P R E S E N TAT I

O N O N
T R A D E M A R K
 Definition of Trademark

Types of Trademark

Function and Value of Trademark

Practical Aspects

What to avoid and remember when selecting a TM

OVERVIEW OF India Trademark Law

PRESENTATION Trademark Classification in India

Trademark Registration

Tenure and Infringement

Types of Trademark in detail

TRIPS provisions on Trademark

Conclusion
Trademark:

• A trademark is a distinctive sign or

indicator of some kind which is used
by an individual, business org. Or
other legal entity to uniquely identify
the source of its products and/or
services to consumers, and to
distinguish its products or services
from those of other entities.
• A sign distinguishing goods or
services produced or sold by one
enterprise(from those of other
enterprises).
• A trademark is made of any
distinctive words, letters, shapes,
numerals, colors, logotypes, labels
etc.
Types of
Trademarks :
• Trademarks : To distinguish
goods
• Service marks : To
distinguish services
• Collective marks : To
distinguish goods or
services by members of
association
• Certification marks
• Well known marks :
benefit from
stronger protection
• Tradename(Brand name)
Function and Value of Trademark :
Function : Value :
• Allows companies to mark • A marketing tool.
a TERRITORY, EXPRESSING • A source of revenue through
specific functions among licensing .
similar products in the market.
• A crucial component of
• Ensures that consumers can franchising agreements.
identify a line of products.
• Useful for obtaining banks or
• Ensures extension of the mark third part finance.
through licensing or
franchising process. • A valuable business asset.
 Create or Create or buy a trademark (after searching worldwide
to find out that there are no similar registered ones -
buy avoid claims- refusals or oppositions)

Protect your trademark through your national or

Protect regional office and then extend it to the world (WIPO
Madrid & Protocol System)

Practical
Aspects : Use and Use and maintain your trademark(s) (paying fees,
maintain following notification of refusals, extending territory)

Enforce your trademark(s), innovate (develop new

Enforce products)
What to avoid or remember when
selecting a trademark :
Avoid : Remember :
• Create inherently distinctive mark.
• Generic terms : CHAIR to sell chairs
• Think about fanciful names as: “Kodak” –
• Descriptive terms : SWEET to sell Arbitrary marks and logos as: “apple” for
chocolates. computers – Suggestive marks as : SUNNY
for heaters
• Deceptive terms : “ORWOOLA” or • A mark easy to memorize and pronounce,
“Pure wool” for 100% synthetic with a positive connotation and that fits
material. product or image of the business
• Marks and terms contrary to public • Has no legal restrictions or reasons for
rejection – TM search>not identical or
order/morality. confusingly similar to existing
• Do not use flags, armorial bearings, • Suitable for export markets with a
official hallmarks, emblems without corresponding domain name which is not
a legal authorization. already used
 • Indian trademark law provides protection to
trademarks statutorily under the Trademark Act,
1999 and also under the common law remedy of
Passing Off
• Passing off is a common law tort which can be used
to enforce unregistered trademark rights. The tort of

Indian passing off protects the goodwill of a trader from a

misrepresentation that causes damage to goodwill

Trademark
• Statutory protection of trademark is administered by
the Controller General Of Patents, Designs and Trade
Marks, a government agency which reports to the

