A Trademark can be described as a name or a sign which provides the capability to not just identify but also to distinguish different goods, services and products provided by different manufacturers. Any unique or characteristic shapes, colours, pictures, letters, words, numerals, drawings, labels, logo types or combinations that are used to differentiate different goods or services can be considered as a trademark. Accordingly, these marks are either Word Marks or Logo/Device Marks. The protection available to each of them is variable and is to be adopted according to the needs of the Trademark owner.
Marks that are subject of trademark are names, Invented or Coined words, Numerals, Letters, Devices, Combination of Colours, Shape of Goods, Logo, Slogans, unique sound, signatures and marks which can be represented in three dimensions. Hence the Trademark is the exclusive right that is given so that it can prevent other parties from using the same or similar name for marketing identical or similar products to prevent any confusion in mind of a consumer.
The main objective of a trademark is to help consumers to identify a product (whether a good or a service) of a particular manufacturer so as to distinguish it from goods of competitors. Which eventually converts into reputation of the company by regularized usage, extensive branding and marketing activities.
Trademarks, when carefully adopted, applied for and registered, becomes an important asset. For instance, while considering applying for a device, it is important to break down any aspects of the device as well which you the Applicant may be interested in filing apart from the entire device mark.
What are the Pre-requisites for a mark to be a Trademark?
Marks that can be registered as trademark may be names, Invented or Coined words, Numerals, Letters, Devices, Combination of Colours, Shape of Goods, Logo type, Slogans, Signature, Three Dimensional Marks or Sound Marks.
The pre-requisite for a mark to qualify as a trademark is that the mark must be distinctive, that is, it must be capable of identifying the source of the particular goods/services. Generally courts have categorized the mark into four groups in order to pass the test of distinctiveness which is based on the relationship between the mark and the underlying product.: the mark can be arbitrary or fanciful, for ex: the Trademark Apple which has no relationship with computers.
The second group is that of a suggestive mark. A suggestive mark is one which suggests a quality or the characteristic of goods/services; such a trademark might also be called allusive for eg: Playboy a magazine brand. The third group is that of a descriptive mark. Descriptive mark is one which not only suggests but describes the characteristic or quality of the underlying product/service. The last and final type is that of a generic mark, which as the name suggests is generic and is not capable of distinguishing the goods and services. The general principle to test the distinctiveness of any mark, which the courts have adopted is based on the relationship between the mark and the underlying product is that, is the mark fanciful/arbitrary, generic, descriptive or suggestive in relation to the product.
The marks that belong to each of these categories are different and vary with regards to their individual distinctiveness and because of this the degree of protection that is afforded legally to the marks are dependent on the category that they fall in. The mark may not be completely unrelated to the product/services, and they may rather be suggestive to serve commercial purposes of an applicant, as well to receive higher degree of protection, as suggestive marks are considered more or less distinctive, and not descriptive, so they become quite close to be in category of fanciful or arbitrary marks.
A descriptive mark is a mark that directly depicts, rather than suggesting, a characteristic or quality of the goods or services for eg: Hotel Inn. In case of marks that describe the general category of the product or service, it is called as a generic mark, like for eg., the brand ?Apple? is generic forselling fruits or providing a food based service and hence it will not be allowed.
The legal implications of choosing a mark and the marketability of it may not always go hand in hand. As the strongest marks which may be allowed and accepted by the office may not always be the best mark for the purposes of branding. Therefore, it is important to bridge the gap and work hand in hand with a Trademark Attorney while adopting a particular mark. This also helps safeguards oneself from potential litigation as well as adopt a mark which will go through a relatively smooth prosecution.
The above scenario applies in case at the stage of adopting a mark. However, if a mark is already been in use, then the acquired distinctiveness of the mark allows to be registered.
What are the stages in a Trademark Filing?
The stages in a trademark registration are as follows:
This is the first stage where we need to do the preliminary searching of the trademark prior to filing of the trademark application. The searching is done to determine the objectionable trademarks which are mentioned in the register which would be similar, or descriptively similar mark, or phonetically similar to the proposed mark. Prior searching also will help to avoid objection from registry, opposition proceedings from interested third parties and even infringement suits. At the very least, helps the Trademark owner to be prepared as to what is in future and know where one is vulnerable to a suit.
