What is a Trademark?
A Trademark can be described as a name or a sign which provides the capability to not just identify but also to distinguish different goods, services and products provided by different manufacturers. Any unique or characteristic shape, colours, pictures, letters, words, numerals, drawings, labels, logo types or combinations that are used to differentiate different goods or services can be considered as a trademark.
Marks that are subject of trademark are names, Invented or Coined words, Numerals, Letters, Devices, Combination of Colours, Shape of Goods, Logo, Slogans, unique sound, signatures and marks which can be represented in three dimensions. Hence the Trademark is the exclusive right that is given so that it can prevent other parties from using the same or similar name for marketing identical or similar products to prevent any confusion in mind of a consumer.
The main objective of a trademark is to help consumers to identify a product (whether a good or a service) of a particular manufacturer so as to distinguish it from goods of competitors. Which eventually converts into reputation of the company by regularized usage, extensive branding and marketing activities.
What are the Pre-requisite to be a Trademark?
Marks that can be registered as trademark are names, Invented or Coined words, Numerals, Letters, Devices, Combination of Colours, Shape of Goods, Logo type, Slogans, Signature, Three Dimensional Marks and Sound Marks.
The pre-requisite for a mark to qualify as a trademark is that the mark must be distinctive, that is, it must be capable of identifying the source of the particular goods/services. Generally courts have categorized the mark into four groups in order to pass the test of distinctiveness which is based on the relationship between the mark and the underlying product. The groups are: firstly the mark can be arbitrary or fanciful, for ex: Apple which has no relationship with computers.
The second group is suggestive mark which suggests a quality or characteristic of goods/services; such a trademark might also be called allusive for eg: Playboy a magazine brand. The third group is the descriptive mark which not only suggests but describes the characteristic or quality of the underlying product. The general principle to test the distinctiveness of any mark, which the courts have adopted is based on the relationship between the mark and the underlying product is that, is the mark fanciful/arbitrary, generic, descriptive or suggestive in relation to the product.
The marks that belong to each of these categories are different and vary with regards to their individual distinctiveness and because of this the degree of protection that is afforded legally to the marks are dependent on the category that they fall in. The mark may not be completely unrelated to the product/services, and they may rather be suggestive to serve commercial purposes of an applicant, as well to receive higher degree of protection, as suggestive marks are considered more or less distinctive, and not descriptive, so they become quite close to be in category of fanciful or arbitrary marks.
A descriptive mark is a mark that directly depicts, rather than suggesting, a characteristic or quality of the goods or services for eg: Hotel Inn.e In case of marks that describe the general category of the product or service, it is called as a generic mark, like for eg., the brand ?Apple? is generic for computers and hence it will not be allowed.
What are the stages in a Trademark Filing?
The stages in a trademark registration are as follows:
Pre-Filing:
This is the first stage where we need to do the preliminary searching of the trademark prior to filing of the trademark application. The searching is done to determine the objectionable trademarks which are mentioned in the register which would be similar, or descriptively similar mark, or phonetically similar to the proposed mark. Prior searching also will help to avoid objection from registry or opposition proceedings or infringement suits.
The preliminary searching of the proposed mark would determine the strength of the mark as well. The search can be categorized into two ways one is the Word Mark Search and other is the Device Mark Search. A word mark search can be conducted by searching in specific goods and services falling within the class 1 to class 45.
The device mark searching is conducted in specific goods and services.
Filing of Trademark Application:
The filing of trademark can be done through two gateways: one is just filing it in India and the other one is the Madrid Protocol way which is done by filing one single application which is international and covers many countries, hence granting widespread protection rights for the trademark.
In this filing stage we need to fill the appropriate details in the application form and submit the trademark application along with the official fees. An application is incomplete without a Power of Attorney, so the application should be supplied with appropriate Power of Attorney in respect to an authorized person which shall enable him to file and prosecute Trademark Application.
Prosecution of Trademark Application:
Generally after a year or more there is an examination report generated from the trademark registry and a response is filed to the examination report in a point by point fashion to overcome each of the objections. The ground for objection is mainly on two aspects, whether the mark is distinctive or not, and whether the mark is same or similar with respect to any of the marks in use.
In cases, the examiner is not satisfied with the response and still feel that we are not in compliance with the objections made, then he may call for a hearing in-order to make right decision on this aspect.
Post- Registration of Trademark:
The post-registration includes the renewal of trademark, trademark watch, trademark licensing, restoration and also rectification.
The trademark watches are done to protect the registered trademark from getting diluted or infringed. Dilution of trademark occurs when someone uses a well-known mark in such a way that this usage blurs distinctiveness of the mark. Dilution is a process in which the capacity of recognition or identification of goods or services is reduced, and this is done irrespective of the presence of any competition between any well-known mark owners and other parties, where there may be likelihood of mistake, confusion or deception.
Un-appropriate usage of Trademark or keeping a blind eye over an alleged infringement may result into dilution of Trademark, which eventually be denied any further protection for Trademarks, either in common law or civil law system. Hence, Trademark management to identify any similar protection sought, to identify any similar mark being used, enforcing appropriate usage of the marks by vendors, employees, clients and other associates is of utmost importance to keep the Trademark Right aligned.
