This article provides a comprehensive guide for businesses in India to file a well-known trademark, covering key aspects such as trademark search, classification, and evidence of well-known status.
Introduction
Intellectual property (IP) comprises various rights that safeguard creators and innovators in different domains. Traditionally, IP is categorised into two main divisions: industrial property and copyright. Industrial property encompasses patents, trademarks, industrial designs, and place of origin designations, while copyright laws govern works of art, music, literature, and related rights of performers, phonogram makers, and broadcasters. These IP rights, collectively referred to as ‘intellectual property,’ grant exclusive privileges to the rights holders. It’s crucial to comprehend these rights, how to protect them, and ultimately leverage them for various purposes.
Origins of Trademarks
The history of trademarks is deeply intertwined with the development of commerce and human culture. Archaeological evidence reveals that symbols and marks were used in ancient civilisations like Egypt for superstitious and religious purposes. In the Greek and Roman eras, ‘potters marks’ distinguished the creators of specific vessels. These historical precedents laid the foundation for the modern concept of trademarks, representing a distinctive mark or symbol that can be exclusively owned.
What Are Well-known Trademarks
In India, Section 2(1)(zg) of the Trademarks Act, 1999, provides a definition for a well-known trademark. It identifies such a mark as one that has gained significant recognition among a substantial portion of the public who use goods or services associated with the mark. The usage of a well-known mark concerning other goods or services is likely to suggest a connection between those goods or services and the entity using the mark for the first mentioned goods or services.
Process of Filing a Well-Known Trademark
Determining whether a trademark attains ‘well-known’ status can involve the High Court of India, the Intellectual Property Appellate Board, or the Supreme Court of India. However, recent developments in the Trademark Rules, 2017 have streamlined the process. Rule 124 of these rules allows any interested party to apply online by completing Form TM-M and submitting requisite documents, including a statement supporting the application’s grounds for well-known status. Unlike lesser-known trademarks, well-known trademarks enjoy nationwide and cross-category protection, making them a valuable asset for businesses.
Online Trademark Registration Procedure
Registering a trademark in India is a meticulous process:
Step 1: Search for a Unique Brand Name
Conduct a thorough online search to ensure your chosen brand name is distinct and not already in use. Unique, memorable names are preferable.
Step 2: Prepare Your Trademark Application
Prepare essential documents, including evidence of trademark usage, applications or registrations, annual sales turnover, customer base, and advertising expenses.
Step 3: Submit Your Application
Submit your application either manually or electronically (Form TM-A). Electronic filing offers immediate online acknowledgment, while manual filing involves physical submission at a Trademark Registry office.
Step 4: Application Review
The Registrar will review your application, ensuring it meets legal requirements and does not conflict with existing trademarks.
Step 5: Publication in Trademark Journal
Upon approval, your trademark will be published in the official Indian trademark journal, and a 90-day window opens for potential opposition.
Step 6: Trademark Opposition
If any party opposes your trademark, a legal process ensues. If not, your application proceeds.
Step 7: Trademark Opposition Hearing
If a dispute arises, both parties present evidence, and a hearing is conducted. The Registrar decides on trademark registration.
Step 8: Obtain Trademark Registration Certificate
In case of no opposition or after resolution, the Registrar issues a Trademark Registration Certificate, officially confirming the trademark’s registration.
Status of Application of Trademark
The applicant receives an allocation number upon application submission, allowing tracking of the application’s status online. Trademark registration in India is valid for ten years, with renewal options. Additionally, a registered trademark can be leveraged for global protection by extending registration to other countries.
Once accepted, a trademark is officially registered, signifying its legal recognition and protection. The registration period begins from the application date and lasts for ten years. Trademarks can be renewed indefinitely. It’s crucial to note that having a trademark in India doesn’t grant any special rights outside the country.
Important Facts on Trademark Registration
Trademark registration is a pivotal asset for any business. It serves as a distinctive visual identifier, encompassing various elements like words, names, numbers, labels, logos, or colour arrangements. The rules governing trademarks and their registration fall under the Trademark Act, 1999. The Controller General of Patents, Designs and Trademarks, under the Ministry of Industry and Commerce, Government of India, is responsible for trademark registration in India.
Here are some vital aspects to consider regarding trademark registration:
A Pictorial Representation: Trademarks encompass a wide variety of elements, including Word Marks, Service Marks, Logos, Symbols, Shapes of Goods, Series Marks, Collective Marks, Certification Marks, Geographical Indicators, Pattern Marks, Sound Marks, Colour Marks, and Three-Dimensional Marks.
Intangible Assets: Trademarks serve as intangible assets that can be sold, licensed, or transferred, adding significant value to a business.
Legal Shield Against Infringement: Trademark owners have legal recourse against any infringement of their logo, brand, or related phrases. Unauthorised use can lead to legal action.
Trademark Search: Conducting a trademark search is essential to ensure uniqueness. This search can be performed through the official government database (Indian Trademark Registry) or via private companies offering such services.
Selection of Class: India has 45 distinct industries, each designated as a ‘class.’ Trademarks must be filed under the appropriate class, with 34 relating to products and 11 to services.
