Individual/Proprietor.
- JPEG file of your logo in case of filing a logo mark.
- A copy of the text you’d want to trademark. If the trademark language is in any language other than Hindi or English, the original text must be accompanied by an English translation and transliteration of all the terms.
- Documentation supporting the trademark’s use: If the brand/trademark is already in use, there is a provision to file your application claiming the use of the trademark since the first date of its use. It is mandatory to submit an affidavit stating the date of first use in India (of the trademarked goods or services) prior to trademark registration along with its supporting proof of use.
- Registrable Goods and Services: There are various goods and services in the market and the same are divided into trademark classification from Class 1 to Class 45. Class 1 to Class 34 consists of manufactured goods and Class 35 to 45 covers all types of services. While filing your new trademark application it is very important to file in correct class with appropriate goods or services.
- Authority in the Law: An authorization letter must be filed if the original applicant does not submit the application. It’s vital to note that authorization letter requires the authorization of a certain individual, such as a trademark attorney or an agent. It is not possible to get a general authorization in the name of a company other than trademark attorney or a registered trademark agent.
For Partnership Firms and LLP Firms:
- Partnership Firm’s Name and its Partners Names: In a partnership company filing a trademark application, all of the partner’s names must be included in the application whereas for an LLP only the firm name can be used as Applicant Name.
- Registration of Goods and Services: A detailed list of the items/services for which the registration is sought as per the class applying for.
- Use Document: An affidavit stating the date of first use in India must be filed if the goods or services to be trademarked is in use (or has been used) in India prior to registration.
- Authority in the Law: For applications submitted through an external agency, anauthorisation letter is required.
Documents for Society:
- Registration of Goods and Services: A detailed list of the goods/services for which the registration is sought as per the class applying for as per the classification of goods and services.
- Use Document: An affidavit stating the date of first use in India must be filed if the goods or services to be trademarked is in use (or has been used) in India prior to registration.
- Authority in the Law: For applications submitted through an external agency, anauthorisation letter is required.
The following papers are necessary in order to claim 50% waiver in the government fees:-
- If your organisation is registered with DPIIT and you hold a DPIIT certificate of recognition for start-ups you can avail benefits of 50% discount on the government fee.
- AnUdyamAadhar/MSME registration certificate is also a valid certificate to claim the discount as per first schedule of the Trade Mark Rules 2017.
Advantages of Getting Trademark Registration
- Exclusive Rights
The owner of a Registered Trademark owns the mark exclusively. The applicant can utilize the same for all items that come under the applied class(es). Furthermore, the owner has sole ownership of the Trademark and can prevent anyone from using it without permission in the same category in which it is registered. It grants the right to sue anybody who uses the Trademark Registered without permission.
- Creates Atmosphere of Trust and Goodwill
By proving the quality of your goods and services, the Trademark promotes confidence and goodwill among market clients. It aids in the development of long-term clients who are loyal and always choose the same brand.
- Use of the symbol ®over your trademark.
The R in a circle ® means it’s a registered trademark, one can only use this sign over the trademark once it successfully crosses all the hurdles and procures the Registration Certificate. It is always better to show off your registration to attract your audience.
- Attracts Investors and Government Tenders.
Investors interested in investing in your brand or business will definitely want to know whether your brand is registered or not and this makes their decision to go a YES from NO depending on the status of your brand registration. Also, many government tenders requires mandatory Trademark Registration Certificate, moreover you can only register your brand successfully on (GeM) Government e-Market Place on presenting a registered trademark certificate.
- Enjoying benefits of selling on e-commerce portals.
Many e-commerce portals like Amazon, Flipkart, Meeshoetc requires a trademark registration in order to disallow infringers from selling products with same brand/listing.
- Creation of Invaluable Intangible Asset
The Trademark guarantees that the product and services are of the same, consistent quality and that the origin of the goods and services is known to everyone, enhancing consumer trust and reputation. It assists clients in retaining a sense of sustainability. The registration of a trademark procedure an intangible asset that is extremely valuable (in layman’s terms). Patents, copyright, franchises, goodwill, trademarks, and trade names are all examples of intangible goods that can’t be touched or seen. Intellectual property that has been registered can be sold, assigned, licenced, transmitted, franchised, or contracted commercially.
- It makes you Stand out in the Crowd.
It makes it simple for customers to locate your goods. It distinguishes your goods and their identity from that of present and anticipated rivals and serves as an effective promotional tool. Your company’s or any organization’s logo can express your vision, quality, or distinctive attribute.
- Promotes your Brand Name
It acknowledges the product’s superior quality. Customers associate the product’s quality with the brand name. This picture of a particular brand’s quality is formed in the market, which aids in recruiting new customers since they can distinguish the quality of a product based on the logo/brand name.
- Protects you in Legalities
No competitor or the third party may use the registered trademarked wordmark or logo. However, if someone uses it without the owner’s consent or in an unethical manner, the owner can seek legal protection under the Act to stop them.
- Attracts new Audience
Young people desire to work with major brands because they operate as a magnet. It promotes the organization’s favourable image, making candidates more easily drawn to them. As a result, the cost of recruiting and related operations is reduced.
What can you register as a Trademark in India?
