Amazon brand registry and Trademark
Although Amazon is an incredible platform for selling products and is a fantastic way to grow a business and make money, it also brings competition and the need for business protection.
What is the most effective strategy for sellers to combat these worries? Join Amazon’s Brand Registry and register their brand trademark. This article explores the features and advantages of the Amazon Brand Registry, how to get started, and how trademarking and other strategies can help you safeguard your Amazon business.
What is Amazon brand registry?
Amazon Brand Registry is a program 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 and offers various solutions too that include:
- Brand Experience Optimization
- Brand Protection
- Advanced Store Analytics
Who Can Sign up For Amazon Brand Registry
The eligibility requirement for Amazon Brand Registration in India is as mentioned below:
- The brand should manufacture their own products.
- 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.
- The brand’s trademark must be a text-based mark (word mark) or an image-based mark with words, letters, or numbers (device mark).
Documents required for Amazon brand registry in India
Throughout the procedure concerning Amazon Brand Registry in India, the following documents are required at various stages:
- 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
Getting your store approved for the Brand Registry programme has many benefits. These primary advantages consist of the following:
1. Obtain total protection for the product listings for your brand
You have complete security over your product listings with Amazon Brand Registry. You now have control over how the details of your product listing appear on the site and how you wish to market your goods. Several measures will be taken to protect your listings, like:
- Protecting your advertising data.
- Protecting your brand name from being for low-quality products.
- Protecting your product listing’s information from changing.
2. Increase the sales of your products and increase conversions
What happens then when Amazon tightens its security measures around your brand data and deletes all erroneous listings that are connected to it from its marketplace? Naturally, you’ll observe a rise in sales. Customers will always locate your products on Amazon when they enter your search keywords, not those of competitors.
3. With data-driven analytics, you can comprehend your customers better
How well do you know your customers, you could ask? Delivering the greatest outcomes on Amazon will depend on your ability to comprehend the needs of your audience and what motivates them to make purchases.
You get access to information on consumer search and the purchasing habits of your target customers thanks to the comprehensive analytics feature of Amazon Brand Registry. You’ll be able to quickly determine which goods are most successful with your audience, as well as the important demographics and search terms they commonly use. You can then apply the information to enhance both your products and the customer experience in your business.
4. Improve your clients' buying experiences
You may immediately enhance the user experience of your online store and discover more effective ways to engage your customers if you register your brand on Amazon. You will have all the resources necessary to set your Amazon store apart from those of your rivals, including the following:
- Build an Amazon storefront that is easily customisable.
- Use sponsored brand advertisements.
Improved assistance from Amazon
You receive first-rate help from Amazon if you discover any fraudulent activity involving your brand or products. The platform will promptly and effectively address any of your problems. Any questionable activities and fake goods are reported by an internal team at Amazon.
Eligibility requirements for Amazon brand registry
Step - 1: Create a Registry Account and Sign in
First visit the Brand Registry website and proceed to Sign-Up. Here, you’d be required to produce the following documents:
- Proof of your identity via an SMS OTP.
- Provide the legal and corporate information, as asked.
- Accept the terms and conditions after reading.
Applications for the Brand Registry must be submitted by the trademark owner. Please enroll the brand first, and then add your account as an additional user if you are an authorized agent.
Once done, go to the Brand Registry website and click ‘Enroll now’. Next, you’ll be asked to choose a country to sign into and will have to choose between Seller or Vendor account.
NOTE: Make sure you sign into the relevant seller account, as all the extra features and tools will be applied to this dashboard.
Step - 2: Fill out the application form
During this step, to ensure that you are eligible to apply for the Amazon Brand Registry the following information may be asked from you:
- Your brand name;
- Whether your brand name features on your products;
- Your trademark, including its name, registration number and the trademark office that issued it.
- You may have to upload a copy of your trademark too if it is image based.
- Your distributors, manufacturers, product codes and the categories your items fall under.
This information will help Amazon identify any false listings.
NOTE: These eligibility requirements are subject to country to country requirements. Hence, you may be asked slightly different questions as well.
Since the form features mostly boxes that need to be checked as per your answer, the application itself shouldn’t take long to fill. It is recommended that you practice extreme caution while checking these boxes.
Step - 3: Verifying your eligibility
As a last step, an email will be sent to you, the rights owner listed by the trademark office, from Amazon. This is to verify your eligibility.
This mail will contain a unique code that is required to be submitted under the ‘Case log’ section of your account. Here, the status of your application is also visible. Usually, these approvals take only 24 hours.
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.
What is the cost of Amazon Brand Registry?
You must have a registered trademark in order to register with Amazon Brand Registry, which is free to do. Here, you are required to pay to register if you don’t already have one. This price will vary depending on the nation in which you register and the kinds of goods you sell.
Amazon only accepts trademarks registered through official government agencies, such as the USPTO in the US. So, you must file an active trademark application in each nation if you want to join the Brand Registry in different marketplaces. It’s also important to keep in mind that in order to register with the Amazon Brand Registry, your trademark must be visible on your goods or packaging.
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.
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.
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
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.
What happens when a trademark becomes generic?
Overview
A trademark is a recognizable sign, term, or symbol that can be used to identify and set one good or service apart from another. It might be a word, logo, sound, color, or slogan that aids in connecting a good or service to the business that produces or offers the good or service in question. Having said that, a trademark must be sufficiently distinctive to serve as a source of identification and to make an impression on customers. This distinctiveness can either be inherent in the trademark or gained via continued usage. Ironically, though, these well-known trademarks often lose their distinctiveness and become generic as soon as people start to associate them with other products or classes of products rather than the source of them.
Read further to know more!
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 labeled itself “Shoe Store” would not be entitled to use that identity.
Since the generic words are common to trade or describes the goods and services without putting any imagination, all businesses should be free to utilize such words/ marks in the course of their business.
Why can’t a Generic Term obtain Trademark Protection?
Generic terms such as ‘computer’ or ‘perfume’ for the descriptive products can’t obtain trademark protection or be registered as a trademark because other people also have the right to use generic terms for describing the products they are selling. Furthermore, giving trademark protection to generic terms would restrict competition in the world among brand owners and individuals, and would also make the English language lose its essence. Adding a “.com” or “.org” suffix to a generic term isn’t a possible way of transforming generic terms into a trademark. For example, “Hotels.com” had filed a Trademark Application to register its brand name as a trademark, but the Federal Court in the US had dismissed its application for the same. Nevertheless, it is possible to combine a generic term or mark with other words to get the trademark registered.
Whereas, there also comes a situation when a mark which was distinctive, arbitrary or fanciful at a point of time but due to its overwhelming popularity and use over the time, the mark has become a synonym to the goods. These marks are called Genericide marks.
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.
Why does Genericide of the Trademark happens?
Having a popular and well-known trademark has its downside too, as there is a greater chance for them to lose its exclusivity and turn generic. For eg, Instant Noodles became the meal of choice for children as well as the adults with coming of Maggi in the market. Now we have came to be in such a situation where Maggi has become synonyms to instant noodles. Same is for google, it is no longer an “internet/ online search” but we ask people to just “google it”.
Organizations, businesses, and companies must make earnest efforts to safeguard their trademarks. But sometimes due to overwhelming response from the consumers and the boost to its popularity and use the Companies have to face consequence such as it being Genericide.
Few Reasons for the same are:
1. Using of the mark as a verb or a noun strongly affects the strength as the same slowing becomes part of the vocabulary at an extent where it is not possible to stop everyone.
2. Mark being used for a first of a kind product: Xerox, Escalator, Dumpster, etc are just few examples which are enough to explain how the first or sole creator of a new product or service has to work harder in order to promote its mark and goods but to also protect it from being genericide.
3. Improper marketing and promotion: Companies and business who themselves starts using their trademark as a noun to promote and market the goods under it. It is condemned by the courts to prevent the mark from being the indicator of its goods or services rather than as a distinguishing feature to determine its origin.
4. Increase of Social Media and Online Promotion: Due to everything being available online to anything getting popular if played with the algorithm right sometimes, the users of social media sometimes act as a bane as the people who post content having a heavy influence on their flowers can highly impact how they use the mark. For. Eg. The creators and designers using the term “lets photoshop it” or that this creation is “photoshopped”
How Can You Protect Your Trademark From 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:
1. Combine your trademark with the generic name of the goods or use your mark as an adjective so that when the mark is used as a whole it cannot be made out as a noun.
2. Continuously monitor the mark and restrict and protect your mark from being misused. The IPAB in the case of B.V Ilango vs. Rank Xerox Ltd. Decided in 2012 held that “if a company or brand had taken extensive measures to rectify and police the incorrect usage of their trademarked term including sending cease and desist notices, it will not be considered as a generic term.”
3. Issue guidelines of use of the trademark taking proactive measures as to how to mention the same level of protection as it was once granted.
Ultimately, there are two perspectives on the popularity of trademarks. As vital as it is to make a trademark well-known among customers so that it becomes a household brand, it is equally crucial to take the necessary precautions to preserve the rights of the proprietor by making sure that the aforementioned trademark does not fall victim to genericization.
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.
Trademark Monitoring
The Importance of Trademark Monitoring In the Digital Age
Building a company and its brand name takes countless efforts and energy. If the brand is violated in any way, they risk losing their goodwill and reputation. As a result, it becomes crucial for companies to register their trademarks in order to protect their brand against infringement. However, submitting the application and obtaining registration is just the start. Every organization needs to be on the lookout for companies that might use their trademark or a mark so similar to it that it would cause confusion or deception. When this happens, trademark monitoring is suggested.
What is ‘Trademark Monitoring’ you ask? In this article, you will get a brief insight into this subject and how to prevent it.
What Is Trademark Monitoring?
