TABLE OF CONTENTS

Sl. No. Particulars Page No.

01. Introduction 1

02. What is Trademark 1-2

03. Definition 3

04. Characteristics of Trademark 3-5

05. What Cannot be registered as a Trademark 6-8

06. Subject Matter Trademark 8-9

07. Types of Trademark 9 - 11

08. Types of Trademark Application 11 – 13

What is the Trademark Registration Process in

09. 13 - 16
India
Distinctiveness of trademark in Indian
10. 16 - 17
perspective with Judicial Decisions

11. Conclusion 18
INTRODUCTION

A trademark is known and used as a unique brand name of the goods or product or
services. A trademark is a word, name, symbol or design that identifies the source of
goods and/or services and serves to distinguish the goods and/or services from similar
offerings by others. Trademarks also indicate the source of the goods, even if that
source is unknown to the consumer. It also serves to identify the quality of the goods
and/or services and creates goodwill and brand reputation of the owner of the mark.

Apart from these, trademarks can be logos, aromas, sounds, personal brand names,
slogans, smells, etc. Even specific colors can be trademarked under specific brands, such
as UPS Brown (also known as Pullman Brown)1, Home Depot orange2, Tiffany
blue3 or John Deere green4, etc.

In other words, trademarks can be almost anything that distinguishes the products
and/or services from others and signifies their sources. The rationale for granting legal
protection for trademarks is that they are a type of intellectual property that
demonstrates the standard of quality of products and/or services mainly based on
goodwill, and provides legal protection to your brand from fraud and counterfeiting.

WHAT IS A TRADEMARK

The Intellectual Property Rights allow companies to claim ownership of brands,

designs, and assets. These ownership rights mean that company brands and designs are
legally protected against unauthorized use or implementation by third parties. One type
of intellectual property right is a trademark. A trademark is the characteristics or
combinations of characteristics capable of distinguishing the goods and/or services of
one enterprise from those of other enterprises. Trademarks fall under the ambit of
intellectual property rights and are protected by national and international laws.

A trademark is a recognizable insignia, phrase, word, or symbol that denotes a specific

product and legally differentiates it from all others of its kind. A trademark exclusively
identifies a product as belonging to a particular company and recognizes the company's
1
Pullman Brown (UPS Brown) / #644117 Hex Color Code, RGB and Paints (encycolorpedia.com)
2
Home Depot / #ee7125 Hex Color Code, RGB and Paints (encycolorpedia.com)
3
Tiffany Blue - Tiffany
4
John Deere Colors - Hex, RGB, CMYK, Pantone | Color Codes - U.S. Brand Colors (usbrandcolors.com)

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ownership of the brand. Trademarks are considered a form of intellectual property5. The
word "mark" is used for trademarks or service marks, whether registered or not
registered. “Mark” is a distinguishing symbol which any person can use to exert public
attention or to create some kind of impression in the minds of the people. When he
wants that public do notice his creativity then he can use a mark for his creativity. Mark
can be represented as a name, letter, shape of goods, heading, label, device, combination
of colors etc.

Trademark is a brand entity which has a capability to distinguish goods and/or services
from any other persons’ goods and/or services. Trademark includes word, design, logo,
shape of goods, their packaging and combination of colors. Trademark is used to
indicate a connection between the goods and/or services and the person who has a right
to use the mark as a proprietor.

In the present world getting a registered trademark for each Goods and/or Services
becomes very important i.e. because every person in his whole day watch at least 50
different trademarks like trademark of Google, Mcdonalds, Nike, Tide, Dettol,
Microsoft, etc. So to sell your product in today’s time it is very important to do
branding or promotion of your product. It maintains your goodwill in the market. The
registration of the trademark is compulsory because it protects and promotes different
and creative ideas. So those trademarks that are considered as different by the trademark
department are granted registration only in India. A trademark in India is registerable
for maximum period of 10 years thereafter can be renewed. The registered trademark
are allowed to take action for its infringement but are not allowed to take action for
infringement for non registered trademark.

A trademark is a distinctive sign or an indicator used by an individual or an

organization. It is applied to the articles of commerce to identify the products of one
trader from those of another. The Trademarks Act 1999 is the statute that lays down the
laws for Trademarks in India. The Trademarks Act complies with
the TRIPS6 agreement.

