This article has been written by Youginder Singh.

Trademark

Trademark, generally, means a word, logo, name, signature, phrase, letters, device, shape of goods, packaging, colours, or combinations of it. A visual symbol that is represented graphically and able to distinguish the goods/services of one enterprise from those of others. Trademark falls under the ambit of Intellectual property right in other words Protection by Business Innovation through Trademark. 

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Types of trademark

As the world is changing, we are more surrounded by Businesses that contribute towards escalating our economy. However, let’s study how these businesses are protecting their products or services:

Product Mark

The business involved in Product Mark focuses on goods rather than services. Product Mark helps to identify the source of products or goods and differentiate them from other companies. Example – Amul, Nestle, etc.

Service Mark 

By seeing the word, we have clarity in mind that all kinds of services whether hotels, transports, couriers, restaurants, advertising, etc. are protected under Service Mark. Example – Apple, Wal-Mart.

Collective Mark 

Collective Mark is owned by an organization or association. It differentiates its members or services from those of other organizations. For example, Tata Sons, Reliance communications, etc.

Certification Mark 

To acquire a Certification Mark’s a product/service needs to meet certain standards. In India, to have Certification Mark certain standards need to be met as provided by the BIS [Bureau of Indian standard]. It guarantees consumers that the product meets certain prescribed standards and is safe. It reflects on its origin, material, quality, and other characteristics. For example, ISI, Wool mark, Silk mark, Hallmark, AG mark, Indian organic, etc.

Shape Mark 

Apart from product/services, the shape also plays a prominent role when it comes to trademarks, as innovation comes from ideas and every innovation needs to be protected. For example, Shape of KitKat, Coca-Cola.

Sound Mark

Nowadays, many companies are branding their products or services with specific sounds that help the consumer’s to not only differentiate their products or services from others but also maintain a status quo in the consumer’s mind. For example, Yahoo’s Yodel, Nokia tune, ICICI bank, etc. 

Pattern Mark 

Many companies are using their own patterns to make their product unique in the market. 

Significance of trademark registration 

We are living in a competitive world, where each of us try to overpower each other in every aspect of life, the same rule applies while registering a trademark. Let’s understand in more depth:  

• Trademark is an asset of the company, it brings economic benefits to the owner/proprietor.
• Trademark builds trust amongst the consumers pertaining to products or services as we all acquire the quality of the products and services. Trademark is a way that helps us to identify the best product/services because of its uniqueness.
• Acquiring registration and protection curbs infringement of the mark and maintains a standard in people’s eye. 
• Legal protection is provided to the trademark not only nationally but internationally too along with recognition.
• Trademarks work as a shield to protect the business

Role of distinctiveness in trademark 

The concept of distinctiveness is necessary to get protection under the Trademark act. To have a trademark registered it is prominent that the trademark is distinctive in nature. Now, when we talk about distinctiveness it’s either inherent distinctiveness or acquired distinctiveness that falls with the purview of five categories known as Generic, Descriptive, Suggestive, Arbitrary, and Fanciful which range from non-distinctiveness to highly distinctiveness when it comes to acquiring protection. Let’s discuss in simple language the role of 5 categories: 

Generic 

The concept of distinctiveness has failed when it comes to generic because when we talk about the word generic- it is common to the public and the word which is common to the public has never acquired a distinctiveness even with usage. Therefore, too generic or commonly used words failed to acquire protection under trademark law.  For example, shoes as a trade name by company manufacturing shoes are undoubtedly generic and cannot acquire registration and protection.

Descriptive 

When we talk about descriptive then we surely talking about the ingredients, quality, functions of goods and services offered. This particular category also falls under non-distinctiveness however there is an exception that receives protection under trademark law when there is substantial evidence that proves that a particular mark has been in continuous and prolonged usage by the proprietor and is known among the consumers. For example, Cold and Creamy Describe ice-cream.  

Suggestive 

This type of category talks about the Hint of particular goods and services offered by the proprietor. Example Jaguar – It talks about speed, strength, and agility but does not relate to cars directly another example is AIRBUS describes Airplane and such marks get protection as well as registration under trademark law. In short, these marks do not describe the product itself but suggest the product.

Arbitrary 

Mark under this category does not relate to the product or service offered. Mark under arbitrary fall within the purview of Inherently distinct and receive maximum protection under trademark law. The best example is Apple, a company that manufactures electronic gadgets under a trademark name.

Fanciful 

Word falling under this category have no meaning in the dictionary, rather they are combined with two or more words to invent a new word. Example Google for “search engine”. Kodak for “camera”. Therefore, the marks falling under the category of arbitrary, fanciful, and suggestive are considered inherent distinctiveness.  

Note: – Acquired distinctiveness depends on case to case. 