Any mark that can make your firm or business activity outstand the others and graphically presented can be registered as a trademark in India.
When a trademark examiner objects to a trademark application under examination report, it is called a trademark objection. A trademark examiner may object to a trademark registration application by asking for legitimate justifications for the mark. You may feel free to contact us if you have already any objection pending under your trademark application.
A trademark opposition is an objection lodged by a third party against the registration of a trademark within four months of the Trademark being challenged being advertised. The Registry accepts contenders from any natural or legal person. This comprises individuals, businesses, partnership firms, and trusts (s). Notably, the person filing the opposition does not need to have an economic interest in the case or a previously registered trademark with the Registry to file the opposition.
Important things to know before getting Trademark Registration
Choose your Mark Carefully!
You must ensure that your mark is capable of distinguishing your company. If you are starting out or have a small business, you must pick your mark carefully. While a small number of startups find it simple to connect with a well-known brand, this is not a fair approach.
Select your Class
The first step in registering a trademark is to choose an acceptable class for trademark protection. In all, the trademark register comprises 45 classifications covering specific services and specifications. Choose the most relevant category for your company’s activity.
Thorough Search
The word mark or logo must be readily available for use. If an application for a similar or resembling mark has already been filed, you will face obstacles and objections. It’s better to get a professional’s advice for conducting a thorough search.
I hope the information above helped you in understanding the requirements for the eligibility as well as the importance of getting your brand Trademarked. Kindly let us have your comments or visit markshield for more concerns.
Naseem Sheikh is a trademark enthusiastic and has been practicing intellectual property law for close to six years.
March 8, 2022
What is The Process for Filing a Patent in India?
Intellectual property has long played an increasingly important role in today’s technology-driven society. Patents are a valuable asset to any company. As a result, an organization’s inventive strength may be judged by its patenting activities. The corporation is increasingly demanding not just in terms of the number of patents but also in terms of the quality of patents. The patent grant is a lengthy procedure that includes many tests on the uniqueness, non-obviousness, and industrial usefulness of the invention.
If you have produced or invented a technique, product, or service that may be classified as an original innovation, you should have it patented. By patenting your invention, you prevent your rivals from benefitting from something you produced. If you need to register a patent, you may use this step-by-step tutorial that walks you through the whole patent procedure in India.
Should I Seek Help from Professionals?
Two ways to file a patent in India: on your own or with the help of a patent-filing specialist or agency. Because you must meet many deadlines, it is advised that you choose a professional/agency with years of expertise. Also, before disclosing your innovation, demand the professional sign a non-disclosure agreement (NDA).
Because the patent filing procedure is time-consuming and difficult, most inventors use patent filing specialists or agencies. Because they have years of expertise, individuals or businesses demand a price. They can handle the patent filing procedures on your behalf.
Process of Filing your Patent in India
- Know More About your Invention
This is the first stage in the process for an innovator who wants to proceed with his or her idea. Obtaining as much information as possible is absolutely critical. Some essential issues that the inventor must consider include: what is the field of the innovation, what are the benefits, and how will it aid in the improvement of previously existing solutions. Not every invention qualifies as a patentable subject matter. Section 3 of the Patents Act specifies the types of subject matter that are not patentable.
- Patent Search and Drafting
The inventor must perform a patentability search after gaining clarity on the innovation. This is crucial since it will assist in determining whether or not the invention is new. The Patents Act stipulates that all creations must be unique. Following a thorough search and creating a patentability report, you may examine the patentability opinion. The patent search discovers the most closely related previous arts (publicly available) to the invention and, based on the results, determines if the invention is patentable.
- Fill the Patent Application Carefully
This is when the real work begins. Following the writing of the patent application, it may be filed with the government patent office using Form 1 as the application form. The patent application number would be printed on the receipt. If the innovation is still in its early stages, you might file a provisional patent application under Form 2. Filing a provisional application has many advantages, such as it allows you to obtain a previous filing date, essential in the patent industry. In addition, one is given twelve months
- Announce Publicly
The application will be published after 18 months from filing if the entire specification is filed. There are no particular requirements for posting from the applicant. If the applicant does not wish to wait until the 18-month period has passed, he or she can file Form 9 with the required costs and seek early publishing. In most cases, the patent application is published one month after the request for early publication is made.
Legalities Under Patent Registration
Rule 24 of the 2003 Patent Rules: The time during which a patent application is not typically available to the public under sub-section (1) of section 11A is eighteen months from the date of filing or the date of priority of the application, whichever comes first. Provided, however, that the period within which the Controller must publish the application in the journal is ordinarily one month from the date on which the period expires.
Requests for publication under section 11 A, subsection nine are made using Form 9. After a patent has been published, anybody can oppose it being granted. A pre-grant objection is what it is called. When a patent application is published but not granted, Section 25(1) of the Patents Act, 1970 states that any person may object to the grant of a patent in writing to the Controller for the grounds stated in Sections 25 and 26.
- Ask for Through Examination of the Patent Application
Unlike publication, the examination is not an automated procedure; the applicant must request that the patent office examine the patent application. Under Form 18, you must file the usual request within 48 months after the date of the application’s filing. Upon receiving such a request, the Controller assigns the application to a patent examiner, who reviews it using several patentability criteria, including originality, non-obviousness, inventive step, and industrial applicability.
