1. What is a Trademark?
A Trademark is a sign that is used to
distinguish the goods and services of one party
from those of others. A Trademark can be a
letter, number, word, phrase, logo, graphic,
shape, smell, sound or combination of these
is the purpose of the Trademark?
Trademark Registration in India serve as a
vehicle for the creation and retention of custom
by their use, as they indicate the origin of
goods and services. The function of a Trademark
is to give an indication to the purchaser or
possible purchaser as to the manufacture or the
quality of the goods, to give an indication to
his eye of the trade source or trade hands
through which they pass on their way to the
market. Thus, the purpose of a Trademark is to
focus attention on the origin of goods, not the
proprietor of the goods.
3. What is my
Trademark worth and how can I exploit it?
A Trademark is an intangible asset and it also
represents the reputation or goodwill of a
business. If through the process of growing your
business you establish an excellent reputation,
your Trademark could end up being a high valued
asset for your business. You can license the
rights to use a Trademark, through franchising
or through sale of the business.
4. What are the
benefits of Trademark registration in India?
A Trademark helps the consumers to identify and
purchase a good or service because of its nature
and quality, indicated by its unique Trademark,
to meet their needs. By registering a Trademark,
the owner of the Trademark protects the goodwill
of the business. Hence, the Trademark
contributes to the commercial value of the goods
or services to which it is applied, and
increases the marketability.
The registered owner of a
Trademark receives the presumptive right of the
Trademark owner to use the Trademark and can
indicate it by using the Trademark symbol ™ or ®
in relation of those goods and services for
which the owner has registered the Trademark.
The registered Trademark owner can stop other
traders from using his Trademark unlawfully. The
registered owner of a Trademark can sue other
traders for recovery of profits, damages and
costs in case of Trademark infringement.
Trademark provides the guarantee for the
unchanged quality and helps in creating and
advertising the goods and services in public.
It serves as a constructive notice in general
public about the ownership claim of the
Trademark. Registration of Trademark in India
can be used as a basis of registration of
Trademark in other countries.
5. What are the
different kinds of Trademarks?
There are three basic types of Trademarks that
can be registered in India:
Trademark and Service Mark:
Trademarks and Service Marks are those that are
affixed to identify goods or services of certain
Collective mark is a Trademark registered in the
name of groups, associations or other
organizations for the use of members of the
group in their commercial activities to indicate
their membership of the group. In another words
the members of the group or organization may use
the collective Trademark to identify themselves
with a level of quality or accuracy,
geographical origin, or other characteristics
set by the organization.
Certification mark is a Trademark capable of
distinguishing the goods or services in
connection with which it is used in the course
of trade and which are certified by the
proprietor of the Trademark in respect of
origin, material, mode of manufacture of goods
or performance of services, quality, accuracy or
other specific features.
6. What are different
types of Trademarks available for adoption?
The different types of Trademarks available for
- Any name (including
personal or surname of the applicant or
predecessor in business or the signature of
the person), which is not unusual for trade
to adopt as a mark.
- An invented word or any
arbitrary dictionary word or words, not
being directly descriptive of the character
or quality of the goods/service.
- Letters or numerals or
any combination thereof.
- The right to
proprietorship of a Trademark may be
acquired by either registration under the
Act or by use in relation to particular
goods or service.
- Devices, including fancy
devices or symbols.
- Combination of colors or
even a single color in combination with a
word or device.
- Shape of goods or their
- Marks constituting a 3-
- Sound marks when
represented in conventional notation or
described in words by being graphically
7. Is the registration
of Trademark mandatory?
The registration of a Trademark is not
mandatory, but it is advisable. 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. Trademark law
provides much simpler infringement remedies than
provided in common law to protect the
8. Who can apply for a
Trademark and how?
In India, any person who claims to be the
proprietor of Trademark used or proposed to be
used by him can apply for the Trademark
registration of the goods and services. For
registration of Trademark, the application can
be filed in the Trademark Office, in whose
jurisdiction the principal place of your
business falls. If the principal office is not
situated in India then the applicant can file
the application in the Trademark office in whose
jurisdiction the Lawyer/Attorney appointed by
the applicant is situated. In case it is the
company which is yet to be formed then anyone
can apply for the registration on behalf of the
company. The application should contain the
Trademark, the goods and/or services, Name and
Address of applicant and agent (if any) with
Power of Attorney, period of use of the mark and
signature. The application should be in English
or Hindi. An application filed by anybody else
will be declared void. Before making an
application for registration it is prudent to
make a proper search in the Trademark office to
ensure that your registration may not be denied
due to the similarity of the proposed mark to
the already existing one or prohibited one.
