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  • WHAT ARE THE DIFFERENT TYPES OF TRADEMARKS IN INDIA?

    INTRODUCTION

    A trademark identity which one person gives to their business or brand, it can be a logo, a symbol or a design that distinguish their goods and services. Trademark play a vital role in brand identity and protection as they are unique in nature. The trademark is of various types such as word mark, device mark, shape mark, service mark etc.

    Registering a trademark grants business exclusive rights and legal protection, these protections prevent unauthorized use or imitation of one’s mark. Apart from standard trademarks, there are other types of marks like service marks, collective marks, certification marks etc.

    In this article we are going to discuss about different types of trademarks, their unique features, their benefits of registering. By understanding different types of trademarks, a business can choose what they want for their business.

    TMWALA will help you understand the differentiation between the marks and help you choose the suitable one for your business.

    TYPES OF TRADEMARKS IN INDIA

    • Word Marks: It includes any marks used to identify a trading company’s or service provider’s goods and services. Your product or service will be registered under Word Marks if its name is text-based, meaning it exclusively contains text.
    • Logo/Device Marks: A printed or painted figure, design, or character that is devoid of any letters, words, or numbers is called a logo. The trademark must be registered as both a word mark and a device mark if the word mark is also used as a logo.
    • Combination Marks: Trademarks that create a cohesive brand representation by combining words and logos, meaning the device and word are in the same trademark.
    • Shape of Goods Marks:Goods are classified according to their shape, or trade dress. A product can be identified by its packaging in addition to its logo or label.
    • Colour Marks:trademarks that provide protection for particular colors or color combinations utilized in unique ways. For instance, Cadbury Purple, Tiffany Blue, and Coca-Cola Red.
    • Certification Marks:The purpose of the certification mark is to demonstrate that the business has fulfilled a particular quality level. Because the trader’s goods or services have fulfilled a specific standard as determined by the certifying authority that holds the certification mark, the public will be aware that they are certified.
    • Collective Marks: These trademarks are associated with a collection of individuals rather than a particular commodity or service. The primary owners of these trademarks are institutions, associations, or organizations. Members of the organization might use them to portray themselves as a part of it.

    NON-CONVENTIONAL TRADEMARKS

    Non-traditional trademarks or non-conventional trademarks are a collection of trademarks that are different from the conventional trademarks, which consist of logos, numbers, phrases, letters, images, symbols, or combinations of the above elements. Non-conventional trademarks, which consist of colors, shapes, moving images, smell, texture, touch, holograms, places, or non-visible signals, are a part of the conventional trademarks. There is no legal definition of non-conventional trademarks in the Trade Marks Act of 1999; hence, India has incorporated the Shield Mark doctrine for non-traditional trademarks.

    TRADEMARK CLASSIFICATION IN INDIA

    The trademark classification in India is basically in two categories one is goods and other one is services, let’s discuss each one of them in detail.

    For goods, there are 34 classes (Class 1 to Class 34).

    These encompass a broad variety of products like chemicals (Class 1), paints and varnishes (Class 2), cosmetics and cleaning agents (Class 3), industrial fuels and oils (Class 4), pharmaceuticals (Class 5), metals and building materials (Class 6), machines (Class 7), *hand tools (Class 8), scientific and electronic equipment (Class 9), medical and surgical instruments (Class 10), and lighting and cooking appliances (Class 11). It also includes some vehicles (Class 12), firearms and fireworks (Class 13), jewellery and precious metals (Class 14), musical instruments (Class 15), stationery and paper goods (Class 16), rubber and plastic materials (Class 17), leather goods (Class 18), non-metallic building materials (Class 19), urniture (Class 20), kitchenware and cleaning tools (Class 21), ropes and raw textile materials (Class 22), yarns and threads (Class 23), textiles and covers (Class 24), clothing and footwear (Class 25), lace and embroidery (Class 26), carpets and rugs (Class 27), games and sports items (Class 28), food products such as meat, fruits, dairy (Class 29), staples such as tea, coffee, spices (Class 30), agricultural and horticultural products (Class 31), non-alcoholic beverages (Class 32), alcoholic beverages except beer (Class 33) and tobacco products (Class 34).

    For services, 11 classes (Class 35 to Class 45) are available, and they span a broad range of commercial and professional services. These are advertising and business management (Class 35), financial and real estate services (Class 36), construction and repair (Class 37), telecommunication services (Class 38), transportation and logistics (Class 39), material treatment (Class 40), education, training, and entertainment (Class 41), scientific and technological services (Class 42), hospitality and food services (Class 43), medical, beauty, and agricultural services (Class 44), and security and personal social services (Class 45).

    This system of classification guarantees easy categorization and allows for enhanced trademark protection in different industries.

    TMWALA can help you identify your goods or services class and help in registering the same.

    TRADEMARK RIGHTS IN INDIA

    Although trademark registration is not required, it provides a number oftrademark rights in India. Although the process may be complicated, registration provides numerous beneficial rights, such as:

    • Exclusive Use: The owner gets the sole right to use the trademark for the registered goods or services.
    • Legal Protection Against Infringement: The owner of a trademark can sue for unauthorized use or copying.
    • Right to Assign or License: The owner has the right to assign trademark rights or license them.
    • Right to Amend the Register: The proprietor may ask to modify the registered information or delete entries from the register of trademarks.

    CONCLUSION

    Different types of Trademarks in India are vital assets to companies, serving to create brand identity, build consumer confidence, and provide legal protection against abuse. From word marks and logos to more unusual non-conventional trademarks such as sounds and colors, each is a strategic tool for differentiating products and services in the marketplace. Knowledge of the different kinds of trademarks, classification of trademark in India in terms of Indian law, and the trademark rights in India after registration enables companies to make an educated choice when safeguarding their intellectual property.

    Trademarking is not merely a ritual, it’s a valuable means of legal enforcement, market exclusivity, and brand identity. Whether you’re starting a business or operating an existing one, choosing the right type of trademark and the right class of goods or services is crucial.

    With professional guidance from sites such as TMWALA, companies can execute this process well, with their brand being protected by the law and competitively placed in the market.

  • TRADEMARK EXAMINATION REPORT

    INTRODUCTION

    In India, the trademark registration process ensures that trademarks are unique and legally protected under the Trade Marks Act, 1999. After an applicant submits a trademark application to the Indian Trade Marks Registry, the status of the application may initially appear as “Marked for Exam”. This status signifies that the trademark is now undergoing examination by an associate examiner to determine its eligibility for registration.

    The examination process is a key step in determining whether a trademark is eligible to be published in the Trade Marks Journal and, eventually, granted registration. This article provides a detailed look into the trademark examination process, including the steps involved, the criteria for examination, and what happens after the application is marked for examination.

    WHAT DOES “MARKED FOR EXAM” MEAN?

    When a trademark application is assigned to an Associate Examiner for scrutiny, its status on the Indian Trade Marks Registry website is updated to “Marked for Exam”. This status indicates that the application is under formal examination, which means that an examiner will assess whether the mark qualifies for registration based on the criteria established under the Trade Marks Act, 1999.

    The examiner’s task is to scrutinize the trademark application, perform a search to identify any conflicting trademarks, and decide whether the mark can be accepted for publication in the Trade Marks Journal. This examination is crucial because it helps ensure that trademarks are distinctive and do not infringe on existing marks, protecting businesses and consumers alike.

    At this stage, TMWALA can provide you with expert assistance to ensure your trademark application meets all the formal requirements and that your mark is classified correctly to avoid any initial delays or rejections.

