Trade Marks | Patents | Copyrights | Designs
Manish M. BhagnariB.Com. & LL.B.
Understanding Trade Marks - For Educational Purposes Only
Introduction to Trademarks
What is a trademark?
“trademark' is a
unique identifier, often referred to as a “brand”
“logo”. A trademark is a sign
capable of distinguishing the goods or services produced or provided
by one enterprise from those of other enterprises. Trademarks
can be words, letters, numerals, drawings, labels, logos, slogans,
colours, shape, packaging – or any combination of these, as
long as they can be graphically represented.
Words: This category includes
company names, surnames, forenames, geographical names and any other
words or sets of words, whether invented or not, and slogans.
Letters and Numerals: Examples are one or more letters, one or more numerals or any combination thereof.
Devices: This category includes fancy devices, drawings and symbols and also twodimensional representations of goods or containers.
Combinations of any of those
listed above, including logotypes and labels.
Colored Marks: This category includes words, devices and any combinations thereof in color, as well as color combinations and color as such.
Three-Dimensional Signs: A typical category of three-dimensional signs is the shape of the goods or their packaging. However, other three-dimensional signs such as the three-pointed Mercedes star can serve as a trademark.
Criteria of Protectability
The requirements which a sign must fulfill in order to serve as a trademark are reasonably standard throughout the world. Generally speaking, two different kinds of requirement are to be distinguished.
The first kind of requirement relates to the basic function of a trademark, namely, its function to distinguish the products or services of one enterprise from the products or services of other enterprises. From that function it follows that a trademark must be distinguishable among different products.
The second kind of requirement relates to the possible harmful effects of a trademark if it has a misleading character or if it violates public order or morality.
These two kinds of requirement exist in practically all national trademark laws.
Requirement of Distinctiveness
A trademark, in order to function, must be distinctive. A sign that is not distinctive cannot help the consumer to identify the goods of his choice. The word “apple” or an apple device cannot be registered for apples, but it is highly distinctive for computers. This shows that distinctivecharacter must be evaluated in relation to the goods to which the trademark is applied
The test of whether a trademark is distinctive is bound to depend on the understanding of the consumers, or at least the persons to whom the sign is addressed. A sign is distinctive for the goods to which it is to be applied when it is recognized by those to whom it is addressed as identifying goods from a particular trade source, or is capable of being so recognized.
The distinctiveness of a sign is not an absolute and unchangeable factor. Depending on the steps taken by the user of the sign or third parties, it can be acquired or increased or even lost. Circumstances such as (possibly long and intensive) use of the sign have to be taken into account when the registrar is of the opinion that the sign lacks the necessary distinctiveness, that is, if it is regarded as being not in itself distinct enough for the purpose of distinguishing between goods and services.
There are, of course, different degrees of distinctiveness, and the question is how distinctive a sign must be in order to be registrable. In that connection a distinction is generally made between certain typical categories of marks—fanciful or coined trademarks which are meaningless and the others. A famous example of the first category is the KODAK trademark.
These trademarks may not be the favorites of the marketing people, since they require heavy advertising investment to become known to consumers. They inherently enjoy very strong legal protection, however.
Common words from everyday language can also be highly distinctive if they communicate a meaning that is arbitrary in relation to the products on which they are used. The same is true of the corresponding devices. Examples are the famous CAMEL trademark for cigarettes (and the equally famous device mark) and the previously-mentioned APPLE mark (both the word and the device) for computers.
Marketing people are generally fond of brand names that generate a positive association with the product in the mind of the consumer. They tend therefore to choose more or less descriptive terms. If the sign is exclusively descriptive, it lacks distinctiveness and cannot be registered as such as a trademark. However, not all signs that are neither meaningless nor arbitrarily used necessarily lack distinctiveness: there is an intermediate category of signs that are suggestive, by association, of the goods for which they are to be used, and of the nature, quality, origin or any other characteristic, of those goods, without being actually descriptive. Those signs are registrable. The crucial question in practice is whether a trademark is suggestive or descriptive of the goods applied for. This question has to be judged according to the local law and jurisprudence of the country and all the circumstances of the specific case. As a general rule, it can be said that a descriptive term is distinctive for the goods concerned if it has acquired a secondary meaning, that is, if those to whom it is addressed have come to recognize it as indicating that the goods for which it is used are from a particular trade source.
