Question-1. What cannot be registered as Trademark?

Answer – In a layman’s language, trademarks that are not distinctive, that are descriptive or that give rise to a likelihood of confusion cannot be registered.

Extensively, Sections 9 and Section 11 of the Trademarks Act, 1999 provides the Absolute and the relative grounds under which a trademark registration shall be rejected i.e. cannot be registered.

Section 9, simply put, disallows the following trademarks from being registered trademark:

• Trademarks that do not have a distinctive character.

This simply means that the trademarks that cannot distinguish the goods or services of one person from that of another cannot be registered. The whole purpose of trademark law is to enable distinction between brands. No mark that takes away from this purpose can be registered.

• Trademarks that describe the good or service and give the consumer an idea about the quality, quantity or geographic origin of the particular good or service. Descriptive trademarks cannot be registered.
• Marks that have become customary in the current language.

For example, a consumer associates a restaurant with a chef.

• Apart from this marks that are deceptive, hurt religious sentiments, are obscene or describe the shape of the good cannot be registered.

Section 11 disallows the following from being registered trademark:

• Trademarks that may cause ‘likelihood of confusion’.

This simply means that identical marks on similar goods and similar marks on identical/similar goods. A consumer views the trademark in its entirety. The test is to see if the consumer can distinguish between similar trademarks. In Society Des Products vs. V.M. Confectionary Limited the court held that the words ZERO and AERO to be similar as mere phonetic dissimilarity was not enough to enable a common person from distinguishing between the two.

• Trademarks that are Well-known:

Trademarks that people are familiar with cannot be registered even if the goods are not similar as this would affect the reputation of the person who owns the well-known trademark.

Question -2.  How can I trademark my company’s name in India?

Answer  – Here’s an easy guide through which a corporate identity could register a Trademark:

1. Trademark Search:

The first and foremost step is to search and ensure whether there are any similar trademarks already registered or not. This would help you to overcome any grounds of refusal for rejection of a Trademark application. This search could be done at https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx

2. Filing the Trademark Registration Application:

After ensuring with the Trademark Search, A trademark application could be made with the Trademark Registry. This application could be done either offline (at the Trademark Offices) or through Online Mode.

3. Examination

After an application is filed, the same is examined by the Examiner of Trademarks. Normally the Examination process takes 12 to 18 months to be completed. The examiner could also for any clarifications form the applicant if any discrepancies are found, and the same shall be justified from the end of the applicant.

4. Publication

Once the application is examined thoroughly, the same shall be published in the Trademark Journal. The purpose of the publication is with respect to any Objections raised, if any, by any other entity or person.

5. Registration

Usually after 3-4 months of the Trademark Publication, a Registration certificate is granted by the Trademark Office. The same could be renewed every 10 years for its due protection.

Question -3. Can we use our logo on company’s letter-head without copyright/trademark?

Answer – There are no restrictions as such to use a logo without a trademark, subject to conditions that such logo is not already registered by any other entity or that such logo is not in resemblance with any registered or famous logo already in existence.

But there are also chances that someone else could also use the same logo as yours or they could make a Trademark application for the same logo and register it before you do. Therefore it is always advisable to make a trademark application at the earliest.

Securing a Trademark protects your brand, and provides you with the tools to prevent someone using similar signs and riding off the back of your business with many benefits as Unique Identity, Creation of Goodwill, Popularizing your brand, Global Recognition, etc. It is always advisable to make a trademark application at the earliest.

Question -4. Is it compulsory to register a trademark in India?

Answer – Securing a Trademark protects your brand, and provides you with the tools to prevent someone using similar signs and riding off the back of your business with many benefits as Unique Identity, Creation of Goodwill, Popularizing your brand, Global Recognition, etc. It is always advisable to make a trademark application at the earliest.

There are no restrictions as such to use a logo without a having trademark registration, subject to conditions that such logo is not already registered by any other entity or that such logo is not in resemblance with any registered or famous logo already in existence.

But there are also chances that someone else could also use the same logo as yours or they could make a Trademark application for the same logo and register it before you do. Therefore it is always advisable to make a trademark application at the earliest.

