Trademark is a business identity that helps to identify and distinguish the goods made or services offered by a company or an individual. A trademark can be registered for a business name, label, logo, colour, packaging, sound, sign or any combination thereof. Trade Marks Offices in India are located at Mumbai, Delhi, Kolkata, Chennai and Ahmedabad. Appellate authority is Intellectual Property Appellate Board which is based in Chennai. Trademark in India may be filed on the basis of user or on the basis of intent to use the trademark.
Search and Clearance
Trademark search and clearance are not legally required but often critical for managing the costs and risks of adopting a new trademark. The purpose of trademark is to identify the potential risks and liabilities that exist by choosing to use a name in connection with products/services. Clients often devote great attention and resources to create and develop a trademark/ brand. However, in majority cases clients often fail to obtain trademark search and clearance opinions from legal experts. If the brand is important to the business or intended for long term use, trademark search and clearance should be done at an early stage in the brand development process to minimize potential risk of adopting a weak trademark that is difficult to protect and spending resources on building goodwill in the trademark that may be forced to drop as another party has prior rights to the trademark. Trademark searches are typically performed in two stages; preliminary search and comprehensive search. Trademark searches may be conducted through online databases. However, it is important to bear in mind that, while identical trademarks can be easily identified, deceptively similar will be more difficult to spot.
Intellect Juris provides trademark search services, assisting clients in the selection of brand name/ trademark and ascertaining whether any identical or similar trademarks are already existing in the records of the Trade Marks Registry. The cost of conducting a trademark search is quite insignificant in comparison to the efforts and costs involved in rebranding due to infringement of other’s rights.
Registration of Trademarks
Once a trademark search is completed, the application for trademark registration can be filed with the Trade Marks Registry. The application for registration of trademark must be made in the prescribed manner along with applicable fee for trademark registration. A trademark application can be filed for a single/ multi-class. Application claiming priority from a convention country can also be filed in India within six months from the priority date.
When Trademark registration application is filed with the Trade Marks Registry, a trademark application number is allotted by the Registry. Thereafter, application is sent for Vienna Codification. An application so filed is examined by the Registrar in accordance to the provisions of the Trade Marks Act, 1999 and Rules thereof and the examination report is issued. Pursuant to the issuance of the examination report, the applicant must file an appropriate reply. Depending on the reply, the Examiner determines whether the application be accepted, refused or accepted with certain limitations. If the application is rejected, the applicant can appeal at the Intellectual Property Appellate Board. After examination and upon acceptance thereof, the application is ordered for advertisement/ publication in the Trade Marks Journal. On publication of the trademark, any aggrieved person can oppose the registration by filing the notice of opposition within the period of four months from the date on which trademark was published in the Trade Marks Journal. Within the term of four months of publication in the Trade Marks Journal, if application is not opposed by a third party, the trademark will proceed for registration and the trademark authority will proceed to issue a registration certificate.
Registration of trademark shall be valid for a period of ten years from the date of filing of application and can be renewed from time to time for period of ten years on payment of renewal fees. India has acceded to the Madrid Protocol with effect from July 8, 2013 whereby trademark owner may obtain registration of trademark in multiple countries through single International Application. It is governed by Madrid Protocol and Madrid Agreement and is administered through the International Bureau of World Intellectual Property Office.
For many companies, trademarks are important business assets built through goodwill and reputation. They can be subject to misuse through infringement, dilution, cybersquatting, unfair competition, false advertising and tarnishment. It is important for trademark owner to be proactive when it comes to monitoring for potential infringement and enforcing rights as a trademark owner. The actions which can be taken to protect trademarks in India, including against passing off and infringement, are as follows.
Civil remedies can be enforced by filing a suit for infringement or passing off in the competent court. The following forms of civil relief are available:
- an interlocutory, temporary or ad interim injunction;
- a Mareva injunction;
- an Anton Piller order;
- a John Doe order;
- a permanent or perpetual injunction;
- damages or accounts of profits; and
- delivery up and destruction
The Trade Marks Act, 1999 is the primary statute governing Indian trademarks law. This act enumerates numerous offences in relation to trademarks, such as:
- falsifying and falsely applying a trademark;
- making or possessing instruments for falsifying trademarks;
- applying a false trade description; and
- applying a false indication of country of origin.
The following administrative remedies are available:
- opposition against a similar mark;
- rectification of a registered mark; and
- recordal with Customs to prevent the import or export of goods bearing the infringed trademark.
Trademark team of Intellect Juris is well equipped to handle any trademark dispute and has accrued extensive experience in all aspects of trademark litigation, including the enforcement of rights against infringement, dilution and counterfeiting and related court litigation.
We at Intellect Juris believe that business brands are some of the most valuable intellectual properties that a company own. Such Intellectual Property assets have to be utilized by the companies to generate revenue and profits. It is essential to commercialize the product for flow of investments in monetary, fixed, and intangible assets to make the business financially rewarding. Intellect Juris play a strategic advisory role by counseling clients in a wide range of transactions, including the following:
- Trademark licensing and assignment agreements.
- Coexistence and concurrent use agreements.
- Intercompany licensing arrangements.
- Domestic and multi-national mergers & acquisitions.
- Joint ventures.
- Franchise agreements.
- Manufacturing and distribution agreements.
Team at Intellect Juris work together meticulously to help obtain the optimum worth on such brands and several other intellectual property assets through transactions such as negotiations, technology evaluation, valuation, due diligence etc.