1) What is a trademark?

Trademarks are words, names, symbols, brands, devices, headings, labels, tickets, signatures, letters or numerals or any combination thereof, used or proposed to be used by manufacturers of goods to identify and to distinguish their goods from goods manufactured and sold by others.  A person who sells his goods under a particular trademark acquires a sort of limited exclusive right to use the mark in relation to those goods.

2) What is well known trademark?

well known trademark in relation to any goods or services, means a mark which has become so to the substantial segment of the public which uses such goods or services that the use of such mark in relation to other goods or services would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the former

3) What are certification trademarks?

Certification trademarks guarantee that the goods or services that use the mark have been certified by to have been made of a particular material, method of manufacture, quality, accuracy or origin.  This can be owned by individuals or a corporate body.  Regulation governing the certification would have to be lodged with the trademark registry along with the application.

4) What are the benefits of trademark registration?

Trademark registration protects the goodwill of a business and also helps to identify and distinguish the source of the goods or services of one party from those of others.  Trademark registration is an evidence of ownership of the trademark and also constructive notice nationwide are issued of the trademark owner’s claim.  Trademark registration in India can also be used as a basis for obtaining registration in foreign countries.

5) Who can file an application for trademark registration?

The application must be filed in the name of the owner of the trademark; usually an individual, corporation or partnership.  Generally, the person who uses or controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used, is the owner of the mark.

6) What is the procedure to be followed before applying for registration?

Conduct a market research to ascertain whether any identical or deceptively similar mark is used for the same goods by any other person.  It is advisable not to imitate other person’s trade mark or any other well known trade mark even if the goods are different.  Before applying for registration it is desirable to obtain preliminary advice regarding the distinctiveness of your mark from the Registrar.

7) What is a trademark search?

A trademark search is designed to identify pre-existing trademarks that have the potential to conflict with your name.  Without the benefit of a trademark search, you run the risk of being used for trademark infringement and losing the right to use your new business name, product name, domain name or slogan after you have invested in that name.  Uncovering and avoiding trademark conflicts with your name can often mean the difference between the success and failure of your business venture.

8) May I cover more than one mark in a single application?

No. A separate application must be filed for each mark the applicant wishes to register. Likewise, if the applicant wishes to register the same mark in more than one class, a separate application must be filed for each class.

9) What are the documents needed for filing a trademark application?

Other than your particulars that you submit to us while requesting, the document needed is power of attorney in favor of us.

10) Is a trademark registration valid outside India as well?

No. Certain countries, however, do recognize a trademark registration in India as a basis for registering the mark in those countries.  The laws of each country regarding registration must be complied.

11) Can the ownership of a trademark be assigned or transferred from one person to another?

Yes. A registered mark, or a mark for which an application to register has been filed is assignable.

12) What is the difference between the protection available for registered trademarks (infringement action) and unregistered trademarks (action for passing off)?

The basic difference between an infringement action and an action for passing off is that the former is a statutory remedy and the latter is a common law remedy.  Accordingly, in order to establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required.  In the case of a passing off action, proving that the marks are identical or deceptively similar alone is not sufficient.  The use of the mark should be likely to deceive e or cause confusion. Further, in a passing off action it is necessary to prove that the use of the trademark by the defendant is likely to cause injury or damage to the plaintiff’s goodwill, whereas in an infringement suit, the use of the mark by the defendant need not cause any injury to the plaintiff.  However, when a trademark is registered, registration is given only with regard to a particular category of goods.  Protection is, therefore, afforded only to these goods.  In a passing off action, the defendant’s goods need not be the same; it may be allied or even different.

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1)Is usage of mark necessary for applying trademark registration?

For the purpose of applying for trademark registration usage of mark as such is not necessary, but with reservations based on the act.

2) What are ‘proposed to be used’ criteria for trademark registration?

The case of ‘proposed to be used’ implies that actual use of the trademark is not necessary for the purpose of filing an application.

3) Does Trademark Act 1999 provide with the option for registration of service mark?

Yes, the trademark Act 1999 provide with the option for the registration of service mark which was earlier not available.

4) What are the grounds of refusal for trademark registration?

The grounds of refusal for trademark registration are broadly mentioned under the categories of absolute refusal and relative refusal, with options to accommodate marks of acquired distinctiveness.

5) What are opposition proceedings under the trademark Act, 1999?

The opposition proceedings can be used to prevent the registration of trademark which is applied based on a better claim than the applicant.  The opposition proceedings once initiated can be substantiated through adducing evidence from both sides.  The registrar of trademark depending upon the evidence so adduced and depending upon the strength of statutory provision will decide upon the matter.

6) Is there any option for renewal of registration of trademark?

Yes, option for renewal of registration is available under the provisions of Trademark Act 1999

7) What is the duration of trademark registration at a time?

The registration of a trademark, after the commencement of this Act, shall be for a period of ten years.

8) Will ‘non-use’ affect the trademark registration?

Yes, 5 years of non-use causes cancellation.

9) What is collective mark?

A collective mark can be obtained by an organization which can permit the members to use the mark. The association has to prepare and file a regulation with the trade mark registry setting out the rules specifying standards and criteria for membership.