Law :
Department of Industrial Policy and Promotion(DIPP),
under the Ministry of Commerce and Industry
• The law of trademark deals with the mechanism of
registration, protection of trademark and prevention
of fraudulent trademark
• The law also provides for the rights acquired by
registration of trademark, modes of transfer and
assignment of the rights, nature of infringements,
penalties for such infringement and remedies
available to the owner in case of such infringement.
Trademark Classification in India : Trademark in India is classified in about 45
different classes, which includes chemical substances used in industry, paints, lubricants
machine and machine tools, medical and surgical instruments, stationary, lather,
household, furniture, textiles, games, beverages preparatory material, building material,
sanitary material, and hand tools, other scientific and educational products. These
classes again are further sub-divided. The main objective of trademark classification is to
group together the similar nature of goods and services. Here are the classes for product
and for services.
Products : Services :
Class 1 (Chemicals) ◈ Class 2 (Paints) ◈ Class 3
(Cosmetics and Cleaning Preparations) ◈ Class 4 Class 35 (Advertising and
(Lubricants and Fuels) ◈ Class 5
(Pharmaceuticals) ◈ Class 6 (Metal Goods)
Business) ◈ Class 36 (Insurance
◈ Class 7 (Machinery) ◈ Class 8 (Hand Tools) and Financial) ◈ Class 37
◈ Class 9 (Electrical and Scientific Apparatus)
◈ Class 10 (Medical Apparatus) ◈ Class 11
(Building, Construction and
(Environmental Control Apparatus) ◈ Class 12 Repair) ◈ Class 38
(Vehicles) ◈ Class 13 (Firearms)  Class 14
(Jewelry) ◈ Class 15 (Musical Instruments)
(Telecommunication) ◈ Class 39
◈ Class 16 (Paper Goods and Printed Matter) (Transportation and Storage)
◈ Class 17 (Rubber Goods) ◈ Class 18 (Leather
Goods) ◈ Class 19 (Non-metallic Building
◈ Class 40 (Treatment of
Materials) ◈ Class 20 (Furniture and Articles Not Materials) ◈ Class 41 (Education
Otherwise Classified) ◈ Class 21 (Housewares and Entertainment) ◈ Class 42
and Glass) ◈ Class 22 (Cordage and Fibers)
◈ Class 23 (Yarns and Threads) ◈ Class 24 (Computer, Scientific and Legal)
(Fabrics) ◈ Class 25 (Clothing) ◈ Class 26 (Fancy ◈ Class 43 (Hotels and
Goods) ◈ Class 27 (Floor Coverings) ◈ Class 28
(Toys and Sporting Goods) ◈ Class 29 (Meats and Restaurants) ◈ Class 44
 WHAT ARE THE TYPES OF TRADEMARKS
THAT CAN BE REGISTERED ?
Under the Indian trademark law the following are the
types of trademarks that can be registered:
• Product trademarks: are those that are affixed to
identify goods.
• Service trademarks: are used to identify the
services of an entity, such as the trademark for a
broadcasting service, retails outlet, etc. They are
used in advertising for services.
• Certification trademarks: are those that are capable
of distinguishing the goods or services in connection

Trademark
with which it is used in the course of trade and
which are certified by the proprietor with regard to
their origin, material, the method of manufacture,
the quality or other specific features.

Registratio • Collective trademarks: are registered in the name of

groups, associations or other organizations for the

n
use of members of the group in their commercial
activities to indicate their membership of the group.
Advantages of
Trademark Registration
Protects your hard earned goodwill in the business

Protects your Name / Brand Name from being used in a same or

similar fashion, by any other business firm, thus discourages others
from cashing on your well-built goodwill .
Gives your products a status of .Branded Goods.

Gives an impression to your customers that the company is selling

some standard Products or Services

The exclusive right to the use of the trade mark in relation to the
goods or services in respect of which the trade mark is registered.

To obtain relief in respect of infringement (misuse by others) of the

trade mark.

Power to assign (transfer) the trade mark to others for consideration.

 1. Filing of an application for registration by a person
claiming to be the proprietor of a trademark, in
the office of the Trade mark Registry, within the
territorial limits of the place of business in India.
2. Examination of the application by the Registrar to
ascertain whether it is distinctive and does not
conflict with existing registered or pending

Procedure/ 3.
trademarks and examination report is issued.
Publication of the application after or before

Steps for acceptance of the application in the Trademark

Journal.