In case of doubt as to whether a term is descriptive or suggestive, the very fact that the mark has been used in the course of trade for a certain period of time may be sufficient for accepting it for registration.
However, the more descriptive the term is, the more difficult it will be to prove secondary meaning, and a higher percentage of consumer awareness will be necessary.
Lack of Distinctiveness
If a sign is not distinguishable, it cannot function as a trademark and its registration should be refused. The applicant normally need not prove distinctiveness. It is up to the registrar to prove lack of distinctiveness, and in the case of doubt the trademark should be registered. Thus lack of distinctiveness is a ground for refusing an application for registration of a trademark.
The criteria governing the refusal of registration for lack of distinctiveness
A sign is generic when it defines a category or type to which the goods belong. It is essential to the trade and also to consumers that nobody should be allowed to monopolize such a generic term.
Examples of generic terms are “furniture” (for furniture in general, and also for tables, chairs, etc.) and “chair” (for chairs). Other examples would be “drinks”, “coffee” and “instant coffee”, which shows that there are larger and narrower categories and groups of goods, all having in common that the broad term consistently used to describe them is generic.ABCDE
These signs are totally lacking in distinctiveness. And even if they are used intensively and may have acquired a secondary meaning, they cannot be registered since, in view of the absolute need of the trade to be able to use them, they must not be monopolized. For these reasons the High Court of Delhi, India, in 1972 refused registration of the JANTA trademark as in Hindi the word means cheap in price.
Descriptive signs are those that serve in trade to designate the kind, quality, intended purpose, value, place of origin, time of production or any other characteristic of the goods for which the sign is intended to be used or is being used.ABCDE
In line with the definition of the distinctive sign given earlier, the test to be applied must establish whether consumers are likely to regard a sign as a reference to the origin of the product (distinctive sign) or whether they will rather look on it as a reference to the characteristics of the goods or their geographical origin (descriptive sign). The term “consumer” is used here as an abbreviation denoting the relevant circles to be considered in a specific case, namely those to whom the sign is addressed (and in certain cases also those who are otherwise reached by the sign).ABCDE
The fact of other traders having a legitimate interest in the fair use of a term can therefore be used as a kind of additional ground when making the decisive test of whether consumers are likely to regard the sign as a reference to origin or as a reference to characteristics of the goods. It should not, however, be used on its own as a basis for a decision to refuse the registration of a term when it is not clear that consumers are also likely to regard the term as descriptive.
Other Signs Lacking Distinctiveness
Signs may lack distinctiveness for other reasons. This is true of a device which, owing to its simplicity or pure illustrative or ornamental character, may not capture the consumer’s attention at all as a sign referring to the origin of the product, but rather as a mere illustrative part of the packaging of the goods offered to him.ABCDE
An example (with regard to words) would be a relatively long advertising slogan recommending the goods to the consumer which, even when reproduced on the packaging, would be much too complex to be understood by consumers as a reference to the origin of the product.ABCDE
In practice the authorities have to deal with certain other typical categories of cases which in many laws are expressly listed as grounds for refusal, and which are dealt with below.
Reference to Geographical Origin
References to geographical origin (as opposed to the origin of the goods in the sense of the origin-indicating function) are basically not distinctive. They convey to the consumer an association with the geographical name, indicated either as the place of manufacture of the goods in question or of ingredients used in their production, or—depending on factual circumstances—with certain characteristics of the goods attributable to their origin.ABCDE
For such an association to be conveyed to the consumer, the geographical location referred to must of course—at least to a certain extent—be first known to him. Signs referring to practically unknown localities are therefore distinctive. References to areas where nobody would expect the goods concerned to be manufactured are also distinctive.ABCDE
Even if a geographical area is known to the consumer, a sign that makes a reference to it can either be or become distinctive if there is no other manufacturer or trader in the same field of activity, and no potential for competitors to settle there in the future.ABCDE
A geographical denomination may also, through long and intensive use, be associated with a certain enterprise to such an extent that it becomes distinctive as a trademark for it, even if competitors already exist or establish themselves in the future.
