What is a trademark?
Intellectual property (Trademark, Logo, Brand etc.) are part of the non-physical property of a business. They are legally protected and that protection can be enforced in a court of law.
Intellectual property (Trademark, Logo, Brand etc.) can be independently identified, are transferrable, saleable and have an economic lifespan. Also as a trademark owner, you can stop others, including competitors, from using your trademark or a confusingly similar one.
A trademark Registration, Brand Registration, Logo Registration is permanent, with a need only for periodic renewal. Trademark Registration, Brand Registration, Logo Registration are significantly beneficial when a business wants to Diversify its products or services, Branch into franchising through licensing, and Attain more value by putting itself up for sale.
By trademarking you can protect your brand, logo, mark, trademark by infringement of another person and take shelter under the law. Trademarking gives you a right to take legal action against the alleged infringement of the trademark.
You are legally presumed to own the trademark and hold exclusive rights to use it in relation to the goods and/or services listed in your registration. Registration of trademark, logo, brand or intellectual property or intellectual assets paves the way for you to register your trademark in other countries more easily.
What does a trademark do?
It creates a favourable and impressive image (about the product or company) in the minds of consumers and customers.
It assures customers of certain unique, satisfying, and unchanged qualities of products or services.
It differentiates products or services, and also the companies connected with these.
It makes products or services prominent.
It advertises products or services, making these increasingly popular.
Trademark Protection in India
In India, trademarks and service marks are registered under the federal registration system, with the support of five regional trademark offices, which are well-established in Mumbai, New Delhi, Kolkata, Ahmedabad, and Chennai. As per the protection of trademarks in India, trademarks are protected through a combination of both specific statutes (eg, the Trademarks Act 1999) and ancillary legislation incorporated under, for example, the Customs Act 1962 and the Companies Act 1956. India’s statutory Trademarks Law dates back to 1860. The Indian Trademarks Act was passed in 1940, this corresponded with the English Trademarks Act. After this, there was an increasing need for more protection of Trademarks as there was major growth in Trade and Commerce. The replacement for this act was the Trademark and Merchandise Act, 1958. The repeal of the Trademarks and Merchandise Act gave rise to the Trademark Act 1999; this was done by the Government of India so that the Indian Trademark Law complies with the TRIPS obligation on the recommendation of the World Trade Organisation. The object of the 1999 Act is to confer the protection to the user of the trademark on his goods and prescribe conditions on the acquisition, and legal remedies for enforcement of trademark rights.
The cost for obtaining trademark protection in India in a straightforward case (no oppositions, no office actions, etc) can be around 550 USD. This coat may vary depending upon the number of classes, official objections from the Trade Marks Registry, and third-party opposition.
Unregistered v/s Registered Trademark
In India, an unregistered trademark is entitled to protection under the tort of passing off. Section 27(2) of the Trademarks Act expressly provides for an action for passing off.
The plaintiff must prove that:
the trademarks are similar;
the defendant is deceptively passing off its goods as those of the plaintiff, and
there is bound to be confusion in the minds of consumers. The test to be applied is whether a person of average intelligence and imperfect recollection would be confused.
While the Indian courts prefer evidence (eg, sales or advertisements) about India, they have come a long way in terms of recognizing trans-border reputation and goodwill as a basis for enforcing rights. Sections 29 and 30 of the Trademarks Act allow for an action based on infringement. Unlike passing off, in an infringement action there is hardly any burden on the plaintiff since entitlement is already established through a registration. However, an infringement action does not lie against a prior user, implying that Indian courts attach a greater degree of importance to prior use (in many cases including prior international use) than to prior registration.
Who can apply for a trademark and how?
Any person, claiming to be the proprietor of a trademark used or proposed to be used by him, may apply in writing in a prescribed manner for registration. The application should contain the trademark, the goods/services, name and address of applicant and agent (if any) with power of attorney, the period of use of the mark. The application should be in English or Hindi. It should be filed at the appropriate office.
The applications can be submitted personally at the Front Office Counter of the respective office or can be sent by post. One can also E-register trademark through the e-filing gateway available at the official website.
How to register a trademark in India?
To register a trademark in India one can either file a national application with the Trade Marks Registry or can designate India in an international application filed through the Madrid Protocol.
Although, a power of attorney is needed if the application is being filed by an agent or an attorney.
Once a trademark is registered, the Trade Marks Registry issues an electronic registration certificate to the applicant or its agent. And thus, protects the trademark from infringement as it confers the applicant with statutory rights which entitles them to take action against the infringer.
How to E-register a trademark?
Steps to Register for E-filing
- Procure a class III or II digital signature from any of the Indian Certifying Authorities and install the same on your computer.
- Download and install the Signing Component as per the instructions given in the Digital Signature Manual.
- Write to the helpdesk at firstname.lastname@example.org for any further assistance.
- Then proceed for registration
- New User Registration Form Registration Can be Done by:- a. Proprietor b. Agent c. Attorney
- Search name in Text Box
- Click on the “Add New’’ Button to add a new user
- Fill in the details of the New Attorney
- Click on the “Upload Document’’ Button to Upload Document
- Upon successful Registration User can log in either with User Id and Password or User Id and Digital signatures for logging into the system. There are two types of login in the application: a) Password b) Digital signature
- For Digital Login Select the desired Certificate
- Now you can apply for desired Forms
Why is trademark registration important?
A trademark registration :
provides prima facie evidence of ownership and validity;
provides statutory protection in India;
helps to deter others from using the trademark unlawfully, and allows a suit for infringement to be brought.
Trademark registration also helps with:
Brand recognition: A product’s performance, quality, features, and so on are associated with the company by a customer. The customers identify the product generally by the logo, which would be a registered trademark. Registration of Trademark facilitates brand recognition for your goods and services. It also creates goodwill associated with the brand. Thus, the brand is recognized as well as carries a market value over time. Brand recognition welcomes new customers while retaining loyal customers.
Creation of an asset: Registration of trademark creates an asset for a business enterprise. Trademark is recognized as an intangible asset for accounting and income tax purposes. Trademarks are intellectual property and carry a value associated with the products they represent. Trademarks can be sold, franchised, assigned, or commercially exploited in any other manner. The value or cost associated with trademarks can be recognized in the books of accounts. One can also claim a depreciation deduction, and recognize income from the same.
Business valuation and goodwill: A trademark that is registered and associated with a product enhances its overall business value, goodwill, and net worth in the industry. A trademark communicates its product’s quality assurance, distinct features, and the organization’s mission, and contributes to business growth.
For more information, one can visit Legalwiser. One can file for trademark registration themselves or can get help from websites like askyourprofessional.com, depending on their requirement.