    THE TRADEMARK EXAMINATION PROCESS: STEP BY STEP

    Step 1: Formal Review and Filing Compliance

    The first step of the examination process is to ensure that the trademark application complies with the formal requirements set by the Trade Marks Registry. This includes verifying that:

    • The correct forms have been filled out (e.g., TM-A form for application).
    • All mandatory details have been provided, including the applicant’s name and address, a clear representation of the trademark, and a description of the goods or services the mark will cover.
    • Payment of the application fee has been made.
    • The mark is categorized into the appropriate class (out of the 45 classes under the Nice Classification of goods and services).

    If any deficiencies or irregularities are found during this initial review, the applicant will be notified, and they will need to rectify the issues before the examination proceeds.

    Here, TMWALA can guide you through the filing process, ensuring that all documentation and legal requirements are met accurately, reducing the chances of initial rejection due to minor errors.

    Step 2: Trademark Search for Conflicts

    Once the application is accepted as compliant, the examiner conducts a thorough search of the existing trademarks in the Trade Marks Registry. The primary objective of this search is to identify:

    • Identical or similar trademarks that are already registered or pending registration.
    • Trademarks that are similar in relation to the goods or services the applicant is claiming for their mark.

    The examiner will check the phonetic and visual similarity of the applied mark to ensure there is no likelihood or confusion. For instance, if the trademark is too similar to an existing registered mark in the same or a related class, the examiner may raise an objection.

    Before filing your application, TMWALA conducts an in-depth trademark search to assess the likelihood of conflicts with existing trademarks. This proactive search helps mitigate potential rejections later in the process, saving both time and resources.

    Step 3: Assessing Registrability Under the Trade Marks Act, 1999

    The core of the examination is assessing whether the trademark meets the legal standards for registration under the Trade Marks Act, 1999. The key criteria include:

    • Distinctiveness: The mark must be unique and capable of distinguishing the goods or services of one business from those of another. Trademarks that are generic, descriptive, or commonly used in the industry are likely to be rejected.
    • Non-conflict with public interest: The mark should not be offensive, scandalous, or contrary to public policy or morality. It also should not violate any existing laws (e.g., national flags, symbols, or the names of countries).
    • Non-descriptive: Trademarks that merely describe the goods or services (such as “Fresh Apples” for apples) are usually not registrable.
    • No Likelihood of Confusion: The examiner evaluates whether the trademark is likely to cause confusion with any existing marks, especially in the same or related fields.

    Step 4: Identifying Conditions, Limitations, or Restrictions

    In some cases, the examiner may propose specific conditions, limitations, or restrictions on the use of the trademark. These may include:

    • Limiting the geographical scope of the mark’s use if there is already a similar mark registered in another region.
    • Imposing disclaimers if a part of the mark is deemed non-distinctive (e.g., disclaiming the word “fresh” in a trademark for fruit).
    • Adding conditions on how the mark can be used, based on the specific goods or services it covers.

    ISSUANCE OF THE EXAMINATION REPORT

    Once the examination process is complete, the examiner issues a consolidated Examination Report. The report may contain the following outcomes:

    1. Acceptance with No Objections: If the examiner is satisfied that the mark meets all requirements, the application is accepted for publication in the Trade Marks Journal.
    2. Objections: If the examiner identifies any issues (e.g., conflicting trademarks, lack of distinctiveness, etc.), the application will be provisionally refused, and the examiner will issue a detailed Examination Report listing the objections.

    The applicant will then need to respond to the objections within a specified time frame, usually 30 days from receiving the examination report.

    If objections arise, TMWALA will assist you in drafting a thorough response, addressing each objection with the necessary evidence or legal arguments. Whether it involves providing proof of acquired distinctiveness or modifying the trademark, TMWALA’s expert team ensures your application stays on track.

    RESPONDING TO OBJECTIONS

    If objections are raised, the applicant must take appropriate action to overcome them. There are a few ways to address objections:

    • Filing a Response: The applicant can provide explanations or evidence to support the distinctiveness of the trademark. For example, if the examiner objects on the grounds of descriptiveness, the applicant may provide evidence of the mark’s acquired distinctiveness through usage in the marketplace.
    • Amendment of the Application: In some cases, applicants may need to modify their application or amend the trademark in response to objections (e.g., changing the wording or the design of the logo).
    • Requesting a Hearing: If the applicant disagrees with the objections, they can request a hearing before the Registrar of Trade Marks to present their case and seek a resolution.

    PUBLICATION IN THE TRADE MARKS JOURNAL

    If the examiner accepts the application or the applicant successfully overcomes objections, the trademark is then published in the Trade Marks Journal. This publication serves to notify the public about the proposed trademark registration, allowing third parties to raise any opposition.

    The opposition period typically lasts 4 months from the date of publication. During this time, anyone who believes they will be adversely affected by the registration of the mark can file an opposition with the Trade Marks Registry.

    FINAL REGISTRATION

    If no opposition is filed, or if the opposition is resolved in favor of the applicant, the mark proceeds to the final registration stage. The applicant will receive a Certificate of Registration, confirming their exclusive rights to use the trademark in relation to the specified goods or services.

    CONCLUSION

    The trademark examination process is crucial to maintaining the integrity of the trademark system and ensuring that only those marks that meet the requirements of distinctiveness and legality are granted protection. Understanding the examination steps, responding to objections promptly, and being aware of the overall timeline can significantly increase the chances of successful trademark registration.

    From the moment an application is “Marked for Exam” to its final registration, the process requires careful attention, adherence to legal requirements, and strategic action. By navigating each step diligently, applicants can protect their brand identity and secure exclusive rights to their trademark in India.

    TMWALA, with its expert guidance at every stage of the processfrom filing to final registrationensures your trademark journey is smooth, timely, and successful. Whether you need assistance with formal review, responding to objections, or understanding the nuances of the process, TMWALA is the ideal partner to help you secure your brand’s legal protection.

  • TRADEMARK SEARCH REPORT

    INTRODUCTION

    Trademark search report is the first step taken by an individual, company or any other person when they need to know whether a specific mark exists, or they want a mark to get registered. Conducting a Trademark Search helps in ensuring that the logo, slogan or mark is unique and distinctive in nature. Trademark search reports becomeuseful in identifying the marks that can arise conflict or infringe the right of the owner of the mark. Trademark search is a very simple and easy process to do, anyone can do it.

    The result of Trademark search is based on the product description, which class it belongs too, which word or mark is being used. It not only shows the existing marks but also their present status like whether the mark is registered, opposed, abandoned etc.., In this article we are going to discuss what is Trademark, the importance of Trademark Search, types of Trademark Search, the process of Trademark Search, how it can be used as evidence and common mistakes during Trademark Search.

    WHAT IS TRADEMARK?

    A Trademark is a form of intellectual right property that distinguishes one brand’s goods and services with other brands goods and services. A trademark consists of a word, phrase, insignia, symbol or combination of all in one. The Trademark identifies that a particular goods or service belongs to whom, if anyone else tries to have the same mark for their goods or service the owner has the right to claim opposition as he has exclusive right on that Trademark.

    THE IMPORTANCE OF TRADEMARK SEARCH REPORT

    Trademark Search is an excellent example of ‘Precaution Is Better Than Cure’, as it can help in identifying the mark which can cause conflict in future. Conducting a Trademark Search is important as it can minimize the risk of investing in a mark that is already being used by some other party. It helps you to avoid any kind of legal dispute which can occur by using such mark and it also helps in saving your money from those legal processes which you may face using that disputed mark.

    TYPES OF TRADEMARK SEARCH

    In India various type of Trademark search can be done based who that trademark is going to be used by the Applicant, few of them are: –

    Phonetic search:

    It is done to find out that if there is any mark which soundsto the mark you are applying for, the words can be different but do those two marks sound similar? For example, Organic and Organik or Frooti and Fruiti

    Exact match:

    It is the most basic trademark search as it used to find the identical word to that of the proposed mark.

