This article discusses about the categories under which the Trademark Act,1999, India, is applicable. The below mentioned - are the well - defined categories under which a person can register company’s trademark under the Trademark Act in India. Moreover, in this article I have tried to answer the question regarding the whole procedure of registration of trademark, and the categories under which a company can register its trademark under the Trademark Act, 1999.
WHAT IS A TRADEMARK?
Trademark consists of any words, symbols, phrases, or any combination of these things that are generally used to identify the goods or services a company is providing. There is a general misconception amongst the people that registering a particular logo as a trademark on your/company's name means that you have the exclusive right to that specific logo, and it can't be used by anyone. The Trademark is only registered with respect to the particular goods or a particular company. For example, if a logo of hammer has been registered as a trademark of a plywood company, then it does not mean that somebody cannot use a similar logo for non-plywood or related products.
RIGHTS CONFERRED AFTER THE REGISTRATION OF TRADEMARK.
The registration of a trademark is very beneficial for a company Through the registration of trademark many rights are conferred to the owner regarding the usage of that particular trademark. After the registration of the logo/symbol/phrase as a trademark, that particular logo can be exclusively used by its owner, or other party who has licence to use that trademark only.
According to the section 28(1) of the Trademark Act, 1999 it is stated that the registration of a trademark gives the owner exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered. Moreover, the section 28 also states that on the infringement of trademark, a person a seek legal remedy through the court.
WHAT CAN BE REGISTERED AS A TRADEMARK?
A trademark is basically anything that can be represented graphically. The trademark must be unique identity which can differentiate a company’s product and services from others.
These include the trademarks like the
Product Name – the name of the particular product that a company is selling can also be registered as a trademark. ex., McMuffin, Mango-Bite.
Business Names – the company has power to register its own name as a trademark. ex., Parle, RelianceFresh, ReliancePower.
Name of Person – The name of a person can also be a trademark, only in that case where the person specifically earns through such name. These types of trademark are very common for celebrities. In case of using of the trademarked name, a NOC, taken form the person who’s trademarked name has been used, has to be submitted. Ex., Beyonce could have sued the makers of khali peeli for using her name in the song “Beyonce sharma jayegi” since she has registered a trademark on her name.
Surnames – Family business are common in India and therefore any surname on which the business is relied on can be registered as a trademark. ex., Aggarwal’s, TATA, Mahindra, Bajaj, etc.
Abbreviations or Numbers - the combination of names or numbers which distinct a particular product/business can be registered as a trademark. Ex., 555, BMW, IBM, BBM.
Logos/Symbols – ex., logo of apple, audio, etc, no particular specification to describe it.
Tag Line – It’s basically considered as a phrase that which leaves behind an impression of the company’s service/product. Ex., MacD’s I’m lovi’ng it, and Nokia’s – connecting people.
Sound mark – any tunes or sounds which can be depicted by musical notes. Ex, ringtone of Samsung, Iphone, Nokia etc.
Scent – It’s very difficult to trademark a scent, but it’s still possible by trademarking the chemical formula of that particular scent.
Shapes – A shape can also be registered as a trademark if it can be graphically represented. But, the shape of that product shouldn’t be the natural form of that good. Furthermore, 3D shapes can also be trademarked, ex., shape of Toblerone has been registered as a trademark in UK.
HOW TO REGISTER TRADEMARK?
Searching of appropriate Trademark –
Many people don’t give importance and generally skips this part and later they face trials against them for infringement of the trademark. A person who is willing to register a trademark should first decide the trademark, and then check that are there any similar trademarks already present in the market. The mentioned site can be used for checking the trademark in India. https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx
Filing Trademark Application –
The trademark can be registered by filing an application from TM-A, which can be submitted online or by filling the application physically in the Trademark Office. There are two kinds of Forms, i.) Single Class – under this application, a trademark can be registered under only single specific class of product/service. ii.) Multi Class – under this application, a trademark can be registered under more than one classes of product/services.
Moreover, if a company is claiming prior use if trademark, then in that case an affidavit has also to be submitted along with the other required documents showing proof that the company is using that trademark from a distinct time.
Examination of TM –
After the filing of the report, the govt authority examines the application and issues a mandatory report assuring the trademark is in accordance with the Trade Marks Act, 2016. The authorities can issue a notice if they find any discrepancies and can raise the objection. This report is issued within a time span of 30 days from filing of the application. A reply to this objection has to be filed under 30 days clearing out the raised objections.
Post Examination –
Even after the filing of the reply regarding the clearing of the objection, if the authorities are still not satisfied, then in that case, the authorities can call upon a hearing for listening and clearing out the raised objection.
Publishing of TM –
After the acceptance of the application of the trademark, the said Trademark is published in a Trademark Journal, for a period of 4 months. This gives a chance to general public for raising any objection regarding the published trademark.
If Objection is raised –
If any person finds any trademark published in the journal objection, then s/he can file a notice, TM-O within 4 months of the publication of that journal. After raising the objection, there is a fair hearing, and the Registrar gives a decision.
After the clarification, when the objection is removed/resolved, the registrar would register that Trademark and a certificate would be issued for successfully registering the Trademark under the seal of the Trademark Office.