The technique of continuously monitoring and analyzing how other businesses are using a registered trademark in commerce is known as trademark monitoring.
It requires keeping a watchful eye on the brand to stop infringement, misuse, dilution, or counterfeiting of the goods or services.
Trademark monitoring is done to protect the brand’s identity, reputation, and consumer trust. Additionally, trademark monitoring aids in promptly spotting any potential dangers so that suitable precautions can be taken to safeguard the brand from any harm.
Effective trademark monitoring to safeguard intellectual property rights requires both proactive and reactive strategies.
What Is The Importance Of Trademark Monitoring?
With more brands entering the physical and online markets, the importance of trademark monitoring has increased.
An essential step in successfully pursuing your trademark rights is the early detection of cases of infringement.
The initial stage of identifying infringing trademarks aids in the development of misuse evidence that is used to prosecute them in court. Furthermore, the threat of potential legal action for trademark infringement serves as a deterrent for dishonest competitors who want to capitalize on the goodwill of your carefully created trademarks.
Trademark monitoring is essential in the contemporary digital world because it has become simpler for infringers to use the brand without being noticed. By keeping an eye on the internet market, you can spot and stop infringement, safeguarding both your trademark and your customers from damage and misunderstanding.
What Are The Benefits Of Trademark Monitoring?
Any company that values its brand and wants to protect it from threats must use trademark monitoring. Some advantages of trademark monitoring include the following:
- Prevention of Infringement
Trademark monitoring searches for infringement in the offline and online worlds and promptly notifies the company of a potential threat. The use of a brand’s exclusive trademarks without the owner’s consent, authorization, or license constitutes trademark infringement. Furthermore, in this day of a globalized economy, trademark infringement is on the rise. With the aid of the most recent techniques and technologies, a trademark monitoring service increases the efficiency of infringement searches. The number of infringement cases is decreased by early detection of violations and the implementation of corrective actions.
Trademark dilution and infringement are terms that are frequently used interchangeably. But there is a slight distinction between the two. While customer misunderstanding is a factor in infringement, dilution can happen even when consumers are fully aware that copying is taking place.
- Early detection of violations
Trademark monitoring, which helps firms swiftly detect any alleged infringing behavior, can enable early infringement identification. This is important because the longer a breach persists, the harder it will be to stop it and the greater harm it might bring to the company.
- Protection Against Knock-Offs
Businesses can find counterfeit products using their brand and stop their sales of them with the aid of trademark monitoring. The difficulty of counterfeiting is getting worse for businesses everywhere.
- Safeguards Brand and Customer Trust
Being noticed by customers in a world full of new and developing businesses is a difficult task. One of the most efficient ways to foster brand loyalty is through careful brand nurturing. Businesses may make sure that their brand is exclusively associated with the goods or services they provide by keeping an eye on the trademark. This helps maintain consumer confidence and brand reputation.
- Prevention Of Trademark Dilution
The distinctiveness of the original mark may be compromised when a third party adopts a mark that is confusingly similar to a well-known brand. The unapproved use of a trademark that lessens the originality of a brand is referred to as trademark dilution. Market dilution can take many different forms if it is not controlled. Trademark surveillance prevents imitation and controls dilution activity. Additionally, it prevents the market from being overrun by cheap imitations of the brand’s goods.
- Keep up with the competition
Additionally, trademark monitoring provides information about your competitors’ global strategies. While keeping an eye on things, one could notice fresh changes that could be crucial in drawing customers’ attention to your brand. A trademark is a valuable asset, so it is important to research how the competition is faring in this area.
- Ensure Damage Control for the Present and Future
In some cases, a trademark may be worthless or at the bottom of the popularity scale. That does not, however, mean that it won’t climb soon. Finding low-lying trademarks with enormous potential is one of the goals of trademark monitoring, and you should adjust your brand strategy accordingly to prevent potential present and future harm.
- Counter against Doctrine of Laches
Typically, a defendant in a legal case will make the doctrine of laches an affirmative defence. The unreasonable delay in pursuing a claim prevents a party from bringing it up. By identifying potentially controversial businesses and trademarks early on through trademark monitoring, a strong argument against the doctrine of laches can be made.
How Does Trademark Monitoring Work?
The act of closely observing how your registered trademark is being used and identifying any potential trademark infringements is known as trademark monitoring. The process of trademark monitoring involves routinely looking for any instances of unlicensed use of your trademark on the internet, social media, or other platforms. The following steps are part of the monitoring process:
- Step 1: The first thing to do is to find the registered trademark that needs to be kept an eye on. This refers to the trademark’s name, emblem, or other distinctive feature.
- Step 2: You must develop a monitoring criterion after selecting the trademark. The trademark that you want to monitor’s keywords, phrases, and variations.
- Step 3: Trademark monitoring involves routinely monitoring online activity on sites like social media, websites, and e-commerce platforms in order to avoid any unauthorized use of the trademark. Either manually or with the use of specialized software, this can be accomplished.
- Step 4: It will be informed and alerted if any infringement behaviors are discovered during the monitoring process. Analyzing the outcomes is crucial in order to determine the seriousness of the violation and the appropriate line of action.
- Step 5: If trademark infringement is discovered, you must take legal action to defend the brand. This can require filing a lawsuit to defend the trademark.
Consequences of Not Monitoring Your Trademark
Despite all of its benefits, you could still be wary of ongoing trademark surveillance. Understanding what occurs if you don’t have a strong trademark monitoring plan is therefore vital. Failure to keep track of the registered trademark can have detrimental consequences for the business. Here are a few to begin with:
1. Loss of Trademark Rights: If your trademark is not regularly monitored, it might be used so frequently in the market that it stops serving as brand identifier. Long-term use of your trademark by third parties could undermine your case and result in the loss of your trademark rights. If the infringer is a rival offering services and goods that are similar to yours, the situation gets even more serious.
2. Reduced Brand Value: A trademark is an intangible asset that has a high market value. Years of careful planning go into developing a brand, and a trademark is a crucial component of the branding strategy. Some of the most well-known brands in the world are worth billions of dollars. Uncontrolled and unauthorized use of a trademark has a negative effect on brand value. Customers are less likely to interact with a brand that does not value uniqueness. In addition to customers, other stakeholders like creditors, suppliers, etc. are hesitant to sign long-term contracts with the company. The organization has a financial loss as a result of diminished brand credibility.
3. Loss of Uniqueness in a Brand: A spectacular product or service is not sufficient in and of itself. One needs to generate the correct amount of buzz around the brand in order to leave a lasting impression on the target market. Because of this, marketers invest a lot of time and money in creating a compelling narrative. It is as crucial to defend your brand with trademark monitoring after you have established one. An attitude of complacency can result in imitators gaining from your success while dissipating the brand’s uniqueness.
How to Monitor Your Trademark?
Since trademark monitoring is a vital organ when it comes to protecting the brand and intellectual property. Here are some ways to monitor the trademark:
- Seek the help of a trademark attorney
- Setting up alerts and implementing social media monitoring
- Utilizing trademark monitoring services
- Conduct regular searches
A vital part of preserving your brand and your rights include keeping track of your registered trademark. Staying vigilant and keeping an eye out for any possible infringements comes part and parcel of protecting your trademark. Any failure to act on time can result in a loss of trademark protection, legal disputes, and damage to the reputation. However, by proactively hiring an attorney or setting up alerts and using trademark monitoring services, the business can effectively protect its registered trademarks. As the trademark is essential to the business, protecting it should be a top priority.
By submitting an application under the “Expedited” system, you can hasten the registration of your trademark in India. This option is offered for trademark applications and can lead to quicker processing timeframes. An Applicant after filing the trademark application can file TM-M for expedited registration and fast track the registration process.
Indian Trademark Registry provides free public search portal where anyone can look for the trademark they desire to apply, and find if the trademark is available or is already taken by third party applicant/ proprietor. The search can be conducted for “Starts with”, “Contains” and “Matches with” to have an exhausting list as to determine if the mark is distinctive or is similar to previous marks.
By spotting potential instances of infringement or unauthorized usage, trademark monitoring assists in protecting a company’s valuable intellectual property.
To monitor your trademark you can take the following steps:
- Conduct regular searches
- Hire trademark monitoring services from a Firm.
- Keep a watch on Trademark Journal
- Naseem Sheikh
- November 5, 2024
Trade mark litigation in India
In India, trademark law has grown significantly during the past few years. Trademark litigation is being used to aggressively enforce trademark rights. Due to the filing of cases seeking damages, trademark litigation has increased. It is clear from the trademark that the regime’s platform has been rapidly evolving.
Here’s an article that will help you understand the nitty-gritty of Trademark 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?
In India, the focus of trademark litigation is whether one party has infringed upon the rights of the other party’s trademarks or has misused, misrepresented or represented someone else’s trademark as that of its. Whereas, litigation involving trade dress concerns questions of whether a product line’s distinctive packaging or configuration has been violated.
When a defendant product in India is likely to lead the general public to believe that certain services, products, or businesses are affiliated with one another, unfair competition allegations may occasionally be filed in addition to trademark claims. False advertising is also a part of it.
The India Trademark Litigation takes into account Indian statutes, rules, regulations, and decisional law that are related to or resulting from litigation involving trademarks, trade names, or unfair competition that affects trade identity.
More than only the name of a service or product might be protected by a trademark.
The main laws governing trademarks in India are:
- Trade Marks Act, 1999 (Trade Marks Act): This is the main source of trademark law that is uniformly enforceable across the nation.
There is no state-specific legislation governing trademarks in India. - Trade Marks Rules, 2017 (Trade Marks Rules):
Trademark prosecutions, oppositions, rectifications, and the application/registration process with the Trademarks Registry are governed by these regulations, which the Central Government enacted under the Trade Marks Act.
