Trade mark

TRADE MARK

© 2016 L.R. Swami Co. All Rights Reserved.

Trademark generally refers to a “brand” or “logo”.

It can also be obtained for a business name, distinctive catch phrases, taglines or

captions.Properly used and promote, a Trademark may become the most valuable asset of a

business.Trademarks such as Coca Cola, HP, Canon, Nike and Adidas serve as an indication of

origin of the goods as well as an indication of quality.

Service mark •SM

Trade mark •TM

Registered •®

Trademark infringement


Before adopting a trademarkO a trademark search is highly recommended, this will give an indication of any existing trademarks

which have been applied for/or registered in the Trademarks Registry.

O The cost of conducting a trademark search is quite insignificant in comparison to the efforts and costs involved in rebranding due to infringement of others rights.

O Therefore, a trademark availability search is highly advisable before huge amounts of money and time are invested in a trademark and the guidance of an experienced trademark attorney are extremely worthwhile.


Classes of trademark

• An application should be made in the relevant classes of current goods/services as well as in classes where there is intent to use.

• All goods and services are divided into 45 classes.

• The 9th edition of the NICE international classification system is followed in India.


Selection of a trademark

O scope of legal protection you would obtain depends on the type of trademark chosen.

O Thus should be chosen carefullyO coined word, which has no reference to

the goods/services upon which it is used. E.g. Canon

O Another option is to adopt an arbitrary word, which has no relevance to the goods/services upon which it is used. E.g. Apple computers; Lotus software


Guidelines followedO AVOID Superlative or Laudatory words E.g. Premium, Gold,

DeluxeO AVOID Descriptive words E.g. Coffee shop for coffee bars;

Cooler for RefrigeratorsO AVOID trademarks Confusing Similar to existing trademarksO AVOID words which have direct reference to the Character

or Quality of the product/service. E.g. Best Choice, Easy Cook, Super

O AVOID Common Personal Names or surnames. Such names are registrable only if it has acquired distinctiveness through advertisements and long use

O Well known geographical names such as SWISS chocolates or U.S.A. pizza are also not registrable.

O There are also other factors to be considered in the adoption of trademarks, which is beyond the scope of this text.

Bass Brewery's logo became the first image to be

registered as a trademark in the UK, in 1876


Requirement of filing a trademark application

O The name, address and nationality of the applicant. If the applicant is a partnership firm, the names of all the partners. Also mention whether any minor is a partner.

O If the applicant is a company, the country or state of incorporation.

O A list of goods and/or services for which registration is required.

O Soft copy of the trademark to be registered.O If the mark contains or consists of non-English

words, a translation of those words into English is required.


O If the application is to claim priority from an earlier filed convention application, details of that application is also required (application number, filing date, country and goods/services). A certified priority document or its duly notarized copy is to be submitted. If the certificate is not in English, a certified/notarized English translation is also required. If it is not readily available, the application can be filed based on the basic application number, date of the application and country of the application. A copy of the priority document can be submitted within 1 month from the filing date of the application.

O Date of first use of the trademark in India, if at all used

O Power of attorney simply signed by the applicant (no legalization or notarization is required).


Process of trademark

Filing of application

Examination by Indian trade mark

office

Trade mark journal

Waiting for objection

till 4 months


International trademark

O trademark only protects a brand with in line of country.O Registering a trademark abroad renders the company

an exclusive right to commercialize its products in those markets.

O This not only provides a solid foundation to stop counterfeiters but also ensures that the company enjoys exclusive rights over what may be one of its most valuable business assets.

O Registering a trademark abroad also provides the opportunity to license the trademark to others or may be the basis for a company’s franchising or merchandising strategy.


In IndiaO India has joined the Madrid protocol with effect from

8th July 2013.O At present, there are 91 countries which are

members of the Madrid protocol.Advantages of filing an International

Application under Madrid protocolO 1. Lower costs compared to individual foreign filingsO 2. Managing renewals, change in address, change in

ownership is easier and more cost-effectiveO 3. Additional countries may be designated at a later

stage


Thank you!!

Trade mark

Law

Transcript of Trade mark