A trademark is any representation, which might be a word, phrase, symbol, design, sound, smell, and colour, adopted and used by a company to identify its products or services, and to distinguish them from products and services of others. The primary purpose of a trademark is to prevent consumers from becoming confused about the source or origin of a product or service. The consumers not only associate the trademark to the company from which it originates but also to the quality of the product or service.
India's obligations under the TRIPS Agreement for protection of trademarks, inter alia, include protection to distinguishing marks, recognition of service marks, indefinite periodical renewal of registration, abolition of compulsory licensing of trademarks, etc.
With the globalization of trade, brand names, trade names, marks, etc. have attained an immense value that require uniform minimum standards of protection and efficient procedures for enforcement as were recognised under the TRIPS. In view of the same, extensive review and consequential amendment of the old Indian Trade and Merchandise Marks Act, 1958 was carried out and the new Trade Marks Act, 1999 was enacted. The said Act of 1999, with subsequent amendments, conforms to the TRIPS and is in accordance with the international systems and practices.
The Trade Marks Act provides, inter alia, for registration of service marks, filing of multiclass applications, increasing the term of registration of a trademark to ten years as well as recognition of the concept of well-known marks, etc. The Indian judiciary has been proactive in the protection of trademarks, and it has extended the protection under the trademarks law to Domain Names as demonstrated in landmark cases of Tata Sons Ltd. v. Manu Kosuri&Ors, [90 (2001) DLT 659] and Yahoo Inc. v. AkashArora [1999 PTC 201].
India, being a common law country, follows not only the codified law, but also common law principles, and as such provides for infringement as well as passing off actions against violation of trademarks. Section 135 of the Trade Marks Act recognizes both infringement as well as passing off actions
Trade Mark: A trade mark can be a word, logo, symbol, label, shape, smell, combination of colours etc. and acts as a source indicator and refers to the origin of goods or services. Trade mark can either be a word mark or a device mark. A word mark essentially denotes words/letters in a non stylised manner. On the other hand device mark comprises artistic features or unique colour combination.
Service Mark: A trademark pertaining to services is known as service mark.
Trade Mark Classification: The Trade Mark Registry, for the purpose of registration has classified goods and services under 45 classes in accordance with the Nice Classification. Class 1 to 34 refers to goods and class 35 to 45 refers to services.
Trade Mark Search: It is advisable to conduct a pre-registration search at the Trade Mark Registry to find out about the pre existence of deceptively similar and confusing marks. The search is conducted so that the Applicant is aware of the probable objections or oppositions that may be initiated against the prospective trademark.
Trade Mark Filing: An application is to be filed under the Trademarks Act and the Trademarks Rules. The following documents are required for the filing of an Application:
Application for Registration- Full description of the Applicants to be provided.
User detail – The user date should denote the month and date of first use in India. Conversely it can be on “proposed to be used” basis.
Priority Claim – Priority claim in relation to foreign applications is to be filed within 6 months from the date of filing of the trade mark in the parent country.
Additional Representations- Refers to the document which contains further information about the Applicant.
Power of Attorney- To be filed along with the application duly executed by the Applicant in favour of the trademark attorney.
Trade Mark Prosecution
Examination Report and reply to Examination Report: Upon Application, the Registrar shall cause the application to be examined and shall issue an Examination Report to the Applicant stating his objections, if any; and, the reply must be submitted within a month from the date of issuing of the Examination Report.
Advertisement in Trade Mark Journal: As and when the objections are waived after receiving the reply followed by hearing, the application will be accepted for advertisement in the Trademarks Journal.
Opponent can file Notice of Opposition within 4 months from the date of advertisement or re- advertisement of the Trade mark in the Trade mark journal.
Applicant should file a Counter Statement within 2 months from the date the Notice of Opposition is served.
Opponent on receiving the Counter Statement ought to file Evidence in support of Opposition under Rule 45 of the Trade Mark Rules, 2017 within 2 months from the date of receiving the Counter Statement.
Applicant must file Evidence in Support of Application under Rule 46 of the Trade Mark Rules, 2017 within 2 months from the date the Evidence in Support of Opposition is served.
Opponent gets the opportunity of filing Evidence in Reply under Rule 47 of the Trade Mark Rules, 2017 within 2 months from the date Evidence in Support of Application is served.
The matter is posted for hearing and the decision can either lead to registration for a period of 10 years or the opposition may be allowed and the application for registration is refused.
Upon Registration a certificate to that effect is issued in favour of the Applicant. A Trade Mark/Service Mark is valid for a period of 10 years.
Trade Mark can be renewed in every 10 years. Renewal application can be filed 6 months prior to the due date of the next renewal date.
Under the Trade Marks Act, both civil and criminal remedies are simultaneously available against infringement and passing off.
Infringement of trademark is violation of the exclusive rights granted to the registered proprietor of the trademark to use the same. A trademark is said to be infringed by a person, who, not being a permitted user, uses an identical/ similar/ deceptively similar mark to the registered trademark without the authorization of the registered proprietor of the trademark. However, it is pertinent to note that the Indian trademark law protects the vested rights of a prior user against a registered proprietor which is based on common law principles.
Passing off is a common law tort used to enforce unregistered trademark rights. Passing off essentially occurs where the reputation in the trademark of party A is misappropriated by party B, such that party B misrepresents as being the owner of the trademark or having some affiliation/nexus with party A, thereby damaging the goodwill of party A. For an action of passing off, registration of a trademark is irrelevant.
Registration of a trademark is not a pre-requisite in order to sustain a civil or criminal action against violation of trademarks in India. In India, a combined civil action for infringement of trademark and passing off can be initiated.
Significantly, infringement of a trademark is a cognizable offence and criminal proceedings can be initiated against the infringers. Such enforcement mechanisms are expected to boost the protection of marks in India and reduce infringement and contravention of trademarks.