Here’s everything you need to know about trademark law in India and trademarks, their types, uses, and things to know to apply for a trademark.
A trademark is a distinctive symbol, phrase, or word identifying a specific product. It legally distinguishes a product or service from all others of the same type and acknowledges the source company’s ownership of the brand.
Trademarks can be registered or unregistered, denoted by the ® and TM symbols, respectively.
Let’s get into more depth and understand the meaning of Trademark and the regulations ruling the trademark law in India.
What is a trademark in India?
A service mark or a trademark is a distinctive word, phrase, name, slogan, picture, emblem, design, logo, or any combination of those which is used in commerce to distinguish and identify an entity’s products or services from that of others and to indicate the source of goods and services. Servicemark works in the same manner as a trademark; the primary intention of a service mark is to identify services and events.
Along with helping the legal and business system distinguish products and services, Trademark significantly help consumers with the same.
Trademarks identify and protect words and design elements that distinguish between a product or service’s sources, owner, or developer. Trademark prevents the unauthorized use of a company’s or individual’s product or service without the owner’s permission.
Trademark law in India also prohibits any mark that has a chance of confusing the consumers and legal system with an existing one. It means that a business is not allowed to use a symbol or a brand name if it sounds or looks similar or has a similar meaning to the one already registered in the books as per trademarks law.
For example, a shoe company cannot legally use a symbol that looks similar to a Nike’s and cannot use a name that sounds like Nike.
Trademark law in India
Trademark and service marks get governed by trademark law. Trademarks are a form of intellectual property.
- Trademark Act 1999: The act governs the trademarks in India. The trademark law and other laws governing trademarks never expire, meaning that the owner has the right to the product or service’s life for which the Trademark got registered. Both state and central law govern the trademarks Act 1999.
The trademark law in India protects the unauthorized use of the Trademark in most jurisdictions regarding products or services similar to the registered product or services. The illegal use of registered trademarks without the owner’s permission is called “trademark infringement” as per trademarks law. And it can also lead to a lawsuit.
The common trademarks law of the state initially provided the primary source of protection of trademarks. However, much of the ground covered by state common law is assumed by central trademarks law, and it now provides the primary source of trademark protection in India.
- Essentials of a good trademark: The trademarks are identified with a ® symbol. However, a company or an individual does not necessarily need to register a trademark under their name to get protection rights in the country.
The owner must make continuous, lawful use of the Trademark to take advantage of trademark law. The owner can do this every 10 years by filing a declaration to the trademark registrar. The owner can lose the Trademark registration if he or she fails to file the declaration.
It is the company’s duty or an individual to manufacture regularly, produce, market, and sell a product with a particular trademark for the Trademark to be alive and enforceable by law.
The trademark law entitles the trademark owner to exclusive use of the mark concerning the products and services the Trademark was registered for, which is one of the essentials of a good trademark.
Trademark or brand development is a serious and time-consuming task that clients typically commission from advertising agencies. Unfortunately, not all market agencies are familiar with Trademark laws and legal requirements, critical in trademark development.
Designation requirement for trademark development
The protectability of a trademark is the most crucial legal criterion in the trademark development process. The mark should not be similar to competitors’ logos and should not elicit false associations. If a company disregards the legal requirements during the trademark development process, it may be denied trademark registration.
It is advisable to determine the chances and likelihood of obtaining your Trademark registration as per the trademark law in India before applying for registration so that you do not waste the filing fees.
The search occurs in all classes.
A case’s legal implications
Another company may have already introduced a developed designation to the market, and much powerful marketing and advertising designations have already been registered. That is why you should consider things more broadly and estimate them in terms of the legal implications of a case.
The trademark registration process and procedure
Trademark registration can be obtained for words, logos, numerals, slogans, devices, and other items as per trademark law in India. Trademark registration grants the owner of the trademark legal exclusivity in using the mark.
However, trademark registration is a time-consuming and multi-step process.
Search for a Trademark
Before proceeding with the trademark registration process, the entrepreneur or Trademark professional must conduct a trademark search of the trademark database. A trademark search will reveal any identical or similar trademarks already registered with the trademark registry.
Visit the Trademark Registrar Website to conduct a trademark search.
After completing a trademark search, an application for trademark registration can be filed with the Trademark Registrar. It is essential to make the application for trademark registration in the prescribed manner and file along with the trademark registration fee.
Trademark applications can be filed at any of the five Trademark Registrar Offices in the state or online. A trademark agent or lawyer can file trademark applications online.