- Response to the Objection
The applicant must respond to the patent office’s objection in the form of a First Examination Report. The applicant must reply to the objection expressed in the examination report in writing. The applicant can show that the invention is patentable and disprove the entire argument. If necessary, physical hearing or video conferencing might be ordered.
- Get your Patent
Following the resolution of all objections, they would submit the application for the grant if it was determined to fulfill all patentability conditions, and the applicant would be given the patent. The patent grant is announced in the patent journal, which is published on a regular basis.
Any interested individual may file a post-grant opposition by submitting a notice of opposition to the Controller within 12 months of the date of publication of the patent award—section 25(2) of the Code of Federal Regulations.
Prateek is a practicing Patent Attorney in India. He is a qualified Electronics & Communication Engineer and an Advocate. He has more than seven years of experience in the domain of Intellectual Property (IP) more specifically in Patents and Designs and has worked with local and overseas clients to protect their IP rights.
February 12, 2022
What is Public Search?
Public Search Overview
The first step in avoiding trademark-related disputes is to conduct a detailed and thorough trademark clearance search to guarantee that it may remove any connected trademark difficulties to a more significant extent.
A trademark search is best done before adopting a trademark and investing in a brand. It entails looking at all identical trademarks that are registered in the process of registration or use. If you’re not sure if the trademark you’re using is conflict-free, you can do it later
What does Trademark Public Search Stands For?
Businesses may do a trademark public search to see if a trademark is available in India. Companies can use a public inquiry to identify existing registered trademarks by searching public web data. Consequently, it can assist businesses in avoiding the use of the same brand and instead identifying a distinctive and differentiating mark. The trademark office only gives such intellectual property rights to original and authentic applicants. As a result, the trademark office will reject your application if another trademark with the same name, symbol, or logo as yours already exists. Individuals and businesses must guarantee that their trademarks are distinctive before filing for registration.
What are the Types of Trademark Public Search?
The general trademark search service in India comprises three parameters or categories, which are as follows:
Wordmark Search: The term “wordmark search” refers to products and services that utilize wordmarks to identify and distinguish themselves. It refers to any words or markings that aid in identifying or differentiating goods or services. Wordmarks comprise letters, digits, and typographic characters, among other things. The wordmark-based trademark applies to any firm that produces goods or services with a word-based product name.
Viena Code Search: The Vienna code is an international categorization system for figurative components of trademarks. As a result, representative features, such as pictures, illustrations, graphic labels, pictorial elements, and any combination, are covered by a trademark public search. The trademark office assigns a Vienna code for trademark applicants with any symbolic aspect. When searching for a Viena code, enter the Viena code first, then the class of the products or services. For figurative markings, India adopts this international categorization system.
Phonetic Search: A phonetic search might assist when two trademarks have the same pronunciation. Companies can utilize phonetic search to find similar-sounding brands, confusing them. Companies can file various trademark applications for the same name if they spell it differently. Clients or a company’s target audience may mistake one for the other, causing the firm to lose customers. Avoiding such misunderstandings might be as simple as conducting a phonetic search before filing for a trademark.
Facing Problems in Trademark Public Search? Here's the Solution!
The trademark search is an essential aspect of the trademark registration process. If the search is not done correctly, there is a potential that the trademark application may be objected to and rejected. The techniques for searching for a trademark are outlined below.
Step 1. Select Your Class
Selecting the appropriate class is the first stage in trademark registration and search. Different commodities and services are divided into 45 Trademark classes by the Trademark Registry. As a result, the appropriate class for the product or service in question must be chosen.
A product may appear to belong to only one or two classes; in that case, choose the best class or all classes that fit the products and services description. From the Trademark Registry’s webpage, you may select a class from classifying products and services.
Step 2. Trademark Search from Official Portal
Following a class selection, the next stage in the trademark search procedure is to examine the brand name’s availability using the processes outlined below.
- This screen will appear when you open the Trademark Portal.
- Select Wordmark from the drop-down list in the search type field.
- In the first row, next to a wordmark, there is another drop-down list where you may pick Contains and then type your brand name in the provided area. If the brand name is “Big Bazaar,” for example, you should double-check each word. Begin by searching for “Big” and then “Bazaar.” It will apprise you with all of the necessary information.
- Next to the class, in the second row, type the class number you wish to look up your brand name, and then click search, as shown below.
- All of the matching brand names are listed below.
- If there is no equivalent brand name, it will be displayed below.
- Now, under Search Type, pick Phonetic from the first drop-down list and input the brand name and class as indicated before, then search again as shown below.
- It is critical to evaluate the brand name phonetically since there may be no similar brand names, but there may be brands that sound similar. If your brand name is “seez” and there are no comparable results in a trademark search, but there is a brand with “ciz,” a result will appear when you search it phonetically.
- Even if a phonetically similar brand name is, the ministry will not grant the trademark application. As a result, a phonetic check is required.
This comprehensive guide will assist you in doing a trademark search and deciding whether or not to file a trademark application under the same brand name. Is it necessary to develop a new brand name because comparable names were identified in the search?
