A trade mark (popularly known as brand name in layman’s language) is a visual symbol which may be a word to indicate the source of the goods, a signature, name, device, label, numerals, or combination of colours used, or services, or other articles of commerce to distinguish it from other similar goods or services originating from another. It is a distinctive sign which identifies certain goods or services as those produced or provided by a specific person or enterprise. A trade mark provides protection to the owner of the mark by ensuring the exclusive right to use it or to authorize another to use the same in return for payment. The period of protection varies, but a trade mark can be renewed indefinitely beyond the time limit on payment of additional fees. Trade mark protection is enforced by the courts, which in most systems have the authority to block trade mark infringement.

The salient features of the Trade Marks Act, 1999

(a) Providing for registration of trade mark for services, in addition to goods.

(b) Amplification of definition of trade mark to include registration of shape of goods, packaging and combination of colours.

(c) All 42 international classification of goods and services (as earlier used) now applicable to India as well.

(d) Recognition of the concept of “well-known trade marks”.

(e) Increasing the period of registration and renewal of trade marks from 7 to 10 years, to bring it in conformity with the accepted international practice.

(f) Widening the scope of infringement of trade marks. For instance, use of a registered trade mark as trade name or as a part of a trade name or use of a mark which is identical or deceptively similar to a registered trade mark.

(g) Creation of an “Intellectual property Appellate Board” for hearing appeals against orders and decisions of the Registrar of Trade Marks for speedy disposal of cases and rectification applications which hitherto lie before High Courts.

(h) Criminal remedies in case of falsification of trade marks.

(i) Recognition of use of trade mark by even an unregistered licensee.

(j) Expeditious examination of a trade mark application on payment of five times the application fee.

Objective of the Act:

The object of trade mark law has been explained by the Supreme Court in Dau Dayal v. State of Utttar Pradesh AIR 1959 SC 433, in the following words:“The object of trade mark law is to protect the rights of persons who manufacture and sell goods with distinct trade marks against invasion by other persons passing off their goods fraudulently and with counterfeit trade marks as those of the manufacturers. Normally, the remedy for such infringement will be by action in Civil Courts.

Kinds of Trade marks

Product Mark

Product mark is a mark that is used on a good or on a product rather than on a service. This this type of trademark is used to recognize the origin of the product and helps in maintaining the reputation of a business. Trademark applications filed under  trademark class 1-34 could be termed as a product mark, as they represent goods.

Service Mark

Service mark is similar to the product mark but a service mark is used to represent a service rather than a product. The main purpose of the service mark is that it distinguishes its proprietors from the owners of other services. Trademark applications filed under trademark class 35-45 could be termed as a service mark, as they represent services.

Collective Mark

Collective mark is used to inform the public about certain distinguished features of a product or service used to represent a collective. A group of individuals can use this mark so that they are collectively protecting a goods or service.

In a collective mark, normally the standards of the products are fixed by the regulator owing the mark. Others associated with the collective are held responsible to adhere to certain standards while using the mark in the course of business.

Certification Mark

Certification mark is a sign that denotes a products origin, material, quality or other specific details which are issued by the proprietor. The main purpose of certification mark is to bring out the standard of the product and guarantee  the product to the customers. A certification mark can also be used to uplift the product’s standard amongst the customers by showing that the product had undergone standard tests to ensure quality. Certification marks are usually seen on packed foods, toys and electronics.

Shape Mark

Shape Mark is exclusively used to protect the shape of the product so that the customers find it relatable to a certain manufacturer and prefer to buy the product. The shape of a particular product can be registered once it is recognized to have a noteworthy shape. An example of a shape is the Coca-Cola bottle or Fanta bottle, which have a distinctive shape identifiable with the brand.

Pattern Mark

Pattern marks are those products that have specific designed patterns that come out as the distinguishing factor of the product. Patterns which fail to stand out as a remarkable mark is generally rejected since it does not serve any purpose. For a pattern to be registered, it has to show evidence of its uniqueness.

Sound Mark

Sound mark is a sound that can be associated with a product or service originating from a certain supplier. To be able to register a sound mark, when people hear the sound, they easily identify that service or product or a shows that the sound represents. Sound logos are called as audio mnemonic and is most likely to appear at the beginning or end of a commercial. The most popular sound mark in India is the tune for IPL. 