In the event of a dispute between any rule and a provision or provisions of the Trade Marks Act, the Trade Marks Act prevails. - Delhi High Court Intellectual property Division Rules: The Delhi High Court, in 2022 enacted The IPD Rules to regulate the practice and procedure of the Intellectual Property Division, which was pursuant to the abolition of the IPAB.
Trademark Infringement and Passing-off under Trademark Litigation
=> Trademark Infringement: If the rights of a registered trademark are violated by an unauthorized, unregistered user then it comes under infringement.
The violation can happen 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 the similarity of goods or services used for, using the registered mark as a trading 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 a misrepresentation of the 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.
What are the different types of Trademark 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.
○ 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:
○ Vicarious liability- In this scenario, not just the principal infringer but the whole body/entity/company would be held liable except the one who is completely without knowledge of the commission of the offense.
Basically, in order to hold other persons liable except the principal infringer, they must have knowledge of the infringement, they must contribute to the same, and they must be deriving financial gains from such infringement.
○ Contributory infringement– In this scenario, all the persons contributing to the infringement and its abetment are liable. As the term suggests, it is a group effort and all are responsible therein.
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, an actual act should have 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.
Remedies against Trademark Infringement or Passing Off
Civil remedies: Section 135 of the Act provides civil remedies such as injunctions, delivery up, and profit of accounts.
■ Temporary/Ad-interim Injunction: If the aggrieved is able to establish that there is a prima facie case of infringement or passing off, the balance of convenience lies in their favor, and if the injunction is not granted he will bear the irreparable loss, then the court can grant an interim injunction till the disposal of the suit.
■ John Doe Orders: These orders issued by the court against the defendants that are not known or cannot be tracked.
■ 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 the accounts of profits require 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 a 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/-.
Enforcement of Registered Trademark Rights by Courts/Government Bodies
Trademark Registry
This is the main body in India responsible for regulating initial protection and registration of a trademark. It is in charge of regulating the application, prosecution, registration, opposition, and other processes.
Courts
Only District Courts and other higher courts in India are the places where lawsuits for infringement and passing off, among other allegations, can be filed.
There are no courts that specifically deal with matters pertaining to trademark law. However, the Commercial Courts, Commercial Divisions, and Commercial Appellate Division of High Courts Act 2015 has established specialized commercial courts.
According to the new statute, these issues are not only heard quickly but also by exclusively specialized benches. Furthermore, there is a high level of expertise, particularly in High Courts and the Supreme Court, thanks to a long history of trademark jurisprudence and a robust common law heritage.
Intellectual Property Appellate Board (IPAB)
This quasi-judicial body was specifically established to deal with IP law matters. Under Section 91 of the Trade Marks Act, appeals against decisions made by the Registrar of Trade Marks and other officials are handled in this appellate body.
Appeals in Trademark Litigation
Any litigant has the option of filing an appeal against a final decision, as well as against interim orders. Here is how it goes…
Appeals From Final Judgments
Any party has the option to appeal the final decision to the Appellate Court.
Section 96 of the Code of Civil Procedure,1908 (CPC) refers to this as the First Appeal. Let’s say the first appellate court upholds the original final judgment.
In that situation, the party has the right to submit a regular second appeal before a higher appellate court, but only if a significant legal issue is at stake (section 100 of the Civil Procedure Code).
The time it takes to get a ruling in a final appeal is not predetermined and can range from two to five years.
Appeals From Interim Orders
Parties may also appeal interim orders if the Civil Procedure Code (order XLIII, rule 1) permits it (given that it is permissible). When the final judgment in the case is being appealed, further orders may also be appealed. Typically between one and six months, appeals from interim orders are completed far more quickly than those from final judgments.
Stay Of Proceedings
Only in cases where an appeal has been lodged against an interim order are litigants eligible for this relief.
The mere fact that an appeal has been filed does not automatically stay the underlying lawsuit (or order that is being appealed). The party who feels wronged must persuade the court that the underlying processes ought to be stopped.
Over the years Trademark Litigation has become the backbone of Trademark related disputes, and the savior of aggrieved parties. It has positively escalated the process of providing protection to Trademark rights and has also broadened the horizon for keeping up with a constantly ever-evolving world.
Naseem Sheikh is a trademark enthusiastic and has been practicing in intellectual property law for close to six years.
Last modify 27-05-2023
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.
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 online 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.
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.
How Fashion Companies Enforce Their IP Rights
The fashion industry is highly dynamic and that’s the beauty of it. But what keeps them motivated and protected? In this article we’ll discuss the different ways that help Fashion Companies enforce their IP rights.
Fashion designing is a branch of arts that focuses on producing clothing and other items for daily life. A person needs to be artistic and imaginative to work as a designer.
The ideas of fashion designers are translated into clothing, footwear and accessorise through their strong visual imagination.
Fashion designers demonstrate more than just an interest in learning new things by reading books, periodicals, and journals about the history of fashion design and current trends. They have to be aware of the demands of the fashion industry, including the necessity to safeguard their intellectual property (IP). The fashion business generates and commercially exploits innovative ideas and creativity on a regular basis.
In order to gain the competitive advantage needed for success in the fashion industry, creativity is not only confined to the act of designing but also encompasses the marketing of items, whether they are high fashion or every day wear.
The worth of the fashion business is ultimately determined by all of this intellectual property connected to a distinctive brand. However, many companies, particularly those in the fashion industry, fail to protect their intellectual property. Because the IP regulations are so permissive, designers frequently “steal” ideas from one another in a sector that earns hundreds of billions of dollars annually and prides itself on creativity and aspiration. Business managers must quickly recognize these important intangible assets, as well as their business’s needs and relevance, and progress on them to protect their rights and use the leverage efficiently.
Fashion Design and IPR
The fashion industry is rife with plagiarism, but the consequences are particularly severe for up-and-coming designers for whom every sale is crucial. Gary Assim, partner and intellectual property specialist at the London legal firm shoosmiths, stated that imitations do “double damage.”
“First of all, it deprives the designer of the sales revenue from his or her product, which frequently represents the return on a sizeable investment in research and development.”
Additionally, it deprives the designer of the proper credit as the original developer.
A clothes designer’s legal rights might be advantageous in two different ways:
Protection: They can prevent someone from utilizing your product or textile without your consent, and they can prevent others from profiting from your labor.
Exploitation: By enabling you to enter into licensing agreements for your designs with third parties, they can make money off of your creations.
IP rights cover more than merely preventing copying. They might be seen as serving a more subdued purpose, namely identifying the material producer. Fashion firms can go to the next level of sophistication where they are proactively managing their IP rights separately from their business operations by taking a more media and entertainment industry-inspired strategy.
Fashion designers have access to a wide range of rights under intellectual property law. Some of these will develop naturally, like copyright, while others, like trademark registration, ask for registration.
How is IPR relevant to the fashion industry?
The fact is that IPR and fashion are inseparable. The designs that are regarded as fashions are the result of an individual’s intellectual inventions, and the law of our country aims to preserve those creations by granting them an exclusive right to use those creations and to be exploited for financial gain.
The legal system attempts to foster creativity by encouraging more people to come up with ideas that may ultimately fuel the expansion of an economy by adhering to the same premise.
The country will suffer severe losses if the aforementioned rules are ineffective in protecting creativity since no one will step forward to develop and no new works of art will be produced. As a result, it is possible to see the strong connection between IPR and fashion. The Trademark Act, Copyright Act, Designs Act, and Geographical Indication of Goods Act are just a few of the several laws that aim to safeguard the intellectual property rights associated with works produced by the fashion industry.
One effective way through which fashion companies enforce their IP rights is through registration. In fact, registered IP can be a valuable commercial asset.
A registered IP not just instills a right that can be enforced against infringement, but also provides an exclusive right that allows one to use the design and authorizes how other people may use the same, as specified in the registration. Just like any other asset, a registered intellectual property in the fashion industry, in the future, grows and can be sold too.
The legal protection of IP rights provides designers, artists, business people, entrepreneurs, and inventors with the exclusive right to use and control, and therefore profit from, their intellectual and creative work. IP is a very valuable asset for those in the design industry and an important differentiating factor between one designer and the next.
What is protected under IPR for Fashion Industry?
Types of IP Protection | What is Protected? | Explanation | What Are The Terms of Protection? |
Two and three-dimensional product designs (e.g. the texture of a fabric, or the shape of a skirt) | A product's functionality is not protected, only its external looks are. The registered design or the look of the whole or part of a product arising from the feature of, in particular, the lines, contour, colors, shape, texture, and/or materials of the product itself and/or its ornamentation, has the exclusive right to use, sell, or license to the owner. | Your design is originally protected by registration for ten years from the date of application or from the date of priority claimed. The design registration may be renewed for an additional five years. | |
Artistic Work, Literary Work, Music, Cinematographic films, etc | Ideas themselves are not protected; only the owner's creative expression of the ideas is. The copyrighted work may only be used, sold, or licensed by the owner. | A creative work's copyright is valid for 60 years following the author's passing. But if the artistic work is commercialized, mostly in the case of fashion industry, the same is not protected under copyright act. | |
Letters, numbers, words, colors, a phrase, sounds, scents, logos, shapes, pictures, aspects of packaging or any combination of the above-mentioned. | Trademark distinguishes a trader's specific goods or services from those of other traders. The trademark may only be used, sold, or licensed by the owner. | As long as the renewal payments are paid every ten years, a trademark is first registered for a ten-year period and remains so eternally. | |
Inventions | A patent safeguards an invention's operation or use. The invention's owner has the sole right to make use of, sell, or license it. | For all types of inventions, the patent is valid for 20 years from the date of filing. |
Infringement of IPR and Remedies Available to Fashion Companies
Infringement in layman terms can be said to be unauthorized use or commercialization of someone else’s Intellectual property. The term unauthorized means use by someone who isn’t the proprietor or the permitted user of the Intellectual property.