Procedure to register a trademark in India

It is best advisable to have a trademark attorney because an attorney clears many misconceptions related to trademark registration. In other words, a client can completely rely and depend upon an attorney in case of violation of his/her rights. In addition to stop any violation, the very first step involves:

Conduct Search for trademark

Once an applicant carefully chooses a Trade name, it is time to conduct research, as there are tons of trademark registered or unregistered which is available at the Trade Mark Registry In order to safeguard the trademark, it is necessary so that there is no similar trademark and the chosen mark is unique.

To file trademark application

• The application for registration of the trademark be filed in a single-class but fee payable shall be in respect of each good and services.
• The registration application is Form TM-A which can be either filed online through the official IP India website or physically at the Trade Marks Office which depends on the jurisdiction of the trademark.
• The application for trademark registration has to be supported with multiple documents with complete details of the trademark for which the registration is sought. Moreover, just in case the applicant is saying prior use within the trademark, then a user affidavit has to be filed supporting the usage alongside the evidence of its prior usage. 

Examination of the trademark application by the government authority

• Post the filing of the trademark application, a mandatory examination report is issued by the Examiner after an extensive examination of the trademark application. 
• The examination report by the authority may or may not disclose some objections which can be either, absolute, relative or procedural. This examination report by the Trademark Authority is issued within a period of 30 days of having filed the registration application.
• A reply to the examination report is required to be filed within a period of 30 days after receiving the report asserting the arguments and evidence against any objections to waive them off.

Post-examination

After the filing of the reply to the examination report, the Examiner (Trademark Authority) may appoint a hearing if the Examiner is not entirely satisfied by the reply filed or in case the objections are not met. After the said hearing, the Examiner may accept the mark and subsequently forward the appliance for publication within the journal or reject the said application if any objection still persists.

Advertisement of the trademark

• Once the registration application has been accepted, the said trademark is advertised and also published in the Trade Marks Journal for a period of 4 months. The aim behind the publication and advertisement is to ask the overall public to file an opposition against the registration of the mark.
• The Trade Marks Journal is available on the official Registry’s website which gets updated every Monday of the week.

Opposition from the general public

Post the advertisement and publication of the trademark in the journal, any aggrieved person can file a notice to oppose the registration of the advertised/ published trademark. This notice opposing the trademark has got to be filed vide Form TM-O within 4 months of the mark’s publication within the Trademark Journal. In case the applied for a trademark is opposed/ objected, then the due process of law has to be followed which incorporates filing the counter-statement application, evidence also hearing in order to get the trademark registered.

Registration of the trademark

The final step towards the whole procedure is registration where the appliance proceeds to registration after conquering the objection and/or the opposition against the said registration of a trademark.

Besides this, in case there has been no objection against the registration of the trademark during the advertisement/ publication period of 4 months, then the trademark is issued an auto-generated registration certificate within 1 week’s time. Once the registration completes, it’s valid for a period of 10 years after which it might be required to be renewed within a prescribed period of time.

Prior user prevails over the registered trademark 

Section 34 of the Trademark Act, 1999 provides protection to the prior use of the mark. It speaks in favour of the “First User” of the mark, before the proprietor of a registered trademark in respect of particular goods or services. The prior user of the mark is always on higher pedestrian and occupy a supreme power, though in order to get protection under section 34, which specifically talks about “First User” certain condition or requirements has to be satisfied: 

1. The use of the mark is similar to or resembling the registered trademark.
2. The mark must be in continuous use and not intermittent.
3. The mark shall be compared fully and not in part. In Lupin vs. Sun Pharma, Lupin [plaintiff] using the name “TRIVOLIB” since 2011 and Sun Pharma [Defendant] using the name “VOBIT” since 2008 but in 2012, Defendant added prefix TRI and started using the name “TRI-VOBIT”. Delhi High Court noted that Plaintiff is the prior use of the mark “TRIVOLIB” and ruled in favour of Plaintiff [Lupin].
4. The mark must be used prior to the date of a registered trademark.
5. Merely adoption or advertisement of the mark does not constitute the user of the mark. 
6. The first user must have gained a reputation in the market/ has done voluminous sales.

Prior use act as a defence in a trademark infringement dispute

Yes, the first user acts as a defence in trademark infringement and overrides the subsequent user even if the subsequent user has registered the trademark. Provided:

• The first user has used the mark for a long and continuous period compared to the registered user.
• Gained reputation in the market.

References 

• https://www.mondaq.com/india/trademark/521638/prior-user-rights-of-trademark-in-india#:~:text=It%20is%20a%20well%20accepted,accorded%20registration%20of%20its%20trademark
• https://www.helplinelaw.com/business-law/TRADERP/complete-procedure-for-trademark-registration-in-india.html

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