The distinction between a trade mark and a property mark has been stated by the Supreme Court in the case of Sumat Prasad Jain v. Sheojanam Prasad and Ors., AIR 1972 SC 413. The Apex Court held: “…Thus, the distinction between a trade mark and a property mark is that whereas the former denotes the manufacture or quality of the goods to which it is attached, the latter denotes the ownership in them. In other words, a trade mark concerns the goods themselves, while a property mark concerns the proprietor. A property mark attached to the movable property of a person remains even if part of such property goes out of his hands and ceases to be his.”

One of the first landmark judgments in this regard is the “Whirlpool case” [N. R. Dongre v. Whirlpool Corporation, 1996 (16) PTC 583] in which the Court held that a rights holder can maintain a passing off action against an infringe on the basis of the trans-border reputation of its trade marks and that the actual presence of the goods or the actual use of the mark in India is not mandatory. It would suffice if the rights holder has attained reputation and goodwill in respect of the mark in India through advertisements or other means.

Advantages of having a trademark?

Exclusive Rights:  The owner of Registered Trademark enjoys exclusive right over the trademark. The owner can use the same for all the products falling under the class(es) applied. Further, the owner can enjoy the sole ownership of the Trademark and can stop other from the unauthorised use of the Trademark under the same class where it is registered. It gives the right to sue the unauthorized user of the Trademark Registered.

Builds trust and Goodwill:  The established quality of your product and services are known by everyone through the trademark and which establishes trust and goodwill among the customers in market. It helps in creating permanent customers who are loyal and always opt for the same brand.

Differentiates Product:  It makes easy for customers to find your products. It makes your product and identity of products different from that of the existing and foreseen competitors and acts as efficient commercial tool. The logo can communicate your vision, quality or unique characteristic of your company and any organisation.

Recognition to product’s Quality:  It gives recognition to the quality of the product. Customers attach the product’s quality with the brand name and this image is created in the market about the quality of a particular brand which helps in attracting new customers as they can differentiate the quality of a product by the logo/brand name.

Creation of Asset:  Registration of Trademark creates an intangible asset i.e. Intellectual Property for an organisation. Registered trademark is a right created which can be sold, assigned, franchised or commercially contracted. Also, the Trademark is an intangible asset which gives the advantage to the organisation.

Use of ® symbol:  Once the trademark is registered you can use the ® symbol on your logo stating that it is a registered trademark and no one can use the same trademark. It is exclusive of all types of usages as well as rights. If someone else use the trademark then you can also sue the party if the trademark is registered.

Protection against infringement:  No competitor or other person can use the wordmark or logo registered by you under trademark. However, if in any case one uses it without the approval of the owner of trademark or make any deceptive use of same, the owner can get the legal protection under the Act and stop the person doing so.

Protection for 10 Years at low cost:  Online Trademark registration is done on a very low maintainability cost. Once you register the trademark you have to just pay the maintenance cost and renewal cost which is after 10 years of registering the trademark. It is cost efficient and helps your company create an unique image.

Attract Human Resources:  Young minds aspire to join big Brands as it acts as a magnate. It inspires the positive image of the organisation and thus candidates are attracted towards them easily. This reduces the cost towards hiring and related activities.

What are the products or services, for which a trademark can be applied for?

All the goods and services are covered under trademark Act, 1999 also note that the Register shall classify goods and services, as far as may be , in accordance with the international classification of goods and services for the purposes of registration of Trade Marks.

How to apply for Trademark?

A trademark application is made in both modes offline and online. But there is some difference of Departmental Fees, the fees is a little higher in case of offline mode. The application is followed by Form TM -48 for Authorisation of an Agent along with supporting documents which differs in case of Proprietor, Company or Partnership or as the case may be.

What are the fees associated with applying for trademark?

The Departmental fees for applying for Trademark is as follows:-

1. In case of proprietor: INR 4500/-

2. In any other case: INR 9000/-

One can even reduce the departmental fees by half if the applicant is registered under Ministry of Micro, Small and Medium Enterprize as MSME.