But the definition, grounds and remedies against infringement varies depending upon the Intellectual property who’s right is being violated.
Though broadly specifying there are two types of remedies:
1. Civil : where the aggrieved can take-
• injunction against the infringer
• compensation
• delivery up of infringing products
2. Criminal: where the infringer is penalized by way of penalty or imprisonment (as stated in copyright and trademark laws).
The ability to register allows fashion innovators to stop the exploitation or misuse of any original concepts, elements, or products. Designs and trends receive significant investment, which is subsequently shared with the public in order to boost their appeal and grow business operations.
Although the registration process is costly and time-consuming, it must be availed in order to prevent dishonest rivals from gaining monetary advantage because of such dishonest acts.
Naseem Sheikh is a trademark enthusiastic and has been practicing in intellectual property law for close to six years.
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 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.
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.
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 .
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.
IPR/Trademark Consultant
What To Do If Your Business Name Is Trademarked By Another Company?
A trademark is a crucial component of a company’s intangible properties that often help to make a business successful. Consumers use trademarks to recognize products and services that meet particular quality, origin, and utility standards for a given brand. But what happens when your business name is found to be already trademarked by another company? Read further to find out!
What is a Trademark?
A trademark is the name, symbol, or brand of a good or service. Customers or clients use the trademark to identify goods or services. The Trademarks Act of 1999 governs trademarks in India.
Under the Act, trademark registration is voluntary and not required. The owner of a trademark receives numerous benefits from trademark registration. Protection against trademark infringement is one such advantage. When someone uses a trademark improperly, it is considered trademark infringement.
An individual or business can bring a lawsuit for trademark infringement if someone uses their brand without getting permission, which will stop the unauthorized use of their trademarks.
What should one do if my business name is trademarked by another company?
Before jumping to the solution it is important to understand if a problem really exists in the first place. Since there exists a wide range of businesses, its not possible to have a unique name for everyone but for this particular reason, distinctions have been made.
This is why it is crucial that you answer the below-mentioned questions when you find a trademark that is the same as your business name:
● Find out their area of business, does it fall in the same industry as yours?
● Do they deal in an identical or similar goods/ services to your business?
● How long have they been in their business and how long has the same trademark been used?
● Perform a quick public search to ascertain whether their trademark is registered or not
● Whether a reasonable buyer looking at the goods or services is likely to confuse the two or feel they are similar?
Possible Solutions
It is very important to know that India is a “first to use” country which simply means that if you are the prior user of a mark, you have superior rights to the person or organization who has subsequently registered it.
Therefore the plan of action highly depends on the fact as to who is the prior user of the mark.
If you are only at the stage of development and subsequent to the individual or company who has registered the mark it is suggested to change your trademark/ trading name to avoid any future prosecution or litigations. If you believe that though the marks are similar but there exists no reason of confusion due to territorial difference or difference in the industries, negotiating with the registered proprietor to reach to a possible situation which is beneficial to both the parties.
Whereas if there is a situation when even if your mark is not registered but you are the prior adopter and user of the mark, you have the right to take action of passing off against the registered proprietor.
Due to being an unregistered proprietor, you don’t have any remedies provided to the registered proprietor.
But if the case is as such where both the parties aren’t registered it all comes down to actual use, misrepresentation and damage to goodwill and reputation.
Though trademark registration is not mandatory but it is always advised for the adopters and users to get their brand name registered in order to get protections and rights under the act. Though an unregistered mark is still given protection under the common law rights but it becomes difficult to create a stands. It is always advised that in situation like these, one should consult the professions to find the best route possible.
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.
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 online 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 trademark 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 .
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 online trademark registration, 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?
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
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.
Read our guide for trademark your brand.
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 online 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.
Domain Brand Protection in India | Secure Your Online Identity
In the fast-paced landscape of today, domain names have become invaluable assets for business and individuals seeking an online presence.
As the importance of online branding continues to grow, the question arises: can domain name be registered as trademarks? This article delves into the multifaceted world of trademark registration and explores the intricacies surrounding the possibility of protecting a registration.
Understanding the Nature of Domain Names:
Before delving into the complexities of trademarks registration, it is crucial to grasp the nature of domain name.
Essentially a domain name is a unique alphanumeric identifier that serves as an address for websites on the internet.
It acts as a gateway for users to access specific online location and is often associated with a particular brand, organization, or individual. Domain names enable businesses to establish their online presence and connect with their target audience.
The Essence of Trademarks:
Trademarks are vital legal tools designed to protect distinctive symbols, name, logos or phrases associated with goods or services. By registering a trademark, individuals or businesses acquire exclusive rights to use that mark in connection with identified goods and services.
Trademarks serve a valuable asset, helping to establish brand recognition, consumer trust, and market distinctiveness.
Can Domain Names be Registered as Trademarks?
Although there are similarities between domain name and trademark, their functions differ significantly.
A domain name functions primarily as an online address, facilitating website accessibility, while a trademark acts as a source identifier for goods or services. However, under specific circumstances, a domain name can be registered as a trademark, subject to meeting certain criteria and legal considerations.
Distinctiveness: A Crucial Criterion
The key factor in determining the eligibility of a domain name for trademark registration is its distinctiveness. To obtain trademark protection, domain name should possess inherent distinctiveness, meaning it should not be generic, descriptive or merely functional. For instance, a domain name like “shoes.com” would be considered as generic and may face challenges in securing trademark protection, as it fails to provide unique identifier.
Secondary meaning:
Acquiring distinctiveness over time in cases where a domain name lacks inherent distinctiveness, it may still acquire trademark protection through the establishment of secondary meaning.
Secondary meaning refers to a situation where consumers associate the domain name with a specific source of goods or services, rather than its generic or descriptive nature. By extensively and exclusively using a domain name over time, it acquires secondary meaning, bolstering its chance of obtaining the trademark protection.
The likelihood of confusion:
A critical factor in trademark registration is the likelihood of confusion. If a domain name is identical or similar to an existing registered trademark for similar goods and services, it may result in consumer confusion.
Trademark examiner evaluate this likelihood by considering various factors, including the overall similarity between the marks, the relatedness of the goods and services, the strength of the existing trademarks, and the degree of attention consumers are likely to exercise in making purchasing decisions.
Domain name disputes and the UDRP:
In addition to trademark registration, domain names can also be subject to disputes based on alleged trademark infringement. The Uniform Domain-Name Dispute-Resolution Policy (UDRP) provides a mechanism for resolving such conflicts. If a registered trademark holder believes that a domain name is identical or confusingly similar to their mark, and the domain name registrant has no legitimate interest in it, they can file a complaint to reclaim the domain name.
The UDRP aims to strike a balance between protecting trademark rights and maintaining a fair and efficient domain name system.
How the disputes of domain name can be settled in India?
The ICANN, the regulatory body responsible for overseeing domain names, has established the Uniform Dispute Resolution Policy (UDRP) as a global mechanism to resolve domain name disputes.
However, the jurisdictional challenge arises in the context of domain name disputes and trademark protection due to the absence of geographical boundaries on the internet. In India, the Indian Dispute Resolution Policy (INDRP) governs domain name disputes. The rules and procedures of INDRP have been approved by NIXI. Under INDRP, arbitration proceedings are mandated under the Arbitration and Conciliation Act, 1996 for domain names registered by NIXI.
Regarding the prohibition of another company from using a registered trademark as their internet domain name, it is not an automatic restriction.
The existence of a registered trademark does not necessarily prevent other companies, engaged in similar or different businesses, from using that trademark as their domain name. However, there are circumstances where a trademark owner can seek intervention from NIXI to prohibit the use of their trademark as a domain name.
In cases where a company uses a domain name that is already a registered trademark owned by another company operating in a similar or different line of business, causing confusion among consumers regarding products or services, NIXI may impose restrictions on the use of the trademark as a domain name by the other company.
Furthermore, if the commercial use of a domain name leads to the dilution of the reputation of a famous trademark, restrictions can also be imposed on using the trademark as a domain name.
Landmark Cases
In Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company,
In this particular case, referred to as the complainant, actively contributed the publication of articles in the popular daily newspaper like the “Economic Times” and the “Times of India”.
Further the complainant also published articles on the respective newspaper’s online version, accessible through the domain name “economicstimes.com” and “timesofindia.com”. Conversely the party known as the respondent registered domain names as “theeconomicstimes.com” and “thetimesofindia.com”.
The complainant alleged that the respondent’s choice of sponsored top-level domain name resembled theirs, aiming to capitalized on the complainant’s positive reputation without good intention.
Consequently, dispute was referred to the panel of the Mediation and arbitration Centre of WIPO.
After careful consideration, the panel concluded that the two domain names owned by the respondent should be transferred to the complainant.
In Rediff Communication Ltd. v. Cyberbooth & Another,
The Bombay High Court held that “a domain name is much more than an internet address, therefore, it is equally entitled to protection as a trademark under trademark law”.
In this case, the plaintiff has filed a case against Defendant Company that they use the mark/ domain name “Radiff” similar to their trademark “Rediff” to deceive the consumers. The High Court held that, with the “intention to deceive” the plaintiff, the respondent uses the domain name in bad faith.
Resolving domain name disputes in India requires a comprehensive understanding of trademark law, cyber-squatting issues, and available disputes resolution mechanism.
Registering domain name as trademark, monitoring infringements, and taking prompt legal action when necessary are vital steps in protection rights.
India offers various avenues for resolving domain name dispute, including litigation in courts, alternate dispute resolution mechanism like NIXI, WIPO and anti-cybersquatting provisions. Prompt and proactive action is necessary to safeguard brand reputation and online presence.
