A trademark is a word, phrase, symbol, or design that helps distinguish the source of the goods of one party/organisation from that of others.
1. IntroductionTrademark rights in India are statutorily protected by the Trademark Act, 1999and also under the common law remedy of passing off. The administration of such protection under the Act is done by the Controller General of Patents, Designs and Trademarks. The Trademark Act, 1999 deals with the protection, registration and prevention of fraudulent use of trademarks. It also deals with the rights of the holder of the trademark, penalties for infringement, remedies for the damaged as well as modes of transference of the trademark. Trademark is defined in the Trademark Act, 1999 as, “trademark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging and combination of colours.” Such a mark may include numerous things such as signatures, names, labels, headings etc.
2. Registration of TrademarkTo apply for a trademark a person must adhere to the provisions enlisted under Section 18 of the Act. The Section requires any persons applying for a trademark to apply in writing in the manner that is prescribed for the registration. The application has to contain the name of the mark, goods and services, the class under which goods and services fall, the period of the use of the mark and the personal details of the applicant such as name and address.
3. Infringement of Trademarkthe term infringement means the violation of someone’s rights. Therefore infringement of trademark means the violation of trademark rights. A trademark is said to be infringed when there is an unauthorised use of a trademark or a substantially similar mark on goods or services of a similar nature. In such a case, the court will look at whether such use of the trademark will cause any confusion to the consumer as to the actual brand they are purchasing. Therefore, according to the Act a trademark is infringed if:-
- If the trademark is a copy of a registered trademark with a few additions or alterations.
- If the infringed mark is printed or used in advertisements.
- If the infringed mark is used in the course of trade
- If the mark used is so similar to a registered mark that it is likely to confuse or deceive a consumer when selecting a category of product.
- The person filing the suit (plaintiff) must be the registered owner of the trademark.
- The person who is infringing (defendant) must be using a mark that is similar to that of the plaintiff such that it can easily be confused as one another.
- Such use by the defendant is not accidental in nature.
- The use of the mark by the defendant must be in the course or similar goods or services to that which the trademark is registered to.
4. Classification of TrademarksSection 7 of the Trademark Act, 1999 requires the classification of trademark according to the international classification of goods and services. There are a total of 45 classes goods and services may fall under in such a classification. The international classification system used is called the Nice Classification (NCL), it was established in 1957 during the Nice Agreement. According to the NCL, there are 45 classes under which goods and services fall. Classes 1 – 34 are for goods and the classes 35 – 45 are for services. You can find the Nice Classification in this link here
5. Opposing a Trademark RegistrationThe members of the public are given the opportunity to oppose the registration of a Trademark during its registration process. The person filing the opposition of registration maybe anyone, it could be a customer, competitor or any member of the public. In the process of registration of a trademark, the mark will be advertised in the Trade Mark Journal, upon this advertisement anyone can file an opposition to it during a period of three months. This period of three months may be extended by no more than one month in special cases. The filing of the opposition has to be done at the Trademark Registrars Office and not at the Intellectual Property Appellate Board (IPAB). While filing an opposition, one must include the following:
- Details of the trademark application against which opposition is being filed.
- Details of the earlier mark that the registering mark is infringing upon. It could be an already registered mark or a mark that is still undergoing its registration.
- Details of the filing party.
- Grounds upon which such opposition is based on.