9. What are the legal
requirements for the registration of a Trademark
The legal requirements to register a Trademark
under The Trademark Act are:
- The selected mark should
be capable of being represented graphically
(that is in the paper form).
- It should be capable of
distinguishing the goods or services of one
person from those of others and may include
shape of goods, their packaging and
combination of colours (it should be
- It should be used or
proposed to be used in relation to goods or
services for the purpose of indicating or so
as to indicate a connection in the course of
trade between the goods or services.
10. What are the steps
of Trademark registration?
Registration of Trademark usually involves the
1. A preliminary search of
2. An application for the registration of
3. An examination of your application by the
Trade Mark Registry (TMR).
4. Publication of your mark in the Trademarks
5. Opposition to the registration.
6. Correction and amendment in the application.
7. Acceptance of Registration.
11. What are the
different grounds for the refusal of
registration of a Trademark?
There are two grounds for the refusal of
registration of a Trademark:
Absolute grounds for refusal of
registration of a Trademark are:
- Marks devoid of any
distinctive character or not capable of
distinguishing the goods or services of one
person from those of others.
- Marks which indicates
quality or other descriptive character of
the goods or services.
- Marks which have become
customary in the current language or in the
bona fide or established practice of the
- Marks to the trade or
generic names or marks common, chemical
names and international non-proprietary
- Marks likely deceive
public or cause confusion.
- Marks comprising
scandalous or obscene matter or likely to
hurt religious susceptibilities of any class
or section of the citizens in India.
- Marks prohibited under
Emblems and Names (Prevention of Improper
Use) Act, 1950.
- Marks shape of which
results from the nature of the goods
- Marks the shape of which
is necessary to obtain a technical result.
- Marks the shape of which
gives substantial value of the goods.
Relative grounds for refusal of
registration of a Trademark are:
- Marks which are identical
or similar to an earlier Trademark and the
respective goods or services are identical
- Mark which are identical
or similar to an earlier Trademark, but the
goods or services are not similar. The
question of refusal of registration of a
mark similar to an earlier Trademark where
the goods are different can be considered
only in opposition proceedings.
- Marks under passing off
or law of copyright.
12. Is there any mark
prohibited to be registered as a Trademark?
Marks that are prohibited to be registered as a
- Marks commonly used and
accepted name of any chemical element or any
chemical compound (as distinguished from
mixtures) in respect of a chemical substance
- Marks declared by the
World Health Organization and notified as
such by the Registrar, as an International
13. Can the ownership
of a Trademark be assigned from one person to
Yes, A Trademark can be licensed by the owner of
the Trademark in favour of another person by way
of an assignment. Trademark can be either
assigned in full or transmitted in part.
Trademark can be assigned with or without
goodwill attached to it. If the Trademark is
assigned without any goodwill than the Registrar
of Trademark insist on advertisement in
Newspaper and permit the assignment only after
ensuring that the interest of the third party
would not be affected by the assignment. All
assignments must be registered with the Trade
Mark Registry (TMR) by paying the prescribed
14. How long a
Trademark registration last?
Unless otherwise cancelled, a Trademark
registration is valid for 10 years and the
registration can be renewed every 10 years
thereafter upon payment of renewal fee.
15. How many years of
non-use of a Trademark do causes cancellation?
Non-use of a registered Trademark for a
continuous period of 5 years is a ground for
cancellation of registration of such Trademark.
However, if the law prohibits the owner of the
Trademark to use the mark in the Indian market,
in that case non-use of the mark by the owner
can be condoned.
16. What is a
A Trademark search is designed to uncover other
pre-existing Trademarks that have the potential
to conflict with your Brand Name or Mark or
Label or Logo. Trademark search for existing
Trademark helps to protect you from accidentally
infringing on marks currently being used for an
identical or similar product or service. It is
very much advisable to conduct a Trademark
search before registering or using your
Trademark. If you register a Trademark that is
similar or identical to one that is already
registered, it may lead to confusion or costly
legal battles. It is also advisable to conduct
periodical searches to determine if other
parties are attempting to register a conflicting
17. What is covered
through Trademark search?