    For example: AYN and AYN

    Class wise search:

    There is a total of 45 classes of trademark, class 1 to 34 is for goods and 35-45 is for services. The class wise search ensures that no identical mark as of proposed mark exists in same class.

    For example: class 9 electronics, marks Sony and Soni

    Comprehensive search:

    Comprehensive search is in depth search of a mark, it includes all the above-mentioned searches and search of the status the similar mark whether it is opposed, abandoned or pending.

    THE PROCESS OF TRADEMARK SEARCH

    The Trademark Search is done by using the Trademark Registry online data, the search can be done by anyone by the following process:

    Visit the Trademark Registry’s official website Official website of Intellectual Property India

    Go to related links, there you find public search

    Click on public search, then it will ask permission to proceed to external site, click on yes

    You will reach the public search page, which looks like this:

    • Then fill in the required information on this page, for example
      • Search type: – type of search you are conducting (e.g. wordmark)
      • Wordmark: – type the wordmark you are searching for (e.g. AYN)
      • Class: – type the class in which you are searching for (e.g. 45)
      • Enter the code shown above: – carefully enter the captcha (e.g. 12345)

    • Search: – Last step is to click the search button, you will get all the similar existing trademark registered in Trademark Registry, like

    HOW IT CAN BE USED AS EVIDENCE

    Trademark Search Report can work evidence in Trademark infringement case where you must prove that you have taken the mark in good faith and in a bona fide intention.

    The Trademark search report includes details of every mark whether they were opposed, pending or abandoned, and if you have taken a mark which was abandoned by its prior user then your intention of applying that mark is in good faith, and this can benefit you in a Trademark infringement case.

    COMMON MISTAKES DURING TRADEMARK SEARCH

    While conducting a trademark search people usually make these mistakes: –

    • Not doing phonetic search: people usually do word mark search if it’s clear they think that there will be no conflict in registering this mark, but the phonetically similar sound can be a challenge later.
    • Not considering unregistered mark: this sounds confusing, how can an unregistered mark be a problem, but it can. If someone in the local area has been using a similar mark for a very long period, then they claim that they are the prior user of the mark which will eventually create a big problem for the present Applicant.
    • Filling the mark without an attorney:Trademark attorney or professionals make sure to check and clear every aspect related to your Trademark Registration. So contact TMWALA if you need any guidance regarding your Trademark Search or Trademark Registration.

    CONCLUSION

    Conducting a Trademark Search is the very first and most crucial process in Online Trademark Registration process. It ensures that your proposed Trademark does not infringe someone else’s Trademark rights. It also provides clarity about whether you should move forward with the present mark or not. A through Trademark Search by yourself or with the help of a profession can help you save a lot of your time, money, energy and help you avoid future conflicts, legal troubles and unnecessary hassle in the long run. 

  • Ethical Considerations in Trademark Law: Why Playing Fair Matters

    Introduction

    In this age of competition, the name, logo, and identity of a brand are everything. Brands are recognized by their names and logos, so that is part of the reason people trust them. But what if somebody unjustly replicates a well-known brand’s emblem or title?

    This is where the ethical aspects of trademark law come in.There’s more to trademark law — registering logos or slogans — than just trademark law; it’s also about doing the right thing.

    Being ethical means that you play fair, that you respect other people’s work, and that you do not mislead customers.

    Let’s break this down to understand what it means in layman’s terms.

    What is a Trademark?

    A trademark can be a sign, symbol, word, or logo that helps people identify your business or product.

    For example Nike Swoosh, the McDonald’s golden arches or the Apple logo have become so synonymous with the companies that you can tell immediately who owns them.

    Trademarks provide confidence to consumers that they know what they are purchasing.

    This is why it’s so important that trademarks are used fairly and ethically.

    What Are Ethical Considerations in Trademark Law?

    Ethics in trademark law is about ensuring that:

    • You don’t replicate someone else’s brand.
    • You can make a ton of products under one logo or product line without confusing the customer into thinking they are all alike.
    • You are sensitive towards cultural and religious sentiments.
    • You don’t use trademarks in a way that damages the business or reputation of others.

    It’s about being honest and fair with your making and using your brand.

    Why Are Ethics Important in Trademark Law?

    The ethics in trademark law matter because:

    1. Protects Honest Businesses: If anyone was allowed to copy brands freely, this would harm original creators. Ethics safeguard people who work tirelessly to create their brands.
    2. Prevents Customer Confusion: Consider if you bought a sneaker designed to look like a Nike shoe, and when you bought it realized it was not the real thing — you would feel ripped off. We have ethics that guard against that kind of confusion.
    3. Encourages Creativity: Ethics, on the other hand encourage businesses to forge their own unique identities rather than imitating.
    4. Respects Society and Culture: Trademarks cannot offend public sentiments or tarnish religious symbols.
    5. Builds Long-Term Trust: In fact, ethical branding creates cult-like consumers who will trust you for years to come.

    Best Practices and Alternatives: A Case for Ethics

    Let’s understand this with simple examples:

    Ethical Practice

    • Creating a Unique Logo: Rather than copying, you come up with yourown new logo.
    • Choosing An Original Brand Name: You do not use names that are similar to known brand names.
    • Respecting National Symbols: You are not disrespecting a national flag or a religious symbol in your brand.

    Unethical Practice

    • Copying a Famous Logo: Creating a logo that was close to Nike’s Swoosh and deceiving customers.
    • Using Confusing Brand Names: We’re talking about Naming your company ”Adibas” to get people to think its Adidas.
    • Disrespecting religious Values: Using sacred images or holy slogans just to gather attention without understanding their meaning.

    Ethical Guidelines under Indian Trademark Law

    There are also some ethical rules enshrined within the Trade Marks Act, 1999 in Indian law:

    • The examiners also accept that you cannot register a trademark that offends religious sentiments.
    • You cannot register anything that is immoral or against public order.
    • You cannot trademark something too alike an existing brand.

    It safeguards that trademarks are not misleading, fair, and honest.

    How Young Entrepreneurs Can Be Ethical

    If you are a young entrepreneur launching a brand, this is what you can do to remain ethical:

    • Research Before You Create: Ensure your logo or name isn’t too similar to another person’s.
    • Respect Culture and Religion: Be sensitive in how you use names, images or slogans.
    • Be Original: All of your idea’s have more impact than ones you have taken from someone else.
    • Register Your Trademark: Legally protect your creativity so that no one else can abuse it.

    It is good for all of us, and ultimately, it is good for your brand success too!

    Ethics and Global Trademark Practices

    There is a lot of emphasis on ethical trademark practices even at the international level (WIPO – World Intellectual Property Organization):

    • Equal fairness is expected from global companies.
    • Trademarks that deceive, confuse or are harmful to public interests are prohibited.
    • No matter, whether you’re a small business owner in India or a big startup dreaming international, ethics matter everywhere.

    Conclusion: Ethics = Stronger Brands

    It is not about who files first

    It’s about who plays fair.

    Ethical considerations ensure that:

    • Good businesses thrive.
    • Customers are happy.
    • Innovation continues.

    Young innovation entrepreneurs need to remember that success without values is temporary.

    But success in the realm of ethics, engenders trust, loyalty and respect — the cornerstones of any great brand.

    Thus, create your brand with creativity, guard it with trademark law and reinforce it with ethics.

    Because, after all, playing fair is the smartest business strategy!

    “Create Uniquely. Protect Legally. Grow Ethically.”