By staying informed, seeking legal advice, and implementing proactive brand protection strategies, individuals and businesses can effectively protect their domain names and maintain a strong online presence in India.
Apoorva Sharma is an Advocate enrolled with Bar Council of Delhi. She is a Law Graduate from Vivekananda Institute of Professional Studies, GGSIPU.
Reference –
Lawcorner
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,
Finally, you Have it.
Your company’s brand is its lifeblood. Apply for online trademark registration (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 Sheikh is a trademark enthusiastic and has been practicing in intellectual property law.
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 tm 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 ip trademark public 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 online 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 online 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 TM 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 Sheikh is a trademark enthusiastic and has been practicing intellectual property law for close to six years.
Unlocking the 10 Benefits 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 mark, 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?
1. 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).
2. 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.
3. 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.
4. 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.
5. 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.
6. 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.
7. 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.
5. 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. Learn more about trademark registration for e-commerce business
- Protects your Reputation in the Market
Another advantage of trademark registration is that it protects a company’s reputation. Lamborghini, for example, is a high-end luxury sports vehicle brand that costs a lot of money. Now, if a manufacturer of a less costly automobile tries to affix the Lamborghini brand to it, the firm will suffer a significant loss of reputation. Discerning luxury goods, customers would be unable to link the brand with a premium, high-end product and would thus refrain from purchasing it. Naturally, Lamborghini wants to ensure that no one else comes out with a low-cost product with the same name and emblem.
- Registered Trademark is a Valuable Asset
Over time, trademarks can gain in value. Your Trade Mark will become more important and valuable as your business reputation grows. Trademarks can pave the door for cross-industry development, such as moving from personal care to clothes or eyewear. Your trademark can lead to your company’s purchase by a larger organization if you want it to.
- Builds an Atmosphere of Autonomy
It’s no secret that the market is very saturated across a wide range of niches, each with its size and purpose. It’s a very gruesome sight. As a startup, being even the tiniest fish in the tiniest pond is quite difficult. In this regard, a trademark might serve as a crutch; once a startup has established itself, it will want to keep its excellent name.
Trademarking a brand helps a young company defend itself from the market’s blows by donning a protective blanket; it both directly and indirectly notifies others that the people in charge of the company are serious about their work.
- Financial Benefits
A company’s trademark adds value and recognition. As a result, a corporation with well-known trademarks and brands in its portfolio has a positive market reputation. It also makes it simple to raise funds on the stock market or borrow money from lenders to grow into other areas. It also makes it easier to locate collaborators and partners.
For Trademark Registration you need to first understand about trademark classes in India
When starting a business, registering a trademark should be a top priority. It will safeguard a business from the start, ensuring its long-term prosperity. It is critical to protect a startup from the outset to acquire a competitive edge and avoid financial loss in the future.
We can’t see any reason why you should not get your trademark registered, can you? Do let us know your thoughts in the comment section below.
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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.
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 online 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, an authorisation 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 public 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.
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 online 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.
Benefits of Trademark Registration for E-Commerce
The owner general obtains the following three benefits once a trademark has been approved:
- Right to stop competing businesses that are using the identical or similar trademark;
- Ownership of the mark, which deters potential adopter or applicant; and
- The exclusive right to use the trademark.
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 up 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, market it, and spend money and effort to bring it to the next level and someone else gets it registered with the Trademark Registry, you might lose your exclusivity over the mark. Also, though the registration of the trademark 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 superior over the trademark 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 trademark registration are viewed favorably 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
E-commerce businesses should follow the steps outlined below to register trademarks in India as they are valid for 10 years. After ten years, the organization may submit a renewal application. The e-commerce sectors should create a trademark that is distinctive and can be expressed graphically in order to conduct trademark registration online.
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.
Therefore, 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.
Step-1: 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 or through online portal as well.
- 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.
WHICH CLASS TO APPLY FOR?
There are 45 trademark classes in total ranging from class 1 to 34 for goods and class 35 to 45 for services. The Applicant is required to file application in the relevant class for its goods for example for readymade clothes and footwear its class 25 and for cosmetics its class 03. Though, it is suggested that an application should also be made in Class 35 as the same covers-commerce business, publicizing, business administration, business organization, and office abilities, etc.
Step-2: Trademark Examination:-
- In this step, the officer shall examine the Trademark Application for Trade Mark Registration for E-commerce Business once it has been recorded for any flaws.
- The examiner may partially or wholly accept the trademark application, or it may be permitted with restrictions.
- If the application is accepted, the Trademark is published in the Trademark Journal and enters into an opposition period of 4 months.
- If there is any objection issued in the exam report, then the requirements are to be met or the objections are to be addressed via a response.
- If the response isn’t accepted, then a hearing is scheduled in which either the Applicant or its authorized agent can make submissions in support of the Application.
- The Trademark is either accepted or refused by the Examiner. If the mark is accepted, the same is advertised in the journal.
Step-3: Trademark Publication:-
- Once 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 and it is open for opposition for 120 days or 4 months from the date of publication.
- If any party has any kind of objections to the Trademark being registered, there is an equal opportunity to prevent it from being registered by filing a Trademark opposition in that application within the prescribed time limit.
- If the mark is opposed, then the Opposition proceedings continue to take place otherwise if there is no opposition the mark is registered and a certificate is issued in he support of same.
Step-4: 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.
Signs for Trademark
The following three symbols can be used by companies to signify that a trademark has been used:
- ™- Any pre-existing trademark, specifically any unregistered trademark, is denoted by the symbol TM.
- ℠ – This mark denotes the retail sale of services rather than goods. Although the service mark logo is an option, most businesses choose to use the mark ™ due to its simplicity.
- ®- The registered trademark is denoted by the symbol ®. It is preserved for trademark registrations that receive the necessary government assistance.
Documents required for the Trademark of an E-commerce business
The following is a list of all the necessary documents for E-Commerce business to register their trademark:
- If the trademark that you intent to apply has already been in use then a user affidavit along with supporting documents showing the use of mark is required to be filed along with the Application.
- Copy of MSME/Udyam Certificate or DIPP certificate for availing waiver in fees as MSME or Start-ups respectively.
- A copy of Power of Attorney if you have authorized an agent.
Difference between Name Approval under the 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 rights on its mark. An e-commerce firm should file a trademark registration application under the Trademark Act to protect its brand.
Is an Indian Trademark Registration Worldwide?
The topic of whether trademarks registered in India are recognized internationally arises since e-commerce companies are not limited to operating solely in India and have access to a global market. The rights and registration of a trademark are territorial in nature. To get registrations in different jurisdictions, the cumbersome route is to separately apply to every nation where one needs registration but with Madrid Protocol, a trademark can be applied to multiple nations at once. Application is reviewed by each nation separately granting or refusing protection.
Conclusion
Be it an offline store or an online e-commerce, online trademark registration is always a great way to build intangible assets around your brand name and create an identifying feature for your customers of people of trade to distinguish the same from the rest of the market. Though, India being common law country grants superiority to prior use rather than prior registration, it is advised to apply the trademark for registration so that the statutory rights are also granted to the Proprietor for protection of trademark.
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
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/Audio trademark 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 online 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
Understanding 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.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India & Delhi High Court .
Acquiring Distinctiveness in Trademarks
Acquired distinctiveness and secondary meaning plays a significant role in trademark consideration. The trademark distinctiveness of a trademark is a key factor in determining if it can be registered. While some trademarks possess inherent distinctiveness from the outset, others develop it over time.
Certain trademarks are naturally distinctive because they are:
Arbitrary: Trademarks that are not directly related to the goods and services.
Fanciful: Trademarks that are completely invented by the Applicant’s own mind.
Suggestive: Trademarks that gives some hint of the product and services.
Each trademark naturally links the goods it represents with a specific source. The longer a trademark is used, the stronger this association becomes. Eventually, a trademark becomes registered or mentally connected with the product and its source in the minds of consumers as a distinctive sign. This phenomenon is known as “acquired distinctiveness” or “secondary meaning.” It signifies that the trademark has gained significance among the public beyond its ordinary dictionary meaning.
CHANCES OF REGISTRATION
The level of uniqueness that a trademark holds for products and services significantly influences its chances of being successfully registered. If a trademark lacks inherent distinctiveness, it becomes necessary to prove acquired distinctiveness. This procedure can be time-consuming and might not always result in success. When a trademark lacks both inherent distinctiveness and the ability to distinguish the applied goods/services, the application is likely to be turned down.
ELEMENTS FOR PROVING ACQUIRED DISTINCTIVENESS IN INDIA
1. Duration of Use in India:
(i) Evidence of consistent, significant usage over time.
(ii) Shows the mark’s role in identifying goods/services.
2. Advertising and Promotion:
(i) Display efforts to promote the mark within India.
(ii) Highlights brand visibility and recognition efforts.
3. Reputation and Position in the Market:
(i) Provide data on market share and reputation.
(ii) Demonstrates mark’s acceptance among Indian consumers.
4. Consumer Recognition and Association:
(i) Present proof of consumer perception and link with the mark.
(ii) Vital for establishing consumer connection to a specific business.
STATUTORY PROVISION IN TRADEMARK
In the Trade Marks Act, section 9 states the provisions of registration of trademark and if a trademark simply describes the product or service, and are non- distinctive it can’t be registered. This rule aims to maintain uniqueness in trademarks.
However, there are exceptions. If a trademark becomes distinctive through its continuous and extensive use before seeking registration, it can still be registered. This concept is termed “acquired distinctiveness.”
The Act also addresses “well-known” trademarks. These are trademarks widely recognized by the public and indicate a connection between goods/services and the trademark owner. Think of brands like Pepsi, Reebok, and McDonald’s.
