What is a trademark?
A trademark is a sign, symbol, or word that distinguishes the goods or services of one enterprise from that of another enterprise. According to Section 2(1)(zb) of the Trademark Act, 1999 of India, a trademark is a mark that is capable of being represented graphically and which is capable of distinguishing the goods or services of one person from that of another, this may include the shape of goods, packaging, and combination of colors.
Thus, any mark that lends a business its unique identity and by which consumers recognize the source of particular goods or services is a trademark.
Why is trademark registration essential?
A trademark allows consumers to recognize the source of a particular product or service. It reflects the identity of a business. The goodwill and reputation of a company are usually vested in the trademark. Registration of a trademark is vital as it works as a deterrent from any third party misusing it. Registering a trademark gives the owner of the trademark the exclusive right to use the mark. If any third party tries to misuse the mark, the owner of the mark can file a case for trademark infringement.
For example, the golden arch symbol of McDonald's is the best example of a symbol trademark. Just looking at the golden arch, consumers will know the source of the food they are consuming. They associate the symbol with quality. If a third party uses the symbol without the consent of McDonald's, the latter can sue for infringement of trademark, and it can also claim damages for the damage done to its goodwill.
What are the different types of marks?
There are four kinds of marks:
1. Fanciful and Arbitrary- fanciful and arbitrary terms make the strongest trademarks. The mark is no way describes the product or service attributed to it. While a fanciful mark is an entirely made-up word, an arbitrary made is a common word but is arbitrary in relation to the goods or services it represents. A fanciful or arbitrary mark presents the best choice for a trademark. APPLE for computers is an example of an arbitrary trademark. PEPSI is an example of a fanciful trademark.
2. Suggestive- suggestive marks indirectly describe the product or service they represent. The mark does not directly refer to or describe the product or service; it only indirectly hints towards some attributes of the product or service it represents. NETFLIX is an excellent example of a suggestive trademark.
3. Descriptive- a descriptive mark directly refers to and describes the product or service it represents. Descriptive words, statutorily, cannot be registered as trademarks. However, if the mark has attained distinctiveness or secondary meaning, it could be registered as a trademark. SUGARFREE as a sugar substitute is an example of a descriptive trademark.
4. Generic- a generic mark is a common word to name the product or service. For instance, the word PENCIL for a brand of pencils is a generic mark. Under no circumstance can a generic word be registered as a trademark. However, owing to years of continuous use, some brands have become household names. For example, the word XEROX for photocopying has become a generic word.
For reliable protection, it is best to choose a fanciful or arbitrary word as a trademark. Suggestive words make strong trademarks, i.e. Microsoft. A descriptive mark can only provide weak protection, whereas a generic mark is not registrable under any circumstance as a trademark.
What is the procedure for trademark registration?
Trademark Search: The first step, before initiating the process for registering a trademark is to conduct a trademark search. A trademark search helps you understand if there is a same or similar mark that is already registered. You may perform the trademark search online. However unique you think your trademark sounds, it is always better to conduct a trademark search before filing for registration to lessen the chances of opposition. Also, performing a trademark search will give you a fair idea about any marks that may be even remotely similar to the trademark you want to register.
Therefore, it is advisable to conduct the trademark search to check the trademark registry for any same or similar marks that may have previously registered. This search saves both your time and money.
Step 1: Trademark Application Filing:
After completing the trademark search, the next step is to file for trademark registration. You may apply for trademark registration either online or physically.
The following information is essential when you are submitting the trademark registration form:
Step 2: Trademark Examination:
An examiner will examine the application for any discrepancies after applying for a trademark. The examination report could take between two to four months from the date of applying. After reviewing, the Examiner may object on two grounds:
Absolute grounds- where the mark is devoid of distinctiveness or not capable of distinguishing the goods or services of one business from that of another. This objection usually happens if you have chosen a descriptive or a generic word as your trademark. For example, if you have selected LOSE as a trademark for your product that aids in weight loss, it will be objected under the absolute ground. That is why, as already mentioned, it is best to choose an arbitrary or fanciful mark as your trademark.
Relative grounds- where the mark is similar to an earlier trademark on the Trademarks Register. If your mark bears any similarity with an already registered mark, the Examiner will object to the relative grounds.
Your mark will proceed for advertisement in the Trademarks Journal if there is no objection.
Step 3: Response to the Examination Report:
You will have one month from the date of receipt of the objections to respond. Otherwise, the application is considered abandoned.
If you respond within a month and the Examiner accepts your response, the mark will proceed for advertisement in the Trademarks Journal.
If the Examiner has any further objections, then a show cause hearing will be issued to you. A show cause hearing involves an appearance before the Registrar of Trademarks/ Hearing Officer with the necessary documents and evidence to convince him to accept the registration of the mark. The hearing notice is usually sent 15 days before the date of hearing. If the Registrar of Trademarks/ Hearing Officer is convinced, he may send the mark for publication in the Trademarks Journal. If the Registrar of Trademarks/ Hearing Officer is not satisfied, then he may abandon the mark.
Step 4: Opposition to the registration of the mark:
Once the mark is advertised in the Trademarks Journal, any third party may oppose the mark within four months from the date of publication in the Trademarks Journal. Therefore, the opponent must send a notice of opposition to the Registry. If the Registry is satisfied with all the requirements, then the opposition notice is served to the Applicant. Upon the receipt of the notice of opposition, the Applicant must file a counter-statement within two months. If the Applicant does not file a counter-statement within two months, then the application is deemed to have been abandoned. After receiving the Notice of Opposition, the Opponent and Applicant can submit the evidence within the stipulated time. First, the opponent must file the proof in the form of an affidavit within two months of receiving the counter-statement.
The opponent may also choose to waive the filing Affidavit and may want to rely on the facts stated in the opposition notice. Within two months of receiving the evidence or the intimation of waiver, the Applicant must provide you with a proof in support of the application. The Applicant also has the option to waive presenting any evidence and may choose to rely on the facts stated in the counter-statement. Within one month of receiving the Applicant's evidence or the intimation of waiver, the opponent again has the option to produce more proof, if any. After the conclusion of the evidence submission stage, the Registry appoints a date for hearing and notifies both the parties. After hearing both the parties, the Registrar will decide as to whether the trademark can be registered or not. The aggrieved party has the option of appealing to the Intellectual Property Appellate Board.
If no opposition filed within this time, the mark would proceed for registration.
Step 5: Registration:
The trademark application reaches the final stage where the trademark is registered, and the Trade Mark Registry issues a soft copy of the registration certificate. The trademark is registered for ten years from the date of application and can be renewed periodically at the expiry of every ten years.
- by Intepat Team for Bonamark.com
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