Trademark 4. After publication if any person gives notice of his

opposition to the registration within three months
which may be extended to the maximum of one
Registration 5.
month.
If the opposition has been decided in favour of the
applicant of the registration of trademark, the
Registrar shall register the Trademark.
6. On the registration of the Trademark the Registrar
shall issue to the applicant a Trademark
Registration
7. Today, as per the Trademark Rules, 2002, the
application fees (similar to a tax) are Rs. 3500 per
trademark.
Term/Duration and Infringement of
Trademark :
Term/Duration of a
Trademark in India Trademark Infringement
The term of registration of trademark is 10 • Trademark Infringement is a violation of
(Ten) years, but may be renewed subject exclusive rights attaching to a trademark
to the payment of the prescribed fee, in without the authorization of the trademark
owner or any licensee. Trademark
accordance with the provisions of the infringement mostly occurs when a person
Trademarks Act, 1999. An application for uses a trademark which may be either a
renewal of a trademark can be filed within symbol or a design, with resembles to the
six months from Constantia (Body) the products owned by the other party. The
expiry of the last registration of trademark owner may begin a legal
trademark. proceeding against a party, which infringes its
registration.
Use of the .TM. and ® symbols
• Offences shall be punishable with
Generally, one who has filed an application imprisonment for a term of minimum of six
(pending registration) can use the TM months but which may extend to three years
(trademark) designation with the mark to and with a minimum fine of fifty thousand
alert the public of his exclusive claim. The rupees but which may extend to two lakh
claim may or may not be valid. The rupees or more. For adequate and special
reasons mentioned in the judgement, the
registration symbol, ®,may only be used court may impose a sentence of imprisonment
In upcoming slides we will learn
about various types of trademarks
in detail and TRIPS agreement in
case of Trademark
 Product Mark :
• A product mark is similar to a trademark.
The only difference is, it refers to
trademarks related to products or goods and
not services. It is used to identify the source
of a product and to distinguish a
manufacturer’s products from others. On the
whole, a trademark is an important means
to protect the goodwill and reputation of a
Business.
• The application for the trademark can be
filed within few days and “TM” symbol can
be used. The time required for trademark
registry, to complete formalities is generally
around 18 to 24 months. The ® (Registered
symbol) can be used next to the trademark
once the trademark is registered and
registration certificate is issued. Once
registered, a trademark will be valid for 10
years from the date of filing, which can be
renewed time to time.
• So product marks are those that are
attached to distinguish the goods or services
of one manufacturer from that of another.
Service Mark :
• A service mark is the same as a trademark,
but instead of a particular product, it identifies
and differentiates the source of a service. For
example, a company such as Yahoo may brand
certain products with a trademark, but use a
service mark on the internet searching service
that it provides. It is denoted by ‘SM’.
• A service mark is nothing but a mark that
distinguishes the services of one
proprietor/owner from that of another. Service
marks do not represent goods, but the services
offered by the company. They are used in a
service business where actual goods under the
mark are not traded. Companies providing
services like computer hardware and software
assembly, restaurant and hotel services,
courier and transport, beauty and health care,
advertising, publishing, etc. are now in a
position to protect their names and marks
from being misused by others. The rules
governing for the service marks are
fundamentally the same as
Collective Mark :
• These are the trademarks used by a group of companies
and can be protected by the group collectively. Collective
marks are used to inform the public about a particular
characteristic of the product for which the collective mark
is used. The owner of such marks may be an association or
public institution or it may be cooperative. Collective
marks are also used to promote particular products which
have certain characteristics specific to the producer in a
given field. Thus, a collective trademark can be used by a
more than one trader, provided that the trader belongs to
