A Trade Mark is one of the most commercially valuable forms of intellectual property. It is the symbol by which a business identifies itself and its products or services to consumers and distinguishes them from those of competitors. Trade marks are governed in India by the Trade Marks Act, 1999 which came into force on 15th September, 2003, replacing the old Trade and Merchandise Marks Act, 1958. The Trade Marks Act, 1999 was enacted to bring Indian trade mark law in conformity with the TRIPS Agreement and international standards.
The registration of trade marks in India is administered by the Trade Marks Registry under the Controller General of Patents, Designs and Trade Marks, with its head office in Mumbai and branch offices in Delhi, Kolkata, Chennai, and Ahmedabad.
Definition of Trade Mark — Section 2(zb)
Under Section 2(zb) of the Trade Marks Act, 1999, "trade mark" means:
"A mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours."
The definition includes:
- Mark — Any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape of goods, packaging, combination of colours, or any combination thereof
- Capable of graphical representation — The mark must be capable of being represented on paper or other visual medium
- Capable of distinguishing — The mark must be able to distinguish the goods or services of one trader from those of others
Types of Trade Marks
1. Word Marks — Trade marks consisting of words or letters. Example: "TATA", "INFOSYS", "WIPRO"
2. Device Marks — Trade marks consisting of logos, symbols, or artistic designs. Example: Apple's apple logo, Nike's swoosh
3. Combination Marks — Trade marks combining words and devices. Example: most corporate logos
4. Shape Marks — The distinctive shape of a product or its packaging. Example: the distinctive shape of a Coca-Cola bottle
5. Colour Marks — A specific colour or combination of colours used as a trade mark. Example: Cadbury's purple colour
6. Sound Marks — Distinctive sounds used as trade marks. Example: the MGM lion's roar, Nokia's ringtone
7. Certification Marks — Section 2(e) — Marks used to certify that goods or services meet certain standards. Example: ISI mark, Agmark
8. Collective Marks — Section 2(g) — Marks used by members of an association to distinguish their goods or services from those of non-members.
9. Well-Known Trade Marks — Section 2(zg) — Marks that have become well known among a substantial segment of the public and are therefore entitled to enhanced protection even for dissimilar goods.
Functions of a Trade Mark
A trade mark serves the following important functions:
1. Origin Function — Indicates the commercial origin of goods or services — i.e., who made or sells them.
2. Quality Function — Assures consumers of a consistent level of quality associated with the mark.
3. Advertising Function — Serves as a powerful advertising tool that helps build brand recognition and customer loyalty.
4. Investment Function — Represents a valuable business asset in which significant investment has been made in building goodwill and reputation.
Absolute Grounds for Refusal of Registration — Section 9
A trade mark shall not be registered if:
1. It is devoid of distinctive character — It cannot distinguish the goods or services of one trader from another.
2. It consists exclusively of marks that designate kind, quality, quantity, intended purpose, values, geographical origin, or time of production — Such marks are needed by all traders and cannot be monopolized.
3. It consists exclusively of marks that have become customary in trade — Marks that have become generic through common use.
4. It is likely to deceive the public or cause confusion — Misleading marks cannot be registered.
5. It contains scandalous or obscene matter — Offensive marks cannot be registered.
6. It is likely to hurt religious susceptibilities — Marks that may offend religious sentiments.
7. It contains prohibited emblems — Marks containing national flags, government emblems, international organization emblems (protected under Section 13).
Relative Grounds for Refusal of Registration — Section 11
A trade mark shall not be registered if:
1. It is identical to an earlier registered mark for identical goods or services.
2. It is similar to an earlier registered mark for identical or similar goods or services where there is a likelihood of confusion.
3. It is identical or similar to a well-known trade mark even for dissimilar goods or services.
Process of Registration of a Trade Mark
Step 1 — Trade Mark Search
Before filing an application, the applicant should conduct a trade mark search on the IP India website (ipindiaonline.gov.in) to check whether any identical or similar mark is already registered. This helps avoid objections and oppositions.
Step 2 — Classification of Goods and Services
Trade marks are registered for specific classes of goods and services as per the Nice Classification — an international classification system with 45 classes (Classes 1-34 for goods and Classes 35-45 for services). The applicant must identify the correct class(es) for his goods or services.
Step 3 — Filing of Application — Section 18
The application for registration is filed in Form TM-A (online or offline) at the Trade Marks Registry. The application must contain:
- The name and address of the applicant
- The trade mark (reproduction of the mark)
- The goods or services for which registration is sought
- The class of goods or services
- The date of first use (if the mark has already been used)
- The prescribed fee
Filing Fee:
- For individuals, startups, and small enterprises — ₹4,500 per class (online) or ₹5,000 per class (physical)
- For other entities — ₹9,000 per class (online) or ₹10,000 per class (physical)
Priority Claim: If the applicant has filed an application in a convention country (Paris Convention member), he can claim priority within 6 months of the first filing date.
