To secure trademark registration, your mark must be distinctive and capable of distinguishing your goods or services from others in the marketplace. It should not conflict with existing trademarks, and meeting these eligibility criteria is important for a successful trademark application.
Know What is Trademark Registration
Trademark registration is a vital legal process that offers protection to unique symbols, names, or logos associated with products or services. By registering a trademark, businesses can prevent unauthorised use of their distinctive brand identifiers, ensuring they maintain a unique and recognisable presence in the marketplace. This not only solidifies brand identity but also transforms the trademark into a valuable business asset.
Classes of Trademark Classification
There are different classes of trademark registration, we will give you a summary in a nutshell:
Goods:
Class 1: Chemicals used in industry, science, and photography.
Class 2: Paints, varnishes, and preservatives against rust.
Class 3: Cosmetics, cleaning preparations, and non-medicated soaps.
… and so on up to Class 34, which includes tobacco, matches, and smokers’ articles.
Services:
Class 35: Advertising, business management, and office functions.
Class 36: Insurance, financial affairs, and real estate affairs.
Class 37: Building construction, repair, and installation services.
… up to Class 45, which covers legal, security, and personal social services.
Eligibility Criteria for Different Trademark Registrations
Joint Owners: If a company has joint owners, they can apply for a trademark. Both names should appear on the application.
Proprietorship Firm: A sole proprietor can register a trademark under their name, excluding the names of the business and proprietorship. The application will treat the business and proprietorship names as separate entries.
Partnership Firm: This refers to businesses run jointly by two or more individuals, sharing profits either equally or based on agreements, as per the Indian Partnership Act.
Limited Liability Partnership (LLP): An LLP, having its distinct legal identity, can apply for a trademark under its name. Individual partners are not the direct applicants.
Indian Company: Any type of Indian company should file the trademark application under the company’s name, given its separate legal identity. Thus, company directors cannot apply as individual trademark holders.
Society or Trust: Trusts are formed through legal agreements with nominated trustees overseeing assets and operations, while societies arise when individuals unite for a shared purpose. Both entities can register a trademark, but it should be on the trust or society’s behalf.
Individuals: Any person can apply for a trademark to protect unique symbols or words under their name, irrespective of whether they run a business.
Criteria for Trademark Registration: Distinctiveness, Non-descriptiveness, and Non-generic Nature
Registering a trademark is not as straightforward as simply filing an application. The mark itself must meet several criteria to be eligible for registration.
1. Distinctiveness
Distinctiveness is at the heart of trademark eligibility. A mark must be distinctive to serve its primary purpose: to identify the source of a product or service. Trademarks can be categorised into the following based on their distinctiveness:
Generic: These marks are the lowest on the distinctiveness scale and cannot be trademarked. Examples include terms like computer or shoe when used in relation to those respective products.
Descriptive: These marks merely describe a feature, function, or characteristic of the products/services. For example, Cold and Creamy for ice cream is descriptive.
Suggestive: These are inherently distinctive and hint at a quality or feature of the product or service without describing it outright. Coppertone for suntan lotion can be considered suggestive.
Arbitrary: These are words that have a common meaning but are used in a context unrelated to that meaning. Apple, for instance, when used in relation to computers, is arbitrary.
Fanciful: These are coined or made-up words with no prior meaning. Examples include Kodak and Exxon. They are inherently distinctive.
2. Non-descriptiveness
If a mark merely describes the product or service it represents, it may be deemed ineligible for registration. The rationale is that other businesses should be free to use descriptive terms to describe their products without fear of infringement. However, over time, if a descriptive term acquires distinctiveness in the market, it might be eligible for registration based on its secondary meaning.
For instance, while Sharp as a brand name for knives would be considered descriptive, its use as a name for a brand of electronics is not. Moreover, even if a term begins as descriptive, it can gain protection if over time consumers come to recognise it as associated with a particular brand (e.g., Windows for Microsoft’s operating system).
3. Non-generic Nature
Generic terms are the antithesis of trademarks. They are terms that the public recognises as the default name for a product or service, rather than an indicator of source or brand. For example, you cannot trademark the term car for vehicles or bread for a type of baked good. Such terms belong to the public domain and cannot be monopolised by any single entity. Importantly, even a strong and distinctive trademark can become generic over time if the public starts using it as the generic name for a product or service. This process is called genericide, and brands like Aspirin in some jurisdictions have fallen victim to it.
Conclusion
Trademark registration is a powerful tool for businesses to protect their brand identity. However, not every mark can be registered. A deep understanding of distinctiveness, non-descriptiveness, and the non-generic nature of a mark is essential when considering trademark registration. Always consult with a trademark attorney to ensure that your mark meets all the necessary criteria and to navigate the complexities of the registration process.
FAQs on Trademark Registration
What are the advantages of a trademark for its owner?
A trademark offers legal protection, ensuring the owner has exclusive rights to use it, boosting brand recognition, and serving as a valuable business asset.
Is it possible to use a trademark without registering it?
Yes, one can use a trademark without registering, but it won't provide the legal protections that a registered mark would offer.
For what duration is a trademark registration valid?
Typically, a trademark registration is valid for 10 years from the date of registration.
Will a trademark lapse if it remains unused?
Yes, if a trademark is not used for a continuous period, usually around 3-5 years, it may become vulnerable to cancellation for non-use.
How often can you renew a trademark?
A trademark can be renewed indefinitely, typically every 10 years, as long as the renewal fees are paid and other requirements are met.