Additionally, Section 32 permits the presentation of evidence regarding trademark use during registration or legal proceedings. This provision is pivotal for demonstrating that a trademark has gained significance over time.
CASE LAWS
In the legal case of Living Media India Limited V. Jitender V. Jain and Anr. (2002), the court had to decide if the name and logo “AAJ TAK” were generic terms or if they held specific meaning due to prior use. Despite the individual words being descriptive, their combination had gained uniqueness through continuous use by the plaintiff, preventing others from using it.
In J.L. Mehta v. Registrar of Trademarks, the issue centered on the word “SULEKHA”, which means “good handwriting” in Hindi. While descriptive, it became a valid trademark when used for different items like fountain pens, showing that common words can gain trademark status when linked to other goods.
Metropolitan Trading Company v. Shri Mohanlal Agarwal revealed that one “ZODIAC” trademark gained distinctiveness due to prolonged use, while another with shorter use didn’t qualify. This demonstrated the importance of time in “acquiring distinctiveness.”
Ishi Khosla v. Anil Aggarwal showcased that a trademark needn’t be around for years to gain secondary meaning. An innovative idea can quickly become distinctive, depending on its appeal. This clarified that the time for “acquiring distinctiveness” varies case by case. There’s no fixed period for a trademark to become distinctive.
CONCLUSION
In conclusion, Indian trademark law aligns with international standards by placing restrictions on using common words as trademarks. Opting for everyday words as trademarks can lead to confusion among the public. However, there are instances where such descriptive words gain a unique meaning tied to a particular business. This concept, known as “acquired distinctiveness,” comes into play.
This principle is clearly outlined in Section 9 (1) (b) of the Trademarks Act of 1999 and is widely upheld by the courts. The courts carefully examine the evidence that highlights a trademark’s reputation. As a result, this aspect of the law offers solace to many well-intentioned trademark owners.
Apoorva Sharma is an Advocate enrolled with Bar Council of Delhi. She is a Law Graduate from Vivekananda Institute of Professional Studies, GGSIPU.
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 Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India
Effective Strategies to Respond to Trademark Objections
Intellectual property such as trademarks is crucial for a company. Numerous trademark applications are made each year but not all of them are accepted.
The truth is that some trademarks are not registered because they are either abandoned. In order to determine whether an applied trademark is eligible for registration the same goes through formality check and examination as per the provisions of the act to determine whether the same is liable to be refused as per the provisions of Section 9 and Section 11 or whether the mark has some other faults that needs to be cured. If the mark is not registerable as per the provisions of the Act, the Examiner issues an report stating the objections to which the Applicant has to responded as to why the trademark should be registered.
The question stands- How do you respond to Trademark Objection? In this article, we’ll discuss how to respond to trademark objections.
What is the difference between Objection and Opposition?
The fundamental distinction between a trademark objection and an trademark opposition is that an objection to trademark registration is made by the examiner at a preliminary stage following the submission of the application. As opposed to this, trademark opposition is brought forth by anyone who has a problem with a trademark that has been registered after it has been advertised for 4 months in the trademarks journal.
Why is it Necessary to Reply to Trademark Objection
Here are some reasons for reply to trademark objection as soon as possible –
To Prevent Abandonment
To proceed to the next step in the registration procedure, you must submit a response to the examination report. As per the Trade marks Rules 2017, the Trademark Application would be deemed to have been abandoned if the reply to the examination report is not submitted within a month of the report’s dispatch date.
Establish your Mark’s Distinctiveness
The trademark objection reply letter gives the applicant the chance to explain why he or she is qualified to have their mark registered. One can present their views on why the objections do not apply to the TM application and highlight the distinctive qualities of the mark in a written response to the report.
How to File Trademark Objection Reply
It is mandatory to file a Trademark objection reply within the given time frame as to prevent the Application from getting abandoned.
Step-1: Analyze the Trademark Objection
The first and foremost step, is to analyze the objections that have been raised by the examiner and understand the reasons for the same. It will help you give clear and to-the-point replies.
Step-2: Drafting of Trademark Objection Reply
Moving on to the next step of the process, you need to draft your reply to the objections raised in the report. This should be done within a span of 1 month from the date when you received the notice.
Section 9 pertains to absolute refusal whereas Section 11 pertains to Relative grounds of refusal.
Depending on the objection, the Applicant has to establish as to how its mark is distinctive (in cases of Section 9) or how the applied mark is different from the mark cited in the examination report (Section 11).
The Applicant can rely on judgments, details and information about its mark not limited to use, goodwill, reputation, presence in the market or social media.
Step-3: Trademark Hearing
It the Examiner is not satisfied by the reply as submitted by the Applicant, a show cause hearing is scheduled where the Applicant or its authorized representative/ agent can make submissions as to why the mark should be proceed for the registration.
The Applicant can in support of show-cause hearing file documents such as extracts from internet/ social media/ e-commerce websites showing the use and presence of the mark. The Applicant can also attach the invoices pertaining to the goods/ services under the applied mark, any certification applied for in respect of the same, or any other document that support the Application.
Step-4: Publication in Trademark Journal
If the examiner if convinces with the submissions, the mark moves forward with the advertisement in the Trademark Journal. Whereas if the Examiner is not convinces either another hearing is allotted or the mark is refused.
Applicant if believes that the Examiner didn’t consider the submissions of that the refusal order doesn’t consist the reasons for doing so, can move a Review Application within a month from the order or an Appeal to the IPD within 3 months from the date of the impugned order.
Step-5: Registration
After publication, if any third party believes that the mark should not be registered, they have the right to oppose the mark within 4 months from the date of Application. If such an opposition is filed than the registration is delayed as the proceedings of Opposition take place. Whereas if no third-party issue is raised during that period, the trademark further proceeds toward registration, and a registration certificate is issued by the registry.
CONCLUSION
Filing a reply to Trademark Objection is quite important and should be done within the mentioned time and in the right way. It is a very crucial step in your journey toward getting registration and can make or break the case for you.
Naseem Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India.
Trademark Squatting
In recent trends, the term Trademark Squatting has become a quite popular activity that continues to haunt every brand’s reputation and hard work. Wondering what it is and how to deal with it?
Read here…
Understanding Trade Mark Squatting: What You Need To Know
As per World Intellectual Property Organization (WIPO), Trademark squatting is “the registration or use of a generally well-known foreign trademark that is not registered in the country or is invalid as a result of non-use”.
Frequently, trademark squatters adopt, submit applications for, and use someone else’s trademarks with the sole intent of later selling them for a profit. The usual situation is for a squatter to file a online trademark registration for a well-known company and then wait until the brand owner makes an appearance on the local market.
A court may force the squatter to hand over the registration or application to the actual proprietor if it is shown to the court through documents and evidence that the aggrieved is the actual user and adopter of the mark. Additionally, the court may award financial compensation to the owner of the mark. However, it will be challenging for a proprietor to preserve rights in the trademark if the aforementioned trademark does not have a widespread reputation. As a result, the owner may need to engage in protracted legal actions before the tribunal and/or the Court or negotiate a price with the squatter for the trademark’s purchase.
Knowing the Reasons for Trademark Squatting
The goal of a trademark squatter is typically to persuade the legitimate trademark owner to buy the Trademark Registration from them. The profit made from this sum is significantly greater than what they spent on a false trademark application. A bad faith registration can be challenging, expensive, and time-consuming to cancel.
A trademark squatter may even use legal action against the legitimate owner of the mark if the country where the trademark was first filed allows it. Additionally, he or she has the option of asking the customs officers to hold for export goods that belong to the legitimate owner. Any company, regardless of how big or little, can become the target of trademark squatting.
Some trademark squatters concentrate on trademarks in a particular industry or class. Based on their thorough research in this field, they plan the squatting, even keep track of how far along the legitimate owner is with their trademark application, and then promptly file new applications to obstruct further progress. Rarely will trademark squatters use the registered trademarks of other owners to uncover gaps in their registration, seek out similar trademarks in bad faith, and lay a trap for the target company’s commercial progress. After receiving the necessary rights, the trademark squatters manage and preserve their trademark registrations in order to achieve their ultimate goal of trademark squatting. They even consciously create and hold the evidence of trademark “use” in order to defend against the cancellation action.
The Dangers of Trade Mark Squatting: Protecting Your Brand
It has been observed that trademark registration presents a significant barrier for overseas businesses because many domestic trademark infringements attempt to register their marks in order to market their goods and generate large profits once they have established a reputation and goodwill on a global scale. For legitimate trademark owners, trademark squatting poses the following risks:
1. The introduction of brands into overseas nations is delayed. Time management is crucial, especially in sectors like gaming and electronics.
2. The legal process can be expensive and drawn out, often taking months to get an order.
3. In the event that the trademark squatter uses the mark or sells it to a third party for use, there is a risk of trademark dilution, which might seriously damage the goodwill and reputation of the legitimate owner.
4. Since prior usage is irrelevant in countries with superior rights to first-to-file, it may even happen that a brand never manages to register its mark if there is already a bad faith registration in existence.
How to Detect and Prevent Trademarks from Squatters
Despite the existence of various international conventions targeting the protection of trademarks that are ‘well-known’ such as the Paris Convention, the TRIPS Agreement, the Madrid Protocol as well as the WIPO Joint Recommendation Concerning Well Known Marks, these are not enough to put an end to this problem. In India, the Trade Marks Act, 1999, has provided for the protection of foreign trademarks following the ‘Trans-border Reputation’ principle.
This principle allows the unregistered trademarks in India to maintain an action for passing off without the requirement of having commercial use in India.