5
What Is Intellectual Property and What Are Some Types? (investopedia.com)
6
The Difference between WIPO and TRIPS | All You Need To Know (intepat.com)

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DEFINITION

Under The Trade Marks, Act 19997 the word “mark” is defined under Section 2 (1)(m)
as “mark includes a device, brand, heading, label, ticket, name, signature, word, letter,
numeral, shape of goods, packaging or combination of colours or any combination
thereof”.

The term “Mark” under the Act also includes the shape of goods, packaging, or
combination of colours or any other type of combination. A mark can include a device,
brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods,
packaging or combination of colors or any such combinations. A trademark can be a
registered trademark as well as an unregistered trademark.

Section 2(1)(zb) in the Trade Marks Act, 1999 defines trademark as “trade mark” 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 shape of
goods, their packaging and combination of colours”.

Section 2(1)(zb)(i) in the act states about registered trademarks for goods and services
and further states that the person has the right to use the mark as the proprietor. Section
2(1)(zb)(ii) in the Act states that a person has the right to use the mark either as a
proprietor or a permitted user whether with or without any indication of the identity of
that person. The proprietor or a permitted user can also use a certification trademark or a
collective trademark in this regard.

CHARACTERISTICS OF TRADEMARK

Trademarks play an important role in business as they help identify and distinguish a
company’s products or services from those offered by competitors. A well-chosen
trademark not only protects a brand’s identity but also contributes to its overall success.
However, not all brand names or logos can qualify as trademarks. To be eligible the
registration, a mark must possess certain key features of trademark that adhere to legal
requirements and branding best practices.

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 1. Uniqueness8

One of the most critical features of a good trademark is its uniqueness. A brand name or
logo must be sufficiently distinctive and distinguishable from existing trademarks
within the same industry or product category. Trademarks are designed to prevent
consumer confusion and a mark that is too similar to another could lead to legal disputes
and potential infringement claims. When assessing the uniqueness of a potential
trademark, it’s essential to conduct thorough research to ensure that the proposed mark
does not conflict with registered trademarks or pending applications. Failure to do so
could result in costly legal battles and the potential rejection of the trademark
application.

2. Coined Words

To enhance the distinctiveness of a trademark, many companies opt for coined words or
made-up terms that have no existing meaning in the language or industry. These coined
words can be created by combining parts of different words or by inventing entirely
new terms. Coined words offer several advantages as trademarks. First, they are
inherently unique and less likely to conflict with existing marks. Second, they can be
more memorable and easier to associate with a specific brand. Finally, coined words
provide greater flexibility in shaping the brand’s identity and positioning. Examples of
successful coined word trademarks include Kodak, Xerox and Verizon, all of which
have become synonymous with their respective products or services.

3. Easy for Pronunciation and Memorability

A good trademark should be easy to pronounce and memorable. Consumers are more
likely to remember and associate with a brand name that rolls off the tongue and sticks
in their minds. Overly complex or lengthy names can be challenging to remember and
may fail to resonate with the target audience. When selecting a trademark, it’s important
to consider factors such as the number of syllables, the flow of the word or phrase and
its overall appeal. Simple, short and catchy names tend to be more effective in capturing
consumer attention and facilitating brand recognition.

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4. Non – Descriptive Nature

Trademarks should avoid being too descriptive of the products or services they
represent. Overly descriptive marks may face challenges during the registration process,
as they could be considered generic or lacking in distinctiveness. For example, a brand
name like “Pure Water” for a bottled water company would likely be considered too
descriptive and could face objections from trademark authorities. Instead, a more
abstract or coined word, such as “Aquafina” or “Smartwater,” would be a better choice
as it does not directly describe the product. By avoiding descriptive terms, a trademark
can better establish itself as a unique and distinctive identifier, rather than a mere
description of the goods or services offered.

5. Non – Prohibited and Ethical Considerations

Certain words or terms are prohibited from being used as trademarks due to legal or
ethical considerations. These may include terms that are considered offensive, deceptive
or misleading or those that infringe on the rights of others. Additionally, words that are
closely associated with government agencies, religious organisations or protected
symbols may be off-limits for trademark registration. For example, using the word
“Olympic” or incorporating a national flag into a trademark would likely face objections
and legal challenges. When selecting a trademark, it’s essential to ensure that the
proposed mark does not violate any legal or ethical standards. Failure to do so could
result in the rejection of the trademark application or potential legal action after
registration.