the association.
• The trader associated with a particular collective mark is
responsible for ensuring the compliance with certain
standards which are fixed in the regulations concerning the
use of the collective mark, by its members. Thus, the
purpose of the collective mark is to inform the public about
certain features of the product for which the collective
mark is used. One example of the collective mark is the
mark “CPA”, which is used to indicate members of the
Society of Certified Public Accountants.
Certification Mark :
• It is a sign indicating that the goods/services are
certified by the owner of the sign in terms of
origin, material, quality, accuracy or other
characteristics. This differs from a standard
trademark whose function is to distinguish the
goods/services that originate from a single
company.
• In short, certification marks are used to define
the standard. They guarantee the consumers
that the product meets certain prescribed
standards. The occurrence of a certification
mark on a product indicates that the product
has gone through the standard tests specified.
They guarantee the consumers that the
manufacturers have gone through an audit
process to ensure the desired quality of the
product/service. For example, Food products,
Toys, Cosmetics, Electrical goods, etc. have such
marking that specifies the safety and the quality
of the product.
Shape Mark :
• According to the Indian Trademarks Act, 1999, a
trademark may also include the shape of goods,
their packaging, so long as it is possible to
graphically represent the shape clearly. This helps
in distinguishing the goods sold under such
trademark from those of another manufacturer.
The new Trade Marks Ordinance (Cap. 559)
continues to allow registration of such marks.
• When the shape of goods, packaging have some
distinctive feature it can be registered. For
example, Ornamental Lamps. In certain cases, the
(three-dimensional) shape of a product or
packaging can be a trademark (for example a
specially designed bottle of perfume).
• In a nutshell, Shape Mark has facilitated promotion
of products and emerged into the trademark type
after the technological advancement of graphics.
Any graphical representation which is able to
make a difference amongst the products can be
shape marked.
Pattern Mark :
• These are the marks consisting of a pattern
which is capable of identifying the goods or
services as originating from a particular
undertaking and thus distinguishing it from
those of other undertakings. Such
goods/services are registrable as Pattern
Marks.
• The procedure of evaluating uniqueness of
pattern marks is same as that of other types of
marks. Pattern marks that are descriptive or
indistinctive are objectionable because they
fail to serve as an identifier of trade source.
Such goods/services would not be accepted for
registration without evidence of uniqueness. In
cases where the pattern mark has become
identified in the minds of the public with a
particular undertaking’s goods or services, it
receives acquired distinctiveness and can
register for Pattern Mark.
• Thus, Pattern Trademark is a trademark
wherein the pattern is able to distinguish the
product from other brands.
Sound Mark :
• Sometimes, the sound that plays in the
advertisement becomes so well known
that when people hear it they
immediately know what product/service it
refers to. In such cases, the sound may be
regarded as a trademark and is eligible
for registration.
• A sound mark is a trademark where a
particular sound does the function of
uniquely identifying the origin of a
product or a service. In the case of sound
marks, a certain sound is associated with
a company or its product or services —
for example, the MGM’s roar of a lion.
• The sound logo, technically referred to as
audio mnemonic, is one of the tools of
sound branding, along with the brand
music. A sound logo is a short distinctive
melody mostly positioned at the
beginning or ending of a commercial. It
can be seen as the acoustic equivalent of
a visual logo. Often a combination of both
types of logo is used to enforce the
TRIPS provisions on Trademark :
The obligations of members with respect to the availability,
scope and permissible limitations of trademark protection are
contained in Articles 15 to 21 of Part II of the TRIPS Agreement,
and also include the substantive provisions of the Paris
Convention incorporated into the Agreement by the reference
in Article 2.1. These provisions also have to be read in the
context of provisions in other parts of the TRIPS Agreement.

