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Trademark Watching Services
Service Mark
Salient Features of Trademarks Act, 1999
Filing Requirements

FAQ's on Trademark

• What are trademarks?

Trademarks are words, names, symbols, or devices used by manufacturers of goods to identify their goods, and to distinguish their goods from goods manufactured and sold by others. A person who sells his goods under a particulate trademark acquires a sort of limited exclusive right to use the mark in relation those goods. Trademark law protects this right of the owner of a mark to use marks that distinguish his goods from others and to prevent others from using marks that are likely to cause confusion. Trademark law protects the goodwill of a business and also protects the consumers' ability to accurately ascertain the source of goods and services.

• What is classification of goods/services?

As per the Trademarks Act, 1999, all goods and services have been classified in 42 different classes. Click here for full classification.

• How do I protect my Trade Mark?

By ensuring that the mark is registered on a national trade mark register. In the main, trade mark owners use the services of a Registered Trade Mark Agents to achieve registration.

• Why should I protect it?

Primarily to ensure that the only persons who are able to exploit it are you or your company. Your reputation is represented by your trade mark. Others may seek to use your trade mark or something akin to your trade mark for their own use and thus take advantage of the reputation you have earned. Registration of your trade mark is the surest and quickest means of seeking redress in these circumstances. Furthermore, registration establishes your exclusive rights to use that trade mark for your goods or services.

• Where can I protect my Trade Mark?

Trade marks can be registered in nearly every country in the world. You should aim to protect your trade mark wherever your goods are sold or your services provided now or in the future.
Makhija & Associates provides services for the registration of trade marks world-wide.

• What is my Trade Mark worth and how can I exploit it?

Your trade mark is a tangible and marketable asset. It can be sold as a separate commodity and can be licensed out for use by others. The value you place on your trade mark is normally based on the success of your product, turnover and other factors. Your trade mark is a valuable asset which grows in value as your business grows. You should protect this asset by trade mark registration. To control its exploitation you need trade mark registration.

• What does constitute infringement of a trademark?

A registered trademark is infringed if a person uses the same/deceptively similar mark in the course of trade, in respect to the same goods. The test for deceptive similarity is whether the defendant's use of a mark is likely to cause confusion, i.e., whether an appreciable number of reasonably prudent consumers are likely to be confused or deceived as to the source, affiliation or sponsorship of the parties and their goods and services. The plaintiff need not demonstrate actual confusion or intent to confuse. The 'likelihood of confusion' analysis encompasses an evaluation of a variety of interconnected market factors, relating to the likely expectation, perception and memory of consumers.

• Where should I file an infringement suit?

A suit for infringement of registered trademark must be filed in the District Court having jurisdiction or in the High Court that has original jurisdiction to try such suits. The jurisdiction and procedure are governed by the Civil Procedure Code. The period of limitation for filing the suit is three years from the date of infringement.

• What are relieves that the court may grant in an infringement suit?

The relieves in a suit for infringement include: - Injunction, restraining the further use of the trademark; - Damages or an account of profits; and - An order for delivery of the infringing labels and marks for destruction. If the infringement committed was innocent only nominal damages will be awarded. However, criminal action is possible if fraudulent intention on the part of the infringer is proved.

• What are service marks and are they protected in India?

Service marks are trademarks used by business rendering various kinds of services, for eg: travel agents, finance companies etc.

• What forms of protection are available for trademarks?

There are two forms of legal protection that are available for trademarks. Under the Trade and Merchandise Marks Act, 1958, the procedure for registration of trademarks is prescribed in order to afford protection for the same. The most effective trademark protection is obtained by filing a trademark registration application in the Registrar of Trademarks. Once the trademark is registered, infringement can be easily established. In case of unregistered marks and marks which are not registerable, the only form of protection is the common law remedy of passing off. The plaintiff would have to prove sufficient use of the mark so as to create valuable goodwill of the business connected with the goods bearing the mark.

• What is the procedure to be followed for the registration of a trademark?

Any person/entity who claims to be the proprietor of a trademark can apply for registration. Before applying for registration, the applicant may apply for a report from the Registrar of Trademarks, as to whether the mark or one similar to it has already been registered or applied for. The applicant can also conduct private searches using the records maintained in the Registry. Thereafter, the application for registration should be filed in Form TM-1, under the Trade and Merchandise Marks Rules, 1959 ("Rules"). The Rules also prescribe the classes of goods with respect to which registration can be applied for (in the Fourth Schedule). If applications are made for registration of the mark in respect of more than one class of goods, then separate applications should be filed for each class. The application should be accompanied by the prescribed fee. After the application is received, the Registrar of Trademarks will examine the same and communicate any objections to the applicant. The objections will mainly be with regard to distinctiveness and similarity with already registered trademarks. The applicant can put forward his case in writing or at a hearing. If the submissions are accepted, the application will be advertised in the Trademarks Journal. In case any objections are received, the Registrar will conduct a hearing and give a decision regarding the same. If no objections are received, the Registrar will enter the mark in the Register of Trademarks and issue a certificate of registration to the applicant. The certificate of registration is valid from the date of application for registration.

• What is the duration of registration?

The first registration is valid for a period of ten years and can be renewed for further periods of ten years each by paying the renewal fee. If the mark is not renewed, it will be removed from the Register but it can be restored if a request is made to that effect within one year from the date of expiry of registration or last renewal.

• Is assignment of a trademark possible?

The assignment/licensing of trademarks is restricted, because unrestricted licensing has been considered as trafficking in the mark which is against public interest. This is because, a trademark indicates the origin of the goods to the consumer and unrestricted licensing can lead to confusion and deception among the public as to the nature of the goods. According to the law, the assignment of a trademark should not result in the creation of concurrent exclusive rights in more than one person with respect to the use of the same/similar mark in respect of same/similar goods. Confusion or deception can be avoided by territorial limitation or limitation of the goods.

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