A trademark is a distinguishing sign that distinguishes a person’s goods (products) or services from those of the competitors. It is kind of a trademark or a logo. Registering the trademark for Intellectual Property gives the person the exclusive right to use the trademark for certain goods and services for an extendable period of 10 years. It helps to protect a figure, a word, a melody or a product of a company. The article will give us more details as to what a trademark is.
Some of the important features of the trademark are:
- For trademarks, Multi-class applications are allowed in India. But in each case, the statutory filing fees will be applicable.
- The Classification of the goods and services is according to NICE classification (45 classes).
- The prior use of the trademark is not mandatory for filing. Therefore, the applications can be filed on a ‘proposed to be used’ basis.
- If it is filed through an agent/attorney, the Power of attorney is required.
- The applications for trademarks are examined as to registrability and availability based on the existence of prior filed applications. Once it is accepted, it is published in the Trademarks Journal and an opposition may be filed by a third party within 3 months (extendable by one month). If no opposition is filed, then the Registration certificate will be issued.
- A trademark may be subject to removal on the grounds of non-usage, for a regular period of 5 years.
- The registration is valid for 10 years from the date of application and it can be subsequently renewed every 10 years by payment of renewal fees.
- The priority can be claimed given the application has been filed within 6 months from the date of the filing in the convention country.
The classification of a trademark is the most important classification and it is done on the basis of goods and services. The arrangement of documents for the classification of a trademark is done by the trademark attorneys and the trademark examiners.
- Class 1 is for chemicals
- Class 2 is for paints
- Class 3 is for cosmetic and cleaning prepare
- Class 4 is for lubricants and fuels
- Class 5 is for pharmaceuticals
- Class 6 is for metal goods
- Class 7 is for machinery
- Class 8 is for hand tools
- Class 9 is for electrical and scientific apparatus
- Class 10 is for medical apparatus
- Class 11 is for environmental control apparatus
- Class 12 is for vehicles
- Class 13 is for firearms
- Class 14 is for jewelry
- Class 15 is for musical instruments
- Class 16 is for paper goods and printed matter
- Class 17 is for Rubber Goods
- Class 18 is for Leather Goods
- Class 19 is for Nonmetallic Building Materials
- Class 20 is for Furniture and Articles Not Otherwise Classified
- Class 21 is for Housewares and Glass
- Class 22 is for Cordage and Fibres
- Class 23 is for Yarns and Threads
- Class 24 is for Fabrics
- Class 25 is for Clothing
- Class 26 is for Fancy Goods
- Class 27is for Floor Coverings
- Class 28 is for Toys and Sporting Goods
- Class 29 is for Meats and Processed Foods
- Class 30 is for Staple Foods
- Class 31is for Natural Agricultural Products
- Class 32 is for Light Beverages
- Class 33 is for Wines and Spirits
- Class 34 is for Smokers’ Articles Services
- Class 35 is for Advertising and Business
- Class 36 is for Insurance and Financial
- Class 37 is for Building, Construction, and Repair
- Class 38 is for Telecommunication
- Class 39 is for Transportation and Storage
- Class 40 is for Treatment of Materials
- Class 41 is for Education and Entertainment
- Class 42 is for Computer, Scientific and Legal
- Class 43 is for Hotels and Restaurants
- Class 44 is for Medical, Beauty, and Agricultural
While selecting a trademark, it must always be chosen carefully. If a person is launching a product and adopting a new trademark, a person must bear in mind that the scope of legal protection that a person obtains depends on the type of the trademark chosen.
The most common mistake which a person does is that he chooses a word that is descriptive of the goods or services. People do commit this in the belief that the consumer would be knowing straight away what the product is or what is the service that would be rendered. The same result can be obtained easily by joining a unique and fanciful trademark with a word that is capable of indicating the goods or services. For example Kodak film.
Descriptive trademarks are very difficult to register and enforce. Although it may be easier to market such products at inception, but such trademarks are offered the least amount of protection and therefore, in the long term, it would be very difficult to stop the competitors from using the same or similar trademarks.
A better strategy would be when a person adopts a coined word, which has no reference to the goods/services upon which it is used. E.g. Canon
Another option that is available is that the person must adopt an arbitrary word, which has no relevance to the goods/services upon which it is used. E.g. Apple computers; Lotus software
The more distinctive a trademark is, the broader will be the scope available for of protection.
GUIDELINES TO BE FOLLOWED:
- AVOID using of Superlative or Laudatory words E.g. Premium, Gold, Deluxe
- AVOID using of Descriptive words E.g. Coffee shop for coffee bars; Cooler for Refrigerators
- AVOID using of trademarks Confusing Similar to existing trademarks
- AVOID using of words which have direct reference to the Character or Quality of the product/service. E.g. Best Choice, Easy Cook, Super
- AVOID using of Common Personal Names or surnames. Such names are registrable only if it has acquired distinctiveness through advertisements and its long use.
Registration of a trademark is very important. It can be done for a business name, distinctive catch phrase, tagline or a caption. If a trademark is properly used, it becomes the most valuable asset of a business. It is very essential to obtain the registration of trademark of the business name/trade name under the trademarks act. The registration process for both the trademark and service marks is the same. In order to register the trademark, the following steps are to be followed:
File an application for the trademark registration
After filing of application, the registry issues an official receipt with the filing date and the number that is allotted to the application
The application is then, formally examined by the Indian Trade Marks office for its inherent registrability or any similarity with the existing marks. If an objection to Registration is raised, issuing of an official examination report takes place and if in the examination, the trademark application is allowed, a letter of acceptance is issued then.
After issuing of a letter of acceptance, the trademark gets published in the trademarks journal. And if there is no opposition within 4 months from the date of advertisement in the trademarks journal, then the trademark registration certificate is issued.
There are certain symbols that are used while trademark registration. TM stands for trademark and SM stands for service mark. TM and SM symbol notify the public that the company is claiming exclusive ownership of the trademark and it can genuinely be used by one who has filed a trademark application. The registration symbol is used only once when the trademark is registered and then the registration certificate is issued. The registration symbol is used in connection with the goods and/or the services in respect of which the trademark is registered.
However, the registration of a trademark is a tedious process and it normally takes around 18-24 months to obtain the registration in a straight forward case without any of the objections or oppositions.
Also, if once the trademark gets registered, then it is valid for a period of 10 years from the date of application.
“Perform a free Trademark Search before applying for it.”