    Author Details: Aditya Krishna Gupta, 3rd year, BA LL.B. ,Jiwaji University, Gwalior 

    Reference Links:

    https://www.wipo.int/trademarks/en

    https://www.businesstoday.in/latest/corporate/story/patanjali-trademark-disputes-brand-name-legal-row-255678-2021-06-15

  • SECTION 28 OF THE TRADE MARKS ACT, 1999

    The Trade Marks Act, 1999 provides legal protection to registered trademarks, allowing owners to exclusively use and also to sue other trade marks for infringement. This exclusive right to use the registered trademark is provided under section 28 of the Trade Marks Act. 

    This article discusses the provision of section 28 of the Trade Marks Act in detail:

    Section 28(1) of the Trade Marks Act:

    Section 28(1) of the Trade Marks Act provides two rights to the Registered Proprietor:

    1. Exclusive right to use its registered trade mark: The Registered Proprietor has sole authority to use its registered trade mark.
    1. Right to seek relief in case of infringement: By virtue of exclusive right or sole authority over a registered trade mark, the Registered Proprietor has right to take legal action and seek relief against any person who is using the trade mark similar to its registered trade mark in any manner or such unauthorised use leads to confusion or deception amongst consumers or even general public.

    However, it is to be noted that such exclusive right to use a trademark is limited to specific goods or services in respect of which the trade mark obtained registration. In addition, the exclusive right granted under section 28(1) of the Trade Marks Act is not absolute and are subject to provisions of the Trade Marks Act.

    Illustration:

    A person ‘X’ got the trademark ‘Flewbee pretty’ registered for clothes and footwears. Later, ‘Y’ applied for registration of the same mark for the same goods. ‘X’ can stop ‘Y’ from using the same mark by taking legal action against him as ‘X’ have exclusive right to use the mark ‘Flewbee pretty’ for clothes and footwears by virtue of Registration under the Trade Marks Act.

    For more on trademark infringement and legal actions, visit WIPO’s Trademark Guide.

    Section 28(2) of the Trade Marks Act:

    The exclusive right conferred by section 28(1) of the Trade Marks Act to the registered proprietor to use the registered trade mark is not absolute. This exclusive right to use the registered trade mark is subject to conditions and limitations imposed on the trade mark while granting it registration.

    The conditions or limitations might be geographical, restriction on style or design of the mark, etc.

    Illustration:

    A person ‘X’ got his trademark ‘Flewbee pretty’ registered for clothes and footwears with the condition that the same shall be used only in the region of Madhya Pradesh and Maharashtra (Geographical condition). Later, ‘Y’ applied for registration of the same mark ‘Flewbee pretty’ for the same goods to be used in ‘Chandigarh’. ‘X’ cannot stop ‘Y’ from using its trade mark, as ‘X’ has exclusive right to use the trade mark ‘Flewbee pretty’ only in the region of Madhya Pradesh and Maharashtra.

    Section 28(3) of the Trade Marks Act:

    Section 28(3) of the Trade Marks Act provides that in case two or more persons have identical or similar registered trade marks, the exclusive right to use one registered trade mark does not extend against other similar registered trade marks. In simple words, it is clear that the However, the owners of such similar registered trade marks will have same rights against other persons using the trade mark similar to their registered trade mark. 

    Illustration:

    ‘X’ has registered Trade Mark ‘Flewbee pretty’ and ‘Y’ has registered trademark ‘‘Flewby pretty’’. Both the trade marks are similar, however, neither ‘X’ nor ‘Y’ can take any action against each other. But if ‘Z’ uses the mark ‘Flewbii pretty’ and the same is unregistered. Both ‘X’ and ‘Y’ will have same right to take action against ‘Z’.

    Case Law related to section 28 of the Trade Marks Act:

    P.M. Diesels Private Limited v. Thukral Mechanical Works

    In this case, it was decided that since both parties were registered proprietors of identical trade marks, although for different kinds of goods, neither the plaintiff nor the defendants had the right to file a lawsuit against the other. However, in the event that the trademark was violated by any third party, they would have the right to pursue legal action against any third party. To get in more depth about this case

  • SECTION 21 OF THE TRADE MARKS ACT, 1999

    A trademark is a unique symbol, logo, word, design or combination of these which is capable of being distinguished from the goods and services of one person or entity from that of another person or entity. By virtue of registration of a trade mark the owner of the trade mark enjoys exclusive right to use the same. The Trade Marks Act, 1999, which grants the registered trademarks legal protection and the owner exclusive rights, also regulated process of trade marks registration in India. Section 21 of the Act provides provisions related to opposition proceedings, allowing any person to challenge the registration of a trademark before it is officially granted.

    In addition, the Trade Marks Act, 1999 also provides process for opposition to a trade mark, where any individual or entity can challenge a trademark application if they feel, it violates their rights or creates confusion in order to preserve a fair and competitive market. This process of opposing a trade mark is outline under section 21 of the Trade Marks Act.

    Here is an article that discusses the provisions of section 21 of the Trade Marks Act in brief.

    Explanation of the terms used in the article:

    1. Oppose/Opposition: to contest or to challenge a trade mark.

    2. Opponent: The person who has filed opposition or the person who is opposing the Trade Mark applied for the registration.

    3. Applicant for Registration: The person who has filed application for the registration of the Trade Mark.  4. Opportunity to be heard: Giving the parties involved in the case equal and fair chance to present their arguments before deciding the case.

    Section 21(1) of the Trade Marks Act:

    According to Section 21(1) of the Trade Marks Act, any aggrieved person can oppose a trademark. It is not necessary for a person opposing a mark to be prior applicant or registered owner of trademark. However, it is a necessary requirement that the opposition must be in writing, in a prescribed manner and be filed within 4 months from the date of advertisement or re-advertisement of an application for registration in the Trade Marks Journal. 

    Section 21(2) of the Trade Marks Act:

    Section 21(2) of the Trade Marks Act imposes a duty on the Registrar of Trade Marks to serve a copy of the notice of opposition to the Applicant for Registration (person who filed application for registration of the trade mark). Further, section 21(2) of the Act imposes duty on the Applicant for Registration to reply to the notice of opposition by sending the counterstatement to the Registrar within two months from the date on which the Applicant for registration received the copy of the Notice of opposition.

    The Applicant for Registration, in the counterstatement, must state the grounds on which he relies for his trade mark application. Failure in doing say might result in the Application being abandoned and the same will not proceeded for registration. 

    Section 21(3) of the Trade Marks Act: 

    According to section 21(3) of the Trade Marks Act, if the Applicant for Registration sends the counterstatement within the prescribed period i.e. two months from the date of receipt of notice of opposition by the Applicant for Registration, the Registrar of Trade Marks is bound to serve a copy of the same to the opponent. 

    Section 21(4) of the Trade Marks Act: 

    After the Applicant gives the counterstatement in reply to the notice of opposition, the opposition process moves on to the evidence stage. According to section 21(4) of the Trade Marks Act, both the parties to the case i.e. the opponent and the applicant for registration are required to serve evidence in support of their claims. The opponent is required to file evidence in support of notice of opposition within two months from the date he receives the copy of the counterstatement.

    And the Applicant for Registration is required to file evidence in support of trade mark Application and counterstatement within two months from the date he receives the evidence filed by the opponent. Further, this sub-section provides that if the Registrar of the Trade Marks thinks fit, it must also provide both the parties the opportunity to be heard. 

    Section 21(5) of the Trade Marks Act: 

    Section 21(5) of the Trade Marks Act provides provision related to the decision by the Registrar of the Trade Marks. Accordingly, it provides that after considering the arguments of both the parties, evidence submitted and objections raised by the opponent in the notice of opposition, the Registrar of Trade Marks must decide whether to grant the registration to the trade mark applied for registration unconditionally, impose any conditions/ limitations on the same or refuse the registration. 

