Trademark Registration in India - The Associated Chambers of ...

INTELLECTUAL PROPERTY ATTORNEYSTrademark Registration inIndiaProvided on Request

What is a trademark ?A mark that is associated with a product or service.Words or signs that help to distinguish product or service of oneperson from that of another’s.It is an intangible asset/property of your business.Gives a name to your product or serviceProvided on Request2

What can be a trade mark ?• A trade mark is not limited to a sign or words• A trade mark can be– Words– Letters– Numerals– Drawings– Shapes– Colours– Colourcombinations– Logo– Packaging– Audible soundsProvided on Request3

Importance of Trademarks…...Gives the product an identity and name.Consumers identify your product or service in market ; which are distinguished fromthose of other companies.Exclusively identifies the commercial source or origin of products or services.Is a marketing and advertising tool for your business.Helps in building company reputation and awareness.Valuable intangible asset for a company.If licensed, provides a direct source of revenue through royalties.Provided on Request4

Economic benefits of a trade markCustomer recognition• Customer recognises the product or service anddistinguishes it from a competitor’s product or service.• Works as a guarantee to the customer for the productquality and reduces risk of purchase.• Conveys an emotional identity to a product that helps inpositioning the product for different consumer groups.• Customer look up to a trademark for its quality andprofessionalism and something they can rely on.Provided on Request5

Economic benefits of a trade markCustomer loyalty• A well entrenched trademark reminds customers of value formoney, durability and excellent customer services.•A customer becomes a repeated and a constant user of yourproducts and displays loyalty.•Customer loyalty is more than recognition for the purpose ofbuying again•Customer trust.•Customer emotional attachment.• Customer loyalty represents a stumbling block for competitorswho will back off from competing against your trademark.•Customer loyalty of your trademark is a barrier for new marketentrants & your competitors.Provided on Request6

Economic benefits of a trade markBusiness Image• Customer association extends to your business as well.• Your trade mark enhances reputation and standing ofyour business.• Satisfied customer of one product will considerpurchasing other products from your company;attributed by your enhanced business image.Provided on Request7

Economic benefits of a trade markGoodwill• Goodwill is the reputation and standing of a business most oftenformed by-• Customer recognition• Customer loyalty and trust• Customer attachment• Business success• Goodwill refers to the intangible value the business has createdabove the value of its tangible assets.• Hence, Goodwill is often the difference between the total value of abusiness, less the value of its physical assets (tangible assets).Provided on Request8

How valuable can your trade mark be ?• Lasting competitive advantage.• Can generate and represent significant value for companies.• Examples : Coca Cola, IBM, Microsoft, AppleAll these are valued in excess of hundreds of millions of USDProvided on Request9

Selecting or creating yourtrademark?•Creating an appropriate trademark is a critical step, asit is an important element of the marketing strategy ofyour business.•So what is an appropriate trademark for yourproduct(s)?•Evidently, there are no hard and fast rules•But there are some guidelines and our checklist.Provided on Request10

Checklist for selecting a trade markDistinctiveTrademarksearchUndesiredconnotations• Make sure the trademark is easy to read, write,spell and remember and is suitable to all types ofadvertising media• make sure that it is not identical or confusinglysimilar to existing trademarks• does not have any undesired connotations in yourown language or in any of the languages ofpotential export marketsLegal requirements• check that choices meet legal requirements forregistration.Domain name• check if the corresponding domain name isavailableProvided on Request11

While selecting word marksCoined or ‘fanciful’words• invented words withoutany intrinsic or realmeaning.• Inherently distinctive• Easy to protect &register• Down side- hard to beremembered byconsumers• KODAKArbitrary Marks• These are words thathave a meaning that hasno relation to theproduct they advertise.• also be easy to protect.• May require heavyadvertising to create theassociation between themark and the product• APPLE- for computers• SHELL- for oilSuggestive Marks•These are marks that hintat one or some of theattributes of the product.The appeal of suggestivemarks is that they act as aform of advertising.•Risk, however, of being toosuggestive and be‘descriptive’ of the product•GREYHOUND- for busservices•CITIBANK for an urbanbasedbankProvided on Request12

Why Register your trademark?• Exclusive Statutory right to use the mark in relation to those goods or services• Evidence of ownership of the brand• Effective brand management through licenses, franchises, assignments• Stronger/swifter remedies against counterfeits• Gives more options for initiating legal recourse against infringers• May increase the quantum of damages awarded in a successful legal action• Smoothens the procedures in such legal actions• Assists in brand building and increases IP Valuation of the Company• Use of the ® symbol acts like a constructive notice of potential infringers• Handy tool to stop cybersquatters – protects your domain name & internet space.Provided on Request13