A trademark registration application must consist of the following information:
- The Trademark or the Logo
- The trademark owner’s name and address
- Classification or Trademark Classification
- Details of usage claimed
- Product or service description
Allotment of trademark applications
A trademark application allotment number is provided on filing the trademark application with the Trademark Registrar.
The trademark application can then be followed online using the Online Trademark Search feature.
Typically, after receiving a trademark application allotment number, the trademark owner can place the TM symbol next to the logo.
Codification of Vienna
The Vienna Classification, also known as the Vienna Codification, is an international classification of figurative elements of marks established by the Vienna Agreement (1973).
The Trademark Registrar will apply the Vienna Classification to the Trademark based on the symbolic elements of marks once the trademark registration application is filed.
Following the completion of Vienna Codification, the trademark registration application will get assigned to a Trademark Officer in the Trademark Registrar Office.
After that, the Trademark Officer would review the trademark application for accuracy and issue a trademark examination report. The Trademark Officer has the authority to accept the trademark registration application and allow it to be published in the trademark journal or to object to the trademark registration application.
If the Trademark Officer objects to the trademark registration application, the trademark applicant has the right to appear before the Trademark Officer and address the objections.
If the Trademark Officer is satisfied with the trademark applicant’s justifications, the Trademark will get approval for publication in the trademark journal.
If the Trademark Officer is not satisfied with the justifications, the trademark applicant may appeal the Trademark Officer’s decision to the Intellectual Property Appellate Board.
Publication in a trademark journal
The proposed Trademark is published in the Trademark Journal after the Registrar accepts the trademark registration application.
The trademark journal is published weekly and includes all trademarks accepted by the Trademark Registrar. On publishing the trademark in the trademark journal, the public can object to the registration if they believe it will cause them harm. If no objections are filed within 90 days of the mark’s publication, it will typically get registered within 12 months.
If a third party objects to registration, the trademark hearing officer will set up a hearing for both parties. The trademark applicant and the opposing party can appear at the hearing and explain why the trademark application should be registered or rejected.
After hearing the arguments of both parties, the officer will decide whether the application should be accepted or rejected. The trademark hearing officer’s decision can also be appealed to the Intellectual Property Appellate Board.
Registration of a trademark
The trademark manuscript and registration certificate will be prepared and sent to the trademark application once there are no objections or oppositions to the trademark registration application.
The Trademark is a registered trademark of the owner once the trademark registration certificate is issued, granting the trademark owner exclusive use of the mark. The ® symbol can now be used alongside the logo or Trademark.
Infringement of the trademark
Section 29 of the Trademarks Act, 1999 defines the Infringement of the Trademark in India. Simply put, infringement occurs when an unauthorized person uses a trademark that is “identical” or “deceptively similar” to a registered trademark.
Let’s take a look at the elements that make up trademark infringement:
A person who is not the registered Trademark’s owner or licensee
‘Identical’ or ‘deceptively similar’
The test for determining whether marks are identical or not is to determine whether there is a possibility of public confusion. There is an infringement if consumers are likely to be confused between the two marks.
Only a registered trademark can get infringed, and the common law concept of passing off will apply to an unregistered trademark.
To establish infringement, the infringer’s goods/services must be identical or similar to the interests represented by the registered Trademark.
Any unauthorized use of a registered trademark’s exclusive statutory rights constitutes infringement.
Types of trademark
As per trademark law in India, a product mark is applied to a good or service rather than a service. This type of trademark identifies the origin of a product and aids in the maintenance of a company’s reputation. Trademark applications filed under trademark classes 1–34 may get considered product marks because they represent goods.
A service mark is similar to a product mark in that it represents a service rather than a product. The primary function of a service mark is to distinguish its proprietors from the owners of other benefits. Trademark applications filed under trademark classes 35-45 may be classified as service marks because they represent a service.
A collective mark informs the public about specific distinguishing characteristics of a product or service that represents collectively. A group of people can use this mark to protect a product or service collectively.
As per the trademark law in India, a certification mark denotes the origin, material, quality, or other specific details of a product that the proprietor issues. The primary purpose of a certification mark is to highlight the product’s standard and to guarantee the product to customers.
Choose us for your trademark development needs.
You’ve created a brand you’re proud of, and you’re now attempting to safeguard it. While a trademark protects your company’s unique name or logo, the registration process can be lengthy and complex—and you won’t receive legal advice tailored to your specific situation if you go it alone. That’s when having a skilled and experienced lawyer in your corner can make all the difference.
Contact us to get the assistance of lawyers who have years of experience in dealing with the Trademark services in Mumbai.