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TRADEMARKS

Intellectual property rights are the rights given to a person for the creation of his mind. IPRs are provided exclusively to the creator for a fixed span. Various IPRs are:

● Trademarks

● Patents

● Copyrights

● Geographical Indication etc.

The McDonalds arc or the Audi rings, a leaping panther of puma or a bitten apple of apple, we all encounter around 100 trademarks a day and these are well imbibed in our memory. Trademarks and logos help us identify goods and services of brands of our choice by differentiating them from the rest.



DEFINITION

A trademark is a symbol, word, design, logo, phrase or combination of those, that represents a business or its products. These symbols, words etc. are provided legal protection that prevents the same from being used by any other business or organization.


GOVERNING LAW IN INDIA

The Trademark Act of 1940 was the first act on the subject of trademarks. This came into effect by borrowing the British Trademark Act of 1938. In independent India, this act was replaced by The Trade and Merchandise Act of 1958. Currently, the Trademark Act 1999 and the Trademark Rules of 2017 primarily govern the trademark- related laws in India.



TYPES OF TRADEMARKS

There are many types of trademarks, meant basically for the same purpose. A total of 45 classes which are further bifurcated into Goods and Services have been prescribed by The Trademark Ministry under Trademark Act, 1999.

A trademark can be categorized into the following types:

1. Product mark

2. Service mark

3. Collective mark

4. Certification mark

5. Shape mark

6. Pattern mark

7. Sound mark



REGISTERING A TRADEMARK IN INDIA

Applying for a trademark is a simple procedure mentioned under The Trade Marks Act, 1999 and the Trade Marks Rule, 2015.

The process for the same is:


1. Search for a trademark

Searching for a trademark is much more than just having a good brand name in mind. After a candidate has looked for a name, she/ he is required to search trademark records to ensure there isn't a trademark similar to what one has thought of. Before registering a thorough check should be done for similar, confusing or resembling trademarks. This step helps avoid time-consuming trademark litigations.



2. File an application

Once the research is done, an application for the trademark can be made at the office of Trademark Registry India or online. A receipt is issued immediately for future reference. A trademark application includes - the mark to be registered, information about the trademark owner, a list of services or goods that the trademark needs to be registered for and the date since the trademark is in use.


3. Examination of trademark

Once the trademark application is filed, the registrar searches among the registered trademarks and pending trademark applications to ensure no similar marks exist. The examiner also checks for other discrepancies and if the mark is even registrable as per law.

Now the trademark is either accepted unconditionally or with certain conditions.

In case of conditional acceptance of the trademark by the registrar, the amendments, conditions or limitations are communicated to the applicant in writing and a fixed time is given to the applicant to fulfil the requirements or respond to the objections and rectify their stand.


4. Publication of trademark

If the trademark application is accepted, it gets advertised in the trademarks journal by the registrar in a prescribed format and third parties are given an opportunity to oppose or challenge the given trademark. The entry of a trademark specifies particulars such as date of registration, goods and services for which the trademark is sought etc.

In case of an opposition, a fair hearing is held and decisions are made by the registrar.

5. Certificate of registration

A registration certificate under the seal of the Trademark Office is issued once the application proceeds for trademark registration, following publication in Trademark Journal.


6. Renewal of trademark

A trademark when registered is valid for 10 years and can be renewed after every 10 years. Hence, a brand name or a logo can be protected in perpetuity.



REGISTERED VS UNREGISTERED TRADEMARKS

You become a trademark holder as soon as you start using one for your products or services. The rights of a trademark holder are established with the use of the trademark. But these rights, associated with an unregistered trademark are not absolute and carry certain restrictions. For example, these rights are applicable only to a certain geographical area.

To let a manufacturer's rivals or customers know that they claim their trademark as their own, symbols can be used. A 'TM' symbol can be used even if the trademark isn't registered yet. If a trademark is fully registered, an ‘R’ symbol can be used. Once registered, a trademark becomes an untouchable intellectual property of the holder.


RIGHTS OF AN UNREGISTERED TRADEMARK

A trademark can be protected even if it's unregistered. In case there's a deceptive use of your trademark or an identical trademark, such unauthorized use results in passing off.

In order to prove that an unregistered trademark has been infringed, it has to be established that:



• The trademark owner has or is likely to suffer a loss due to such unauthorized usage of his/her trademark

• Misrepresentation of the defendant’s act

• The owner has acquired goodwill in the market through his product or service


RIGHTS OF A REGISTERED TRADEMARK OWNER

1. Right to Assign

A trademark owner, under section 37 of the act, has the right to assign the trademark or to transfer ownership by either a license or ab assignment. The ability to grant effectual receipts rests with the owner.



2. Right to exclusive use

A right to exclusive use of the trademark concerning the goods and services for which it was registered, under some conditions, is granted to the owner. In case of multiple proprietors of the trademark, similar rights are granted to each of them against an unauthorized user.

3. Right to Register Correction

The right to apply for correction of the register with regards to the name, address, or description of the registered proprietor is incorporated with the registered man of affairs. A right to even cancel out an entry or strike out a certain class of goods or services from the register.


4. Right to Statutory Remedy for Any Infringement

Trade Marks Act 1999, provides legal remedies to the trademark owner in case of any sort of infringement of the trademark.

A passing off suit can be filed in case of an unregistered trademark. Passing off is a common law remedy, but the burden of proof rests with the litigant.


IMPORTANCE OF A TRADEMARK REGISTRATION

1. Valuable asset

A trademark is an asset that appreciates over time. Like property assets, trademarks too can be bought, licensed (like leasing or renting), sold, or used as a security interest to secure a loan to grow your business.



2. Provides uniqueness to brand

In order to differentiate your brand from the rest, there should be a logo or a brand name that's unique and identifiable. A trademark helps your brand stand out.