Meaning of Trade Mark

A trademark is a virtually perceptible sign such as a word, logo, symbol, letter,

numeral, design, and color which is applied to articles of business to indicate to
the public that these articles are manufactured, serviced etc., by a particular
person. It is used by a person to distinguish his goods or articles from the goods or
articles of others. Trademark is recognized as a very valuable form of intellectual
property, because it associates with quality and consumer protection in a product
or service and helps to identify or differentiate his goods from others.
Trade mark means a mark used or proposed to be used in relation to goods for
the purpose of indicating or so as to indicate a connection in the course of trade
between the goods and some person having the right either as a proprietor or as
a registered user to use the mark, whether with or without any indication of what
the identity of that person is*.
The Agreement on Trade Related Aspects of Intellectual Property Rights also
protects the trade mark rights. Article 15 (1) of the Agreement reads that any sign
or any combination of signs, capable distinguishing the goods or services of one
undertaking from other undertakings, shall be capable of constituting a trade
mark. Such signs, words, including personal names, letters, numerals, figurative
elements and combinations of colors as well as any combination of such signs are
all eligible for registration as trademarks.
Article 18 speaks about the term of protection. Initial registration and each
renewal of registration of a trade mark are for a term of not less than seven years.
The registration of trade mark is renewable indefinitely.


*Re American Greeting Corp. Application (1984)1 All E.R. 426 (H.L.).

Any product with a reputed trade mark is easily marketable and hence it will
attempt competitors to copy the mark in order to deceive the consumers and gain
profits. As a consequence, it results in economic loss to original trademark holder.
Thus Trade Mark Act, 1999 protects the rights of the trade mark holder against all
infringements.
Definition- Trade mark is defined as a distinctive mark of device affixed to an
article sale, to indicate that it is manufactured, sod etc., by a particular person or
firm or company.
Section 2 (1) (V) of the Trade and Merchandise Marks Act, 1958 defines
Trade Mark.
Trade mark means
I. A registered Trade mark or a mark used in relation to goods for the
purpose of indicating a connection in course of trade between the goods
and some person having the right as proprietor to use the mark, and
II. A mark used in relation to goods for purpose of indicating a connection in
the course of trade between the goods and some person having the right,
either as a proprietor or as a registered user, to use the mark whether with
or without any indication of the identification of trade mark.

According to section 2(1) (zb) of Trade Mark Act, 1999 a trademark must be a
mark which includes a device , brand, heading , label, numerical, shape of gods,
packaging or combination thereof.
A trade mark must create a connection between a trader and his goods or
services. It must be capable of graphical representation. There must be
distinctiveness in a trade mark. There should be name, figure, label, letter, form
or device adopted and used by the manufacturer. A trademark must be capable of
distinguishing goods/ articles/ services of one person from other persons. A trade
mark must be used to indicate the business relation and it also protects the
business reputation and goodwill. Trade mark is a kind of intangible property and
is entitled to protection under the law.
What can be registered and what cant be registered?
The possibilities of Trademarks are almost limitless. Trademarks may be one or a
combination of words, letters, and numerals. They may consist of drawings,
symbols, three- dimensional signs such as the shape and packaging of goods,
audible signs such as music or vocal sounds, fragrances, or colors used as
distinguishing features.

In addition to trademarks identifying the commercial source of goods or services,
several other categories of marks exist. Collective marks are owned by an
association whose members use them to identify themselves with a level of
quality and other requirements set by the association. Examples of such
associations would be those representing accountants, engineers, or architects.
Certification marks are given for compliance with defined standards, but are not
confined to any membership. They may be granted to anyone who can certify
that the products involved meet certain established standards. The internationally
accepted "ISO 9000" quality standards are an example of such widely-recognized
certifications.


Names, including your own name or surname.
An invented word or any arbitrary dictionary word or words. It does not
need to be descriptive of the character or quality of the goods/service.
Letters or numerals or any combination.
Symbols
Monograms
Combination of colors or even a single color in combination with a word or
device. Shape of goods or their packaging. Marks constituting a 3-
dimensional sign.
Sound marks when represented in conventional notation or described in
words by being graphically represented.



