Trademark FAQ

The term trademark is often used interchangeably to identify a trademark or service mark.A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.

What is a trademark?

A trademark can be any word (PEPSI), name (TATA), symbol or device (Microsoft), slogan (Yeh Pyas Hai Badi & Thanda Matlab Coca Cola), package design (Coca-Cola bottle) or combination of these that serves to identify and distinguishes a specific product from others in the market place or in trade. Even a sound (Britania chimes) color combination, smell or hologram can be a trademark under some circumstances. The term trademark is often used interchangeably to identify a trademark or service mark.

A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.

Trademarks are words, names, symbols, or devices used by manufacturers of goods to identify their goods, and to distinguish their goods from goods manufactured and sold by others. A person who sells his goods under a particulate trademark acquires a sort of limited exclusive right to use the mark in relation those goods. Trademark law protects this 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. Trademark law protects the goodwill of a business and also protects the consumers' ability to accurately ascertain the source of goods and services.

A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name.

The following type of marks can be registered as Trademark.

  • Word marks including letters, numbers or combination of letters, numbers and words;
  • Figurative marks, whether or not including words;
  • Figurative marks in colour;
  • Colours or combinations of colours;
  • Three-dimensional marks;
  • Sound marks;

The application must contain a graphic representation of the mark.

What is a Service mark?

A service mark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. A service mark is essentially the same thing as a trademark, only a service mark is used in the sale of services, whereas trademarks are used in the sale of goods. It appears to be common usage to refer to service marks as either trademarks or service marks. However, the reverse is not true; and you cannot refer to a mark affixed to goods as a service mark. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services.

What is a Collective mark?

A collective mark is a sign used to distinguish goods or services produced or provided by members of an association or group of traders. The association or group generally establishes a set of criteria for using the collective mark and permits others who are members of the association or the group to use the mark if they comply with those standards.

What is a Certification mark?

A certification mark is a sign used to distinguish goods or services that comply with a set of standards defined by the owner of the certification mark (such as material, mode of manufacture and quality). They may be used by anyone whose goods or services meet these established standards.

What is a Sub-brand?

A branded product may sometime seek to transfer its product value with appropriate modification to different product. For example. Coco-cola has a sub-brand. DIET-Coke.

What is House Mark?

Some Trade Marks are called House Mark because they serve to link products originating from a firm/company in the mind of consumers with the retail outlet. This is fairly common in pharmaceutical trade. Some examples of house mark would be RELIANCE, RANBAXY, ALEMBIC, PFIZER, DABUR, VAIDHNATH and TATA.

What is a well known trade mark?

Some Trade Marks are called House Mark because they serve to link products originating from a firm/company in the mind of consumers with the retail outlet. This is fairly common in pharmaceutical trade. Some examples of house mark would be RELIANCE, RANBAXY, ALEMBIC, PFIZER, DABUR, VAIDHNATH and TATA.

Is registration of a trademark compulsory?

No, registration of a trade mark is not compulsory .however, without registration the owner of a trademark cannot bring an action for infringement to protect his mark id it is used or copied by others. Suing for infringement of a registered trademark is much simpler than launching a common law action for passing to protect an unregistered trademark since the owner of a registered can base his case simply upon the fact that his mark has been registered.

Which kind of marks and signs may be registered as Trademark ?

A Trademark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

Therefore, signs which may be registered as a trade mark include the following:

  • Word marks including letters, numbers or combination of letters, numbers and words.
  • Figurative marks, whether or not including words.
  • Figurative marks in colour.
  • Colours or combinations of colours.
  • Three-dimensional marks
  • Sound marks

The application must contain a graphic representation of the mark.

What kind of marks cannot be registered?

The following marks cannot be registered:

  • marks that describe value, quantity, quality, or intended purpose of the goods or services
  • marks that are deceptive
  • marks that are contrary to public order or morality
  • marks that consist of armorial bearings, flags and other emblems or official signs of States or international intergovernmental organizations
  • Marks of such a nature as to infringe rights acquired by third parties in the country where protection is claimed (for example: marks that are identical or similar to earlier marks for identical or similar goods or services; or marks that are identical or similar to well-known marks).
Are all trades marks registrable?

A trade mark that capable of distinguishing the goods or services of one manufactures or trader From another cannot registered also, a mark shall not be registered if it deceives the public or causes confusion or likely to hurt religious susceptibilities or contains scandalous or obscene matter some name and symbols are not be used for commercial purpose under the name and emblem for commercial use, act -1950. Some marks cannot be acquired for distinctiveness like super, good, better, best, change, surname etc, like generic names. Further, a trade mark conflicting with a prior registered or pending mark or deceptively similar mark can come in the way of registration , however, this objection may be overcome with the consent of notification under section 23(1) of the trade marks act .1999 the certain names , device or logo for use as a trade mark.

Who may file trademark application?

Only the owner of the trademark may file an application for its registration. An application filed by a person who is not the owner of the mark will be declared void. 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.

Who can apply for a trademark registration?

Only the owner of the trademark may file an application for its registration. An application filed by a person who is not the owner of the mark will be declared void. 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.

Is it advisable to conduct a trademark search before filing an application?

Before making an application for registration it is prudent to make an inspection of the already registered trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.

What is the role of the trade mark search?

Conducting a search is crucial when preparing trade mark applications in order to avoid filing trade marks that are already registered or applied for or trade marks that would be similar to any existing ones. Trade mark databases are available on most national or regional trade mark offices' web sites, including the WIPO. The proper search depends on the territory where the protection is sought (proper database needs to be chosen), classes of goods and services (they need to be chosen accurately) and the representation of the sign (its distinctiveness).

How can I protect my mark?

At the national/regional level, trademark protection can be obtained through registration, by filing the appropriate application form with the national or regional trademark office and paying the required fees. At the international level (for protection abroad), you have two options: either you may file a trademark application with the trademark office of each country in which you are seeking protection, or you can use the Madrid system and European Community Trademark System.

Why protect your trade mark?

The trade mark of a product or service can be synonymous with the branding and image of a company and can become an asset with monetary value that could increase. If you do not apply for protection others may benefit from your investments. The only way of obtaining the full right over a trade mark is by registering it.

Why register a trademark?

The registration of a trademark give exclusive rights to use the trademark in relation to the goods or services in respect of which the trademark is registered and it offers better legal protection for action for infringement

Can sounds and smells be considered as marks too?

The registration of a trademark give exclusive rights to use the trademark in relation to the goods or services in respect of which the trademark is registered and it offers better legal protection for action for infringement

What do the symbols TM and SM means?

The symbols ® and TM and SM are common symbols associated with trademarks, although their use is not a requirement and generally provides no special legal protection. The ® symbol is used once the trademark has been registered. The TM symbol denotes that a given sign is used by the holder as a trademark and applied for the registration. The symbol SM is used for Service mark.

© 2019 Benchmark Consultant. Trademarks and brands are the property of their respective owners.