In certain classes, there are certain prefixes and suffixes which become common to the trade and are filed in large numbers. In such circumstances, the adoption of the mark which has a good strength along with a initial Trademark search will help form the strategy and navigate the process of prosecution with ease and control.
The preliminary searching of the proposed mark would determine the strength of the mark as well. The search can be categorized into two ways one is the Word Mark Search and other is the Device Mark Search. A word mark search can be conducted by searching in specific goods and services falling within the class 1 to class 45.
The classification of goods and services in 45 classes is followed in India and worldwide in many jurisdictions is called the NICE Classification established under the NICE agreement of 1957.
The device mark searching is conducted in specific goods and services.
Filing of Trademark Application:
The filing of trademark can be done through two gateways: one is just filing it in India and the other one is the Madrid Protocol way which is done by filing one single application which is international and covers many countries, hence granting widespread protection rights for the trademark.
In this filing stage we need to fill the appropriate details in the application form and submit the trademark application along with the official fees. An application is incomplete without a Power of Attorney, so the application should be supplied with appropriate Power of Attorney in respect to an authorized person which shall enable him to file and prosecute Trademark Application.
The official filing fees while filing a Trademark application varies depending on the type of entity the applicant is. Individual Applicants, start ups etc enjoy a lower government fee for filing an application as compared to that of a large entity. It is with respect to this that even if the Applicant doesn’t belong to the above-mentioned categories, if registered with the Ministry of Micro, Small & Medium Enterprises, that also allows one to enjoy the lower filing fees.
At the stage of filing, a mark is to be decided as to whether it is a proposed to be used mark or whether the same has already been is use. If it is the latter, then it is advised to file a user affidavit to that effect at the time of filing the application, which helps with the prosecution of the Application down the line. This helps is maintaining a stronger mark, which also helps in the event of institution or defending opposition proceedings or infringement suits.
Defining the scope of what the Applicant would intend to file in the description of the goods and service is another important aspect.
A trademark application has to be filed in the appropriate TM office depending upon the jurisdiction of the Applicant/s. This will be the office to which all correspondences will be sent and received barring certain circumstances. The Trademark office in India is now allows for filing online and also accepts physical filing.
Prosecution of Trademark Application:
Previously, after a year or more of filing the application, an examination report used to be generated from the trademark registry and a response is filed to the examination report in a point by point fashion to overcome each of the objections. However, the Trademark registry is lately furnishing the Examination reports even as quickly as one month from the date of filing the application, if there are no formality objections. Thereby decreasing the time for prosecution. The grounds for objection is mainly on two aspects, whether the mark is distinctive or not, and whether the mark is same or similar with respect to any of the marks in use. The response to the Examination report is to be filed within 1 month of receiving the report.
In cases, the examiner is not satisfied with the response and still feel that we are not in compliance of the law with respect to the objections made, then he may call for a hearing in-order to make right decision on this aspect.
Once the Examiner has accepted the mark, the mark is advertised in the Trademark Journal and is open for Opposition from a third party. The period for which the mark is open for Opposition once it has been accepted and advertised is a period of 4 months. Once the same is exhausted, and the mark is unopposed, the Trademark Registration certificate is issued. However, in the event there is an opposition proceeding instituted, the mark, the proceedings have to run its course before the mark can be finally Registered. We have a separate page which talks about the Opposition proceedings in detail.
Post- Registration of Trademark:
The post-registration aspects of a Trademark include the renewal of trademark, trademark watch, trademark licensing, restoration and also rectification.
The trademark watches are done to protect the registered trademark from getting diluted or infringed. Dilution of trademark occurs when someone uses a well-known mark in such a way that this usage blurs distinctiveness of the mark. Dilution is a process in which the capacity of recognition or identification of goods or services is reduced, and this is done irrespective of the presence of any competition between any well-known mark owners and other parties, where there may be likelihood of mistake, confusion or deception.Inappropriate usage of Trademark or turning a blind eye towards an alleged infringement may result into dilution of Trademark, which will eventually lead to the denial of any further protection for Trademarks, either in common law or civil law system. Hence, Trademark management to identify identify any identical or similar mark being used, enforcing appropriate usage of the marks by vendors, employees, clients and other associates is of utmost importance to keep the Trademark Right aligned.