Transparent and Clear Registration Requirements: Although trademark registration is optional, it provides conclusive proof of ownership and benefits the registrant in legal proceedings.
Credibility and Renewal: Trademarks are valid for ten years and can be renewed indefinitely. However, it’s important to note that one year before the trademark’s expiration is the absolute deadline for initiating the renewal process. Failure to renew on time may result in the trademark being invalidated. In such cases, the trademark can be reinstated by filing the necessary paperwork with the relevant trademark office.
Symbols Used in Trademarks
In the world of trademarks, various symbols convey essential information about the status and protection of a brand. Understanding these symbols is crucial for both trademark owners and consumers:
Trade and Service (SM): This symbol indicates that a trademark registration application has been filed but is pending processing. It serves as a warning to potential infringers, though it lacks definitive legal significance until the application is authorised.
The ‘R’ Symbol: Once a trademark application is granted, the registered trademark ‘R’ symbol can be used to showcase the brand’s legal recognition. A registered trademark implies that any unauthorised use of the mark is illegal and subject to legal consequences. While the use of the ‘R’ sign is optional, it offers protection in cases where counterfeiters use the mark without permission. This symbol shifts the burden of proof to the trademark owner, who must demonstrate that the infringer knowingly used the registered brand without authorisation.
The ‘C’ Symbol: The ‘C’ symbol is commonly employed to indicate that the owner of a creative work holds the copyright. This symbol is used for various creative works such as art, photographs, videos, books, and computer programs. It should be accompanied by the copyright holder’s name and the year of the work’s initial publication in the nation where it was copyrighted.
Benefits of Trademark Registration in India
Trademark registration offers a multitude of benefits for businesses operating in India:
Legal Protection: Registering a trademark provides it with the status of intellectual property and the associated legal protections. Owners gain the exclusive right to use the mark for the goods or services it represents.
Use of the TM Symbol: The trademark application process allows the use of the TM symbol on products, indicating a pending trademark registration. This signals to competitors and consumers that the brand is legally protected.
Brand Distinction: A registered trademark sets a product apart from competitors’ offerings, enhancing visibility and customer recognition.
Consumer Trust: A well-recognised brand fosters trust among consumers. When people are familiar with a brand, they are more likely to trust and choose its products or services.
Asset Value: A registered trademark is an intangible asset that can be bought, sold, licensed, or used as collateral for loans. It contributes to a company’s overall value and worth.
Business Expansion: Trademarks registered in India can serve as a foundation for international expansion. Owners can seek registration in other countries based on their Indian trademark.
Product Sales and Brand Recognition: Recognisable brands can drive increased sales and brand recognition, building a loyal customer base.
Remedies for Infringement of a Well-Known Trademark
In cases of trademark infringement, both civil and criminal remedies are available:
Civil Remedies:
Interlocutory/Temporary/Ad-interim Injunction: This is a discretionary remedy that restrains a party from taking action until a legal matter is resolved.
Mareva Injunction: This type of injunction prevents a defendant from selling or transferring property until a trial concludes.
Anton Piller Order: This order allows the plaintiff access to the defendant’s premises to inspect, make copies of, and secure relevant documents and infringing items.
John Doe Order: These are search and seizure warrants issued by a court against unidentified defendants.
Permanent/Perpetual Injunction: A permanent injunction prohibits a person from engaging in certain infringing acts indefinitely.
Damages or Accounts of Profits: Compensation can be awarded to the plaintiff for losses due to the defendant’s actions. ‘Accounts of profits’ require the defendant to pay the plaintiff the profits earned through infringing conduct.
Delivery Up and Destruction: Defendants may be required to destroy infringing items or surrender them to the plaintiff.
Criminal Remedies:
Infringements under the Act include activities such as manufacturing or possessing devices for forging trademarks and using fraudulent trade descriptions. These are considered ‘cognisable’ offences, allowing police to not only seize infringing products during raids but also apprehend those responsible. Sections 103 and 104 of the Act govern complaints for criminal remedies. The Magistrate Court serves as the venue for filing such complaints.
Conclusion
Understanding the intricacies of well-known trademarks, their registration process, and the remedies available in case of infringement is essential for businesses operating in India. Trademark registration not only protects brands but also offers numerous advantages, including legal safeguards, increased brand recognition, and potential for international expansion. Whether through civil or criminal remedies, the Indian legal framework provides mechanisms to uphold the rights of trademark owners, ensuring the integrity of their brands and intellectual property.
FAQs
What are the benefits of a well-known trademark?
The foremost advantage of a renowned trademark lies in its ability to foster brand recognition and retention. Even within competitive and bustling market environments, a well-established mark effortlessly captures the attention of the public. This heightened recognition serves as a cornerstone for fortifying brand identity and cultivating steadfast customer allegiance.
What is the most important function of a trademark?
The trademark assures the consumer or end-user of the precise source of the trademarked products or services. It empowers consumers to differentiate the trademarked goods or services from those originating elsewhere, eliminating any potential for confusion.
What is one of the famous trademarks?
Notable trademarks include APPLE, COCA-COLA, MCDONALDS, and NIKE. These renowned trademarks benefit from extensive legal safeguards due to their increased likelihood of being linked and retained in the public's memory.
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