Why is Trademark Public Search Important?
When it comes to trademarks, many individuals have similar concerns. The first is why do a trademark Public search in the first place. This is the main question that is asked very often in a variety of ways. Is it also required to do a search? Most of them wish to evade the investigation by filing a trademark application.
Confusion can be avoided.
Similar trademarks might cause confusion among a company’s intended audience. Such misunderstandings might have a negative impact on a company’s reputation or brand value. You may avoid any potential misunderstanding by doing a public search before filing for trademark registration.
Helps In Legalities
Using a trademark identical to that of another firm might result in legal issues. The other firm may launch a lawsuit against you if you use the same trademark. It is also illegal to use a registered brand without the consent or knowledge of the trademark owner.
The face of Your Company
Choosing a good trademark is critical for every company or corporation since it serves as the organization’s face by establishing brand value. Conducting a public search before filing for a trademark will help firms in selecting the most appropriate trademark.
Conclusion
This method may be used to conveniently look for the availability of a brand name, but it is always advisable for lawyers to seek expert assistance (mark shield). As a professional, Markshield has a better technical understanding of trademark laws, which will assist you in making better decisions. However, the trademark registry retains ultimate approval authority over the trademark application
Image source: ipindiaonline
Naseem
Naseem Sheikh is a trademark enthusiastic and has been practicing intellectual property law for close to six years.
January 24, 2022
Top 8 Trademark Mistakes Your Start-Up Must Avoid
Setting up a business is a thrilling experience. Still, it’s critical to have a thorough awareness of the dangers and blunders that entrepreneurs should avoid staying on track for success. It is crucial to learn from the errors made by previous startup entrepreneurs if you want to make it huge in the business sector.
We know you must be trying your level best to attract your audience and score their faith, and obviously, they’re going to recognize you by your brand name, slogan, or logo. On the other hand, many startups put off filing trademarks or overthink them, which can result in considerable losses. Consider how ambitious you want to be with your brand if you’re starting a company. When you’re ready to register your trademark – you should do so as soon as possible.
Let’s look at the 8 Company’s Trademark Registration Mistakes to Avoid When Starting a Business in India.
8 Common Trademark Mistakes
- Avoid the Basic Words: For instance, you should avoid using the term “Milk” in your dairy product’s name. Alternatively, call your excellent bonding product “Glue.” A generic term is non-distinctive, and trademark experts believe non-distinctive trademarks are unenforceable in court.
- Delayed Filling: From the company’s beginnings, we understand that life is hectic. But not so agitated that you can’t spare the few hours required to get the registration process started. While it will take from months to years to be registered, you may start using the TM sign right away. Despite this, many preeminent startups put it off because they believe it is unimportant. However, it would be best if you kept in mind that depending on the strength of the other company’s claim to the name, slogan, or logo you believed was yours, you may have to say goodbye to it.
- Using the TM Symbol Incorrectly: This sign is intended to let others know that you believe the term you’re using is your trademark. This will grant you common law rights in some nations. However, this does not imply that the mark is legally protected and that you may sue anyone who uses it infringingly. If that’s what you mean, you won’t be sued for it. The use of TM isn’t usually considered a fraudulent trademark assertion. In conclusion, you are free to use it in any way you see fit.
- The Sooner the Better: Although having established itself as a worldwide brand, Pinterest only filed a trademark registration in the United States in 2012, two years after it began operations. Premium Interest, a relatively unknown media startup, had trademarked the term in Europe and Australia by that time. Pinterest is attempting to remedy this by demonstrating its presence in these regions. Still, even if it succeeds, all of this effort would have been unnecessary if they had trademarked the name earlier.
- Don’t Ignore Trademark Ownership: Is the trademark registered in your name, your attorney’s name, or the name of your company? Get it clear and to the point from the start. If this isn’t obvious, problems will arise if and when the brand or trademark is sold in the future. Who is compensated for it?
A startup’s trademark should be imaginative, autonomous, and provocative, according to us (MarkShield), a legal services organization that can help you register your trademark. We make things simple and have always succeeded.
- Using Pre-Established Name: The fact that you’re trademarking a name indicates that you understand the significance of a brand. Even if it does not operate in India, using a well-known brand name isn’t the best strategy.
This may work in your favor in China (trademark squatting is a considerable business there since the government strictly follows the first-to-file method). Still, it won’t work in India because we follow the standard law system.
- Don’t Ignore Legalities: The trademark registration office may send you an office action letter throughout the registration process. You’re going to get into problems if you file it away and forget about it. An office action letter indicates that your trademark application has a problem or issue. You should react very away or have your attorney respond right away because if you don’t, your application will be abandoned.
- Watch Language: If the notion of utilizing a filthy term or phrase for your trademark has had you all worked up, empty your mind, take a deep breath, and relax. Although you may believe you live in a time where anything goes, there are still certain legal restrictions on the use of profanity, obscenity, and other “vulgar” terms and phrases, as determined by the court. After all, do you want your business to be marketed by lowlifes?
Read more about COMMON TRADEMARK ISSUES
FAQ
Relax! We got you covered. We at Mark Shield can make this hectic work easy for you. You can contact us with your requirements, and we will take care of the rest.
