What is a Trademark?
Trademark is one of the most important areas of Intellectual Property. Almost everyone deals with trademarks on a daily basis. A trademark can be a word, phrase, sign, symbol, or a combination of these elements that is acquired by a company to highlight their products and to distinguish their products from those of the other companies. A trademark can be owned by any legal entity.
Trademarks assures recognition. They refer to brands. They help the owner of the trademark prevent its competitors from using any similar mark if it creates confusion for the consumers. This assures quality of products.
As defined by WIPO, a trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.
What are the purposes of having a Trademark?
1. Prevent unfair competition – To prevent unfair competition between companies or enterprises that use consumer confusion in order to get more business is the main purpose of having a trademark. For example, if an independent restaurant uses a golden, arched ‘M’ as its logo, then this might create confusion and customers could think of the restaurant as a McDonald’s establishment.
2. Help customer distinguish between products – In a crowded marketplace, trademarks make it possible to distinguish between brands with ease. They capture customers’ attention and make the brands’ products or services stand out. Trademarks influence purchasing decisions of the consumers. At a sight of the trademark of a brand, customers immediately get the knowledge of which brand they are dealing with and also its reputation, and are less likely to look for any alternatives for the products or services.
3. Trademarks act as tools for communication – A single trademark can convey emotional and intellectual messages about the brand, the enterprise, the company and their reputation, products and services. A trademark has the influential power to divert or attract consumers to purchase the products of a brand.
4. Protect owners’ reputation and investment – Creating a brand involves a lot of investments. With every movement of products and services in the market, it is the owner’s reputation that is at stake. If any competitor offers similar products of lower quality standards in market that might confuse the consumers, there is a possibility of downgrading the reputation of the company because of the quality of a similar product offered by another company. Herein such cases the trademark helps consumers distinguish between the products and judge them accordingly. It saves the reputation of the brand which is likely to be hampered by fraudulent low-quality replicas and other similar products.
5. Prevent theft – Trademarks prevent theft. There are certain legal protections that a business enterprise having a trademark enjoys. The enterprise having a registered trademark is enabled to sue others for pursuing the same mark or creating a confusing mark similar to that of the registered trademark of the business enterprise.
6. Trademarks are valuable assets – A trademark, like real estate properties, that are capable of being bought, sold, licensed or used as a security, is an asset of the business enterprise that can help it grow. Trademarks can appreciate value of the business over time. They can also lead way for mergers or expansions.
What are the types of Trademarks?
1. Certification Marks: – A certification mark provides assurance that some kind of tests and experiments have been carried out on the product or services to ensure their quality and standard. The most commonly seen certification marks are ISI and ISO marks. It indicates certification of certain quality of goods or services used by the enterprise in respect of their origin, quality, and other characteristics.
2. Collective Trademarks: – Another form of trademark is a collective mark that is used by cooperative associations, unions or groups to identify the source of goods or the services. It is used when a product or service is collectively provided by a group of associations. For example, the collective use Chartered Accountant mark in India.
3. Product Marks: – A product mark is a type of trademark used to identify goods of a business enterprise rather than its services. They are used to identify sources of the products and distinguish one enterprise’s products with those of other enterprises. It is denoted by ‘TM’.
4. Service Marks: – A service mark is a type of trademark that is used to distinguish services of the enterprise rather than any product. These are mainly used to help identify service provider, i.e. to identify the source of the services. It does not cover physical goods. It is denoted by ‘SM’.
5. Shape Marks: – As provided by the Indian Trademarks Act, 1999, a trademark may also include shape of goods. If the shape of goods has a distinctive feature then it can be registered. For example, perfume bottles having a special design.
6. Sound Marks: – Another type of trademarks is Sound marks. Many times, sounds of certain advertisements get so popular that when people hear the sound, they are immediately able to recognized what it refers to and identify its origin. In such cases the sound can be regarded as a trademark and the same is then eligible for registration.
Trademarks in India are governed by which laws?
Trademarks in India are protected by the Trade Marks Act,1999. It was enacted for the purpose of providing for registrations, protection and for prevention of use of fraudulent marks.
How to acquire a trademark?
To protect the trademark from copying by others its registration is provided by the Trade Marks Act, 1999. To secure the trademark from rest of the competitors in business it is necessary to register it under the Trade Marks Act. To register a trademark is not a tedious process.
Firstly, trademark of an enterprise or company must be unique.
The first step is always to conduct an online search for the trademark on trademark database. This helps to know if the trademark is already being used by any other company or enterprise. The Intellectual Property India website http://www.ipindia.nic.in/index.htm provides with a Public Search option. One has to enter the wordmark, class applicable to the products and description of goods in the respective search boxes and proceed by clicking the ‘Search’ button. It then shows in results name of the company, if any, that is using the same mark under the same class of goods. However, if results show no match then it indicates that there is no company using the said trademark name. It is then eligible for registration under the Act.
To make an application for a trademark, Form TM-A has to be filled by the applicant. As provided on the IP India website, if the applicant is an individual, a startup or a small enterprise then the prescribed fees for physical filing is Rs.5,000/- and for E-filing Rs.4,500/-. In case of other kind of businesses, the fees for physical filing of application is Rs.10,000/- and for E-filing of application is Rs. 9,000/-. To physically make an application, the Trade Marks Registry offices are located at Ahmadabad, Chennai, Delhi, Mumbai and Kolkata.
Once the process of registering the trademark is completed, an official receipt is issued with a TM number, after which an examination reported is generated which has to be replied to through an email within one month after the examination report is received. The application is considered by the registrar only if it is not in conflict with any existing registrations or those which are pending before him. After the resolution of any objections raised by the registrar in relation to the application, it is then published in the Indian Trade Marks Journal under a specific class stating that it has been accepted or has been published before acceptance.
A 90 days time period is provided for anyone to file a notice of opposition to the registration if it is damaging their trademark. If there is no objection raised by any person within the period of 90 days then the said mark will be registered within a period of 12 weeks.
As per sub-section 1 of Section 25 i.e. ‘Duration, Renewal, Removal and Restoration of Registration’ that falls under Chapter-II of the Act, a trademark can be registered for a period of 10 years. And according to sub-section 2, it can be renewed on application, further for a period of 10 years from the date of expiration of the original or last renewal by payment of renewal fees. To renew the Trademark the Form TM-R has to be filled in and submitted with the renewal cost.
This article is written by Yukta Darvekar, Third-year, B.A. LL.B student at Dr.Ambedkar College, Department of Law, Nagpur.