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Trademark is essentially a mark which distinguishes your goods, business or brand, as the case maybe from other brands or companies. To understand what a Trademark is, you need to primarily understand what a mark is. A mark includes a device brand, heading, label ticket name, signature, word, letter, shape of goods, packaging or combination of colours or any combination thereof. A Trademark is a mark which satisfies certain prerequisites which defines it, as per the Trademarks Act.
Trademark is a mark which can be represented graphically and should be able to distinguish your goods and services from others. This may include shape of goods, packaging and combination of colours and the mark should be used or proposed to be used in relation to the said goods or services. Infringement of a registered Trademark entails action for infringement as a statutory remedy, whereas, the common law remedy passing off follows in case the said trademark is not registered.
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This could be quoted as an example for the enforcement of Trademark Law. Here, the Delhi High Court, in a verdict against the big shot phone manufacturer, stated that Zen is a trademark which belongs to Telecare Network India Pvt. Ltd. Although the court agreed to the fact that ‘Zen’ is a generic term in relation to Buddhism, it rightly pointed out that it is not so when it comes to phones. Hence, Asus can no longer use the trademark ‘Zen.’
The registration of a Trademark is not mandatory as per trademark laws of India. You can always depend on - common law remedies, even if your trademark is not registered. Let’s see what key differences exist between a registered and an unregistered trademark:
Registration gives a monopoly right to mark in, a particular territory
It allows the owner of a registered trademark to prevent unauthorized use of his mark in relation to products or services
The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin
Infringement entails legal suits on the basis of the statute and the burden of proof will also be eased owing to registration of the same
Hence, the most logical course of action would be to get your trademark registered.
Unregistered trademarks possess no legal rights. Nonetheless, the owner of the trademark could prevent the use of his unregistered trademark by bringing the tortious liability under “passing off” into play. The action against passing off is based on the principle that ‘a man may not sell his/her own goods under the pretense that they are the goods of another man.’
It could be logically inferred that it is quite possible that you are not the first one to come up with the mark, that you want to register as a trademark. Hence, it’s imperative on you to check if it is already registered through a ‘Trademark Search.’ This is to check whether your business name or logo or any other mark you have is similar to the already registered trademark. The said search is done on Public Search of Trademarks, which is a portal by the Government of India for this purpose.
Here, the trademark search is divided into three categories, among which the applicable one has to be entered under “Class” option as you search. They are:
Wordmark, applicable for similar representation of wordmark;
Vienna Code, which applies to similar artistic representation; and,
Phonetic, which applies to phonetically similar words.
To perform a wordmark, you need to add the respective word and search in the category. You can view results using different sub-search options which are, “starts with”, “contains” and “match with”, the meanings of which are self-explanatory. To perform a phonetic search, you can follow the same search method sans the prefix method. Vienna Code search is performed to find similar device mark, which should be searched by entering the six digit Vienna code.
This whole searching process would take around 4 hours of your time and could be done free of cost, at the government portal.
When you’re done searching, and if your trademark proposed to be registered is available, you can move on to preparing an application. You can do this online as well as offline, although online application would be the most sensible thing to do, owing to its benefits. You can file your application using the Trademark Office Portal. The Applicant can file a trademark application using either the new applications link for domestic applications or the IAOI (International Applications Originating from India). This is a user-friendly method where you will get a trademark application number, after which you can suffix TM on your trademark. This system also provides for an online verification of the application which augments convenience and ease of access.
Once you file the application, you need to pay the required fee for the registration. The government fees depend on the kind of business you are running. The fee amounts to 4,500 INR in case of individual/startup/ small enterprise and 9,000/- in all other cases. The trademark attorney professional fees comes around 3500 INR per application per class. After making your payments you can sit back and let the Trademarks office do the job.
The trademark office checks if the mark is already taken. If not, no-objections shall be raised and the office proceeds to seek opposition, if any, by publishing an advertisement in this regard in the Trade Marks Journal. If no oppositions are received for the next four months, your trademark may get registered in the next six months.
It is pertinent to note that you need to submit all necessary supporting documents for the registration of a trademark. The required documents are as stated below.
Copy of trademark, logo, brand name etc. that Applicant wants to make their trademark
If the applicant is a company then copy of Incorporation Certificate and if the person is the applicant’s name, address proof, citizenship, etc. details
Details of the product or service for which a trademark registration is required
If an entrepreneur or company is applying for a trademark that is already being used by them, then the date on which the trademark is used
Copy of Power of Attorney, signed by the applicant on stamp paper of 100 INR
It takes around six to twelve months for your application for registration of trademark to get registered in the Trademark Registry. Till then your application is processed, through different stages, eventually inching towards official registration. You can track the status of your application at the portal provided by the government. I shall quote a few important ones for illustration.
This means your application has just been filed and is awaiting commencement of registration process.
This applies only to non-text trademark, where the marks would be given a six digit code under Vienna codification.
If your application has complied with all the required formalities, the status would be formalities check pass and if not, the status would be, as you’ve guessed it, formalities check fail.
If the examiner raises any objections against your application, the status would be objected. Then you need to look into the matter and reply within one month of the date of receipt. If you fail to respond to the objection, then the application gets abandoned and the status would show as Abandoned.
In each of the processes and formalities involved under registration of the trademark needs to be followed and will be followed and the same could be tracked through the application status checking system. Finally, if you’re trademark gets successfully registered, your application status will be shown as Registered.
The Trademark Law and the government services which has now treading the path of facilitating convenience and ease of access through the use of technology, has given rise to a robust system for trademark registration in India. An understanding of it, as explained above, will enable to you to register your trademark sans much complications, and hence, bestow your trademark with legal rights which protect your intellectual property from infringement.
Written by: Jesse Jacob V
National University of Advanced Legal Studies, Kochi (3rd Year)