Even though trademark squatters use complex and innumerable methods for trademark squatting, bona fide prior owners are not completely deficient in retaliatory strategies. It is critical to outline a complete strategy with precise actions. Since it is expensive and tough to cancel bad-faith trademarks, prevention is the best strategy for countering them.
It is not always realistic for businesses to register their trademarks in every nation around the world; however, companies should take active steps to discourage bad-faith trademark squatters and make informed decisions on where to file for trademark registrations.
Businesses should consider registering their mark in countries where:
- The goods or services they provide are sold;
- Manufacturing of products or parts for their products takes place;
- Their research and development facilities are located;
- During shipping their products pass through;
- Expansion of business is possible in the near future; and
- Problems like Counterfeiting are quite likely.
Proactive Strategies to Combat Trademark Squatting
Trademark squatting is becoming a menace to society. It leaves the brand aggrieved in a vulnerable position, with tireless litigation, and a damaged reputation. Here are a few practice strategies that can be equipped to combat trademark squatting:
1. Get your Mark registered: To prevent any trademark squatters from making benefit on your brand’s reputation, it is suggested that you get your Trademark duly registered within time. Nip the problem right from the bud!
2. Look out for possible trademark squatters: Staying vigilant and keeping updates on the market you wish to enter can help prevent a trademark squatter from going through with its malicious plans. It’s also crucial to be aware of any additional internet resources, like social media accounts, that are connected to your brand name.
3. Registering your trademarked name as a domain name and keeping a close eye out for any attempts to register similar names are the best ways to defend your company from trademark squatting.
4. Hire a Trademark Firm to offer their expertise for a bulletproof plan: While a proactive approach is quite the need of the hour to prevent future damage, the truth is that this process of prevention can be quite time-consuming and energy-taking. Therefore, taking the aid of a trademark registration firm can come to your rescue.
Domain Name v. Trademark: the difference between the two and their Squatting
A universal resource locator (URL), which is used to access online sites, is a series of letters, numbers, and dashes that is referred to as a domain name. Every website has a different domain name that is used to access it. They start with “www.,” are then followed by a distinctive name, such as “XYZ,” and end with domain name extensions, such as “.com,” “.org,” “.edu,” “.net,” “.ac.in,” etc. The domain name appears as “www.xyz.com” as a result. Over time, the purpose of domain names has changed from just serving as a communication and internet address to a platform for performing commercial operations.
A trademark is the exclusive means through which the goods or services of its owner may be identified. According to the definition of a trademark, it is “a mark that can be graphically represented and that can distinguish the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colors.” By granting the owner the exclusive right to use the mark for just his goods and services, a registered trademark sets its owner’s products and services apart from those of competitors in the marketplace.
As a result, a trademark is always used in relation to the goods and services that its owner offers. This is how domain names and trademarks are connected. Regarding the goods and services they offer, each is distinctive. Therefore, it is accurate to say that both domain names and trademarks are “identifiers”.
The methods used to register a domain name and a trademark is different. A domain name can be registered for a few Rupees in under an hour, as opposed to a trademark, which requires a lengthy and complicated process to register. The process of registering a domain name is what causes the problem of cybersquatting.
Case Studies: Famous Brands Battling Trademark Squatters
- Yahoo!, Inc. vs Akash Arora [(1999) IIAD Delhi 229]: This was the first time the Indian Courts were presented with an opportunity to deal with a cybersquatting case. In this case, the defendant was utilizing a domain name for online services that are confusingly similar to the trademark “Yahoo.com” owned by the plaintiff. In this case, the court noted that there is every chance and potential of creating confusion and deception, making the degree of likeness of the marks extremely crucial and substantial to bring an action of passing off. Looking at both domain names, it is obvious that they are identical or similar in nature, and there is a good chance that an Internet user will be misled into thinking that both of the domain names are owned by the same person when in fact they are owned by two distinct people. A temporary injunction prohibiting the defendant from using “Yahooindia.com” or any other trademark or domain name that is confusingly similar to the plaintiff’s trademark was successfully obtained by the plaintiff.
2. N.R. Dongre and Ors. v. Whirlpool Corporation and Ors. [(1996) PTC (16)]: In this judgment, while upholding the decision of the single bench and division bench of the High Court of Delhi, the Supreme Court of India in this judgment, recognized the principle of trans-border reputation in India.
In this case, Whirlpool Corporation applied for registration of the Whirlpool mark in 1956 for use on laundry equipment such as washers, dishwashers, and clothes dryers. However, the registration of said trademark expired in 1977 as a result of non-renewal. Mr. N.R. Dongre submitted a registration application for the Whirlpool mark in 1986, which was later opposed by the Whirlpool Corporation on January 16, 1989, after being published in the Trade Marks Journal on October 16, 1988. The Registrar of Trade Marks rejected the opposition on the grounds that Whirlpool was not used and had no reputation in India. This led to the appeal being heard by the High Court of Delhi’s Single Bench. A single bench of the High Court of Delhi concluded that Whirlpool Corporation was the trademark’s original user and had a trans-border reputation in India based on the documents Whirlpool Corporation submitted before the court demonstrating these facts.
3. Hengst SE & Anr. v. Tejmeet Singh Sethi & Anr. [CS(COMM) 600/2021]: The Court noted that a total of 378 well-known marks belonging to various companies were squatted by the Defendants. According to the court’s instructions, the defendants accepted the plaintiffs’ rights in their written undertaking and agreed to withdraw all other applications that would have violated well-known marks in addition to the one that would have violated the plaintiffs’ rights.
The Plaintiffs were also given permission to request the revival of the current lawsuit and to pursue their claim for damages of INR 2 crore in addition to the additional costs if the Defendants failed to pay the cost of INR 10 lakh to the Plaintiffs’ counsel in the specified amount of time.
Other Examples:-
1. Due to trademark squatting, Apple had a problem with its trademark registrations in 2012 and was forced to pay a significant sum of $60 million to the owner of the “iPad” brand in China.
2. When Tesla Motors sought to expand its business into China, it learned that a man by the name of Mr. Zhan had already filed for registration of the trademark “TESLA” in class 12, which was reserved for motors and other comparable goods. In order to revoke the trademark, Tesla Motors submitted both a non-use and an invalidation application. In reaction, Mr. Zhan sued Tesla Co. for trademark infringement. He demanded that Tesla Co. cease selling infringing items and engaging in associated promotional activities and pay damages of 23.94 million RMB. After five years, the parties finally reached a settlement. Tesla Co. eliminated all claims for damages against Mr. Zhan at the same time as Mr. Zhan renounced all use of the TESLA marks.
3. When Sony PlayStation most recently sought to introduce the PS5 game console in India, it was discovered that Delhi resident Hitesh Aswani had previously registered the PS5 brand as a trademark in India back in October 2019. Hitesh Aswani was forced to withdraw the trademark application but this act substantially delayed the timeline in which Sony wanted to launch its product.
FAQs
- How does Trademark squatting affect businesses?
Squatting on trademarks can harm businesses in a number of ways. Trademark squatters can confuse consumers, lower the value of the original trademark, and harm a company’s reputation by registering a mark that is confusingly similar to one used by an already established business. Losses in sales, a decline in brand recognition, and legal fees incurred in contesting the trademark squatter’s registration can follow from this.
2. How can I identify if my Trademark has been squatted upon?
You can run a trademark search on the Indian Trademark Registry website to find out if your trademark has been illegally used in India. This will enable you to see if other people have registered any trademarks that are identical or similar to yours. To make sure that no one is violating your rights or trying to register a trademark that is identical to yours, you can also periodically monitor your trademark. Additionally, you can look for assistance from a trademark lawyer or agent, who can help you do a comprehensive search and take the necessary legal action if your trademark has been infringed upon.
3. Can Trade Mark squatting occur in different countries?
Yes, trademark squatting can occur in different countries. In fact, it is a common issue in the global marketplace, where businesses may operate in multiple countries and have trademarks registered in different jurisdictions.
4. How long does it typically take to resolve a Trademark squatting dispute?
In India, the time it takes to settle a trademark squatting lawsuit can vary based on several variables, including the case’s complexity, the strength of the evidence, and the backlog of cases at the court or registry. A trademark squatting case in India can often be resolved in a few months to a few years. The establishment of specialized intellectual property courts and tribunals by the Indian government, which can serve to streamline the legal process and decrease the time and expenses associated with resolving disputes, has been made in an effort to hasten the resolution of such issues. Additionally, alternative dispute resolution methods are also used actively to speed up the process.
5. Can Trademark monitoring services help in preventing squatting?
Yes, trademark monitoring services can help in preventing squatting by regularly monitoring the trademark databases and alerting businesses to any potentially infringing trademarks.
Apoorva Sharma
Apoorva Sharma is an Advocate enrolled with Bar Council of Delhi.
What Is A Trademark Formality Check Fail?
When backed up by effective strategy, people can still operate profitable enterprises in today’s cutthroat business environment.
The beauty of competition allows similar businesses to be used by a large number of people. However, it also makes it possible for customers to become confused because there are identical products on the market.
To protect trademark from getting copied and to hold the exclusive rights over one’s own brand, it is important to have their Online Trademark Registration done, however it is not always a cake walk to file an error free trademark application as the form is filled considering the updated rules and exemptions.
Having been actively involved in the practice of trademark prosecution for a significant amount of time, I have witnessed that many applicants waste their time, efforts and due to formality check fail in their trademark registration.
Trademark applications have admittedly simplified over the years but the high stakes have directly increased the level of scrutiny too. One important step into it was Trademark Formality Check (or Trademark Formality Chk). In this article, I will share my two cents on the topic and will further mention ways to avoid formalities chk fail in Trademark.
What Is Formality Check Pass?
The application will be designated as a “Formality check pass” after two stages of status checking are completed. The following are those:-
- Nothing lacking in a trademark application.