 Where to make the application in case of offline trademark application?

The application shall be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants the principal place of business in India of the applicant whose name is first mentioned in the application as having a place of business in India, is situated.

How long it takes to get a trademark?

The process to acquire a trademark generally required four to five months as there is procedural part

1. Submission of application to department.
2. On vetting of application, the department Accepts the application.
3. After the acceptance, the department publish the trademark, the applicant applied in Official Gazette of India. This publication is made to announce the public at large, that we are about to register this published trademark and all the rights to use this mark shall be vested with the applicant. If any person has any objection with same, then the reply can be submitted to department.
4. If no objection is received within a period of One Hundred and Twenty days (120) from the publication in Official Gazette, then the Departments registers the Trademark on the name of Applicant and he then can use the mark ® on his product or services Trademark.
5. With so many benefits and to protect your trademark where every single day, a new person starts their business, it becomes pertinent to acquire a trademark and protect your Brand value which a businessman is building or have already build for its goods and services over a period of time.

Types of Trademark Infringement

When looking into trademark infringement, one must know that are two types of infringement:

1. Direct infringement

Direct infringement is defined by Section 29 of the Act. There a few elements that have to be met for a direct breach to occur; they are as follows:

• Use by an unauthorised person: This means that violation of a trademark only happens when the mark is used by a person who is not authorised by the holder of the registered trademark. If the mark is used with the authorisation of the holder of the registered trademark, it does not constitute infringement.
• Identical or deceptively similar: The trademark used by the unauthorised person needs to either be identical to that of the registered trademark or deceptively similar to it. The term ‘deceptively similar’ here only means that the common consumer ‘may’ be confused between the marks and may think of them being the same. The operational word here being ‘may’, it only needs to be proven that this is a possibility and does not require proof of actually happening. As long as there is a chance of misrecognition of the marks, it is enough for proving infringement.
• Registered trademark: The Act only extends protection to trademarks that have been registered with the trademark registry of India. In the case of breach of an unregistered mark, the common law of passing off is used to settle disputes. It is a tort law that is used where injury or damage is caused to the goodwill associated with the activities of another person or group of persons.
• Class of goods or services: For the infringement of the trademark, the unauthorised use of the mark has to be used for the propagation of goods or services that fall under the same class of the registered trademark.

2. Indirect infringement

Unlike direct infringement, there is no provision in the Act that deals with indirect infringement specifically. This does not mean that there is no liability for indirect infringement. The principle and application of indirect infringement arise from the universal law principle. It holds accountable not only the principal infringer but also anyone that abets, induces that direct offender to infringe. There are two types of indirect infringement:

• Vicarious liability: According to Section 114 of the Act, if a company commits an offence under this Act, then the whole company will be liable. Therefore not only the principal infringer but, every person responsible for the company will be liable for indirect infringement, except for a person who acted in good faith and without knowledge of the infringement. The elements for vicarious liability are:- When the person can control the activities of the principal infringer – When the person knows of the infringement and contributes to it – When the person may derive financial gains from the infringement The only exception to vicarious liability of a company for infringement is when the company has acted in good faith and had no idea about the infringement.
• Contributory infringement:There are only three basic elements to contributory infringement:- When the person knows of the infringement – When the person materially contributes to the direct infringement – When the person induces the principal infringer to commit infringement In the case of contributory infringement, there is no exception as there exists no chance of the contributory infringer to act in good faith.

Penalties for Trademark Infringement

In India, the infringement of a trademark is a cognisable offence which means that the infringer may also face criminal charges along with civil charges. It is also not required by Indian law for the trademark to be registered for the institution of civil or criminal proceedings. As mentioned before this is due to the common law principle of passing off. In the case of trademark infringement or passing off, the court may award the following remedies:

1. Temporary injunction
2. Permanent injunction
3. Damages
4. Account of profits (damages in the amount of the profits gained from the infringement)
5. Destruction of goods using the infringing mark
6. Cost of legal proceedings

In the case of a criminal proceeding, the court dictates the following punishment:

1. Imprisonment for a period not less than six months that may extend to three years
2. A fine that is not less than Rs 50,000 that may extend to Rs 2 lakh