    Section 21(6) of the Trade Marks Act:

    According to section 21(6) of the Trade Marks Act, if the opponent or the applicant does neither resides nor conduct its business in India after receiving of the notice of opposition or the counterstatement, the Registrar can demand security for costs of proceedings before him. In case of failure to give the security for cost of proceedings, the notice of opposition or the application, as the case may be, will be treated as abandoned.

    Section 21(7) of the Trade Marks Act: 

    According to section 21(7) of the Trade Marks Act, if any party i.e. the opponent or the applicant for registration, desires to make any correction of any error or any amendment in the notice of opposition or a counter-statement, he can request to the Registrar of Trade Marks for the same. And, if the Registrar thinks fit, he may allow such correction or amendment. 

    CONCLUSION

    In conclusion, section 21 of the Trade Marks Act provides the provisions related to the process of opposing a trade mark in India. Accordingly, the opposition can be filed by any person within four months from the date of advertisement or re-advertisement. A copy of the said notice needs to be served by the Registrar of Trade Marks to the Applicant and the Applicant is bound to file counterstatement within two months from the date of the receipt of the copy of the notice, else the trade mark Application may be deemed to be abandoned.

    After the counterstatement is given, both the parties are required to be provide evidences to support their claims. After considering such evidences, giving opportunity to be heard and objections raised by the opponent in the notice of opposition, the Registrar may either grant registration to the trade mark or refuse the same.

    For a detailed legal perspective on trademark opposition, you can visit this resource to explore case studies and official guidelines.

  • How the New Trademark Law Changes Impact Indian Startups in 2025

    India’s trademark law scene is experiencing some well-deserved changes. With the government now centering on modernizing the legitimate systems to back advancement, financial development, and brand protection in India.

    Several emerging patterns and policy shifts are expected to shape trademark law in India in 2025 and beyond. Few of these include major changes like greater digitization, better enforcement measures, global harmonization, and finally some protection for non-traditional trademarks. Understanding these changes is crucial for the Indian start-up scene looking to fortify their intellectual property rights and navigating this rapidly evolving market.

    1. Digitization of Trademark Processes

    India has as of now made critical advancements in digitization of the trademark methods, thus lessening the reliance on manual filings and registration assistance. Be that as it may, another stage of advanced changes is anticipated in trademark law in India, as well as Indian Business Law, by joining the AI and blockchain revolution, modernising trademark management.

    AI’s Role in Trademark Search and Examination:

    The use of AI-driven search calculations will hopefully move forward the precision and proficiency of trademark examination, minimising the large number of clashes, overlaps, and litigation which usually arise. It may also eventually lead to decreasing the probability of false registrations and trademark infringements in India.

    AI can moreover help trademark workplaces in surveying applications for compliance and uniqueness.

    Blockchain for Trademark Records:

    Blockchain innovation can give tamper-proof and straightforward records and as well keep records as a part of the open chain software system it operates on, as well as guaranteeing secure tracking of trademark possession, assignments, and renewals.

    This development will help by offering assistance in combating extortion, unauthorized modifications, and disputes over ownership. Thus, in the future, it can even help settle or overall avoid trademark disputes like prior use as well. Decreasing unnecessary litigation which is rampant currently.

    2. Reinforcing Trademark Assurance in E-Commerce and Digital Marketplaces

    With the rise of online marketplaces, social media branding, and cross-border Digital commerce, Indian businesses confront modern dangers such as cybersquatting, forging, and trademark law in India. Future trademark law are likely to introduce stricter regulations to safeguard brand uniqueness and integrity in the digital space. These changes will also reflect on other Indian Business Law.

    Key changes include:

    • Domain Title Debate Determination: Reinforcing lawful instruments to address the rampant cybersquatting, where people enlist space names comparable to set up brands to confuse consumers.
    • Liability of E-Commerce Platforms: Holding online marketplaces and platforms responsible for trademark infringement in India happening on their websites and ordering them to execute strong protocols to counter and anticipate fake item listings and other such dubious practices.

    3. Extension of Trademark Laws in India to the Protection of Non-Traditional Trademarks

    Traditional trademarks such as logos, brand names, and slogans have long been ensured under trademark law in India. In any case, the modern market spaces are progressive in nature and driven by both tangible and intangible branding, requiring broader security for colour, sound, fragrance, movement, and hologram-based trademarks.

    Many global jurisdictions already recognize non-traditional trademarks, and India is expected to follow suit by introducing clearer guidelines for registration and enforcement. This will be particularly beneficial for industries like luxury goods, hospitality, fintech, and entertainment, where unique brand experiences are a competitive differentiator for brand protection in India.

    4. Stricter Requirements, Enforcement, and Punishments for Infringement

    Trademark infringement in India and counterfeit markets continue to be significant concerns in India. To strengthen enforcement, upcoming reforms are expected to introduce:

    Higher penalties and stricter criminal liabilities for repeat offenders involved in counterfeiting and unauthorized brand usage.

    Specialized IP courts to expedite trademark-related disputes and ensure faster resolution.

    Enhanced coordination between government agencies such as customs authorities and law enforcement to curb the influx of counterfeit goods.

    5. Greater Backing for Start-ups and MSMEs

    Recognizing the vital role of Indian startups and MSMEs in India’s financial development and their overall role in Indian Business Law & markets, the government is anticipated to streamline and even subsidise the trademark registration for start-ups and MSMEs.

    Key initiatives to be introduced include:

    Reduced fees and fast-track application processing for start-ups and MSMEs.

    Awareness campaigns and legal assistance programs to help Indian businesses understand the importance of trademark protection.

    Simplified enforcement mechanisms allowing Indian startups to challenge infringement without excessive legal costs.

    6. Worldwide Harmonization and Cross-Border Trademark Protection

    India has been effectively adjusting trademark law in India with worldwide Intellectual Property standards through agreements like the Madrid Convention.

    Future amendments may further streamline cross-border trademark registration and dispute resolution, making it easier for Indian brands and Indian businesses to expand into international markets well.

    Indian Businesses will benefit from:

    A single-window system for global trademark registration, reducing administrative burdens.

    Better legal frameworks for addressing international trademark conflicts, especially in cases involving multinational e-commerce platforms.

    7. The Rise of Ethical and Sustainable Trademarks

    Consumer preferences are shifting toward sustainability and ethical branding, prompting businesses to adopt environmentally friendly practices. Future trademark laws in India may introduce certification marks or eco-labels to distinguish brands that meet sustainability criteria.

    This will help green businesses build credibility and prevent misleading branding practices such as greenwashing, where companies falsely claim to be environmentally responsible.

    Challenges in Executing Trademark Reforms

    While these reforms promise a stronger, more efficient trademark regime, there are several challenges that must be addressed:

    Backlog of Pending Applications: Application processing delays persist despite digitisation initiatives. To ensure efficiency, more training and resources will be required.

    Accessibility and Awareness: Many companies, particularly those in rural and semi-urban areas, do not understand how important trademark protection is outreach initiatives must be expanded.

    Balancing Market Competition and IP Protection: While more robust trademark laws aid companies in safeguarding their brands, excessive regulation may impede access to widely used terminology and fair competition.

    Conclusion

    The future of trademark law in India is set to empower businesses & Indian Business Law with better brand protection, faster registration, and stronger enforcement mechanisms.

    By embracing digital advancements, expanding global integration, and addressing emerging challenges in the e-commerce space, India is positioning itself as a leader in intellectual property rights.

    As India continues its journey toward becoming a global innovation hub, a dynamic and forward-thinking trademark regime will be essential for fostering entrepreneurship, economic growth, and fair market competition.

