What is trademark?
Trademark is a unique sign, symbol, word, design or expression which is used to distinguish goods and services of one person from those of the other. In other words, a trademark is the identity of a brand. Further, from several judicial pronouncements shape of goods, colour combinations, sounds and smells are also recognized as trademark.
In India, trademarks are governed by The Trademarks Act, 1999 (As modified and amended) & The Trademarks Rules, 2017.
Whether it is necessary to register the trademark?
To enforce trademark right, it is not necessary to register the trademark. An unregistered trademark can also be protected under common law; however, registration of trademark imposes several benefits on the owner of the trademark as follows:
- It helps the owner of the trademark to establish his/her prima facie case before court in case of infringement suit.
- It entitles the owner of a trademark for the benefits under The Trademarks Act, 1999.
- It prevents third parties to register similar/deceptive similar marks before trademark office.
- It may be helpful in various IP transactions e.g. assignment, licensing etc.
- It provides benefits in case an individual is willing to register his/her trademark outside India.
Law regulating trademark in India
Earlier trademark was governed by Trademark Act, 1940. Further, the trademark was governed by Trademark and Merchandise Act, 1950. After several amendments, presently the trademarks in India is governed by the Trademark Act, 1999 and Trademarks Rule, 2017. The Trademark Act and Rules describe the method of filing, examination, opposition, registration, renewal, rectification and removal of trademark.
A trademark to be registered shall be able to distinguish goods and services of one person from that of the other person. This means for registrability of trademark an essential condition is that it shall be distinctive in nature. The distinctiveness can be “inherent” or “acquired”. It is not necessary that a trademark shall be inherently distinctive it shall be capable of being distinguished from those used by the others.
Further, the mark to be registered shall not be descriptive in nature which means that it should not reflect the quality or quantity of the mark. For e.g. “Cold and Creamy” for ice cream.
Nice classification is established by Nice Agreement 1957, which classifies goods and services for the purpose of registering trademarks. After every 5 years the Nice classification is updated. Currently there is 11th edition of Nice classification which comprises of 45 classes (Class 1-34 include goods and Class 35-45 include services).
Role of Trademark Agents / IP Attorney in trademark registration
Trademark Agents and IP Attorney help the client in getting the trademark registered in best and efficient manner. Several benefits for hiring a Trademark Agent and Attorney are as follows:
- Trademark Agents assist in Trademark research and let the client know that whether it can be registered or not and suggest the potential conflicts with other trademarks.
- Trademark Agents facilitate the complex trademark registration process and gives techno legal suggestion during several stages of registration of trademark.
- Trademark Agents help the client in meeting the requirement as provided in the Trademark Act and Rules.
- There are several mistakes which can be made by an individual while filling trademark registration form. An agent helps to avoid these registration mistakes.
- A trademark Attorney represents the client in the Court of Law in respect of registration of Trademark.
- A trademark attorney helps in enforcing the trademark. It also assists the client if he/she gets the cease and desist letter. These letters are notice given to the client so as to stop using the trademark in the event of trademark infringement as claimed by other trademark owners.