What is Trademark and Patent Law
Trademark law in India is governed by the Trade Marks Act 1999 and the Trade Marks Rules 2017. This law provides for the registration and protection of trademarks in India. A trademark is a distinctive sign or mark that is used to identify the goods or services of a particular trader or business and to distinguish them from those of other traders or businesses.
Under Indian trademark law, a trademark can be a word, phrase, symbol, design, or a combination of these elements. In order to be eligible for registration, a trademark must be distinctive and must not be similar or identical to any existing trademarks that are already registered or pending registration.
Once a trademark is registered, the owner of the trademark is granted exclusive rights to use the trademark in relation to the goods or services for which it is registered. This means that no other person or business can use the trademark without the permission of the trademark owner.
Patent law in India is governed by the Patents Act 1970 and the Patents Rules 2003. This law provides for the grant of patents for inventions in India. An invention is considered to be patentable if it is new, involves an inventive step, and is industrially applicable.
In order to obtain a patent in India, an inventor must apply to the Indian Patent Office. The application must include a detailed description of the invention, as well as any necessary drawings or diagrams. The patent application will be examined to ensure that it meets the requirements for patentability, and if it is found to be eligible, a patent will be granted for a period of 20 years from the date of filing the application.
Once a patent is granted, the owner of the patent has the exclusive right to make, use, sell, or import the invention for the term of the patent. This means that no other person or business can make, use, sell, or import the invention without the permission of the patent owner.
What is Intellectual Property Rights (IPR)
Intellectual property rights (IPR) refer to the legal rights that are granted to creators, inventors, and owners of original works or ideas. These rights give the owner of the intellectual property the exclusive right to use, reproduce, distribute, or sell their work or idea for a certain period of time. In India, IPR is protected under the Indian Copyright Act of 1957, the Indian Trademarks Act of 1999, and the Indian Patents Act of 1970. These laws aim to promote innovation and creativity by giving creators and inventors the legal means to protect their original works and ideas.
Types of Trademarks
There are four types of trademarks that can be registered in India:
Ordinary Trademarks: Ordinary trademarks are the most common type of trademark and can include words, phrases, logos, or a combination of these elements. Ordinary trademarks are used to identify the source of a product or service and are typically used in connection with goods rather than services. For example, the brand name “Nike” and the “swoosh” logo are both product trademarks that are used to identify the athletic shoes and clothing produced by the Nike Corporation. This allows the owner of the trademark to use it exclusively and helps to prevent others from using a similar trademark that may cause confusion among consumers.
Certification Marks: Certification marks are special types of trademarks that are used to certify the origin, material, mode of manufacture, quality, or other characteristics of a product or service. These marks are owned by a certification body or association, rather than an individual or company, and are used to certify that a product or service meets certain standards or criteria. For example, the “ISI” mark is used to certify that a product has been produced according to certain standards set by the Indian Standards Institution (ISI), which is the national standards body of India. This mark is used to certify the quality and safety of a wide range of products, including electrical and electronic goods, building materials, food products, and consumer goods. The “ISI” mark is owned by the ISI and is protected under the Indian Trademarks Act of 1999. It is registered with the Indian Trademarks Office, which allows the ISI to use the mark exclusively and helps to prevent others from using a similar mark that may cause confusion among consumers.
Collective Marks: Collective marks are trademarks that are owned by a group or association and are used to identify the members of that group or association. These marks are used to distinguish the goods or services of the members of the group from those of non-members. For example, the “IGBC” mark is a collective mark that is owned by the Indian Green Building Council (IGBC), which is a group that promotes the use of sustainable building practices in India. The “IGBC” mark is used to identify buildings and developments that have been certified as meeting certain standards of environmental performance and sustainability.
Service Marks: Service marks are trademarks that are used to identify the source of a service rather than a product. Service marks are similar to ordinary trademarks, but they are used in relation to services rather than goods. For example, the brand name “Uber” and the logo of a black and white app icon are both service marks that are used to identify the ride-sharing service provided by the Uber Corporation.
Why should one register a Trademark
It is important to register a Trademark for the following reasons:
Legal Protection: By registering a trademark, the owner can enforce their rights in a court of law if someone else uses the same or a similar mark without their permission. This can help to protect the owner’s brand and reputation, and can also prevent others from unfairly benefiting from the owner’s hard work and investment in the mark.
Exclusivity: When a trademark is registered, it gives the owner the exclusive right to use the mark in connection with their goods or services. This means that others cannot use the same or a similar mark without the owner’s permission, which can prevent confusion among consumers and protect the owner’s brand.
Valuable Asset: A registered trademark can be a valuable asset for the owner. For example, the owner can license the use of the mark to others, which can generate additional income. The owner can also use the mark as collateral to secure a loan, which can provide access to additional capital.
Increased Credibility: Having a registered trademark can increase the credibility of a brand and can help to establish trust among consumers. This is because registering a trademark shows that the owner has invested in their brand and is committed to protecting it.
Process of registering a Trademark
The process of registering a trademark typically involves the following steps:
Search the trademark database: The first step in registering a trademark is to conduct a search of the trademark database to ensure that the proposed mark is available for use and registration. This can be done by searching the database maintained by the Indian Trademarks Office, which contains information about registered and pending trademarks. The search should include any similar marks that may cause confusion among consumers.
File the application: Once the proposed mark has been cleared for use and registration, the next step is to prepare and file a trademark application with the Indian Trademarks Office. The application must include information about the applicant, the proposed mark, and the goods or services that the mark will be used in connection with. The application must also be accompanied by any required documents and fees.
