With the advent of branding and the increase in value being attached to it, the issue of protection of consumers from unauthorized violation of brands is gaining importance. Most often than not, a brand is represented by a mark, called its trademark. The trademark associates a source or quality or character of a good or service with itself. Accordingly, protecting a trademark from unauthorized use is highly warranted.
Trademarks are protected in India by the Trademarks Act, 1999 (TM Act). The TM Act defines a trademark as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof, which is used to distinguish goods and services provided in the course of trade by a person from the goods and services provided by other person and should be capable of being graphically represented. The TM Act calls for registration of trademarks so as to make any likelihood of causing deception in a mark impermissible in law.
A trademark once registered under the act gives the trademark proprietor some very important legal rights. Firstly, the registration of trademark provides the proprietor of the trademark, exclusive rights to use the TM in relation to the goods or services. Secondly, the registration of the trademark is a prima facie proof of validity of the registered trademark. In any legal proceeding, this is highly important. Thirdly, the registration of trademark allows the proprietor of the mark to license his/her rights in the trademark to a third party. This acts as a constant source of royalty for trademark proprietors. All the franchise chains that you find around are a result of licensing of trademarks.
However, most importantly, the registration of trademark provides the proprietor with rights to prevent unauthorized use of his/her registered trademark. The prevention may be in form of injunctions (temporary or permanent stays) ordered by a court of law, or in form of damages. This remedy is not available to unregistered trademarks as section 27 of the TM Act states that no infringement action is maintainable under the TM Act against an unregistered trade mark.
In a recent case, Mahashian Di Hatti Ltd (MDH) Vs Mr. Raj Niwas, Proprietor Of MHS, the Delhi High Court restrained MHS from manufacturing and marketing any spices or condiments using the logo MHS owing to its similarity to MDH. The court held that such use is in violation of the tradeamark held by MDH. Interestingly, MDH was also awarded punitive damages amounting to Rs. 1 lakh against MHS. In another landmark judgment, Hero Honda Motors Ltd. Vs Mr. Laxmikant Patel And Anr., the Delhi High Court allowed Hero Honda to take infringing goods of the deceiver and destroy those goods. A huge penalty of Rs. 5 lakh was also charged for the infringement of trademark protected in favour of HERO HONDA. There are myriad examples in trademark jurisprudence in which the trademark proprietors have successfully and easily got stays or received punitive damages from courts of laws in case of violation of their trademark rights. Trademark disputes are treated differently by the courts from common civil disputes, and the enforcement is relatively easy.
Process of TM registration
1. Who grants trademark registration and under which Act?
A trademark is granted by the Registrar of Trademarks, an appointee under the TM Act. For getting a trademark granted, an application is made in a prescribed manner. The application is addressed to the Registrar, and is filed with the office of the Trademark Registry. The Trademark Registry has its head office at Mumbai and also functions through 4 more offices in Delhi, Kolkata, Chennai and Ahmadabad. Each office has a specific jurisdiction, and the following table describes their details:For registration an application is required to be made to the Registrar. For filing new applications there are prescribed forms depending on the nature of the application such as Form TM-1, TM-2, TM-3, TM-8, and TM-51 etc.
2. What happens after submitting a trademark application?
An application can be filed for as many numbers of goods and services as mentioned in schedule IV of the Trademark Rules. These are called classes and the trademark register with the registrar notes under which class/classes a trademark has been registered.
After submission of an application the various stages it goes through are as follows —
3. Opposition, if any
4. Correction and amendment, if opposed
3. How Long Does it Take for the trademark to get registered?
From start to finish, the time taken for registration of a trademark is normally 12-18 months. Whereas if an application is rejected at any stage within registration viz acceptance and opposition, an appeal to the Intellectual Property Appellate Board which is constituted at Chennai. Further from decisions of the appeal revision is possible in the High Court/Supreme Court.
4. How to protect your trademark internationally?
Protection of trademarks internationally is done with the aid of the Madrid Protocol. A protection can be availed in all those countries to whose citizens India also provides protection. The Protocol is managed by the World Intellectual Property Organization (WIPO) and offers a trademark proprietor the possibility of having a mark protected in up to 77 countries and the European Community (EC) by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs). The proprietors wishing to use the Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection. Thereafter, the international registration can be maintained and renewed through a single procedure at WIPO.
5. Cost for Protection?
The government fees for filing a trademark application in one class of goods or services is INR 3,500/-. For each extra class added in the application an additional fee of INR 3,500/- per class is to be paid to the government. Thus if an application is filed for 10 classes of goods/services the government fee will be INR 3,500 X 10 = INR 35,000/-.
Professionals charge for the entire process or with breakup i.e. for different stages. The typical charges are around INR 4,000-7,500/- till the filing stage, or minimum INR 20,000/- for the entire process of registration, which means from filing stage to the registration of trademark.
Issues in trademark protection
While applying for trademark registration, one should be aware of some issues which are essential to be complied with for registration. Knowledge about such issues may help you in understanding whether your trademark is protectable under the TM Act. This will in turn help you in deciding whether to go ahead with the registration process.
Generally, there are two kinds of grounds for refusal suggested by the trademark Act – The Absolute Grounds (section 9) and The Relative Grounds (section 11). Based on an understanding of these grounds, the following marks may not be able to get registration under the Trade Marks Act:
- * A Mark which is devoid of any distinctive character ( which is incapable of distinguishing the goods or services of one person from that of another),
- * A Mark which is likely to deceive or cause confusion,
- * A Mark which is contrary to any law for the time being in force,
- * A Mark which is phonetically similar to any existing registered mark,
- * A Mark which is deceptively similar to any existing registered mark,
- * A Mark which is identical to any existing registered mark,
- * A Mark which contains scandalous or obscene matter,
- * A Mark which is likely to hurt the religious sentiments of a particular class of the society,
- * A Mark which is disentitled to protection in court, and
- * A Mark whose use is prohibited under the Emblems and names (Prevention of Improper Use) Act, 1950.