Cant be registered
There are two grounds for the refusal of registration of a Trademark absolute
grounds and related grounds
Absolute grounds for refusal of registration of a Trademark are:
Marks devoid of any distinctive character or not capable of distinguishing the
goods or services of one person from those of others.
Marks which indicates quality or other descriptive character of the goods or
services.
Marks which have become customary in the current language or in the bona
fide or established practice of the trade.
Marks to the trade or generic names or marks common, chemical names and
international non-proprietary names.
Marks likely deceive public or cause confusion.
Marks comprising scandalous or obscene matter or likely to hurt religious
susceptibilities of any class or section of the citizens in India.
Marks prohibited under Emblems and Names (Prevention of Improper Use) Act,
1950.
Marks shape of which results from the nature of the goods themselves.
Marks the shape of which is necessary to obtain a technical result.
Marks the shape of which gives substantial value of the goods.
Relative grounds for refusal of registration of a Trademark are:
Marks which are identical or similar to an earlier Trademark and the respective
goods or services are identical or similar.
Mark which are identical or similar to an earlier Trademark, but the goods or
services are not similar. The question of refusal of registration of a mark similar to
an earlier Trademark where the goods are different can be considered only in
opposition proceedings.
Marks under passing off or law of copyright.







Procedure to file Trademark application
Trade Mark registrations in India form an integral component of any Corporate
Brand Development and Management Policy. The same becomes more crucial in
case of Multinational Companies, Overseas Investors and Foreign Entrepreneurs
that desire to use Indian soil for establishing and/or expanding their business
presence in Asian region. Generally, the procedure of Trademark Registration in
India confirms to the international standards and India is a party to prominent
International Conventions and Treaties related thereto, except Madrid Protocol.
However there are certain allied technical aspects which if taken care off in
professional manner and under customized guidance of proper Intellectual
Property Law Firm / expert Trade Mark Attorney would help brand owners to
save their money and time invested in getting their trademarks registered in India
and, further help them to curtail consequent infringement / passing off claims.
These facets have further got relevance in view of various technological initiatives
of Indian Trademark Office such as facility of Free and portal based Trademark
Search, E-filing of applications and responses, Online Application status and other
similar facilities.
The process for the registration of a trademark initiates with the submission of an
application to register trademarks. Any person who claims to be the proprietor of
a trademark and desirous of registering it applies in writing to the Registrar of
trade mark in a prescribed manner. A single application is enough for registration
of a trademark for different classes of goods and services. The application for
registration of a trademark must be filed in trip late along with five additional
representations of a trademark signed by the applicant or his agent. A trade mark
application has to be filed before the Registrar of Trade Marks (Form TM-1) with
the prescribed fee of Rs.2500. It should be filed at the office of the Trademarks
Registry corresponding to the principal case of business of the applicant. In India,
the trade mark registers are in Chennai, Delhi, Mumbai, Ahmadabad and Kolkata.
This will depend on the place where you reside or have the main purpose of
business. Before that, one will need to do a pre filing search before filing the
trademark. An application can be filed by the proprietor or his business. One can
file either in the name of the proprietor or in the name of a business. The best
way to apply is to put their own personal name if they are unsure about the
prospects of the business but it should have a very catchy name. If Trade mark is
in the name of the company, it usually dies with the company. While applying for
the Trade mark registration, the proprietor has to define the class under which
one wants their product or service to be classified. The classification has to be
done according to Schedule 4 of The Trade Marks Rules, 2002. The application
must contain the following particulars-
The class and goods or services for the class in respect of which application
is made
Full name, description of occupation and nationality of the applicant.
Principal place of business in India.
Address for services in India when there is no place of business .or
residence in India.
Statement relating to color combination
Statement, if the mark is three-dimensional trademark.
Finally, one has to pay the fees associated with the trade mark. As per The
Trademark Rules, 2002, the application fees are Rs.3500 per trademark.
How long it is required to obtain trademark?
The effective time taken by Indian Trademark office varies between 24 to
48 months, depending upon presence of objections or third party
opposition in a particular case. In case of straight forward application or
through proper professional handling of registration process, this time
frame can be reduced to 18 to 24 months.
Usually, the Indian Trademark Registry grants the registration within a year,
but sometimes in can take longer. The registration is valid for a period of 10
years, and may be renewed for further periods of 10 years each with
payment of the renewal fee of 5,000 Rupees. So, a brand, if renewed on
time, can be protected in India indefinitely. When considering the
investments companies are making to create their brands when entering
the Indian market or launching a new product or service, it is very advisable
to register a trademark in India as soon as possible before other companies
will use the same or a similar mark.