- A response has been submitted to the “formality check fail”.
The application will move on through this stage and onto the next one. This process usually takes 7-10 business days.
What is a “Trademark Formality Check Fail”?
As mentioned above, there are two stages associated with Trademark formality check. In cases where the application does have some deficiencies, the Trademark status responds “Trademark Formality Check Fail”.
You might be wondering “Does this mean it is the end of the road?” , well, I would rather call it a hiccup that can be fixed with the right steps.
When Does Status -“Formality Check Fails’’ arises?
First, it is important to understand the reasons that might land you with a “Formality check fail” status. There are 6 of them in total: inappropriate category, class, description, documents, or information, and different brand name and logo issues.
What Happens If a Trademark Formality Check Fails?
The next natural question that comes is “What happens if my trademark formality check fails?” . The answer is that there’s still room to do damage control because the Trade Mark Registry notifies the applicant of any objections with rationale via a notice for formality check fail.
This is a chance for you to rectify the mistake and protect your brand.
Time Limit To Respond The Trademark Formality Check Fail
In India, you normally have 30 days from the date you receive the formality check report or notification to respond to a trademark formality check failure. The applicant has 1 month to address any errors or submit the necessary data in order to meet the formal requirements of the trademark application.
What If The Trademark Formalities Check Fail’s Response Not Filed?
If an answer to an unsuccessful trademark formality check is not submitted in India within the allotted time frame, I have personally seen people facing some serious repercussions for the same. For starters, the Trademarks Registry will consider the application abandoned, thus eliminating the continuance of the process. It ultimately means that the applicant will forfeit the chance to make the necessary corrections and seek trademark registration.
Trademark Formality Registration Process
There are various procedures involved in the trademark formalities registration process in India. Below is a summary of the procedure:
Trademark formality checks are one of the crucial steps of the application process that hold the power to make or break it for you. You hold the power in your hand to avoid any discrepancies, it is a must that you exercise this liberty wisely.
Treat your trademark formality chk failure status very wisely and prevent any further damage to your trademark.
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.
Difference Between Registered And Unregistered Trademark
BASICS OF TRADEMARK
A trademark is any sign, symbol, word, or combination of words that are registered or authorized for use in identifying a company’s goods or services. As a result, any alteration or unauthorized use of this trademark by any other person or entity provides the owner and proprietor of the Trademark the right to pursue legal action, making the trademark of a corporation the most crucial aspect of its existence.
In India, trademarks are governed by the Trademarks Act, of 1999 (‘Act’). The Trademarks Act follows the international Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS agreement).
Trademarks can generally be divided into two categories keeping in mind the legal protection they get: registered trademarks and unregistered trademarks. In this blog, you will get a brief insight into the difference between the two.
The Trademarks Act of 1999 establishes the legal framework for trademarks in India. The Trademarks Act follows international Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS agreement)
REGISTERED TRADEMARK
In order to statutory stop others from using identical or similar names, a trademark has been filed with the trademark registry and get it registered. It gives the owner legal protection and enables them to file a lawsuit for trademark infringement. The registration of a trademark preserves a proprietor rights, reputation, goodwill and gives them the right to take legal action. A Trademark Registration certificate is prima facie evidence of ownership of a brand name.
LEGALITIES OF REGISTERED TRADEMARK
The Trademarks Act, through its different sections, also provides specific incentives for trademark registration. The effects of Registration are covered in Chapter 4 of the Trademarks Act. In the case of a registered trademark, the aggrieved might seek civil and criminal redress in a trademark infringement action. Furthermore, registration offers some benefits under Section 28 of the Act.
The exclusive right to use a trademark in connection to products or services is granted to the registered proprietor of the trademark when it is registered. Furthermore, the registered trademark can seek remedy against infringement of the trademark under the Act’s provisions. Registration can be used as prima facie proof of legitimacy under Section 31 of the Act.
Registration grants the mark a monopoly right in a particular region. It enables a registered trademark owner to prohibit unlawful use of his mark in connection with goods or services. Here are some benefits that will excite you:
1. Legal defence: Having your trademark registered gives you legal protection from third parties using it without your permission.
2. Uniqueness: A registered trademark sets your company apart from competitors and aids in creating a strong sense of brand identification.
3. Exclusive usage rights: When a trademark is registered, the owner is granted exclusive usage rights in connection with the goods and services listed in the registration.
4. National protection is offered through federal trademark registration in India.
5. Public recognition: A registered trademark improves brand recognition and contributes to reputation-building.
6. Evidence of ownership: A trademark’s right to use and ownership are both shown by a registered trademark.
7. An expensive asset that can be licensed or sold is a registered trademark.
8. Legal presumptions are attached to a registered trademark. The validity and ownership simplify the enforcement of trademark rights.
VALIDITY OF REGISTERED TRADEMARK
A trademark’s registration serves as prima facie proof of its validity. As a result, regardless of public awareness, the trademark has an evidentiary value from the time of registration. The Online trademark registration is valid for a period of ten years from the date of application and a Trademark renewal request can be filed before the trademark office one year prior to the date of expiry. A trademark can be valid for an infinite time subject to a renewal request.
UNREGISTERED TRADEMARK
A trademark that has not been formally registered with the government or trademark office is said to be unregistered. The owner can still use this form of trademark, which is protected by common law, but they are not afforded the full range of advantages and safeguards that come with trademark registration. A trademark that is not registered may be more difficult to enforce and defend against infringement, it is crucial to understand.
LEGALITIES OF UNREGISTERED TRADEMARK
Although there is no action for infringement for unregistered trademarks under the Act, they can still be protected under the common law tort of passing off. To be successful in such an action, the owner must demonstrate that the unregistered mark has equivalent goodwill or reputation concerning the product, service, or company with which it is associated.
As a result, under the common law tort of passing off, the owner of an unregistered trademark may be entitled to restrict the use of an infringing mark by a third party. The notion that “a man may not sell his own products under the pretense that they are the property of another man” underpins the action against passing off. Passing off is a type of unfair trade competition in which one person attempts to profit off another’s reputation in a specific trade or company.
BENEFITS OF UNREGISTERED TRADEMARK
Here are some of the benefits of going with an unregistered trademark:
1. Low Cost: Unregistered trademarks are less expensive because there are no official registration costs to pay, which makes them more affordable for startups and small businesses.
2. Flexibility: Unregistered trademarks can be used more creatively and freely because they are not subject to the same stringent guidelines and limitations as registered trademarks.
3. Unregistered trademarks are simple to modify or abandon without the requirement for formal documentation or legal action.
4. Swift start: It is possible to utilize an unregistered trademark right away without having to go through the drawn-out trademark registration procedure.
5. Unregistered trademarks do not need to be renewed on a regular basis, unlike registered trademarks, which do.
6. Potential for later registration: If an unregistered trademark proves to be successful, it can always be registered at a later date for greater legal protection.
VALIDITY OF UNREGISTERED TRADEMARK
It is the owner’s responsibility to demonstrate the unregistered trademark’s value and goodwill. It is only when it has established a positive public image that it is granted protection. Please note- The owner of an unregistered trademark is responsible for demonstrating the duration or length of time that the reputation of the services or goods existing or existing in the market.
DIFFERENCE BETWEEN REGISTERED TRADEMARK AND UNREGISTERED TRADEMARK
Some key differences between Registered Trademark and Unregistered Trademark are:
1. Legal protection: Under trademark law, registered trademarks grant the owner legal protection, but unregistered trademarks do not.
2. Trademark registration: Unlike unregistered trademarks, registered trademarks are formally registered with the government.
3. Ownership proof: Registered trademarks offer ownership proof, whereas unregistered trademarks do not.
4. Registered trademarks grant the owner the sole authority to use the mark in a certain territory, whereas unregistered trademarks do not.
5. Owners of registered trademarks have the right to file a lawsuit to stop trademark infringement; owners of unregistered trademarks are not entitled to do so.
6. Government, courts, and the general public all recognize registered trademarks, whereas only the general public does so for unregistered trademarks.
7. Renewal: Registered trademarks require a 10-year renewal, however, unregistered trademarks do not have to be renewed.
REGISTERED v. UNREGISTERED TRADEMARK
FEATURE | REGISTERED TRADEMARK | UNREGISTERED TRADEMARK |
Legal Protection | Strong Protection from a legal perspective that is granted by the government and appropriate authority. | Only limited protection is available from the legal perspective based on common law. |
Official Records | Officially recorded with the government trademark office. | Not officially recorded. |
Symbol | Can use the ® symbol. | Cannot use the ® symbol. |
Enforceability | In case of infringement they are easier to enforce. | The owner encounters certain difficulties enforcing them. |
Renewal | Must be renewed periodically with a fixed fee. | No need for renewal or any fee payment. |
Exclusive Use | Only the owner possesses the exclusive rights to use it. | Only the owner shall use it but it may be difficult to prove exclusivity and ownership. |
Transferability | Can be sold, assigned, or licensed to another party. | May be transferred but the process is unclear and difficult to navigate through. |
National Protection | Protects the trademark where it is registered (nation). | Only protected in the particular region where it is prominently used. |
Legal Proceedings | In case of infringement, a legal proceeding can be instituted and won. | In case of infringement, a legal proceeding can be initiated but the chances of winning are very slim. |
won. | chances of winning are very slim. |
CONCLUSION
To conclude in a nutshell, there lie various similarities between a registered and an unregistered trademark but the differences are quite stark too. From a simple overview of the two, it is highly recommended to get your trademark registered because it increases your chances of staying protected. After all, precaution is always better than cure!
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
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 (Mark Shield), 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?
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 Sheikh is a trademark enthusiastic and he is a member of Bar Council of Delhi, Bar Council of India & Delhi High Court Bar Association