It is not a legal need for your company to have an officially registered trademark. However, if you don’t have a registered trademark, the legal position is that you don’t have solid legal protection for your name or brand. It’s possible that you don’t even own your name or brand.
If a company or individual wishes to prevent their logo from being misused by a third party, they should get a trademark. The owner of a trademark will have the sole right to use it for its products or services after being registered.
It is not mandatory to file a trademark application for your company name to enjoy trademark rights. On the other hand, A registered trademark may provide better protection for your brand while also aiding its development and economic expansion.
For trademark registration, the government charges Rs. 9000 each class application. Individuals, recognized Startup or MSME must pay Rs. 4500 per application per class to register a trademark with the government.
Naseem
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India & Delhi High Court Bar Association
January 17, 2022
Everything You should Know About Intellectual Property Rights in India
Intellectual property rights, or IP rights, are popular legal IP protection for developing persons. These rights have made a significant contribution to the globe, particularly economically.
Many firms across a wide range of sectors rely on the enforcement of their patents, trademarks, and copyrights, while consumers can be confident in the quality of IP-backed products.
Let’s dig in a little further.
What are Intellectual Property Rights in India?
Intellectual property includes inventions, literary and artistic works, designs, symbols, names, and pictures etc utilized in business (IP).
Patents, copyright, and trademarks, for example, are legal rights that enable people to earn monetarily or gain reputation from the innovations or products they create by striking the right balance between inventors’ interests and the greater public interest.
IPR Act India
The importance of intellectual property can be traced back to the ancient use of stamps on bricks by Roman brick-makers for identification and even further back when the leaders of the ancient Greek city of Sybaris granted the creator of a delicious dish a one-year monopoly on cooking it. With the growth of science and technology and global commerce, a lot has changed since then.
Intellectual property is a result of human intelligence. The rights granted to it allow its owner to profit from the benefits of that intellectual endeavour by granting them a monopoly. Such a benefit is not necessarily a natural right, and it must be recognized by law.
In India, the following intellectual property rights are recognized by law:
- Patents Act, 1970
- Trade Marks Act, 1999
- Copyright Act, 1957
- Designs Act, 2000
- Geographical Indications of Goods (Registration & Protection) Act, 1999
- Semiconductor Integrated Circuits Layout Design Act, 2000
- Biological Diversity Act, 2002
- Farmers’ Rights Act, 2001
Importance of IP Right
In India, national and state economies rely heavily on intellectual property (IP). Hundreds of businesses rely on the proper protection of their patents, trademarks, and copyrights, while consumers utilize IP to ensure they buy safe, guaranteed products. We think intellectual property rights are important to safeguard both at home and abroad.
Boots Employment
- Tens of millions of people globally work in IP-intensive businesses.
- Jobs in IP-intensive businesses are predicted to rise at a greater rate than the national average over the next decade.
- An IP-intensive industry’s typical worker earned around 30% more than a non-IP industry’s average worker.
Makes Products More Reliable
- Thanks to strong IP rights, consumers can make informed decisions regarding the safety, dependability, and efficacy of their products.
- IP rights enforcement ensures that items are genuine and of the high-quality consumer’s demand.
- Consumers and markets want and rely on IP rights’ trust and peace of mind.
Encourage Innovation and Rewards Entrepreneurs
- Risk and failure are the essential components of the innovation economy. Intellectual property rights motivate entrepreneurs to keep striving for breakthroughs in the face of adversity.
- IP rights ensure the free flow of information by allowing the protected know-how necessary to share the original, copyrighted concept. New ideas and improvements to existing ones develop due to this process.
- The importance of innovation was recognized by the law makers in India, who ensured that strong IP rights for authors and inventors were protected
Types of Intellectual Property Rights in India
Copyright
Copyright refers to the legal rights that authors and artists have over their literary and creative creations. Books, music, paintings, sculpture, and films are covered by copyright, as are computer programs, databases, ads, maps, and technical drawings.
Patents
An innovation is protected by a patent, an exclusive right awarded to the inventor. In general, a patent gives the patent owner the right to decide how others can use their creativity. The patent owner gives up this privilege in return for making technical information about the invention publicly available in the published patent document.
Trademark
A trademark is a symbol, tagline, or image that distinguishes one company’s or person’s goods or services from other companies/person. Trademarks date back to ancient times when artists sign their wares with their signature or “mark.”
Industrial Design
An industrial design is the innovative or aesthetic component of a product. A design can be three-dimensional elements like an article’s shape or surface or two-dimensional elements like patterns, lines, or color.
Geographical Indicators
Geographical indications and appellations of origin are indicators applied to items that have a specific geographical origin and have attributes, a reputation, or features that are fundamentally due to that location. A geographical indicator usually contains the name of the items’ place of origin.
Trade Secrets
IP rights on sensitive knowledge that may be sold or licensed are known as trade secrets. Unauthorized use or disclosure of such secret information by others in a manner inconsistent with honest business practices is considered an unfair practice and a breach of trade secret protection.
