Notes on Trademark Law in India

Trademarks, in general terminology, would be any visual mark that is being represented graphically. Trademark can also be distinguished from any other good manufactured or from a mark that any other person is already being dealt with.

Trademark is an essential mark to the owner as it distinguishes his product from another product, thereby guaranteeing the product’s quality and thereby an image of the product is created. Trademark in simple context makes sure that the mark used is distinctively different from any other mark, thereby not creating any confusion in the general public’s mind.

The unique feature of a trademark is that, if there is an infringement, proper judicial action could be taken for the same even if the trademark is not registered but has a well-known identity in the public’s class.

E.g., Let us assume the brand Maybelline New York is not registered. And if another manufacturer uses the same name as it is not registered, then the former can sue him as his brand is a well-known trademark because his product is in the market for a very long period.

Another distinctive character of trademarks from all the other Intellectual Properties (IP) like Copyright, Patent is marked can always be renewed. The period of a registered trademark is ten years and can be renewed for five years every time on its expiry, unlike other IP’s

There are certain forms of the trademark; a few of them are listed below.

Letter Mark: As the title, itself suggests to us the meaning, it means a mark that includes letters are called a letter mark. The famous ones like IBM or LG are examples of letter mark.

Color Combination: When the mark has a specific color combination to distinguish itself from any other mark, it is a color combination mark. One of the significant examples of this is MC Donald’s, and it has a color combination of red and yellow.

The shape of goods: Any shape of the products/things could be registered. E.g., if there is the unique shape of soap or toothpaste, the same can be registered.

However, the list is illustrative and not exhaustive.

Certain other marks are mentioned explicitly in the trademarks Act. 1999 called Collective Trade Marks and Service Marks where the former means a mark which is a species of the trademark which can be registered where the latter is the one where a mark distinguishes one service from another service.

Another essential trademark is a Well known trademark, which means a trademark which either registered or not has become a substantial segment in public and has individual goodwill and reputation. In contrast, a certification mark is a kind of trademark where the mark does not indicate the trade origin of the mark. Still, it indicates if the good or product is of a certain quantity or quality or accuracy like the ISI mark.

Registration of Trademark

Any person who claims to be the owner of the mark used by him or proposed to be used by him can get the mark registered under the Trademarks Act. A single application will suffice for a different class of goods and services.

Procedure for Application

Once the proprietor seeks the trademark, he has to apply it to the trademark registrar to register the mark. The registrar has the right to either accept or reject the application based on absolute and relative grounds for refusal under Sec 9 and 11, respectively. If the registrar refuses the application, then the refusal has to be communicated to the applicant for such refusal.

Suppose the registrar accepts the application. In that case, the mark is to be advertised by the registrar in the trademark journal where it invites any opposition from any interested person who thinks if the mark is registered, it will affect his already existing mark. The opposition has to reply within three months from the date of application with the prescribed form and prescribed fee. The registrar then hears both sides, and if the decision is in favor of the applicant, the mark is then granted to the applicant.

However, the mark has to be granted to the applicant only if it has a distinctive character that does not merely consist of a mark that serves in the trade to designate the kind, quality, or quantity.

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Written By

DMA Advocates Team