Letters, Numerals and Basic Geometrical Shapes
These signs are often regarded as being indistinctive and therefore unregistrable. Some trademark laws (such as the former German trademark law) even expressly excluded them from registration or accepted them only if at least three letters and/or numerals are combined, or in the case of letters, if the sequence is pronounceable.ABCDE
It is certainly true that consumers will not normally regard letters, numerals or simple geometrical shapes as indications of the origin of the goods. Nevertheless, letters, numerals and their combinations can become distinctive through use and—as said before—the so-called legitimate interest of other traders in making fair use of them should be no reason for refusal. The recent international trend therefore goes towards accepting the registration of such signs more liberally.ABCDE
Furthermore, even without any use, letters and numerals can be registrable if they are applied for in a fanciful device.
Foreign Script and Transliterations
Imagine the use of a Thai script mark in India or Sri Lanka, the use of Chinese characters in Switzerland, Singhala characters in the United States of America or Japanese characters (Katakana, Kandi) anywhere but in Japan. For the great majority of ordinary consumers these marks are purely fanciful devices. Consequently, they are in principle distinctive, except where the sign has no more than an ornamental effect, depending on its graphic presentation.
Since these marks are distinctive, they are basically registrable. The registrar may, however, ask for a translation (a description of its meaning) in local script.
The use of words and/or devices in colors or combined with colors generally increases their distinctiveness. Consequently, applications for such signs claiming the colors shown or described in the application are easier to register. The first trademark registered in the United Kingdom in 1876 (and still on the register) was a triangle (a basic geometrical shape) in red. However, protection is then in principle restricted to the actual colors in which the mark is registered. Signs that might have been regarded as confusingly similar to the registered mark, had it been in black and white, may therefore fall outside the scope of protection in view of the use of different colors. Since signs registered in black and white are protected against the registration and use of confusingly similar signs regardless of color, and since the registered owners of such signs can normally use them in any color they may wish to use, the usual practice is not to register signs in color. However, a given color or combination of colors may be an important element of a trademark, constantly used by its owner, and therefore liable to be imitated by competitors. This shows that a trademark owner may have a real interest in registering his mark in the distinctive colors in which it is used, even where the mark was distinctive enough to be registrable in black and white. In order to eliminate the previously-mentioned risk of restricting the scope of protection of such a mark, its owner may register the mark both in black and white and in the colors actually used.
Signs consisting exclusively of individual colors or of color combinations can be registrable trademarks. It is a matter for practice in the various countries to determine whether they are considered inherently distinguishable or—more probably—basically descriptive with the possibility of becoming distinctive through use.
Company names and trade names are registrable, except where they are deceptive or not distinctive.
Common surnames are not registrable in some countries, since they are not distinctive. As for less common surnames, it is, in such countries, important to establish whether another meaning in everyday language will be overwhelmingly recognized by consumers. If there is such a dominant meaning, the sign is registrable on the condition that the meaning in question is not descriptive of the goods for which the mark is to be used.
Exclusions from Registration on other Grounds: Public Interest
Trademarks that are likely to deceive the public as to the nature, quality or any other characteristics of the goods or their geographical origin do not, in the interest of the public, qualify for registration.
The test here is for intrinsic deception, inherent in the trademark itself when associated with the goods for which it is proposed. This test should be clearly distinguished from the test for the risk of confusing customers by the use of identical or similar trademarks for identical or similar goods.
It is true that fanciful trademarks or marks with an arbitrary meaning for the goods proposed cannot be deceptive. And yet trademarks that have a descriptive meaning, even if they are only evocative or suggestive and therefore distinctive, may still be deceptive. Such trademarks have therefore to be examined from two angles: first they must be distinctive, and secondly they must not be deceptive.
As a rule, it can be said that the more descriptive a trademark is, the more easily it will deceive if it is not used for the goods with the characteristics described.
Reference to Geographical Origin
Signs that are descriptive or indicative of geographical origin are false for products that do not come from the region described or indicated. In such cases the consumer will be deceived if the reference to the geographical origin has the wrong connotations for him.
This is particularly true if the region or locality has a reputation. Famous examples of such signs are “Champagne” and “Swiss Chocolate.”