Step 4 — Examination — Section 18(4)
After filing, the application is examined by a Trade Mark Examiner who prepares an Examination Report if there are any objections. The Examiner may object on:
- Absolute grounds (Section 9) — lack of distinctiveness, deceptive nature, etc.
- Relative grounds (Section 11) — similarity with existing marks
The applicant must respond to the Examination Report within 1 month (extendable to 2 months). If the response is satisfactory, the application proceeds to advertisement.
Step 5 — Show Cause Hearing
If the Examiner is not satisfied with the written response, the applicant is called for a show cause hearing before the Registrar. The applicant can make oral arguments and submit evidence to overcome the objections.
Step 6 — Advertisement in Trade Marks Journal — Section 20
If the application is accepted (either without examination objections or after overcoming them), the mark is advertised in the Trade Marks Journal (published weekly by the Trade Marks Registry). The advertisement gives the public an opportunity to oppose the registration.
Step 7 — Opposition Proceedings — Section 21
After advertisement, any person can file a Notice of Opposition within 4 months of the date of advertisement opposing the registration of the mark. The grounds for opposition can be:
- Any of the absolute or relative grounds for refusal
- The applicant is not entitled to the mark
- The mark is likely to deceive or cause confusion
- The application is made in bad faith
Opposition Procedure:
- Opponent files Notice of Opposition (Form TM-O) within 4 months
- Applicant files Counter-Statement within 2 months
- Both parties file their evidence by way of affidavit
- Hearing before the Registrar
- Decision by the Registrar
If no opposition is filed within 4 months, or if the opposition is decided in favour of the applicant, the mark proceeds to registration.
Step 8 — Registration — Section 23
If there is no opposition or if the opposition is decided in favour of the applicant, the Registrar registers the trade mark and issues a Certificate of Registration to the applicant.
The trade mark is entered in the Register of Trade Marks maintained by the Trade Marks Registry.
Step 9 — Duration and Renewal — Section 25
A registered trade mark is valid for 10 years from the date of application. It can be renewed indefinitely for successive periods of 10 years each upon payment of the renewal fee (Form TM-R).
If the renewal fee is not paid within the prescribed time, the mark is removed from the register but can be restored within 1 year of removal upon payment of restoration fee and surcharge.
Rights of Registered Proprietor — Section 28
The registered proprietor of a trade mark has the exclusive right to:
- Use the trade mark in relation to the goods or services for which it is registered
- Obtain relief in respect of infringement of the mark
Infringement of Registered Trade Mark — Section 29
A registered trade mark is infringed when any person uses in the course of trade a mark that is:
- Identical to the registered mark for identical goods or services
- Similar to the registered mark for identical or similar goods or services where there is likelihood of confusion
- Identical or similar to a well-known mark even for dissimilar goods
Remedies for Infringement — Section 134
The registered proprietor can file a suit for infringement in the District Court having jurisdiction. Remedies include:
- Injunction (temporary or permanent)
- Damages or account of profits
- Delivery up of infringing goods for destruction
- Criminal prosecution for counterfeiting (Section 103)
Important Case Laws
1. Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965)
The Supreme Court held that in a trade mark infringement action, the court must consider whether the impugned mark is likely to deceive or cause confusion in the minds of ordinary buyers — the standard is not that of an expert buyer but an average consumer.
2. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001)
The Supreme Court laid down guidelines for determining infringement in pharmaceutical trade marks, emphasizing the higher standard of care needed to protect public health.
3. Laxmikant V. Patel v. Chetanbhai Shah (2002)
The Supreme Court held that an injunction can be granted against trade mark infringement even at the interlocutory stage if the plaintiff can show a prima facie case, balance of convenience in his favour, and irreparable harm.
4. Bata India Ltd. v. Pyare Lal & Co. (1985)
The Allahabad High Court held that the goodwill associated with a trade mark is a valuable commercial asset and its protection is essential for fair competition and consumer protection.
Conclusion
A trade mark is one of the most powerful commercial tools available to a business — it is the symbol through which the world recognizes and trusts a brand. The process of trade mark registration under the Trade Marks Act, 1999 is designed to be comprehensive and transparent, ensuring that only distinctive marks that are not likely to cause confusion are registered, while giving third parties an opportunity to oppose registrations that might harm their interests. A registered trade mark gives its owner a valuable monopoly right that can last indefinitely if properly maintained through timely renewal. For businesses operating in India's increasingly competitive marketplace, trade mark registration is not merely a legal formality but a strategic business necessity that protects brand identity, goodwill, and consumer trust.
Comments
Post a Comment