    Author: Apoorva Lamba, 2nd Year LLB. Student of Madhav Mahavidyalaya, Jiwaji University, Gwalior

    Conduct Trademark Search on: https://tmrsearch.ipindia.gov.in/tmrpublicsearch/

    Read more about Trademark Search: https://legalguruindia.com/trademark-search/

  • How GST and Financial Year-End Planning Impact Your Trademark Registration

    In the ever-evolving landscape of the Indian business world, the taxation policies and intellectual property rights often intersect at varied points impacting the way businesses manage their assets. One such critical intersection is between the GST and Financial Year and trademark registration. While GST affects some very integral aspects of business operations, its impact on trademark registration in India is sometimes overlooked.

    As the month end along with GST and Financial Year 2024-25 filling approaches, businesses must plan strategically. One must ensure to optimize their tax benefits, ensure the necessary compliance, and safeguard their intellectual property. Let’s explore how GST and Financial Year affects trademark and trademark registration in India, and how businesses can bring into line their trademark strategies with financial year-end planning, and what measures they can and should take to minimize costs and maximize efficiency.

    GST and Its Role in Trademark Registration

    What is GST?

    The Goods and Services Tax (GST) is an indirect form of taxation which was introduced in India on July 1, 2017. It famously replaced a manifold of indirect taxes such as service tax, VAT, and excise duty and more. GST as the name suggests is levied on the supply of goods and services. GST and Financial Year are crucial aspects businesses must consider for compliance. These also include professional and legal services, those of which are associated with trademark registration.

    Although GST may not apply directly to the act of registering a trademark by itself, but it is applicable to various services related to trademarks. Some of which may include legal consultancy, licensing, renewals, and litigation. Businesses and individuals seeking trademark registration and trademark protection must understand the GST and Financial Year are crucial aspects businesses must consider for compliance. implications at large to ensure compliance and avoid any unnecessary financial burdens in form either penalties or charges.

    Taxes on Trademark-Related Services

    The following services incur the Goods and Services Tax (GST):

    1. Legal and Consultancy Services

    Most companies will acquire the services of a legal consultant or a Trademark Search and Filing Agent for trademark registration, as it is considered a professional service. This service also incurs a GST which increases the cost of attaining trademark protection. This is another cost that has to be factored into the budget of businesses during the GST and Financial Year planning.

    2. Trademark Registration and Renewal

    Trademarks in India are legally protected for a period of ten years; thus, they should be renewed to maintain legal protection. Therefore, expenses for services related to the maintenance of trademarks which includes legal counsel and filing requests and other forms have also been incorporated in the GST. Companies that do not budget for renewals are liable to incur GST and Financial Year burdens.

    3. Licensing and Assignment of Trademarks

    Trademark owners earn income for permitting other businesses to use their trademark, whether it is through licensing or assigning. According to GST and Financial Year, the act of granting permission or associated with the transfer of rights to a trademark is also taxable. Therefore, income from licensing the trademark is taxable, so businesses must ensure they use the tax and file the appropriate returns.

    Trademark Registration and Renewals Timing

    Strategic timing of trademark applications and renewals can help businesses get the most out of GST and Financial Year. These processes may allow companies to claim input tax credits sooner, which may improve cash flow management.

    Businesses should register their trademarks by March 31 to get GST and Financial Year tax benefits in the current fiscal year. 

    Auditing Trademark Expenses Financially

    A financial audit before the end of the financial year ensures that all trademark-related expenses, including GST payments, are correctly recorded. This practice helps businesses find tax-saving opportunities, avoid compliance issues, and prepare for tax filings each year. GST Compliance of Trademark Holders for GST Compliance. Businesses involved in trademark-related transactions need to stay in compliance with GST. 

    These steps can help businesses stay compliant: 

    Businesses involved in trademark licensing need to figure out if they need to register for GST. If the turnover exceeds the prescribed limit, then GST registration is mandatory.

    • Issuing GST-Compliant Invoices: Proper invoicing ensures that businesses can claim input tax credits and comply with GST regulations.
    • Timely GST Return Filing: Businesses should file their GST returns regularly, including all trademark-related transactions, to avoid legal issues and penalties.

    Implications of Non-Compliance

    Non-compliance with GST and Financial Year regulations can have severe consequences, including:

    1. Financial Penalties

    Failing to comply with GST obligations can result in penalties, increasing the financial burden on businesses. This can be particularly challenging for startups and small enterprises with limited resources.

    2. Legal Repercussions

    Non-compliance with GST and Financial Year laws related to trademark transactions may lead to legal disputes, affecting the company’s reputation and operations. Businesses may face litigation if they fail to collect or pay GST on trademark-related services.

    3. Denial of Input Tax Credit (ITC)

    Incorrect GST and Financial Year filings or failure to claim ITC on trademark expenses can lead to higher tax liabilities. Businesses must ensure that all GST payments related to trademark services are recorded accurately to maximize tax benefits.

    Best Practices for Managing GST and Trademark Registration

    To minimize tax liabilities and ensure smooth trademark registration processes, businesses should follow these best practices:

    1. Engage Professionals

    Consulting with tax and legal professionals helps businesses navigate the complexities of GST and trademark registration. Experts can provide guidance on claiming ITC, maintaining compliance, and optimizing financial planning.

    2. Implement Efficient Accounting Systems

    Using advanced accounting software can streamline GST compliance by tracking trademark-related expenses and automating tax calculations. This reduces errors and ensures timely filing of GST returns.

    3. Regular Training and Awareness Programs

    Businesses should educate their finance and legal teams about GST regulations and their impact on trademark transactions. Regular training programs help employees stay updated on compliance requirements and avoid costly mistakes.

    4. Proactive Financial Planning

    Instead of treating trademark registration as an isolated legal requirement, businesses should integrate it into their overall financial strategy. Planning trademark-related expenses alongside GST obligations ensures a smoother and more efficient financial year-end process.

    Conclusion

    Understanding how GST affects trademark registration in India is essential for businesses looking to protect their brand while maintaining financial compliance. With the Financial Year 2024-25 approaching, strategic planning can help businesses optimize tax benefits, ensure compliance, and streamline trademark registration and renewal processes.

    By aligning GST considerations with trademark strategies, businesses can safeguard their intellectual property, minimize financial risks, and contribute to a transparent and efficient economic environment. Proactive planning and adherence to GST regulations will ultimately help businesses enhance their financial health while securing their brand identity in a competitive market.

    By implementing these strategies, businesses can not only safeguard their trademarks but also optimize their financial and tax planning to stay ahead in the ever-evolving business environment.

    Wish to read similar articles? Click the link to read more: https://legalguruindia.com/blog-how-the-new-trademark-law-changes-impact-indian-startups-in-2025/

    Link to Official Government GST Portal: https://www.gst.gov.in

    Author: Apoorva Lamba, 2nd Year LLB. Student of Madhav Mahavidyalaya, Jiwaji University, Gwalior

  • Section 12 of the Trademark Act, 1999: Registration in the Case of Honest Concurrent Use & Special Circumstances

    The purpose of the Trade Marks Act, 1999 is to grant exclusive rights to a proprietors over their originally adopted and conceived mark while preventing any unauthorised use of such protected mark by anyone other than the original adopter and lawful proprietor. However, there are certain special circumstances in which the Trade Mark Act allows for the registration of identical or similar mark in respect of similar set of goods and services to more than one person.

    This could be done only in extraordinary circumstances as enshrined under Section 12 of the Trademark Act, 1999. The said act allows multiple proprietor to obtain registration of identical or similar trademark in relation to similar goods and services in case of honest and concurrent use.  Let’s understand this provision, its applicability and meaning in detail.

    What is Honest Use under Section 12 Of The Trademark Act?

    Honest use refers to a situation where a trademark has been adopted & thereafter used by a person in good faith and with bona fide intent. A mark is said to be honestly used when the mark has been independently adopted and used without knowledge of prior-existing identical or similar marks in the market. There is no intend to deceive anyone, cause confusion vis-à-vis any prior-existing mark or ride upon anyone else’s reputation.

