This article has been written by Mr. Arjun Singh Tamang, a 2nd year student of Faculty of Law, University of Delhi.

A trademark is an intellectual property that consists of a sign, design, symbol or expression used to identify goods or services as coming from a specific source and set them apart from those offered by other parties. The owner of a trademark can be an individual, a company, or another legal body. A trademark can be mentioned on the product itself, label, and voucher or on the box. Sometimes trademarks which are used to distinguish services are referred to as service marks.

 Trademark is an intellectual property made up of symbol, word, phrase, design or combination of these that helps to distinguish a good or service from others.

Trademark legally differentiates a product so that customers can recognize the source company’s ownership of the brand. It paves the way for brand building for the company and establishes loyal clientele, positive image and goodwill. Most importantly it protects the brand.

Importance of Trademark registration 

1. Protect as shield – Registration of trademark ensures that no other person or entity can use your trademark without your permission. The Coca-Cola Company v. Bisleri International Pvt. Ltd Case judgment held that defendant (Bisleri) has infringed the rights of appellant (Coca-Cola) by using the trademark MAAZA in India as well as for export.

2. Product Differentiation – Use of Trademark makes it easier for customers to recognize the product and differentiate it from others. It helps the business to get Brand loyalty. In Starbucks coffee V Sardarbuksh coffee case an Indian entrepreneur used the word Sardarbuksh instead of Starbucks and led people believe that it is also owned by Starbucks and earned profit in deceptive way. The court ordered the owner of Sardarbuksh to modify it name so that people don’t get confused and also it violates the right of appellant. It hampers the goodwill of the firm.

3. Infringement Protection – No competitors or individual can use the trademark or trade name without getting prior approval from the owner of trademark. Owner has the privilege to use R symbol which denotes that it is registered and no one can use similar trademark and if someone does, you can sue such person for blatant infringement. Haldiram Bhujiawala & ANR. Vs. Anand Kumar Deepak Kumar & Others case law the court held that use of trade name by others is also protected by statutory rights of Trademark Act even if the firm is unregistered.

4. The brand Identity – Trademark helps in giving a symbolic brand identity to the product. For example – Apple, Starbucks, Jaguar, Ferrari etc. Their trademark is more than enough to tell about their brand identity, its popularity and goodwill the product has. It helps in creating goodwill for the business. 

5. Trademark is an enduring asset of business – A registered trademark can be used for raising funding from financial institutions. It is an intellectual property rights which can be sold or licensed and provides a source of income.

Process of Trademark registration 

Step 1 – Trademark Search

It is the 1st step that is to search for a good and catchy Trademark which is not registered yet. A trademark which is identical with or similar to an earlier registered trademark should be avoided during search. A good Trademark will create brand value and goodwill for product like Apple’s trademark is enough to distinguish and tell the product’s worth and its goodwill.

It is better to go through the trademark properly to ensure that it is unique and there is no other trademark similar or identical to the selected one.

Step 2 – Filing a trademark application 

After selecting the best trademark for the product, now it is needed to apply in writing to the Registrar in the prescribed manner for the registration of his trademark. An application for TM Registration which can be done through online medium at official IP India website as well as physical submission at the Trademark Registry office keeping in mind the territorial jurisdiction.

Step 3 – Examination Process

Now it is the examination phase where registrar will thoroughly check the application. Within 30 days of filing an application, trademark authorities issue an examination report.

Within 30 days of receiving examination report, a reaction must be submitted to the authorities contending and supporting the arguments to waive off any objections.

Trademark registrar will give decision that whether he wants to give approval unconditional, conditional or reject the application.

If the application is accepted unconditionally, registrar will publish it in the trademark journal. 

If it is conditionally accepted that applicant will have to fulfill the condition within 30 days otherwise application will be rejected.

Step 4 – Advertisement of Trademark Application 

When the trademark registration is approved by registrar whether absolutely or subject to conditions or limitations, the registrar shall as soon as after acceptance shall advertise for four months in trademark journal to check that if anyone wants to raise the opposition or not.

Step 5 – Public Opposition 

A person may within four months from the date of advertisement of an application of registration give notice in writing in prescribed manner along with payment of fee to the Registrar, of opposition of registration. An individual feels that the publishing of approved trademark has done him/her some wronged; he/she can submit notice of opposing the registration of trademark.

Now registrar will serve the copy of notice to applicant and within two months from the date of such receipt, the applicant shall file a counter-statement in a prescribed manner to the Registrar and failing to do so shall be deemed as application being abandoned by applicant.

Now the applicant has to go through certain legal procedures which include filing a counter statement, submission of evidences to prove the points and in some cases the applicant has to go through hearing also to solve the opposition.

The registrar may depend upon the evidences and hearing will permit correction of any error, or any amendment in the application as he thinks just.

Step 6 – Registration 

When the application of registration has been accepted and either

1. The application has not been opposed during the period of four months of advertisement. Or

2. The application has been opposed and the opposition has been decided in the favor of the applicant.

The Registrar shall register the trademark within the period of eighteen months from the date of filing of application and the trademark shall be registered from the date as when the application for registration was made.

On the registration of the Trademark, the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry.

Validity of Registered Trademark

Once the Registration process is complete and trademark is registered, the applicant can use the trademark freely. Once a trademark is registered it has validity for a period of ten years from the date of application filed. It can be renewed from time to time as a notice is sent 6 months before expiry to the owner.

Trademark registration in India is very simple and fast process and not cumbersome although it is not mandatory.

Although the procedure for registration is simple but it is advised to hire an attorney to smooth process. But intelligent entrepreneur always go for it as it is associated with your product image and goodwill and it is better to protect it.

References

https://www.indiafilings.com/learn/trade-mark/

https://www.google.com/amp/s/cleartax.in/s/trademark-registration-procedure-india-amp#ip=1

https://www.mondaq.com/india/trademark/517806/process-trademark-registration-in-india

https://legalserviceindia.com/legal/article-8459-steps-to-registration-a-trademark-in-india.html

https://www.google.com/amp/s/blog.ipleaders.in/10-landmark-cases-trademark-infringement/%3famp=1

https://indiankanoon.org/doc/109517976/

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