Key Takeaway
Protecting intellectual property is a non-partisan concern shared by a broad coalition of interests, which ties all of these essential and varied topics together. All industry sectors, including small, medium, and big businesses, labor organizations, consumer groups, and other trade associations that we bring together, support these rights.
As can be seen from the preceding, Indian litigation trends demonstrate a highly balanced attitude by the courts in IP cases. On the one hand, courts are not hesitant to issue ex parte injunctions against infringers, and extended ex parte injunctions are discouraged. Furthermore, new legislation has greatly reduced its time to conduct a trial.
Related Post :-
Know your Intellectual Property Rights as Social Media Influencers
Naseem
Intellectual property rights, or IP rights, are popular legal IP protection for developing persons. These rights have made a significant contribution to the globe, particularly economically.
December 4, 2021
When to launch a Trademark?
When is the best time to launch your company, brand, or service name as a trademark? As soon as humanly feasible is the response.
A powerful trademark aids in the development of a successful brand that stands out from the crowd. On the other hand, many small business owners don’t consider trademark protection until they’ve been in business for months, if not years.
This strategy has the potential to backfire spectacularly. While you may file for trademark protection at any time, even if you’ve invested a lot of time, hard work and money developing your brand, there’s no assurance your trademark will be granted for registration.
The best technique is to consider trademarks from the start—ideally, while you’re deciding on a business name and logo, as well as founding your company.
Over the years that we’ve run our firm, the most common error we’ve seen customers make is falling in love with a name and not being able to alter it. Because if we conduct a trademark search for the client and warn that the name may infringe on another trademark, the client is likely to disregard our advice and submit the trademark application nonetheless. After the Client launches its product, they will almost certainly receive a cease and desist notice and will have to alter their name anyhow.
Facebook’s Meta
Facebook’s Meta, it’s possible that Facebook’s move to Meta won’t be as straightforward as announcing it. While Facebook CEO Mark Zuckerberg has publicly said that the firm’s conglomeration of Facebook-owned companies will be known as Meta, it has yet to register its new name. On 29/10/2021, the very same day of said announcement, one party in India has applied the identical device of the word META along with word applications in class 42. The Applications were filed prior to Facebook’s any applications. This will create hassle for the Facebook in registration of its brand, if they decide to file so. Similarly, a computer corporation headquartered in the United States appears to have registered for the Meta trademark months before Facebook in USA. The two founders are now willing to sell their trademark application for $20 million.
What’s the Best Time to Launch? The Sooner the Better
The optimal time to trademark a product name is when you plan to sell the goods or services first. If you’ve already started selling products under the brand, you should file a use-based trademark application right away.
Waiting runs the danger of a third party filing for a comparable mark for similar products or services before you.
Who has trademark priority determines who gets trademark rights. In most cases, the person who first uses their brand in commerce is a trademark priority. There are also plenty of advantages to filing early. But what if you’re not ready for the market yet? Don’t worry, and we know what you can do.
Suppose you have not yet used your trademark or service mark in commerce but have a good faith intention to register your mark in the future. In that case, you can file an application for registration using the Propose-to-use (PTU) filing basis. The key benefit of filing an intent-to-use application is that your filing date will be used as the first use date, even if your product/service isn’t currently available.
How to Launch Trademark in India?
Even if done unintentionally, trademark infringement can result in substantial legal consequences. As a result, it is critical to do an internet search to ensure that your company’s trademark name and logo are not used elsewhere.
The Indian Controller General of Patent Designs and Trademarks (CGPDTM) is in charge of trademark registrations in India. To access an online trademark search database, go to their website. You may perform the search independently or hire an expert to assist you. If your name is unique and not similar with any other trademarks, you can proceed with filing a trademark application. To know more about Trademark Application procedure, please click here
Finally, you Have it.
Your company’s brand is its lifeblood. Apply for trademark protection (user based or propose-to-use application) as soon as possible to ensure that yours is protected.
This guarantees that you are not placing yourself in jeopardy by utilizing someone else’s name and being the most efficient strategy to safeguard your brand and reputation.
Naseem
Managing Partner
December 1, 2021
HOW DO I TRADEMARK MY BRAND?
The fundamental function of a trade mark is to differentiate the trader’s goods or services from those of other dealers. Therefore, a trademark is a crucial part of any business since it not only identifies a trader but also informs customers that the goods or services displaying the mark are from a distinct source, distinguished from all other sources for those goods or services.
TRADEMARK IN INDIA
Trademarks help differentiate items not just inside the legal and economic systems but also with customers. They’re used to identify and protect phrases and design features that identify a product or service’s source, owner, or creator. They might be company logos, slogans, bands, or a product’s brand name. A service mark, like a trademark, identifies and differentiates the provider of a service rather than a product. The term trademark is mostly used vice-versa, to both trademarks and service marks.
The use of a trademark prohibits others from copying companies or individual’s products or services without authorization. The law restricts any Trademark that may create confusion in the market with one that already exists. This indicates that a company cannot use a brand name that visually or phonetically similar to, or has the same meaning as, one that’s already registered or used from a prior date—especially if the products or services are connected.