In practice, such cases of direct reference to geographical origin are relatively rare. More often indirect references are made, and these cases are more problematic. A reference to a famous Swiss mountain for chocolate would still deceive consumers, as would a device mark consisting of a typical alpine landscape.
Indeed even the use of foreign words can, under certain circumstances, be deceptive without any reference to a specific geographical origin. The very fact that a word comes obviously from a particular foreign language may give consumers the impression that the product comes from the country where that language is spoken. Consumers will therefore be deceived if the country concerned has a reputation for the goods concerned.
However, it should be realized that, in addition to being spoken in many different countries all over the world, English is also the modern international marketing language, with the result that many trademarks have an English-language connotation quite independent of the geographical origin of the goods marked with it, and that consumers are generally aware of the fact.
We have seen that the question whether or not a trademark is inherently deceptive must be examined in relation to the goods in respect of which the application is made. Depending on the list of goods, therefore, an application may be distinctive for some, descriptive for others and/or deceptive for still others. In such cases the examiner has to require a limitation of the list of goods. Should the applicant not agree to such limitation, the examiner refuses the whole application in some countries. In others, he accepts the application only for the goods for which, in his opinion, the mark is not deceptive and refuses it for the others.
Signs Contrary to Morality or Public Policy
Trademark laws generally deny registration to signs that are contrary to morality or public policy.
Signs Reserved for Use by the State, Public Institutions or International Organizations
A country generally protects its national flag, its official name and the names of official institutions in its own interest. Furthermore, countries are obliged by Article 6ter of the Paris Convention also to protect the notified signs of other member States and international intergovernmental organizations (such as the United Nations Organization).
Protection of Trademark Rights
A trademark can be protected on the basis of either use or registration. Both approaches have developed historically, but today trademark protection systems generally combine both elements. The Paris Convention places contracting countries under the obligation to provide for a trademark register. Over one hundred and fifty States have adhered to the Paris Convention. Nearly all countries today provide for a trademark register, and full trademark protection is properly secured only by registration. India is one of the contracting countries of the Paris Convention, so in India trademark can best be protected with the registration.
Need for an Obligation to Use
Trademark protection is not an end in itself. Even though trademark laws generally do not require use as a condition for the application for trademark registration, or even the actual registration, the ultimate reason for trademark protection is the function of distinguishing the goods on which the trademark is used from others. It makes no economic sense, therefore, to protect trademarks by registration without imposing the obligation to use them. Unused trademarks are an artificial barrier to the registration of new marks. There is an absolute need to provide for a use obligation in trademark law.
At the same time trademark owners need a grace period after registration before the use obligation comes into effect. This is especially true of the many companies that are active in international trade. In order to avoid loopholes in the protection of their new trademarks of which competitors could take advantage, they must from the very beginning apply for the registration of their new trademarks in all countries of potential future use. Even in their own countries companies often need several years before they can properly launch a newly-developed product on the market. This is especially true of pharmaceutical companies, which have to make clinical tests and have to apply for approval of their product by the health authorities.
The grace period granted in trademark laws that provide for a use obligation is sometimes three years, but more often five years.
Consequences of Non-Use
The principal consequence of unjustified non-use is that the registration is open to cancellation at the request of a person with a legitimate interest. There is moreover a tendency to require of the registered owner that he prove use, since it is very difficult for the interested third party to prove non-use. In the interest of removing “deadwood” from the register, such reversal of the burden of proof is justified.
The burden of proof should be on the trademark owner not only in cancellation proceedings but also in any other proceedings where the owner is alleged to have taken advantage of his unused trademark right (opposition procedure, infringement action).
No evidence of use should be required for the renewal of a trademark registration, however. This is an administrative complication which is unnecessary in view of the fact that an interested person can at any time at all take appropriate action against an unused trademark registration.
Non-use does not always lead to invalidation of the trademark right. Non-use can be justified in the case of force majeure, and any other circumstance that is not due to fault or negligence on the part of the proprietor of the mark, such as import restrictions or special legal requirements within the country.
Proper Use of Trademarks
Non-use can lead to the loss of trademark rights. Improper use can have the same result, however. A mark may become liable for removal from the Register if the registered owner has provoked or tolerated its transformation into a generic name for one or more of the goods or services in respect of which the mark is registered, so that, in trade circles and in the eyes of the appropriate consumers and of the public in general, its significance as a mark has been lost.