Other AdvantagesInternationalregistration• Helps seek registration abroadIntangible‘Leg Up’• Tells potential opponents that you have already investedmoney in your trademark and that you are ready to defendyour investmentBrandedgoods• Gives your products a status of being ‘branded goods’Genuinegoods• Gives an impression that goods are genuine and of highquality.Provided on Request14

What may not be a good trademark?Main reasons for refusal ofregistration by the TrademarksOfficeProvided on Request15

What may not be a good trademarkGenericMarks•words thatare theaccepted andrecognizeddescriptionof a class ofgoods orservices (e.g.,Asprin, yoyo,Thermos)DescriptiveMarks•marks thatdescribeeither thegoods or acharacteristicof the goods•Salty for salt;SHOELANDfor a shoesstoreDevoid ofdistinctiveness orCausesdeception•“The CheeseCompany" for cheese•"Organic" ongoods whichare notorganicAgainstpublicorder/morality•GANESH –for beerNationalsymbols/Flags/emblems•AshokaStambhsymbol•AshokaChakra•MahatmaGandhiimagesymbolsMarksCustomaryin Trade• "ChinaGarden" forChineserestaurantservicesProvided on Request16

Time frame and duration of atrademark registration in IndiaTime frame- 18 to 24 monthsTerm of registration of a trademark – 10 years.May be renewed for a further period of ten years.Provided on Request17

Process of trade mark registration inIndiaApply to the Trademark Registry in your jurisdictionExamination by the Registrar and raising of objections (if any)Hearing before the Registrar and removal of objectionsMark is published in a Trademarks Journal for possible opposition from thepublic/ other partiesMark stays in the Journal for 4 Months, open to oppositions from other partiesMark is Registered if no opposition is receivedProvided on Request18

Opposition to a registrationThe interested party gives a notice ofoppositionApplicant replies with hiscounterstatementBoth parties are given a chance to adduceevidence in support their claims.Matter is fixed for hearing and disposed offMark is either registered or rejected.Provided on Request19

Are you actually using the mark?Actual Use of the trademark is essential to sustain the registration.‘Use’ should be use of the trademark in commence or trade.For Registration, an applicant may be asked to prove useA ‘token’ use may not be considered as Use in commerceRegistration prone to cancellation if mark not used within five yearsfrom date of registration.Provided on Request20

Have you heard about the MadridProtocol?It is an international system forregistration of trademarks.Provided on Request21

Have you heard about the MadridProtocol?A System for International Registration of TrademarksAims to protect a mark in several countries by filing a single application.International Protection in up to 90 countries via a single application.Effect of international registration- as if the mark is registered in each of suchdesignated countries.Maintained & renewed through single procedure.Came into force on 8 th July, 2013 in IndiaIndian trademark owners can extend the protection of their nationalapplications internationally.Provided on Request22

Advantages of the Madrid SystemONE application for a number of countriesONE set of fees - one currencyONE language (English or French)ONE set of Procedural Rules - no need to worry about differentnational procedural rulesUniform period of protection - 10 yearsEasy post registration managementTimely registration of the application- approx. within 20 monthsProvided on Request23

Important Pre- requisite for filing anapplication under Madrid Protocol.Applicant must have a pending application orregistration for the same trademark in the same class inIndia before filing an international application under theMadrid Protocol.Provided on Request24

Cost involved under Madrid System• a basic fee of 653 Swiss francs (INR 24,000)PLUS• Complementary fee 100 CHF per countryPLUS• Supplementary fee (per class)plus• Individual fee -some countries charge a fee instead of thecomplementary fee.Provided on Request25

INTTLADVOCAREINTELLECTUAL PROPERTY ATTORNEYSThank you for your valuable time. For any queries / further information,please visit: www.inttladvocare.comPRINCIPAL OFFICE:EXPRESS TRADE TOWER, Tower-1, 1 st Floor, B-36, Sector-132, NoidaExpressway, National Capital Region of Delhi, IndiaProvided on Request26

Corporate OfficeEXPRESS TRADE TOWERTower-1, 1 st FloorB-36, Sector-132Noida ExpresswayNational Capital Region of DelhiIndiaBRANCH OFFICE:F-252, WESTERN AVENUE,SAINIK FARMS, NEW DELHI – 110 062, INDIAPh: +91 11 29552836, 29552930Fax: +91 11 29555679CHAMBER:386 Lawyers Chamber,Delhi High Court, NEW DELHI – 110 003, INDIAPh: +91 11 23073601Associate Offices : Mumbai Bangalore Kolkata Chennai AhmedabadProvided on Request27