6. Comprehensive Trade and Search Analysis

To ensure that a proposed trademark meets the necessary criteria and avoids potential
conflicts, it’s crucial to conduct a comprehensive trademark search and analysis. This
process typically involves searching for similar marks in relevant databases, such as the
trademark registries of the countries or regions where the brand intends to operate. A
thorough trademark search can help identify potential conflicts, assess the availability of
the proposed mark and provide insights into potential objections or legal challenges that
may arise during the registration process. Additionally, it’s advisable to consult with
intellectual property professionals, such as trademark lawyers or legal experts, to ensure
that the proposed mark complies with all relevant laws and regulations.

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WHAT CANNOT BE REGISTERED AS A TRADEMARK

Under Section 9 of The Trade Marks, Act 1999 9 explains about the absolute grounds for
refusal of registration -

(1) Trademarks that do not have a distinctive characteristic [Section 9 (1) (a)] -
This means that trademarks that cannot distinguish one person’s goods or
services from another cannot be registered. The whole purpose of trademark law
is to enable distinction between brands, and no mark that takes away from this
purpose can be registered. Trademarks that are arbitrarily chosen or fanciful can
be considered the most distinctive10 trademark.
(2) Trademarks that describe [Section 9 (1) (b)] the good or service give the
consumer an idea about the kind, quality, quantity, intended purpose, values,
geographical origin of the particular good or service. For instance, the mark
‘Cold and Creamy” is considered highly descriptive for ice cream products.
(3) Marks that have become customary [Section 9 (1) (c)] in the current language.
For example, a consumer associates a restaurant with a chef.

Under Section 11 of The Trade Marks, Act 1999 disallows the following from being
registered trademarks:

Trademarks may cause a ‘likelihood of confusion.’ This means identical marks on

similar goods and similar marks on identical/similar goods. A consumer views the
trademark entirely, and the test is to see if the consumer can distinguish between similar
brands. For example, In Society Des Products vs. V.M. Confectionary Limited 11, the
court held that the words ZERO and AERO be similar as mere phonetic dissimilarity
was not enough to enable an ordinary person to distinguish between the two.

Well-known: Trademarks that people are familiar with cannot be registered even if the
goods are not similar, as this would affect the reputation of the person who owns the
well-known trademark. In a nutshell, trademarks that are not distinctive, that are
descriptive, or that give rise to a likelihood of confusion cannot be registered.

9
https://www.indiacode.nic.in/bitstream/123456789/15427/1/the_trade_marks_act%2C_1999.pdf
10
Distinctiveness vs Descriptiveness of Trademarks | Intepat
11
https://indiankanoon.org/doc/330984/

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REGISTRABLE TRADEMARK12

A "registered trademark" confers a bundle of exclusive rights upon the registered

owner, including the right to exclusive use of the mark in relation to the products or
services. Registration of a trade mark is not a mandatory requirement in India. A trade
mark is registered for a period of 10 years and is subject to renewal. The Trademarks
Act 1999 governs the whole process of registration. Registration is required for the
following reasons:"

 It identifies the origin of goods and services;

 Advertises goods and services;
 Guards the commercial goodwill of a trader; and
 Protects the innocent public from buying the second rate quality goods.

The Trademarks Act also provides certain incentives for registration through its various
provisions. Chapter 4 of the Trademarks Act deals with Effects of Registration. Section
27 of the act provides that no action for infringement can be taken for an unregistered
trademark. But for a registered trademark, an action for infringement lies where the
aggrieved can be sought civil and criminal reliefs. Moreover, section 28 of the act
confers certain benefits on registration. Registration of a trade mark gives to the
registered proprietor of the trade mark the exclusive right to the use of the trade mark in
relation to the goods or service. Further, the registered trademark can obtain relief in
respect of infringement of the trade mark in the manner provided by the Act. Section 31
of the act enables registration to be a prima facie evidence of validity.

