Trademark Registration Process Overview

Unregistered Trademark Protection

• Unregistered trademarks can be protected under the common law principle of passing off.
• Protection prevents unfair competitors from using similar or deceptively similar marks.

Definition and Features of a Trademark

• A trademark must be a mark that includes a device, heading, brand, label, ticket, signature, word, letter, name, numeral, packaging, or combination of colors or any combination of these attributes.
• It must be capable of being represented graphically.
• It must serve the purpose of distinguishing products of a manufacturer from another.
• Shape, color combination, and packaging may be protected as trademarks.
• Usage or proposed usage should be in relation to any particular goods or services.
• It should be capable of projecting a connection of a person/group of persons with the manufacture of goods or provision of services.

Protection of Trademarks

• Protection can be granted to a trademark through continuous usage or by registration under the Trade Marks Act, 1999.
• Trademarks protected through usage are connected to the goodwill of the enterprise acquired through continuous usage.

Distinctiveness of a Trademark

• Distinctiveness is the key to getting trade mark protection under the Trade Marks Act.
• Examples of fanciful trademarks, which are the easiest to acquire registration, include "Google" for search engines and "Kodak" for cameras.

Identical or Similar Trademark

• A trademark cannot be registered if it is identical or similar to an earlier registered trademark or trademarks.
• According to Section 11(1) of the Trade Marks Act, 1999, a trademark shall not be registered if it is likely to cause confusion on the part of the public.

Identical Trademark

• A mark is identical with the trade mark if it reproduces without any modification or additions, all elements constituting the trade mark.

Similarity of Trademark

• The terms similarity of trademarks is construed as "deceptively similar".
• In case the applicant is claiming prior use in the trademark, a user affidavit has to be filed supporting the usage along with the evidence of its prior usage.

Registration of Trademark

• Step 1: Filing an application (Form TM-A) which can be either filed online or physically at the Trade Marks Office.
• Step 2: Examination by the examiner for any discrepancies.
• Step 3: Publication and opposition from the general public.
• Step 4: Registration (the application proceeds to registration after conquering the objection and/or the opposition against the said registration of trademark).

Types of Trademarks

• Word Marks: refer to any marks that are used to identify the products and services of a trading company or service-providing company.
• Service Marks: represent the service which a company or business deals in.
• Logos and Symbols: a logo is a printed/painted figure/design/character and does not consist of any letters/words/numerals.
• Shape of Goods: categorized in Trade Dress (appearance of a product).
• Series Marks: service marks that have a common syllable, prefix or suffix, denoting a family of marks sharing a 'common name'.
• Collective Trademarks: linked with a group of people and not one single product or service.
• Certification Mark: created to show a specific quality standard that the company has met.