1. What subject matter is to be protected and what are the conditions for
registration?
(a) Subject matter of trademark
protection
(i) Distinctive signs According to Article 15.1 of the TRIPS Agreement, any sign, or any
combination of signs, capable of distinguishing the goods and services of one
‘undertaking’ from those of other undertakings must be eligible for trademark protection.
These signs could be words including personal names, letters, numerals, figurative
elements and combinations of colors, as well as any combination of signs. This means
that in principle there is no limitation on the type of signs that can constitute trademarks
under the TRIPS Agreement. Rather, the emphasis is on distinctiveness – i.e. the ability of
the signs to distinguish products of one enterprise from those of others. Members can
require that signs be visually perceptible to be registered as trademarks, leaving them
free to determine whether or not to allow the registration as trademarks of signs such as
(ii) Trade
smells andnames
sounds.The
Thenotion
latter of
area often
trade referred
name is to
interpreted in differenttrademarks.
as ‘non-traditional’ ways in existing
legislations – the term ‘business name’ is sometimes used. It can generally be defined as
being the name or designation identifying the enterprise of a natural or legal person – for
instance, Maria Luisa might call her bakery ‘Marisa’s Cakeshop’. The protection of trade
names has been held by the Appellate Body to also fall within the scope of the TRIPS
Agreement by virtue of the incorporation of Article 8 of the Paris Convention into the
TRIPS Agreement by its Article 2.1. 37 Neither the Paris Convention nor the TRIPS
Agreement specify in detail the level of protection that must be applied, so national
practice can differ considerably, but it is clear that no formalities are required, and that
essentially the same protection must be available to foreign nationals’ business names as
for those of domestic nationals.
(iii) Collective marks and certification marks According to Article 7bis of the Paris
Convention, members must also accept the registration of signs as collective marks. This means
that signs can be registered not only with respect to products from one enterprise, but also with
respect to those of a group of enterprises or an association. These enterprises can then own,
use and defend the trademark collectively. The collective mark may be used to show that an
individual producer or trader is a member of a trade or industry association, and to distinguish
its products from those of other undertakings. Such marks are often used to distinguish the
geographical origin or other common characteristics of products of different enterprises which
use the collective mark under the control of its owner, or to certify that the product bearing the
mark has certain characteristics, such as a particular mode of production, regional or other
origin, or fulfils certain standards of quality. Such marks are similar to certification marks or
guarantee marks – marks that certify or guarantee certain properties or the origin of a product –
but are technically different under some national laws. For example, a certification mark could
be owned by a separate certifying authority, rather than an association of traders. But these
kinds of marks are often grouped together as having a similar character and function. Examples
(b) Conditions for registration as a
of terms that have been registered as collective marks in the European Union are ‘Bayerischer
trademark
Bier’, ‘Royal Thai Silk’ (figurative) and ‘Madeira’.
(i) Priority The right of priority ensures that on the basis of a regular first trademark
application filed in a member, the applicant (or the successor in title) may, within a specified
period of time, apply for registration of his or her trademark in another member using the
same priority date as the first application. According to Article 4 of the Paris Convention, the
priority period for trademarks is six months from the date of the first filing of that trademark
in a member. During the six-month priority period, applications of the owner for the same
trademark in all other members will be regarded as if they had been filed on the same day as
the first application and therefore enjoy priority status with respect to any actions (such as
(ii) Publishing requirement According to Article 15.5 of the TRIPS Agreement, members must
publish a trademark either before, or promptly after, it is registered. They must further provide
for a reasonable opportunity to request the cancellation of the trademark, so that interested
parties can challenge a registration. In addition, members may, but are not obliged to, allow for
trademark opposition, a procedure practiced in many members where a trademark can be
challenged
(iii) after
Reasons it is may
which accepted by the trademark
not constitute groundsoffice,
forbut before
refusal ofittrademark
is registered.
registrations
According to the rules laid down in the Paris Convention and the TRIPS Agreement, a number
of reasons may not constitute grounds for the refusal of a trademark registration in a member:
‘Failure to register in the country of origin’
‘Form of the mark, if already registered in other Member countries’
‘Nature of the goods or services identified by the trademark’
‘Actual use of the trademark at the time of registration’
(iv) Reasons which may constitute grounds for refusal of trademark registrations
The TRIPS Agreement recognizes in Article 15.2 that members may also refuse the registration
of a trademark in their territory on grounds other than those addressed in Article 15.1 (e.g.
lack of distinctiveness or visual perceptibility), provided they do not derogate from the
provisions of the Paris Convention.
(v) Reasons which must constitute grounds for refusal or invalidation of trademark
registration Finally, the regime of trademark protection under the TRIPS Agreement provides
for a number of situations in which members must refuse or invalidate the registration of a
trademark
‘Well-known marks’ ‘Geographical indications’ ‘State emblems and official hallmarks’