UNREGISTERED TRADEMARK

An "unregistered trademark" is one which does not possess legal benefits. But in some
cases, an unregistered trademark may get common law benefits. Unregistered marks are
defined as marks which are not registered in relation to goods or services (that is names,
marks or logos used in relation to a business) under the Trademark Act. Though under s.
27 no action for infringement is allowed for unregistered trademarks, it can still be
protected by means of common law tort of passing off. To succeed in such an action, it

12
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is necessary to establish that unregistered mark has comparable goodwill or reputation
in connection with the product, service or business with which it is used.

Thus, owner of an unregistered trademark may be able to prevent use by another party
of an infringing mark pursuant to the common law tort of passing off 13. The action
against passing off is based on the principle that 'a man may not sell his own goods
under the pretense that they are the goods of another man'. Passing off is a species of
unfair trade competition by which one person seeks to profit from the reputation of
another in a particular trade or business. There are certain essential ingredients of a
passing off action.

 The plaintiff has to prove that there is a similarity in the trade names;
 The defendant is deceptively passing off his goods as those of the plaintiff;
 There is bound to be confusion in the minds of the customers.
 The test to be applied in such matters is as to whether a man of average
intelligence and of imperfect recollection would be confused.

SUBJECT MATTER OF TRADEMARK

Though trademarks are often classified as intellectual property, the US Supreme

Court14 held an important decision in the famous 1879 Trademark Cases15, a
consolidated set of three cases, namely United States v. Steffens; United States v.
Wittemann; and United States v. Johnson 16, respectively, dealt with alleged
counterfeiting of marks related to champagne for the first two cases and in the third
case, Johnson dealt with alleged counterfeiting of a mark of whiskey. The Court ruled
that Congress has no power to protect or regulate trademarks under the intellectual
property clause17 of the US Constitution18. The clause provides Congress with the
authority to regulate and protect copyrights and patents. However, the Court did not
entirely exclude the possibility of Congress regulating trademarks. The Commerce
Clause19 of the Constitution gives Congress the power to regulate commerce with

13
https://www.intepat.com/blog/trademarks-passing-off-india/
14
Home - Supreme Court of the United States
15
tile.loc.gov/storage-services/service/ll/usrep/usrep100/usrep100082/usrep100082.pdf
16
U.S. Reports: Trade-Mark Cases, 100 U.S. 82 (1879). (loc.gov)
17
https://constitution.congress.gov/browse/article-1/section-8/clause-8/
18
https://www.senate.gov/about/origins-foundations/senate-and-constitution/constitution.htm
19
https://constitution.congress.gov/browse/article-1/section-8/clause-3/

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foreign nations, among several states and tribes. Under this clause, the US Congress is
also empowered to regulate trademarks for commercial purposes.

Beyond trade marks, there are also other types of marks that also fall under the category
of trademarks. The only difference is that they distinguish one particular characteristic
of the goods or product (such as shape, colour, service, sound, etc) instead of
distinguishing between any goods or products.

Trade dress is another legal term of art that generally refers to the characteristics of the
visual appearance of a product or its packaging that indicate the source of the product to
the consumers. Trade dress or product packaging may also be protected under
trademark laws.

TYPES OF TRADEMARKS

Types of trademarks include service marks, collective marks, certification marks, etc.
Whatever the trademark type, the trademark’s purpose is the same. Particularly to
distinguish the source of the goods or services and also assure the consumers of the
quality of the product or service, a trademark can be divided into the following seven
categories:

1. Word marks: Word marks may be words, letters, or numerals. A word mark only
gives the proprietor a right to the word, letter, or numerical, and no right is sought
concerning the representation of the mark.
2. Device marks: A device mark uniquely represents a logo, label, or design in the
image format and may also contain a word or a combination of words.
3. Service marks: A service mark is nothing but a mark that distinguishes one person’s
services from another. Service marks do not represent goods but only the services
offered by a person/ company. Thus companies providing services like computer
hardware and software assembly and maintenance, restaurant and hotel services,
courier and transport, beauty and health care, advertising, publishing, education,
and the like are now in a position to protect their names and marks from being
misused by others. As service marks, the substantive and procedural rules
governing the service marks are fundamentally the same.