Examination of the application: After the application has been filed, it will be reviewed by an examiner at the Indian Trademarks Office. The examiner will determine whether the proposed mark meets the legal requirements for registration, such as being distinctive and not being confusingly similar to any existing marks. If the examiner has any objections to the application, the applicant will be notified and given an opportunity to respond.
Publication of the trademark: If the examiner approves the application, the proposed mark will be published in the Trademarks Journal, which is a publication of the Indian Trademarks Office. This allows others to oppose the registration of the mark within 120 days from the date of publication. If no opposition is filed, or if any opposition is unsuccessful, the mark will be registered.
Issuance of the registration certificate: Once the trademark has been registered, the Indian Trademarks Office will issue a registration certificate to the applicant. The registration certificate serves as proof of the registration and shows the details of the registered mark, such as the date of registration and the goods or services that it covers. The registration certificate is typically valid for a period of 10 years, after which it can be renewed for additional 10-year periods.
Legal remedies available against infringement of Trademark
If a trademark is infringed, the owner of the registered mark can take legal action to stop the infringing use and to seek compensation for any damages that they have suffered. The legal remedies available against infringement of a trademark in India include the following:
Injunction: The owner of a registered trademark can seek an injunction from a court of law to stop the infringing use of the mark. This can prevent the infringer from continuing to use the mark and can protect the owner’s rights in the mark.
Damages: The owner of a registered trademark can seek damages from the infringer for any losses that they have suffered as a result of the infringing use of the mark. This can include lost profits, costs incurred in stopping the infringing use, and any other losses that can be directly attributed to the infringement.
Destruction of infringing goods: The owner of a registered trademark can seek an order from a court for the destruction of any infringing goods that are in the possession of the infringer. This can prevent the infringer from benefiting from the infringing use of the mark and can also help to protect the owner’s rights in the mark.
What is passing off a trademark
Passing off a trademark refers to the act of misrepresenting the source of goods or services by using a mark that is similar to a registered trademark. This can occur when someone uses a mark that is similar to a registered trademark in order to deceive consumers into believing that the goods or services being offered are those of the owner of the registered trademark. For example, if a company produces and sells a product under a mark that is similar to a well-known brand, they may be guilty of passing off their product as being affiliated with the well-known brand. This is a form of unfair competition and can be grounds for legal action.
Can a criminal action be taken against the infringer of a trademark?
Yes, a criminal action can be taken against the infringer of a trademark. The Indian Trademarks Act of 1999 provides for criminal penalties for the unauthorized use of a registered trademark. Under this law, if a person uses a mark that is identical or deceptively similar to a registered trademark without the permission of the owner, they can be guilty of an offense and can be punished with imprisonment for up to three years and/or a fine. Additionally, if a person sells or distributes goods or services that bear a trademark that is identical or deceptively similar to a registered trademark without the permission of the owner, they can also be guilty of an offense and can be punished with imprisonment for up to two years and/or a fine.
Can a domain name be registered as a trademark?
In India, a domain name can be registered as a trademark if it is distinctive and is not confusingly similar to any existing trademarks. The process for registering a domain name as a trademark or service mark is similar to the process for registering any other type of trademark or service mark. This involves conducting a search of the trademark database, preparing and filing a trademark application, undergoing examination by the Indian Trademarks Office, publication of the mark, and issuance of a registration certificate.
Difference between the symbol ® and TM
The symbol ® is used to indicate that a trademark is registered with the Indian Trade Marks Registry. This means that the trademark has been officially recognized by the government as belonging to the owner who has filed for its registration. For example, if a company called “XYZ Pvt. Ltd.” has registered the trademark “XYZ” for its products, it can use the symbol ® next to the trademark whenever it is used in relation to those products.
On the other hand, the symbol TM is used to indicate that a trademark is unregistered, or that the owner of the trademark has not yet sought official recognition of the trademark through registration. This symbol is often used by businesses to indicate that they are using a trademark as part of their branding, even if they have not yet formally registered the trademark with the government. For example, a company called “ABC Ltd.” might use the symbol TM next to the trademark “ABC” if it is using the trademark to promote its products, but has not yet registered the trademark with the Trade Marks Registry.
It’s important to note that the use of these symbols is not mandatory in India, and their use does not have any legal significance. However, many businesses choose to use them as a way to indicate the status of their trademarks and to protect their intellectual property rights.
Can the ownership and rights over a registered trademark be transferred to another person or company?
Yes, the ownership and rights over a registered trademark can be transferred to another person or company in India. This process is known as “assignment” of the trademark.
Under the Trade Marks Act, 1999 and the Trade Marks Rules, 2002, the owner of a registered trademark can transfer all or part of their rights in the trademark to another person or company by executing an assignment agreement. This agreement must be in writing and must be registered with the Indian Trade Marks Registry in order to be valid.
Once the assignment agreement has been registered, the new owner of the trademark will have all the rights and obligations that were previously held by the original owner, including the right to use the trademark and the right to take legal action against any person who infringes on the trademark.
Is an Indian trademark registration valid outside the India?
No, an Indian trademark registration is not automatically valid outside of India. In general, the protection offered by a trademark registration is limited to the country in which it is registered.
However, there are some international treaties and agreements that provide for the recognition of trademarks in multiple countries. For example, India is a member of the World Intellectual Property Organization (WIPO), which administers the Madrid Protocol for the International Registration of Marks. This treaty allows a person or company to file a single application to register a trademark in multiple countries that are members of the protocol.
Additionally, India is a signatory to the Paris Convention for the Protection of Industrial Property, which provides for the recognition of trademarks in other member countries. Under the provisions of this convention, a person or company that has registered a trademark in one member country can use that registration as a basis for obtaining trademark protection in other member countries.