    What is Concurrent Use under Section 12 Of The Trademark Act?

    Concurrent use refers to a situation where the identical marks are being used by two or more persons simultaneously & parallelly co-existing over a period of time. The law recognizes that there are certain circumstances like that of concurrent use which may not create confusion among consumers, especially if both businesses operate in different geographical areas or have different trade channels. Below is small and simple example of circumstances where the provision of Section 12 of The Trademark Act may be invoked.

    Example: ‘A’, being a seller of tea in Assam, adopts & starts to use the mark ‘Turban Tea’ in its local business for 20 years, unaware regarding the prior existence & use of the same mark by another tea seller ‘B’ in Karnataka since the past 21 years. Here ‘A’s adoption and use of the mark ‘Turban Tea’ is both honest and concurrent.

    Is Section 12 a Right or a Discretion?

    Section 12 of the trademark act gives discretionary power to the Hon’ble Registrar to exercise in special circumstances of honest and concurrent use by allowing registration of similar or identical marks. Ld. Registrar has to decide this on case to case basis whether such extraordinary or special circumstances exist to exercise its discretionary powers under section 12 of the Trademark Act. The registrar has to be sufficiently satisfied regarding the Honesty and Concurrency of use to exercise its discretion. For this, the Registrar is at complete liberty to call upon the parties to present cogent and unimpeachable documentary evidence substantiating their claim of Honest & Concurrent use.

    Even after being satisfied regarding Honesty and Concurrency of use, the registrar would check whether there are other special circumstances that justify allowing the use of similar marks like geographical differentiation i.e., marks being used in different geographical territories of India, established use of similar marks in the market that have created independent distinct identities despite the similarity.

    After being satisfied regarding the grounds mentioned above, the Registrar, if it thinks fit, may allow the registration of identical or similar marks. However, whether such registration is absolute, limited or conditional also lays on the Registrar.

    Conditions, Restrictions & Limitation under Section 12 Of The Trademark Act

    Section 12 of the trademark act empowers the Registrar to impose any condition, restriction or limitation over the registration of a mark as it deems fit. This right has been granted to the Registrar to remove any chances of potential confusion that might have arisen in the past or may arise in the future. Such any condition, restriction or limitation may include:

    • Limitation as to use in certain Geographical areas.
    • Restriction as to use in a relation to specific goods and services
    • Conditions regarding the manner of packaging/presentation of the marks to avoid confusion.

    Landmark Cases on Section 12 of the Trade Marks Act, 1999

    1. Kores (India) Limited vs Khoday Eshwarsa And Son, And Anr., (1985(1)BOMCR423) https://indiankanoon.org/doc/1226902/

    • In this case, the Hon’ble Bombay High Court laid down 5 pre-requisites for grant of registration under section 12 of the trademark act i.e.,

    a. The honesty of the concurrent use, 

    b. The quantum of concurrent use shown by the petitioners having regard to the duration, area and volume and trade and to goods concerned, 

    c. The degree of confusion likely to follow from the resemblance of the applicants’ mark and the opponents’ marks.

    d. Whether any instance of confusion have in fact been proved, and 

    e. the relative inconvenience which would be caused to the parties and the amount of inconvenience which would result to the public if the applicants’ mark is registered.

      1. London Rubber Co. Ltd vs Durex Products, 1963 AIR 1882 https://indiankanoon.org/doc/1333219/ 

        The Hon’ble Supreme Court, in this case held that, there is no requirement to establish no probability of confusion. The simple fact that there has not been a single instance of confusion throughout the years of concurrent use of both the marks is enough to take the benefit of section 12 of the trademark act.

        Exceptions to Section 12 Of The Trademark Act:

        There are however certain circumstances where even after fulfilling the criteria laid down under the express provision as well the judicial pronouncements surrounding section 12 of the trademark act, registration to a mark cannot be granted. Such exceptions to the applicability of section 12 of the trademark act involve the circumstances where one mark is a well-known mark, in the case of trademark squatting, where the prior user has the bona fide plans of expansion in the same field as the later adopted mark etc. Thus, exercise of discretion under section 12 of the trademark act there is no rule of thumb and has to be decided on case to case basis.

        Conclusion: Section 12 of the Trademark Act

        Section 12 of the Trade Marks Act, 1999, provides certain amount of flexibility for businesses that have used similar or identical marks in good faith. This section ensures that the efforts, time and money spent by businesses over the honest and concurrent use and adoption of their marks do not outrightly go into vain. However, the burden rests on the Registrar to strike a balance between allowing businesses to protect their established marks and protecting the rights of honest and concurrent users. It was the total overview of Section 12 of the Trade Marks Act.

      1. The Ultimate Guide to Trademark Registration in India: Step-By-Step Process and Tips

        The Ultimate Guide to Trademark Registration in India: Step-By-Step Process and Tips

        Introduction

        Think of trademark as your brand’s unique footprint which distinguishes your brand from the others in the market. The term trademark has been derived from the words ‘Trade’ meaning business activities & ‘Mark’ meaning any sign or symbol. Let’s dive in to get more about trademark and trademark registration.

        Thus, a trademark is any symbols, words, phrases etc., used in relation of trade or business which distinguishes the goods and services of one person from the other. Example: The Nike Swoosh & the Apple logo. Trademarks are instrumental in ensuring business’ success as it helps customer identify your goods and services in the pool of goods and services present in the market. It protects brand’s unique identity & reputation and helps build trust and loyalty amongst customers. Trademarks are an indispensable tool to ensure business success.

        What is a Trademark?

        Trademarks are Distinctive Source Identifiers i.e., these are symbols, words, phrases etc. which make your business unique and help customers identify the goods and services manufactured, sold or rendered by you. Basically, any indication that helps customers differentiate between the goods and services of two sellers in the market can be termed as a trademark.

        Let’s now understand, what all can be registered as a trademark:

        1. Word/Names: Calvin Klein, Google
        2. Logo: Nike Swoosh, Apple Logo
        3. Symbol: Starbucks Logo, McDonalds Logo
        4. Slogan: Amul-The Taste of India, L’Oréal Paris-Because You’re Worth It 
        5. Mascot: The Amul Girl
        6. Colours: Tiffany Blue
        7. Shape of Goods: Coke Contour Bottle, Toblerone Chocolate

        Fun Fact: even smell, sound, taste, feel, personality etc., can come under the purview of trademarks.

        What are the essentials features of a Trademark?

        For anything to qualify as a trademark, it must meet the following essential criteria:

        1. Uniqueness: A trademark must be novel, unique and should not resemble an existing trademark.
        • Distinctiveness: A trademark should not be generic and shall be capable of distinguishing the goods and services of one person from another
        • Non-Descriptive: A mark which only describes the kind, quality, intended purpose, values, geographical location or time or origin, cannot qualify as a trademark. Example: A trademark ‘Fresh n Juicy’ for fruit juices is descriptive of its quality, thus cannot qualify as a trademark.
        • Use in Commerce: It is essential for a mark to be used in relation of trade/business/commerce, to qualify as a trademark.

        Apart from the aforesaid, a trademark should not hurt the religious sentiments of the public, should not cause public confusion or deception & shall not contain any scandalous or obscene matter.

        Benefits of a Trademark?