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4. Collective Marks: Marks being used by a group of companies can now be protected
by the group collectively. Collective marks inform the public about a particular
product feature used for the collective mark. The owner of such marks may be an
association, public institution, or cooperative. Collective trademarks are also used
to promote particular products with certain characteristics specific to the producer
in a given region.
5. Certification Marks: Certification marks are used to define standards. They assure
the consumers that the product meets specific prescribed standards. A certification
mark on a product indicates that the product has successfully passed a standard test
specified. It assures the consumer that the manufacturers have gone through an
audit process to ensure the quality of the product. For example, Toys, Electrical
goods, etc., have a marking that indicates the product’s safety and quality.
6. Well-known marks: When a mark is easily recognized among a large percentage of
the population, it achieves the trademark status of a well-known mark. Well-known
marks enjoy more excellent protection, and persons will not be able to register or
use marks imitations of well-known trademarks. A trademark needs to be
known/recognized by a relevant section of people to be well-known. These people
include actual or potential customers, people involved in the distribution, and
business service dealing with the goods/services. Now you can declare your mark
as well-known and learn more details here.
7. Unconventional Trademarks: The trademarks that get recognition for their
inherently distinctive feature are unconventional. Unconventional trademarks
include the following categories:

i. Colour Trademark: If a particular color has become a distinctive feature

indicating the goods of a specific trader, it can be registered as a trademark. For
example, Red Wine.
ii. Sound Marks: Signs that are perceived by hearing and distinguishable by their
distinctive and exclusive sound can be registered as sound marks. For example,
Musical notes.
iii. Shape Marks: When the shape of goods or packaging has some distinctive
feature, it can be registered. For example, Ornamental Lamps.
iv. Smell Marks: When the smell is distinctive and cannot be mistaken for an
associated product, it can be registered as a smell mark. For example, Perfumes.

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TYPES OF TRADEMARK APPLICATION

1. Single class application: When we file an application under a single class of goods
and services using Form TM-A, the application is known as a single trademark
application. The applicant (individual) must pay the prescribed fee of Rs.4500/- for
e-applications and Rs.5000/- for manual filing. It is relatively simple and easier to
obtain a trademark under one particular class.

2. Multiclass application: When an applicant wishes to register one trademark under

multiple classes, the trademark is known as a multiclass trademark20 application.
The applicant should fill in Form TM-A to file a multiclass application. This type
of application has less documentation as we file a single application for several
classes. The applicant (individual) has to pay a fee of Rs.4500/- for filing under
each class. Hence, if the applicant decides to file in 4 multiple classes, he should
pay a fee of Rs. 18,000/- (Rs.4500 x 4). However, there are chances for the entire
application process to halt if the registry finds an issue in any one of the classes.
Sometimes a third party may oppose one of the classes. If their opposition is valid,
the whole application will be rejected even if the trademark is registerable under
other classes.

3. Convention application: Section 154 of the Trademarks Act provides provisions for
citizens from convention countries to file their trademark applications. After
applying to one of the convention countries, one can file in India within six months.
Under such circumstances, the trademark registration should be done as of the date
on which it was filed in the convention country. We must fill in FORM TM-A to
file an application for a single class and multiple classes in a priority trademark
application. This application holds a huge advantage for people seeking trademark
protection in more than one country. It reduces the tedious task of filing trademark
applications in several countries simultaneously. Furthermore, it provides ample six
months to decide on the countries where the applicant wishes to seek trademark
protection.

4. Series mark application: As the name suggests, this application facilitates the
applicant to file more than one trademark in a single application through FORM

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 TM-A. It is ideal for marks that are similar or less distinguishable from each other.
Besides, the marks should belong to the same description of goods or services
under the Nice classification. Further, one cannot register through a series
application if the marks fall under the same Nice classification but do not carry the
same description. The material particulars of the mark should be similar. However,
other non-distinctive features, such as color, size, quantity, etc, can vary. The ‘Mc’
in McDonald’s is a well-known series trademark21. The products in their food chain
are named Mcpuff, Mcnuggets, etc.,

5. Certification mark application: This special type of trademark indicates that a

product or service meets a particular standard. Suppose a product or service carries
a certification trademark. In that case, it means that the product is made of a
specific material, manufacturing process, and origin and meets the quality standards
of the certification mark. The ISI, Woolmark, and Organic India are popular
certification trademarks prevalent in India. One can use form TM-A to file for
certification marks under single and multiple classes, respectively.