Basically, two things can cause genericness: namely, improper use by the owner, provoking transformation of the mark into a generic term, and improper use by third parties that istolerated by the owner.
In order to avoid improper use, everyone in the company owning the trademark, who is involved in advertising or publicizing the brand, must follow some rules.
The basic rule is that the trademark should not be used as, or instead of, the product designation. By systematically using a product designation in addition to the trademark, the proprietor clearly informs the public that his mark identifies a specific product as one in acertain category. This is especially important if the trademark proprietor has invented a totally new product which at the outset is the only one in the category. Trademarks such as FRIGIDAIRE, CELLOPHANE and LINOLEUM became generic terms because they were the only product in their category, and no additional name was given to the category by itsproprietors. When instant coffee, also called soluble coffee, was invented in 1938, the first product marketed by the company that invented it was called NESCAFÉ. However, from the start the company systematically used a product designation such as “instant coffee” or “soluble coffee” on its labels.
A second important rule is that trademarks should always be used as true adjectives and never as nouns, in other words the trademark should not be used with an article, and the possessive “s” and the plural form should be avoided. It would be wrong to talk about NESCAFÉ’s flavor or about three NESCAFÉs instead of three varieties of NESCAFÉ.
Furthermore, it is advisable always to highlight the trademark, that is, to make it stand out from its surroundings.
Finally, a trademark should be identified as such by a trademark notice. Only a few laws provide for such notices, and making their use on goods compulsory is prohibited by Article 5D of the Paris Convention. Trademark law in the United States of America allows the use of a long statement (such as “Registered with the United States Patent and Trademark Office”) to be replaced by a short symbol, namely, the circled R, or ®. Over the years this symbol has spread throughout the world and become a widely recognized symbol for a registered trademark. Its use is recommended for registered trademarks as a warning to competitors not to engage in any act that would infringe the mark.
However, it is not enough just to follow these rules: the trademark owner must also ensure that third parties and the public do not misuse his mark. It is specifically important that the trademark should not be used as or instead of the product description in dictionaries, official publications, journals, etc.
The Value of Trademarks
A carefully selected and nurtured trademark is a valuable business asset for most companies. For some, it may be the most valuable asset they own. Estimates of the value of some of the world’s most famous trademarks such as Coca-Cola or IBM exceed 50 billion dollars each. This is because consumers value trademarks, their reputation, their image anda set of desired qualities they associate with the mark, and are willing to pay more for a product bearing a trademark that they recognize and which meets their expectations. Therefore, the very ownership of a trademark with a good image and reputation provides a company with a competitive edge.
What are service marks?
The Trade Marks Act, 1999 has introduced the registration of service marks in India. A 'service mark' is very similar in nature to a trademark. Both are distinctive signs; trademarks distinguish the goods of one enterprise from those of others, while service marks fulfil the same function in relation to services. Services may be of any kind, such as financial, banking, travel, advertising or catering, to name a few. Service marks can be registered, renewed, cancelled, assigned and licensed under the same conditions as trademarks.
What are collective marks?
A 'collective mark' is generally owned by an association or cooperative whose members may use the collective mark to market their products. The association generally establishes a set of criteria for using the collective mark (e.g., quality standards) and permits individual companies to use the mark if they comply with such standards. Collective marks may be an effective way of jointly marketing the product of a group of enterprises which may find it more difficult for their individual marks to be recognized by consumers and/or handled by the main distributors.
What are certification marks?
'Certification marks' are given for compliance with defined standards, but are not confined to any membership. They may be used by anyone whose products meet certain established standards. In many countries, the main difference between collective marks and certification marks is that the former may only be used by a specific group of enterprises, e.g., members of an association, while certification marks may be used by anybody who complies with the standards defined by the owner of the certification mark.
What are well-known marks?
'Well-known marks' are marks that are considered to be well-known by the competent authority of the country where protection for the mark is sought. Well-known marks generally benefit from stronger protection. For example, well-known marks may be protected even if they are not registered (or have not even been used) in a given territoryIn addition, while marks are generally protected against confusingly similar marks only if used for identical or similar products, well-known marks are protected against confusingly similar marks for even dissimilar products, if certain conditions are met. The main purpose of this stronger protection is to prevent companies from free-riding on the reputation of a wellknown mark and/or causing damage to its reputation or goodwill.