        Trademarks offer a host of benefits to brand owners including:

        1. Brand Recognition: Trademarks help customers recognise the your brand in the pool of brands in the market.
        • Legal Protection: Trademark registration protects brand owners from unauthorised use and infringement of their trademark.
        • Asset Value: Registered trademarks, although intangible, are a significant asset to a business, both literally and figuratively. Trademarks are entered on the asset side of the balance sheet and rightfully so. With passage of time, even investors are more inclined towards investing in businesses with strong IPR Portfolio which includes trademarks. Alike other assets, the value of trademarks also appreciate overtime.
        • Consumer Trust and Loyalty: Consistently providing quality items to customers ensure customer trust and loyalty. Thus, often enough, trademarks start to be identified for their quality which leads to trust building.
        • Exclusivity: Trademark grants the brand owner, rights to the exclusive use of the mark. It also entitles brand owners with the exclusive rights over all the economic benefits arising from its trademarks.

        Pre-Registration Steps:

        Trademark registrations are crucial for business success, but, before proceeding with filing of trademark application or adoption of a trademark, one must, without exception, follow the following steps to ensure a smooth and conflict free trademark registration process

        • Conducting a Trademark Search: It is crucial to conduct a thorough search of the records of the Trademark Register before adoption/filing of a trademark to avoid any potential conflict or litigation. This process will ensure that your mark is completely unique and there no one who is already the owner of a trademark identical or similar

        You can perform a trademark search on the official website of the Intellectual Property India (IPI) or hire TMwala to conduct a comprehensive trademark search for you. For Example: If you plan on adopting the trademark “Happy Cakes”, the trademark search might reveal that the same name “Happy Bakes” is already registered by another party, indicating a potential conflict.

        • Choosing the Right Trademark Class: Trademark classes are set of clusters in which goods and services of similar nature are grouped. This is done to simplify registration process. India follows the Nice Classification of goods and services established by the Nice Agreement, which is used internationally. There are 45 trademark classes in India which are divided into two main categories: Classes 1 to 34 cover goods, and Classes 35 to 45 cover services. You may search for the appropriate class of the goods covered by your trademark by conducting a search on Tmwala’s website. Example: Footwear falls in class 5, Restaurant Services fall under class 43 etc.
        • Collection of Necessary Documents: If your trademark is already in use prior to filing of the trademark application, all such documents substantiating the use of the mark along with user affidavit have to be collected. Example: collection of sale bills, government registrations and licenses, advertisements, financial statements etc.

        Step-by-Step Process of Trademark Registration in India

        • Filing the Trademark Application: Once all the Pre-Registration steps are completed, trademark application is filed on IPIndia’s website. The trademark application is filed on Form TM-A and requires providing of information relating to the trademark and its proprietor. The application can be filed either online or offline.
        • Formalities Check: After the foregoing steps are completed, trademarks are then proceeded for Formality check wherein the trademark application along with the accompanying documents undergo a thorough screening process. If any procedural discrepancy is found, a formality check report is issued which ought to be complied with, within one month from the date of issuance, by removing the raised discrepancies.
        • Trademark Examination: The next step is trademark examination where a Trademark Officer reviews the trademark application for its correctness and issues a trademark examination report in case your trademark has issues such as lack of distinctiveness, descriptiveness, and similarity to prior trademarks. To be eligible for registration, the trademark must be distinctive, non-descriptive, and free of similarity to existing trademarks. If the application violates Section 9 or 11 of the Trademark Act, 1999, the Trademark Officer issues an Examination Report with objections and lists similar brands within the same class. At this stage, the status of the mark is ‘Objected’.
        • Reply to Examination Report: Within one month from receiving the Examination Report, a reply to the same must be filed. Failure to respond within this timeframe may result in the abandonment of the application. If the trademark office finds the reply satisfactory, the mark is accepted and advertised in the trademark Journal. If not, the trademark is proceeded for Show-Cause Hearing.
        • Journal Publication: If the application is accepted and advertised, the proposed mark is published in the trademark journal for a 4-month period. During this time, the anyone can oppose the trademark application. If no opposition is received within the specified period, the trademark is deemed registered.
        • Opposition: According to Section 21 of the Trademarks Act, 1999, any person, within 4 months from the date of advertisement, may file an opposition against the registration of trademark. Common grounds for opposition include:
          • The trademark is similar or identical to an earlier or existing registered trademark.
          • The trademark is devoid of distinctive character.
          • The trademark is descriptive.
          • The trademark registration application is made with bad faith.
          • The trademark is customary in the current language and or in the established practices of a business.
          • The trademark is likely to deceive the public or cause confusion.
          • The trademark is contrary to the law or prevented by law.
          • The trademark is prohibited under the Emblem and Names Act, 1950.
          • The trademark contains matters that are likely to hurt any class or section of people’s religious feelings etc.

        • Counterstatement and Stages of Evidence: Following the notice of opposition, the next stage involves filing a counterstatement and presenting Evidence in support of Opposition under Rule 45(1), Evidence in Support of Application under rule 46(1), Further Evidence in Reply by the Opponent under Rule 47 along with any additional Evidence under rule 48 of the TM Rules, 2017.
        • Hearing with Third-Party: After completing all evidence stages, a hearing is scheduled with the Trademark Hearing Officer to decide the fate of the opposition proceedings. Either the opposition is quashed and trademark proceeds for registration, or the opposition is allowed and trademark is refused registration.
        • Trademark Registration: If there are no oppositions or if any oppositions are set aside, the Trademark Registration Certificate is issued, and the symbol ® can be used alongside the logo or brand name. Further, trademark registration also gives the owner, the right to institute suit for infringement.
        • Renewal: Trademarks are initially valid for 10 years from the date of filing of the trademark application. After this period, they can be renewed for another 10 years indefinitely. 

        In conclusion, following the above process ensures statutory protection for the trademark. While it’s not mandatory, it is highly recommended to consult with a trademark attorney or agent who can guide you through the process, conduct searches, and ensure your application is in compliance with the law. 

        FAQs:

        How long does it generally take to get your trademark registered in India?

        A trademark generally takes anywhere between 9-12 months for a trademark to receive registration in India. However, this time frame is only applicable in conditions where no objections or third party oppositions are issued against the applied mark.

        Who can apply for a trademark registration? 

        Any individual person, Partnership, Company, HUF or Corporation is eligible to file for a trademark registration in India.

        What is the difference between TM & ® symbol?

        The TM symbol is used to indicate a trademark claim. It is generally used in cases where a trademark has been applied for registration, but the registration is in process. It is important to remember that TM symbol is not an indication of trademark registration. Whereas the ® symbol is used to denote a registered trademark.

        What if someone uses the ® symbol without valid trademark registration?

        Unauthorised use of the ® symbol is illegal and use of the same without a valid registration could lead to legal problems and fines.

        What is infringement?

        When someone uses your registered trademark without your permission, it is called infringement. In case someone infringes your mark, you can take legal action and file a suit for infringement against them in court.

        Can I file a suit for infringement if my trademark is not registered?

        No, suit for infringement cannot be filed is someone uses your unregistered trademark without permission. However, in such case, a suit for passing off may be instituted.

        What is the validity of trademark registration in India?

        A trademark is valid for a period of 10 years from the date of registration, however, you may keep on renewing the same for the another 10 years indefinitely.

        Does trademark registration in India guarantee international protection?

        No, trademark registration only ensures protection in the particular jurisdiction only. A trademark registration in India only grants rights within the geographical territory of India. Trademark registration for each country has to be obtained individually.

        Can I register a domain name as a trademark?

        Yes, domain names can be registered as trademarks so long as they qualify the essential elements of trademark.

        What are the types of trademarks that can be registered in India?

        Any names, logos, word, artwork, mascot, slogan, symbol, shapes, smells, sounds, taste, touch etc., can be registered as trademarks in India if they possess the essential features of a trademark i.e., distinctiveness, uniqueness, source identification and use in trade.

        Wish to learn more about trademark registration? Click the link to learn more: https://legalguruindia.com/trademark-registration/

        Link to the official website of the Trade Marks Registry: https://www.ipindia.gov.in