Trademark

A trademark is a distinctive sign or indicator used by an individual,business organization, or other legal entity to identify that the products or services to consumers to distinguish its products or services from those of other entities and to show a unique source.

A trademark is typically a name, word, phrase,logo, symbol, design, image, or a combination of these elements. There is also trademarks comprising marks which do not fall into these standard categories, such as those based on color, smell, or sound. When a trademark is used in relation to services rather than products, it may sometimes be called a service mark

Trade mark gives some exclusive rights which can be enforced by way of a suit for trademark infringement. Unregistered trademark rights may be enforced under the law relating to passing off.

Under law different goods and services have been classified by the International (Nice) Classification of Goods and Services into 45 Trademark Classes(1 to 34 cover goods, and 35 to 45 services).

Terms such as "mark", "brand" and "logo" are sometimes used interchangeably with "trademark". "Trademark", however, also includes any device, brand, label, name, signature, word, letter, numerical, shape of goods, packaging, color or combination of colors, smell, sound, movement or any combination of these which is capable of distinguishing goods and services of one business from others.

The registration process entails several steps prior to a trademark receiving its Certificate of Registration. First, an Applicant, the individual or entity applying for the registration, files an application to register the respective trademark. The application is then reviewed by an examining authority and more often than not, the registrar will issue an office action requiring the applicant to address certain issues or refusals prior to registration of the mark. After the examination of the mark has concluded with no issues to be addressed or an applicant has responded adequately to an registering authorities concerns, the application will be published for opposition. During this 30-day period third-parties who may be affected by the registration of the trademark may step forward to file an Opposition Proceeding to stop the registration of the mark. If an Opposition proceeding is filed it institutes a case before the Trademark Trial and Appeal Board to determine both the validity of the grounds for the opposition as well as the ability of the applicant to register the mark at issue. Fourth, provided that no third-party opposes the registration of the mark during the opposition period or the opposition is ultimately decided in the applicant's favor the mark will be registered in due course. This entire process is called trade-mark prosecution.

A registered trademark confers a bundle of exclusive rights upon the registered owner, including the right to exclusive use of the mark in relation to the products or services for which it is registered. The law also allows the owner of a registered trademark to prevent unauthorized use of the mark in relation to products or services which are identical or "colourfully" similar to the "registered" products or services, and in certain cases, prevent use in relation to entirely dissimilar products or services. The test is always whether a consumer of the goods or services will be confused as to the identity of the source or origin.

A thorough search as to the availability of a mark is very important. In the India, obtaining a trademark search and relying upon the results of an opinion issued by an attorney may insulate a trademark user from being required to pay treble damages and attorney's fees in a trademark infringement case as it demonstrates that the trademark user performed due diligence and was using the mark in good faith. The best searches are possible on databases like LexisNexis, Dialog and Compu-Mark.

The extent to which a trademark owner may prevent unauthorized use of trademarks which are the same as or similar to its trademark depends on various factors such as whether its trademark is registered, the similarity of the trademarks involved, the similarity of the products or services involved, and whether the owner's trademark is well known.

A trademark may be sold with or without the underlying goodwill which subsists in the business associated with the mark. However, this could be treated as a " fraud upon the public", if it is not accompanied by the sale of an underlying asset. Examples of assets whose sale would ordinarily support the assignment of a mark include the sale of the machinery used to produce the goods that bear the mark, or the sale of the corporation (or subsidiary) that produces the trademarked goods.

Whether you’re getting ready to launch a business or a product, or you’ve already been in business for several years, trademark protection of your company and/or brand or product name, design mark, color, or sound, or slogans and packaging is crucial.

Trademarks can be applied to words, logos, phrases, shapes, sounds, or colors. They can also include initials and number combinations such as IBM and 3M. The following are examples of different items that can be registered for trademark protection:

Design marks: may consist of product packaging or trade dress for goods or services.
Slogans: A slogan can function as a trademark if it is not merely descriptive or informational. For example – Taste the thunder for a soft drink; and, Just do it for a footwear.
Color: Color marks are trademarks that consist of one or more colors used on particular objects. For trademarks used in connection with goods, the color may be used on the entire surface of the goods, on a portion of the goods, or on all or part of the packaging for the goods. For example, the color red and yellow on Kotak. Color is usually perceived as an ornamental or functional feature of goods or services, which is not subject to trademark protection. However, color can function as a mark if it is used as a trademark and if it is perceived to identify and distinguish the goods or services and to indicate their source.
Sound Marks: A sound mark identifies and distinguishes a product or service through audio rather than visual means. Examples of sound marks include: (1) a series of tones or musical notes, with or without words, and (2) a word or words accompanied by music. Eg: Airtel jiggle directed by A.R Rahman

If you’re beginning to think about your business’ trademark particulars, or if you already have a solid trademark idea, keep these tips in mind:
A trademark is a word, name, symbol, or device that distinguishes the identity of a product or service provider from other brands.
Ideally, the trademark is simple, short, easy to pronounce, easily recognizable, and readily remembered.
A trademark should be highlighted by display in capital letters or in italics so that it is easily distinguishable from other words in close proximity.
Notice of trademark rights should accompany the first or most prominent use of a trademark on the product in advertisements, marketing materials, etc.
A trademark should not be used as a noun, but must always be used as an adjective. Example: Buy SURF detergents for clean cloths. Not: Buy SURF for for clean cloths.
A trademark should not be modified or used in a different form, for example, through hyphenation, combination, or abbreviation.

In India and most other common law countries, it is not necessary to register a trademark to develop rights in the mark; however, registration does provide significant advantages:
Trademark registration grants rights throughout India. Without federal trademark registration, use rights are only valid in a company’s service territory or where the product is distributed.
A trademark registration in India is prima facie evidence of a valid trademark, denoting the registrant’s ownership of the mark, and the exclusive right to use the mark in connection with the goods or services.
A registered trademark is more likely to appear in a search report, and this may dissuade others from adopting a mark that is identical or confusingly similar to the registered mark.
The Indian Trademark Office may refuse to register a third-party trademark on the basis of a prior registration. This reduces the likelihood that a costly opposition or other proceeding will be necessary in order to protect exclusive rights in the registered trademark.
Once a trademark registration is granted, it can be maintained as long as the trademark is used in connection with the goods or services for which it is registered. Periodic proof of use must be filed with the Trademark Office in the form of a declaration of use and at the time of renewal.

At Glide Legal we will conduct a thorough search to determine if your proposed trademark is available for use. This search should be done as soon as a new trademark is proposed and before any significant expenses for development, advertising, or printing are incurred. If a trademark is adopted without performing a search and it infringes on another’s trademark rights, it often becomes necessary to adopt a new trademark.

Our trademark lawyers will review the search results and make a recommendation as to the availability of the proposed trademark. While fanciful or arbitrary marks make the best trademarks, suggestive or descriptive marks can also be used if they are made more distinctive by adding an original design element, stylizing the lettering, adding or deleting words, etc.

At Glide Legal, we recognize the importance of maintaining a strong trademark and the business harm that can result from trademark dilution. We can lead you through the Indian or international trademark registration process and can explain the benefits of trademark registration.