TRADEMARK

TRADEMARK

A trade mark is any sign which can distinguish the goods and services of one trader from those of another. A sign includes words, logos, colours, slogans, three-dimensional shapes and sometimes sounds and gestures.

A trade mark is therefore a "badge" of trade origin. It is used as a marketing tool so that customers can recognise the product of a particular trader. To be registrable in the UK it must also be capable of being represented graphically, that is, in words and/or pictures.

Frequently Asked Questions about Trademark:

Trademarks are words, names, symbols, brands, devices, headings, labels, tickets, signatures, letters or numerals or any combination thereof, used or proposed to be used by manufacturers of goods to identify and to distinguish their goods from goods manufactured and sold by others. A person who sells his goods under a particular trademark acquires a sort of limited exclusive right to use the mark in relation to those goods

Trademark registration protects the goodwill of a business and also helps to identify and distinguish the source of the goods or services of one party from those of others. Trademark registration is an evidence of ownership of the trademark and also constructive notice nationwide are issued of the trademark owner's claim. Trademark registration in India can also be used as a basis for obtaining registration in foreign countries.

The application must be filed in the name of the owner of the trademark; usually an individual, corporation or partnership. Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.

A trade mark which consists of at least one of the following essential particulars :

1. the name of a company, individual or firm represented in a particular or special manner;

2. the signature of the applicant for registration;

3. one or more invented words;

4. one or more words having no direct reference to the character or quality of the goods and not being according to its ordinary signification a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India;

5. any other distinctive trade mark;

6. a trade mark which has acquired distinctiveness by use over a prolonged period of time, may be registered.

Trademark which is identical to or deceptively similar to a trademark which is already registered or has already been applied for in the name of a different proprietor in respect of the same goods or description of goods, may not be registered. Also trademark the use of which would be likely to deceive or cause confusion; the use of which would be contrary to any law in force; which comprises or contains scandalous or obscene matter or any matter likely to hurt the religions susceptibilities of any class or section of the citizens of India; may not be registered.

Conduct a market research to ascertain whether any identical or deceptively similar mark is used for the same goods by any other person. It is advisable not to imitate other persons trade mark or any other well known trade mark even if the goods are different. Before applying for registration it is desirable to obtain preliminary advice regarding the distinctiveness of your mark from the Registrar

In order to determine whether any person or company is using a particular trademark, a trademark search can be conducted.

A trademark search is designed to identify pre-existing trademarks that have the potential to conflict with your name. Without the benefit of a trademark search, you run the risk of being sued for trademark infringement and losing the right to use your new business name, product name, domain name or slogan after you have invested in that name. Uncovering and avoiding trademark conflicts with your name can often mean the difference between the success and failure of your business venture.

Yes, it is advisable to get the official search report from the registered and pending application records before filing the application

Your trademark search results will help you save valuable time and money. Before you make a large investment in a name, you want to know whether it is secure. You would not like to promote a name that is confusingly similar to another company's trademark and subjects you to the risk of a lawsuit for trademark infringement Your search results will help you complete your own application by giving you numerous examples of completed registrations.

Due to a lot of back log and also since the applications are processed on "first come first serve" basis generally, it takes on an average about 5-6 years before the mark is registered provided no opposition is entered by any third party.

A trademark registration is valid for seven years from the date of filing. You have to apply for renewal after this time-period.

No. A separate application must be filed for each mark the applicant wishes to register. Likewise, if the applicant wishes to register the same mark in more than one class, a separate application must be filed for each class.

Other than your particulars that you submit to us while requesting Trademark Search, the document needed is Power of Attorney in our favour

We, Glow Well, will assist you in the process of filing your application for trademark registration. Please make an enquiry online by clicking here stating your requirements.

Yes, the Trademark office will refuse to register matter if it does not function as a trademark. Not all words, names, symbols or devices function as trademarks. For example, matter which is merely the generic name of the goods on which it is used cannot be registered.

No. However, an applicant's citizenship must be set forth in the record. If an applicant is not a citizen of any country, then a statement to that effect is sufficient. If an applicant has dual citizenship, then the applicant must choose which citizenship will be printed in the Official Gazette and on the certificate of registration.

No. Certain countries, however, do recognize a trademark registration in India as a basis for registering the mark in those countries. The laws of each country regarding registration must be consulted.

An agreement for payment of royalty to a non-resident requires the prior approval of the government. The government's policy statement makes it clear that in case of a use of a foreign brand name a payment of royalty shall not be allowed unless the products on which the mark is used are intended for export.

Yes. A registered mark, or a mark for which an application to register has been filed is assignable

Once you have filed an application for registration of trademark, the "TM" symbol may be used with the mark. Anyone who claims rights in a mark may use the TM (trademark) designation with the mark to alert the public to the claim. However, the registration symbol, ®, may only be used once the mark is actually registered in the Trademark Registrar's Office. Even though an application is pending, the registration symbol may not be used before the mark has actually become registered.

Once you receive a filing receipt containing the serial number of your application, you may check on the status of a pending case by getting in touch with us.

There are two forms of legal protection that are available for trademarks. Under the Trade Marks Act, 1999, once the trademark is registered, infringement can be easily established. In case of unregistered marks and marks which are not registerable, the only form of protection is the common law remedy of passing off. Trademark law protects the right of the owner of a mark to use marks that distinguish his goods from others and to prevent others from using marks that are likely to cause confusion

The basic difference between an infringement action and an action for passing off is that the former is a statutory remedy and the latter is a common law remedy. Accordingly, in order to establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required. In the case of a passing off action, proving that the marks are identical or deceptively similar alone is not sufficient. The use of the mark should be likely to deceive or cause confusion. Further, in a passing off action it is necessary to prove that the use of the trademark by the defendant is likely to cause injury or damage to the plaintiff’s goodwill, whereas in an infringement suit, the use of the mark by the defendant need not cause any injury to the plaintiff. However, when a trademark is registered, registration is given only with regard to a particular category of goods. Protection is, therefore, afforded only to these goods. In a passing off action, the defendant’s goods need not be the same; it may be allied or even different.

There are several ways to dispute use of your trademark by a third party. Send us an e-mail and depending on the actual situation, we may assist you in contesting the trademark.

Please make an enquiry online by clicking here and we will tell you the costs involved. If you have any further queries, please do not hesitate to send us an e-mail at helpdesk@glowwell.com