What does ® and TM symbol stand for?
Once a trade mark is registered, the ® symbol may be legally used against the trademark. A ™ symbol indicates that a trader is using a sign as a trade mark but does not indicate whether the sign is registered. The use TM and SM or equivalent symbols next to a trademark is not a requirement and generally provides no further legal protection. Nevertheless, it may be a convenient way of informing others that a given sign is a trademark, thus warning possible infringers and counterfeiters. In other words, the ® symbol is used once the trademark has been registered, whereas TM denotes that a given sign is a trademark. SM is sometimes used for service marks in some countries.
What are trade marks for?
The main purpose of a trade mark is to enable consumers to identify a product (whether a good or a service) of a particular trader so as to distinguish it from the same or similar products provided by competitors. A trade mark must therefore be sufficiently unusual or fanciful so that consumers would only associate it with one trader. Consumers who are satisfied with a given product are likely to buy or use the product again in the future.
By enabling companies to differentiate themselves and their products from those of the competition, trademarks play a pivotal role in the branding and marketing strategies of companies, contributing to the definition of the image, and reputation of the company’s products in the eyes of consumers. The image and reputation of a company create trust which is the basis for establishing a loyal clientele and enhancing a company's goodwill. Consumers often develop an emotional attachment to certain trademarks, based on a set of desired qualities or features embodied in the products bearing such trademarks. Trademarks also provide an incentive for companies to invest in maintaining or improving the quality of their products in order to ensure that products bearing their trademark have a positive reputation.
Can you register a trademark without having used it?
You may apply for registration before you have used the trademark but some countries will not officially register it until you have shown proof of use (e.g., the United States). In India trademark can be registered while it is just 'proposed to be used'. Also, in most cases, a trademark that has not been used for a given period of time (generally three to five years) following registration may be taken off the trademark register. This mean you could lose your rights in your trademark.
How long does it take to register a trademark?
The time required for the registration of a trademark will vary significantly from country to country, generally ranging from three months to two years, depending, among other things, on whether the trademark office conducts substantive examination. Make sure that you apply for registration of a trademark well in advance so that its registration is secured in time for its use in the advertising and marketing of the relevant products.
How can you find out if your chosen trademark might conflict with other registered trademarks? What is a trademark search?
Before submitting an application for registering a trademark, you should ensure that a proper trademark search has been carried out. This is done to make sure that the trademark you intend to use, or a similar one, is not already registered by another company, firm or person, for identical or similar products. You can either make a trademark search yourself or hire the services of a trademark agent. Either of you can do the search through trademark office (which may be free or require payment of a fee) or through a commercially operated trademark database. In India the official fee for online trade mark search is Rs. 400/- for 15 minutes. In whatever manner it is done, bear in mind that any such trademark search is only preliminary. It may be difficult to make sure that your trademark of choice is not “confusingly similar” to existing validly-registered trademarks. This is why the guidance of an experienced trademark agent, who is familiar with the practice of the trademark office and court decisions, may be very helpful.
What is the value of a trade mark?
A carefully selected and managed trademark can be a valuable business asset. For some companies it may be their most valuable asset. Because customers value trade marks - their reputation, their image and the desired qualities and attributes they associate with the mark - they may be willing to pay more for a product bearing that mark. An owner of a trade mark with a good image and reputation can have a competitive edge over its competitors.
Is a trade mark the same as a company name?
No. Company names that are registered with the India's Registrar of Companies do not provide the same protection as trademarks. Only trade mark registration can grant exclusive rights to the use of a trading name. A company name registration will not prevent the registration of a similar nameas a trademark. To avoid potential disputes you may wish to check the register of company names to determine whether anybody is already trading under a name that is similar to a name you may wish to trade mark. You may also wish to check that any domain names you may wish to use containing the trade mark are available.
Do I have to register a trade mark to use it?
No. You are not legally required to register a trade mark to use it. However, before using a trademark, it is recommended that it is always best to do a trade mark search or to seek professional advice to ensure you are not infringing somebody else’s trade mark.