Stages in Trade mark registration
1. The first step is conducting a trademark search so as to ensure that the
logo or name in respect of which you intend to register a trademark is
not identical to an existing logo or name. A comprehensive search can
be conducted through the Trademarks Registry, although there are
other sources which can also help you in getting started
2. Note that a trademark can be revoked even after it is granted, if
somebody successfully challenges it on the ground that it is confusingly
similar to an already registered trademark. Hence, it is advisable to hire
a trademark attorney with some experience for conducting the search,
in order to ensure that your business logo or name is not confusingly
similar to an already registered trademark. This will minimize chances of
your trademark being revoked subsequently, after it has been granted.
3. Next, the trademark application in the prescribed format under the
Trademarks Rules needs to be made to the Trademark Registry. The
application must be filed at the office of the Trademark Registry which
jurisdiction to deal with it. So far, there are six registry offices, as per the
official website of the Registrar of Trade Marks.
4. The application must be made in respect of one or more of the various
categories of goods and services as classified under Schedule IV of the
Trade Marks Rules, 2002. If the application is in respect of one class, the
fee is INR 3500. It is also possible to make an application for your
product under more than one class heads. However, if the application is
in multiple classes, it is more expensive, the fee being INR 3500
multiplied by the number of Classes. Hence, one must identify the
category/categories under which you want to apply.
5. The application must be in the prescribed format. For example, the
simplest kind of application would be an application to register a trade
mark for a specification of goods or services included in any one class,
which is required to be made in Form TM-1. In case the goods or
services fall within different classes, a single application can be made,
but it must be as specified in Form TM-51.
6. The application must be filed by the applicant or his agent. The agent
must be a legal practitioner or a person registered as a trademarks
agent.
7. An applicant may apply for an expedited examination procedure for the
scrutiny of his trademark application, stating reasons as to why such
procedure is necessary. Expedited scrutiny is not a right, but depends
upon the satisfaction of the Registrar. Further, it is more expensive,
requiring payment of five times the normal application fee is to be paid
for this purpose. The fee is refunded if the expedited scrutiny is refused
by the Registrar.8. After the application has been filed, the Trademarks
Registry shall search whether an identical mark or a mark which is
deceptively similar to the mark applied for, already exists, in respect of
the same goods and services or similar goods and services.9. The
trademark application shall be published in the Trade Marks Journal
within six months of its acceptance of by the Registrar.After this stage,
there is an elaborate opposition process in place under Indian
trademark law, which is explained below. The opposition process is
important as it prevents others from acquiring a trademark in respect of
an already existing brand name. For company managers, strategists and
advisors, it is a useful legal tool to avoid risk of brand dilution, and hence
an aspect of legal liability management. The detailed opposition
procedure is at the end of this post.
In short, it is a lengthy and multiple step procedure involving numerous
exchanges between the objector and the applicant. If no objection is filed,
or if the objection is dismissed by the Registrar, he shall enter the
trademark in the register and a Registration Certificate shall be issued. The
decision of the Trademark Registry is appealable to the Intellectual
Property
Appellate Board. The trademark is valid for ten years, but may be renewed
afterward. (Renewal fees typically range between INR 2500 to INR 5000,
except for certification marks). (Each stage of filing requires a fee
prescribed under the Trademarks Rules to be paid, typically ranging from
INR 500 to 2500).
1. The application may be opposed within three months of application
(which is extendable by a further period of up to one month) by filing what
is known as a notice of opposition, in a prescribed format, and by paying a
fee.
2. Upon receiving the notice of opposition the applicant may reply with a
counter-statement within two months of receipt (extendable by a
maximum period of one month).
3. The opponent is required to file evidence within two months of receipt of
theCounter statement (extendable by a maximum period of one month). If
he serves no evidence, his opposition will be considered abandoned under
the law.
4. If the applicant has filed evidence, the applicant has two months to file
evidence in support of his application (extendable by a maximum period of
one month).
5. The opponent now has one month the option to file his reply under the
(extendable by a maximum period of one month). After this stage, no
evidence is admissible, except by special permission of the Registrar.
6. The Registrar then gives notice of a hearing within three months of
completion of receiving evidence. The hearing should be after a period of at
least one month of the delivery of notice. Parties that wish to attend are
required to inform the Registrar of their intention. There is a procedure for
seeking an adjournment, in case a party is unable to attend at the requisite
date. This part needs to be carefully complied with by both parties,
especially the applicant, because if the applicant has not specified his
intention to attend the hearing, and is not present at the adjourned date of
hearing, his application can be deemed to have been abandoned by the
Registrar. Similarly, if the opponent does not specify his intention to attend,
and if he is absent on the date of hearing, his objection may be considered
dismissed. The efforts of the affected party are in vain if the Registrar
dismisses the application or objection, without hearing them.
Registration Stages The involved procedure of Trademark Registration in
India requires an Attorney to possess practical knowledge of the involved
steps so that the Applicant does not waste their valuable money and time
in proceedings that might be unwarranted in view of its specific trademark
or related goods and services. These registration steps are as follows
1. Filing of Trademark Registration Application in requisite manner,
2. Issuance of acknowledgment by the Trademark Registry with Application
No.,
3. Issuance of Examiners Report by the Trademark Registry,
4. Filing of Reply to Examiners Report on behalf of Applicant,
5. Arranging publication of Trademark in official Trademark Journal, either
as Accepted or as Advertised before Acceptance,
6. replying to third party objections in case any received in a particular
case,
7. attending personal hearing at Trademark Registry for explain applicants
case,
8. Dispatch of Trademark registration Certificate,
9. Advising Registrant with Renewal Date and related formalities,
10. Ensuring exclusive Trademark exploitation by Registrant through
Trademark watch services.
A trademark application can be filed for a single or multi class. Application
claiming priority from a convention country can also be filed within six
months from the priority date.
After an application is filed the same is then examined by the registrar with
regard to the distintiveness, possiblity of deceptiveness an conflicting
trademarks. if an objection to registeration is raised, an official examination
report will be issued by the registrar within 3 monthsto 1 year depending
on the back log at the registry. The registrar may accept or refuse the
application subject to the provisions of the act. An application can be
refused or objected by the Registrar on relative or absolute ground.