TRADEMARK BUSINESS IN INDIA
Trademarks are available for purchase and sale. For example, Nike (NKE) paid $35 to a graphic arts student in 1971 to obtain the immediately iconic Swoosh emblem. Trademarks can also be licenced to other businesses for a set period or under specific terms, resulting in crossover brands.
As previously stated, trademarks may be utilized to advertise brand names effectively. In reality, the importance of branding in business cannot be overstated, and the use of brands in marketing is legendary. Some trademarks, such as Kleenex, are so well-known and have such strong brand identities that they have almost completely replaced the noun that initially described the object or service, such as asking for a Kleenex rather than a tissue. The Kleenex trademark is owned by Kimberly Clark (KMB), which first introduced the name in 1924 as a disposable tissue for removing makeup. In 1930, the business reintroduced the trademark, this time as a handkerchief alternative. Since then, Kleenex has become the world’s best-selling face tissue.
Who can Apply for Trademark Registration?
Anyone who claims to be the trademark owner, whether an individual, a corporation, a proprietor, or a legal organization, can apply. You may file your trademark application within a few days and begin utilizing the “TM” sign. The trademark registry’s formalities might take anything from 5 to 24 months to complete. Once your trademark has been registered, and a registration certificate has been provided, you may use the ® (Registered sign) next to it. A trademark that has been registered is valid for ten years from the date of filing and can be renewed one year prior to the date of expiry in India.
How to Register My Brand Name?
The Indian Trademark Office created under Trade Mark Act, 1999 is in charge of trademark registration. There are a few procedures to take when you want to register a trademark.
PICK YOUR UNIQUE TRADEMARK
A search (public search) on the official website of the Trademark Registry is conducted to see if your brand name or logo is similar to any other trademarks that have already been registered or applied. A trademark attorney often conducts this search with the Trademark Office to see whether any comparable trademarks have previously been registered in that class. Apart from the similarity, it is very important to check if the intent brand name and or logo are unique and capable of differentiating because, as per section 9 (1) of Trade Mark Act, 1999, no such marks are allowed registration which are common to trade, descriptive, generic or not unique in nature and finding the same is quite deep. Hence, one should consult with an expert before applying the brand, in order to save from any potential conflict, money, time and efforts in procuring the brand.
You can move on to the following phase if you’ve established that you’re unique.
TRADEMARK APPLICATION
If your business name/logo is deemed unique, the trademark attorney will create a trademark application based on the search findings. You must modify your trademark if someone else has the same or similar prior mark. Or if you believe the brand is legally yours and you have been using it for an extended period, even before other parties registered their trademarks. As soon as you fill out the form for a trademark application, you may start utilizing the TM sign.
TRADEMARK ALLOTMENT
The Trademarks Office will check your application on formalities and to see whether it has already been taken or unique in nature. If everything goes correct, Trade Mark Office publishes the Trade Mark Application in the Trade Marks Journal, which is published every Monday of the week. If no other firms object your brand name, within the next four months, your trademark will be registered.
To know more about Trademark Application procedure, please click here .
HOW MUCH DOES IT COST TO REGISTER A TRADEMARK IN INDIA?
In India, trademarks are essential for any business or brand. Any company that wants to protect its brand name and logo must register their trademark in India. The Trademark Registry protects each brand name and logo in its relevant trademark class.
Trademark Registration fee
- Government fee: The same depends on the category of the Applicant which is for 10 years, per mark, per class. If application is to be filed in the name of individual/proprietorship basis then government fee is INR 4500 for online filing and INR 5000 in case of paper/physical filing. For all others (such as PVT LTD, LTD, LLP, Partnership firm etc.) is INR 9000 online filing and 10,000 physical filing. In case, the Applicant (PVT LTD, LTD, LLP, Partnership firm etc.) falls under Start-Up or MSME category- then the trademark office gives 50% discount and government fee in that case will be INR 4500. However, the certificate of MSME/DIPP has to be submitted at the time of filing the application in evidence.
- Registered Trademark Attorney Fee- An Attorney fee is always varying depending upon his experience and knowledge in the field. In India, the Attorneys generally charge INR 1500 to 5000 for preparing and filing a trademark application in one class. The attorney may charge you additional fees if there is any office objection, show cause hearing and public objection in your application.
KEY TAKEAWAYS
Although it is not necessary to register a trademark in order to utilise it, it adds significant value to a company. When others try to portray their own goods and services as yours by adopting a brand that is similar to or identical to yours, a company’s goodwill and image can be harmed
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India & Delhi High Court .
November 24, 2021
10 Reason why trademark are important for your business
Importance of Trademark Registration
In today’s extremely competitive business market, you must have legal permission to own it if you possess something. Intellectual property (IP), which refers to intangible creations of the human intellect, must be registered in the form of atrademark, patent, copyright, industrial design, or geographical indication to ensure that illegal or unlawful people do not have the power to copy or represent your valuable assets.
Everyone deals with trademarks regularly, even if they aren’t aware of them. Trademark and the reputation that such brands represent have an impact on consumer purchase decisions. Business owners must understand why trademark registration is a valuable asset that may help them build their company.
First, we have to understand what a trademark really is.
TRADEMARK! WHAT'S THAT?