What sort of marks can be registered?
applications to register trademarks are examined to ensure they
comply with all requirements of the Trade Marks Act, 1999.
So why register?
If a mark is unregistered, the owner must rely on the common law action of 'passing off' to protect the mark. Registration of a trademark, however, gives the owner of the trade mark an exclusive right to use it. The owner of a registered mark can sue for infringement if someone else uses the same or similar mark on the same or similar goods/services in respect of which the mark is registered. In other words registration gives the exclusive right to prevent others from marketing identical or similar products under the same or a confusingly similar mark.
How long does protection last?
While the term of protection may vary, in a large number of countries, registered trademarks are protected for 10 years. Registration may be renewed indefinitely (usually, for consecutive periods of 10 years) provided renewal fees are paid in time. Make sure that someone in your company/firm is made responsible for ensuring timely renewal of trademark registrations in all countries of continuing interest to your business. Thus, the initial registration period lasts for ten years and the right is renewable every ten years thereafter.
Who enforces trade mark protection?
A trademark is personal property. The trademark owner is responsible for ensuring that other traders do not use its trade marks for identical or similar goods/services for which the trade mark is registered. It is recommended that professional advice be sought to establish an appropriate protection strategy.
Restrictions to registration of trade marks
A trademark may not be registrable if it indicates the kind, quality, quantity, intended purpose or rupee value of the goods/services, unless these features are presented in a unique or unusual way, or incorporated into a trade mark as one of its elements.
A trade mark may not be able to be registered if it:
i. Is the same as, or similar to, or a translation of, another trade mark that is well known in India.
ii. Is likely to mislead, confuse or is offensive.
iii. Is a superlative, e.g. BEST, SUPER, etc.
iv. Is a descriptive term, e.g. SWEET for ice cream.
v. Is a geographical location associated with the goods or services, e.g. RATNAGIRI for alphonso mangoes.
vi. Contains a representation of a flag, armorial bearing, insignia, orders of chivalry or state emblem.
vii. Suggests endorsement or licence by a particular person or organisation.
Trademarks must be distinctive
A trademark must be distinctive of a single trader’s goods or services. This means that it must be unusual enough that consumers would identify it with only one trader. If a trademark is not distinctive it means that the public would not identify the trade mark as a “brand” or “logo.” For example, the term BUDGET SUPERMARKET for retail services in relation to food and household items is unlikely to identify one trader from any other in that trade channel. The term could be used in connection with many different traders and it would be unfair to grant a monopoly of such a term to any one trader.
Trademarks can’t be descriptive of a characteristic of the goods or services. Marks that simply describe the goods or services to which they relate are unlikely to be registrable.
For example the word “apple” cannot be registered as a trade mark for fruit. However, APPLE® is not descriptive of computers and therefore is distinctive in relation to computers.
Trademarks can’t be terms that are customary in the trade
Marks that are commonly used in relation to the goods or services for which the mark is being used may also not be distinctive. A colloquial or generic term that has been commonly used to describe a characteristic of the goods or services may not be registrable. For example, the term GEL is commonly used to describe a toothpaste of different brands, and would not be registrable as a trade mark in relation to just one toothpaste.
How should you use trademarks in advertising?
If your mark is registered with a specific design or font, make sure that the trademark is used exactly as it is registered. Monitor its use closely as it is crucial for the image of your company’s products. It is also important to avoid using the trademark as a verb or noun so that it does not come to be perceived by consumers as a generic term.
Is trademark registration in your home country valid internationally?
The legal rights arising out of a trademark registration are normally limited to the territory to which they pertain; so, ordinarily, valid registration of a trademark in India gives you rights only in India unless your mark is considered to be a well-known mark.
How can you register the trademark of your company abroad?
Once the trademark has been registered in India (or your home country - if your home country is a member of the Madrid system), you may use the Madrid system (administered by WIPO) to register your trademark in the more than 70 countries that are party to the system. The principal advantages of using the Madrid system are that the trademark owner can register his trademark in all the countries party to the system by filing: a single international application; in one language; subject to one set of fees and deadlines. Thereafter, the international registration can be maintained and renewed through a single procedure.