Classification
Assigning different distinct classes to trademarks (and service marks), for certain
specific types of products, goods, and services in diverse economic sectors, is
termed as the trademark classification. Hence, the trademark classification is
commonly and popularly seen as the classification of products, goods, and
services. For example, the Class 1 of trademarks is reserved for Chemicals in
general, and Class 5 is dedicated to all Pharmaceuticals (in India). This trademark
classification helps the trademark attorneys in filing and prosecuting diverse
trademark applications conveniently and smoothly. Therefore, there is provision
of trademark classification in countries all around the world. The international
trademark conventions and treaties help countries to standardize their respective
classification of trademarks, to facilitate international registration and protection
of trademarks, and thus, easy and hassle-free international trade and business.
Such internationally recognized regulating bodies are TRIPS Agreement of World
Trade organization (WTO), WIPO, Berne and Paris Convention, and European
Community Trademark (CTM). Today, there are about 45 classes of trademarks in
general. The below section deals especially with the trademark classification
india.
In India too, the range of trademark classification is rather broad, as its
trademark classification list contains 42 classes of trademarks and service marks.
These classes of trademarks are made to categorize all products, goods, and
services which are produced, supplied, or dealt in by various fields of all economic
sectors. The new Trade Marks, 1999 and the Trade Marks Rules, 2002 of India, are
in close conformity and consistency with most of the globally recognized and
influential trademark conventions and treaties, to promote worldwide business
and trade. Our worldwide prominent legal firm has been extending well-rounded
services for 'india trademark registration' to people, institutions, and companies
that belonged to India and countries all around the entire world, for over a
decade. Other objects of intellectual property, and almost all areas of legal
practice, have been served dedicatedly and innovatively by our expert and
mellow legal professionals in all across the country and abroad.

Documents required filing Trade mark application
The name, address and nationality of the applicant. If the applicant is a
partnership firm, the names of all the partners. One has to mention whether any
minor is a partner. If the applicant is a company, the country or state of
incorporation. A list of goods and /or services for which registration is required.
Soft copy of the mark, logo or label to be registered (Preferably in JPEG, JPG or
GIF file formats). First use date of the mark (required in case, mark is already in
use).
If the mark contains or consists of non-English words, a translation of those words
into English is required. If the application is to claim priority from an earlier filed
convention application, details of that application is also required (application
number, filing date, country and goods/services). A certified priority document or
its duly notarized copy is to be submitted. If the certificate is not in English, a
certified/notarized English translation is also required. If it is not readily available,
the application can be filed based on the basic application number, date of the
application and country of the application. A copy of the priority document can be
submitted within 1 month from the filing date of the application. Date of first use
of the trademark in India, if at all used.
A power of attorney (neither notarization nor consular legislation required) to be
executed by an individual or a representative of a corporation on a stamp paper
of Rs. 100/- (One Hundred).
In case of Applicant being an Artificial Entity

Name of the entity / Company,
Communication Address,
Name and designation authorized to sign required documents.

In case of Applicant being a Natural Person

Name of the Applicant,
Fathers / Husbands Name,
Communication Address.

Execution of Board Resolution (if applicant is an Artificial Entity) and Power of
Attorney which shall further be required to be notarized and consularized in the
home country.