 2. What rights are to be
conferred?
(a) General The TRIPS Agreement also stipulates which rights a trademark owner must enjoy in
a member (Article 16) and what type of exceptions to these rights are permissible (Article 17). As
noted in Module I, the TRIPS Agreement is a minimum standards agreement. This means that the
rights described here only constitute the minimum level of protection required by this
international agreement, and that members may – and in many cases actually do – provide for
higher or more stringent protection in their national legislation. Therefore, in order to establish
what rights a trademark owner has in any individual member, reference should be made to the
domestic laws of that member.
(b) Trademark rights
‘exclusive right to prevent’ ‘from using in the course of trade’ ‘where such use would
result in the likelihood of confusion’
(c) Rights with respect to well-known trademarks well-known trademarks are those
that, without necessarily being registered in a member, are well known as belonging to a
particular trademark owner. Such marks enjoy stronger protection than normal trademarks.
According to Article 6bis of the Paris Convention, as incorporated into the TRIPS Agreement,
the registration of a sign as a trademark must be refused or cancelled, and its use
prohibited in a member, if that trademark is liable to cause confusion with a mark that is
considered well known in that member and used for identical or similar goods – whether or
not the well-known trademark is registered in that country. Such refusal, cancellation or
prohibition of use should be affected ex officio by the competent authority of a member if its
legislation permits its authorities to act on their own initiative. Otherwise such action must
(d) Licensing and assignment of rights The TRIPS Agreement provides in Article 21 that,
while it is up to each member to prescribe conditions on the licensing and assignment of
trademark rights, an owner of a registered trademark must always be able to assign the
trademark with or without the transfer of the business to which the trademark belongs. Before
the introduction of the TRIPS Agreement, quite a number of countries allowed the transfer or
assignment of trademark only with the transfer of the corresponding business or goodwill
located in the relevant territory, which effectively barred trademark rights from being traded as
independent assets. While countries are free to regulate this aspect in their national legislation
under the Paris Convention (Article 6quater), it has become an obligation under the TRIPS
Agreement to allow the assignment of trademarks independently from the corresponding
(e) Other requirements According to Article 20 of the TRIPS Agreement, use of the trademark
business operation.
in the course of trade must not be unjustifiably encumbered by special requirements, such as
use with another trademark (so-called ‘twinning’ requirements), use in a special form, or use in
a manner detrimental to the trademark’s ability to distinguish the goods or services of one
undertaking from those of other undertakings. As explained by the Panels in Australia – Tobacco
Plain Packaging (DS435, 441, 458, 467), this provision reflects the balance that the drafters of
the TRIPS Agreement intended to strike between the legitimate interest of trademark owners in
using their trademarks in the marketplace, and the right of members to adopt measures for the
protection of certain societal interests that may adversely affect such use.
3. What exceptions are permissible?
 (a) Permissible exceptions Article 17, entitled ‘Exceptions’, stipulates that members may
provide for exceptions to the rights conferred by a trademark, provided that such exceptions
are (1) limited, (2) take account of the legitimate interests of the owner of the trademark and
of those of (3) third parties. Article 17 cites ‘fair use of descriptive terms’ as an illustrative
example
(b) of a limitedlicensing
No compulsory exception.permitted Article 21 of the TRIPS Agreement makes it clear
that members’ legislation shall not permit any compulsory licensing of trademarks. This reflects
the view that, unlike in the patent area, there is no public policy rationale for allowing
compulsory licensing in the area of trademark rights and governments may not, therefore,
permit the use of a trademark without the authorization of the right holder.
4. What is the minimum term of
protection?
According to Article 18 of the TRIPS Agreement, the initial registration and each renewal of
registration shall be for a term of no less than seven years. It also stipulates that the
registration of a trademark must be renewable indefinitely. This means that trademark rights,
in contrast to copyright or patent rights, can last for an indefinite period of time, provided the
right owner renews the registration at the expiry of each term and pays the required renewal
fees.
If members require the actual use of a trademark in order to maintain registration, Article 19
of the TRIPS Agreement provides that cancellation of a trademark may only occur after an
uninterrupted period of three years of non-use. This means that even if a country wants to
require use of a trademark as a condition for renewal, it must allow for a period of at least
three years of uninterrupted non-use before the trademark can be cancelled for that reason.
Conclusion :
• The trade mark is for protecting the name of
the product or services rather the product
itself;
• Trade mark assures the customer about the
source of a product, though the quality of the
product is not assured by the trade mark
• The trade mark should be distinctive;
• Deceptively similar marks, geographical
names etc. cannot be registered as a trade
mark;
• In India, the Trade Mark Act of 1999 is
presently in force;
• The term of trade mark protection is 10 years,
which can be renewed from time to time,
indefinitely;
• Trade mark can be assigned or transmitted;
• Using deceptively similar marks, falsifying the
mark or using unregistered mark cause
infringement under Trade Mark Act; and