Question –5.  How can I register a product under a trademark?

Answer –  Here’s an easy guide through which a person/entity could register a Trademark:

1. Decide or Come up with a Mark/Name/Logo for the specified product:

Decide on which Mark/Name/Logo/Device you want to register as a trademark.

2. Trademark Search:

The first and foremost step is to search and ensure whether there are any similar trademarks already registered or not. This would help you to overcome any grounds of refusal for rejection of a Trademark application. This search could be done at https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx

3. Filing the Trademark Registration Application:

After ensuring with the Trademark Search, A trademark application could be made with the Trademark Registry. This application could be done either offline (at the Trademark Offices) or through Online Mode.

4. Examination:

After an application is filed, the same is Examined by the Examiner of Trademarks. Normally the Examination process takes 12 to 18 months to be completed. The examiner could also for any clarifications form the applicant if any discrepancies are found, and the same shall be justified from the end of the applicant.

5. Publication

Once the application is examined thoroughly, the same shall be published in the Trademark Journal. The purpose of the publication is with respect to any Objections raised, if any, by any other entity or person.

6. Registration

Usually after 3-4 months of the Trademark Publication, a Registration certificate is granted by the Trademark Office. The same could be renewed every 10 years for its due protection.

Question-6.  How much does it cost to trademark and register a brand name and logo in India?

Answer- As far as Government fees is concerned, the fees for making online application for Trademark Registration is Rs. 4500/- for Small Enterprises and Rs. 9000/- for Big Enterprises for each class of application. Over and above the Government fees the IP Agent, who is registered with the Trademarks Ministry and authorized for making such trademark applications on behalf of the applicants, charge professional fees depending upon type and class of the application(s).

Question-7.  What should I do if someone else is using my trademark?

Answer- Securing a Trademark protects your brand, and provides you with the tools to prevent someone using similar signs and riding off the back of your business with many benefits as Unique Identity, Creation of Goodwill, Popularizing your brand, Global Recognition, etc. It is always advisable to make a trademark application at the earliest.

When a registered trade mark is used by a person who is not entitled to use such a trade mark under the law, it constitutes infringement. A registered trade mark is infringed, if the mark is identical and is used in respect of similar goods or services; or the mark is deceptively similar to the registered trade mark and there is an identity or similarity of the goods or services covered by the trade mark; or the trade mark is identical and is used in relation to identical goods or services; and that such use is likely to cause confusion on the part of the public or is likely to be taken to have an association with the registered trade mark.

An infringement action is available to the registered proprietor or registered user to enforce his exclusive right over the trade mark in relation to the goods in respect of which it is registered.

A suit can be initiated either under the law of passing off or for infringement under the Trade Marks Act, 1999 depending on whether the trade mark is unregistered, pending registration or registered respectively. Most Indian Courts will grant ex-parte interim injunctions. Ex-parte interim injunction is a temporary injunction granted without any notice to the infringer restraining him from using the infringing mark during the pendency of the trial. This injunction is normally granted at the early stages of the trial and many a times on the first date of hearing itself, provided that the rights holder is able to establish its rights before the Court and prove the gravity of the offence, merits immediate consideration

The Trade Marks Act, 1999 provides for remedies for infringement under the criminal laws too. The police have the power to suomoto conduct raids and seizure operations. However, the use of such powers by the police is minimal.

Question-8.  How do I protect a phrase prior to filing for a trademark?

Answer- A Phrase or a Trademark is technically unprotected until a Trademark application is made. Securing a Trademark protects your brand, and provides you with the tools to prevent someone using similar signs and riding off the back of your business with many benefits as Unique Identity, Creation of Goodwill, Popularizing your brand, Global Recognition, etc.

However, you could make an informal intimation about a proposed trademark application in order to avoid any future trademark disputes. But to eliminate such vulnerability and probable dispute, it is advisable to make a trademark application at the earliest.  If you have been using the trademark/phrase since a particular date before making the application, you can claim your “Prior use” by mentioning the date of usage along with submitting a valid proof of usage along with the Trademark Application.

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