It is always advisable to conduct Trademark
search before applying for the registration of
Trademark. By conducting Trademark search you
can get answers of many important questions
- Whether a mark is already
registered or pending for registration,
which is identical or similar to my mark?
- Whether I am infringing
someone’s Trademark rights?
- Whether someone
infringing my Trademark rights?
- What is the possibility
of opposition of my Trademark?
In which fields my competitors
are particularly active?
18. How can I search
and register a Trademark outside India?
Registering your Trademark with the Indian Trade
Mark Registry (TMR) protects your rights only in
India, however, some countries recognizes
Trademarks registered in India as a basis for
registering the mark in their countries. If you
are selling goods or services in other
countries, you should consider registration in
each of those countries, with the only exception
to this being the European Community.
We can assist you in conducting searches and for
registration of Trademark in foreign countries.
19. What system of
classification of goods and services is
presently used in India?
A Trademark is always protected only for certain
classes of goods and services, as prescribed in
the Classification of Goods and Services in the
schedule IV of the Trademarks Act, 1999. As
prescribed in Schedule IV of the Act, goods and
services are classified into 42 classes and
these classifications are based on the
International (NICE) Classification of goods and
services. When you apply for the registeration
of Trademark than you must indicate the goods
and services for which you wish to register and
use your Trademark. Examples of Classes The long
list of classes includes for example: — For
goods (Class 1 – 34) — For services (Class 35 –
42). Click here for detailed classification list
20. Can I cover
different classes for registration of Trademark
under single application?
No. When applying for the registaration of the
same Trademark for goods and services in
different classes, a separate application for
registration should be filed in respect of each
class of the prescribed Classification of Goods
and Services. Likewise, if the applicant intends
to use a registered Trademark in respect of
other goods and services of the same class, a
new application for registration should be
21. How important is
the selection process of goods and service
It is very important to select your goods and
service classes carefully.
A Trademark is always
protected only for certain class or classes of
goods and services. When you apply for the
registration you must indicate the goods and
services for which you wish to register and use
your Trademark. If you do not use your Trademark
for the goods and services you claimed within
five years of registration, you can lose your
22. What is Trademark
Trademark infringement is a violation of the
exclusive rights to use the Trademark in
relation to the certain goods conferred by
registration as the proprietor of Trademark. The
exclusive right is infringed, when a person who,
not being a registered proprietor or a person
using by way of permitted use, uses in the
course of trade, a mark which is identical with,
or deceptively similar to, the Trademark in
relation to goods or services in respect of
which the Trademark is registered and in such
manner as to render the use of the mark likely
to be taken as being used as a Trademark.
23. What remedies are
available for the infringement of registered and
There are two types of remedies available for
the infringement of Trademark. These remedies
Action: An action for
infringement, which is a statutory right, is
dependent on the validity of the registration of
the mark. Infringement of a Trademark is a
violation of property rights. Trademark
registration is prima facie proof of ownership
of the mark. In case of infringement there is
often no need to prove that your Trademark has a
reputation or goodwill. The question of fraud or
the probability of deception is immaterial, the
plaintiff just have to prove that he is the true
owner of the Trademark and the defendant is
using a mark that is identical or deceptively
similar to the registered mark and no further
proof is required. The jurisdiction and
procedure, in infringement suit, is governed by
the Civil Procedure Code. The period of
limitation for filing the suit for infringement
is three years from the date of infringement.
The relief and remedy in infringement
- Restraining the future
use of the mark;
- Damages or on account of
- Order for delivery of the
infringing labels and marks for destruction;
- Seizure and confiscation
of the infringing goods by the police
- Arrest of the infringer;
- Fines and penalties.
An action of passing off is a direct subject
matter of the law of tort or common law of
right. Passing off is not defined in The Trade
and Merchandise Marks Act, but it provides the
rules of procedure and the remedies available.
In the case of unregistered yet well known
marks, the owner of the mark can initiate a
passing off action in the appropriate Court of
law. The cause of action in favour of the
plaintiff will arise if the defendant in the
course of trade misrepresents to prospective or
ultimate customers of goods and services and the
goods or services of the defendant is connected
to the goods or services of the plaintiff and is
calculated to injure the business or goodwill of
the plaintiff and which actually causes damages
to the business or goodwill of the plaintiff.
Actual deception and actual damage has to be
proved for any relief. Passing off action can
only be initiated in a place where the defendant
resides or carries on business or where any part
of the cause of action arose.