In common language, a Trade Mark is a source identifier for the Public to identify a product or service. The functioning of a Trademark is a concept which is used by many of us on daily basis without knowing the fact that the same is working in identification of a product and service. For example, Trade mark Law works when a person easily picks its choice of product from a super market among various others. It works for public in identification as well as for brand owners to get benefits of their hard work, time and efforts invested in the creation of the product or service. A product without its name is lost and cannot be easily found in the markets. Therefore, each product and service has been given a unique name which is called Trade Mark.
NOW! WHAT CAN BE A TRADE MARK?
The basic qualification of a good Trade mark is simple as that it has to be unique and capable of differentiating between one to another. The words which are common in industry and those other traders can adopt in course of their business cannot be a good option to adopt. The Trade mark law in India is governed by Trade Mark Act 1999 and Trade Mark Rules, 2017. The section 2 (M) of the Trademark Act, 1999 provide very broad definition of about a trademark, the same reads as below:-
“MARK” INCLUDES A DEVICE, BRAND, HEADING, LABEL, TICKET, NAME, SIGNATURE, WORD, LETTER, NUMERAL, SHAPE OF GOODS, PACKAGING OR COMBINATION OF COLOURS OR ANY COMBINATION THEREOF.
The further clarification has been given in Section 2(1) (Zb) of the Trademark Act, 1999 as below:-
“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; And—
The above is self explanatory that a trademark can be anything subject to that it is graphically represented, unique in nature and capable of differentiating from the others.
WHY SHOULD A STARTUP REGISTER ITS TRADEMARK?
Startups may protect their brand by trademarking it. By doing the same, a company name, one distinguishes one’s services and goods from those of rivals, and one’s intellectual property is protected. It prohibits competitors from duplicating or stealing their brand.
BENEFITS OF TRADEMARK REGISTRATION IN INDIA?
- Exclusive Rights only for Registered Trademarks: The owner of a registered trademark has exclusive Trademark Rights and can restrict any third company or individual from using it without permission. Furthermore, the owners are free to use the same trademark for all items or services under the applicable class(es).
- Builds an Atmosphere of Trust: The goodwill and confidence in the market among consumers are established by the quality of your product or service that corresponds to the registered brand. Furthermore, a registered trademark aids in expressing your company’s and brand’s distinct qualities and vision.
- Give Aid in Legalities: Your registered trademark in India cannot be used by a company competitor or anyone else. However, if another individual does the same, you can file a lawsuit for trademark infringement.
- A Valuable Asset: You establish an intangible asset and get exclusive rights to sell, franchise, assign, and commercially contract your idea when you register a trademark.
- Stand Out in the Tough Competition: Customers will be able to recognize your goods or service if you register a trademark. Consumers associate the product’s quality with the brand name, which builds the brand’s reputation in the market and draws in new customers.
- Gives you Authority at least for 10 Years: Once you have a registered trademark in India, all you have to do is pay the renewal fees, which are due every 10 years from the date of application. Furthermore, Online Trademark Registration and Online Trademark Renewal is now accessible at a significantly 10% reduced cost. As a result, you may successfully establish a unique picture of your company or brand without putting much effort and at a reasonable cost.
- The Symbol ®: After registering a trademark, you can use the ® sign to indicate that it is a registered trademark, and no one else can use it without your permission.
Top 10 REASONS WHY TRADEMARK REGISTRATION IS IMPORTANT FOR BUSINESS!
- Trademark Works as an Intermediate
Trademarks may transmit intellectual and emotional attributes and signals about you, your business, and its reputation, goods, and services in a single brand or logo. Your trademark doesn’t need to be a word or logo only. Regardless of language or alphabet, customers may recognize designs. The Nike “Swoosh” design is instantly recognizable in every language, including Swahili, Chinese, Spanish, Russian, Arabic, and English.
Know More About Trademark And Logo
- Protects you from Legalities
Failure in registration of a trademark exposes a company/person to lawsuits from competitors who may have registered a similar brand name, sign, slogan, or design. If this happens, a company will be obliged to change everything it has created, including the campaign, website content, and, to a significant part, it is brand identity.
- Helps you Spread your Business
A Customer without hassle can find a product of its choice with a registered trademark. The registered trademarks can be easily traced, and buyers can quickly reach your goods since it is an effective instrument with a distinct identity.
- Compliments your Products
Consumers can quickly recognize a trademark that conveys a specific level and quality of the goods. One glance at the Rolex logo, for example, shows that it is a high-end premium item with rigorous quality criteria. If someone else creates a low-cost watch with the Rolex logo on it, it will impact the luxury brand’s sales. Trademarks safeguard the quality that a brand represents.
- Lifetime Ownership: Once a trademark is registered, it can be protected for life time by paying renewal fees on every 10th year in India.
- Helps in e-selling and Government department:
In this global and modern world, Trade Marks have become vital part in smooth function of any type of business. When there are thousands of similar products and services are available to consumers in the markets, the Trade mark helps to Startups and small business to create and recognized their presence in the markets. Having a trademark registration helps Start-ups in doing hassle free business on well known platforms such as Amazon, Flipkart and Government e-tendering (GeM) and also helps in various government departments such as Custom Registrations and recording MRP labels in excise departments.
- Protects your Reputation in the Marke