6. Collective mark application: Organizations where the members identify

themselves with a certain level of accuracy, origin, quality, or other standards set by
the association file for collective trademarks. Any organization willing to file
a collective trademark22 application should submit three copies of the FORM TM –
A to the trademarks office. The form will carry information on details of the
members, individuals authorized to use the mark, membership norms, etc.

Only members of the organization can utilize this mark. For example, only the
Institute of Charted Accountants members can utilize the mark ‘CA.’ “On the
whole, a trademark is an essential means to protect the goodwill and reputation of a
business. While filing a brand, the applicant can choose any trademarks mentioned
above based on the mark’s nature and also should choose a trademark application
that suits their needs.”

WHAT IS THE TRADEMARK REGISTATION PROCESS IN

INDIA23
21
https://www.intepat.com/blog/series-trademarks-india/
22
https://www.intepat.com/blog/collective-trademarks-india/
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https://tax2win.in/guide/trademark-registration-process-flowchart

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If you are confused as to how to register your trademark in India, given below is the
trademark registration process that you can follow to get your trademark registered –

Step 1: Determine Trademark Eligibility: Before you dive right in and start applying for
trademark registration, you must first check for the availability of your trademark. First
of all, check if your trademark is in accordance with the rules and regulations of the
Trademarks Act 1999. According to the Act, a trademark should be distinctive, non-
descriptive, and not similar to any existing registered trademarks. It should have the
potential to differentiate your goods or services from those of others. To assess the
eligibility of your trademark, you must consider factors such as uniqueness,
distinctiveness, and the potential to cause confusion with existing trademarks.
Conducting a thorough search of existing trademarks is crucial at this stage to avoid
potential conflicts later in the registration process. You can conduct a trademark search
through the Government of India’s Trademark Electronic Search System (TESS).

Step 2: Conduct a Trademark Search: Once you have determined if your proposed
trademark is in accordance with the Trademarks Act 1999 and is appropriate in respect
of uniqueness and distinctiveness, the next step is to check if it is already available. For
this, you need to conduct a trademark search. Performing a trademark search through
Intellectual Property India’s official website will help you avoid potential conflicts and
reduce the chances of rejection of your trademark application. In this step, you must
check if there is an existing trademark already registered by the name you have
proposed or is similar to an already registered or advertised trademark. Conducting this
step is crucial in the process and helps ensure that your content does not infringe upon
the existing ones. It also reduces the possibility of any objection at the time of
examination and ensures a smooth trademark registration process. The trademark search
can be done through the official Trademarks Registry website or by seeking the
assistance of a CA. The search should encompass the Indian Trademarks Registry
database and other legal sources.

Step 3: Filing the Trademark Application: Once you have identified an available and
unique trademark, you can now proceed with filing an online trademark application.
The online trademark registration process is administered by the Controller General of
Patents, Design, and Trademarks (CGPDTM. The trademark application can be filed

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through the online portal of CGPDTM, also known as the e-filing system. Here is the
information required for filing a trademark application –

 Applicant Details: Applicant details refer to the personal details of the person
applying for the trademark. It includes details like the name, address, and
nationality. If you are filing the trademark application on behalf of a company,
you must mention the company’s name, the company’s registered address, the
place where it is located, and the company’s incorporation details.
 Trademark Details: Under this section, you have to provide a clear
representation or description of your brand name, logo, design, or phrase, along
with the goods and services that are being trademarked. This section consists of
the details of the trademark application.
 Priority Claim: Another important component of a trademark application is
filing the priority claim. If you or the trademark applicant has filed a trademark
application in another country, you can claim priority and request the registrar to
register your trademark on priority. Don’t forget to share the priority application
number, country, and trademark filing date.

Step 4: Examination of Trademark Application: After filing your application, it

undergoes an examination by the Trademark Registrar to assess its compliance with the
relevant laws and regulations. There are two possible outcomes: acceptance or
objections. During the examination, the Registrar reviews the application for any
procedural deficiencies or potential conflicts with existing trademarks. If the Registrar
finds any issues, they will issue an examination report outlining the objections raised.
Common objections include the mark being descriptive, lacking distinctiveness, or
resembling existing trademarks.
If objections arise, you have to address them within the given timeframe. This can
involve submitting a response to the examination report, presenting arguments and
evidence to overcome objections, or amending the application to meet the requirements.
You can also consider seeking the assistance of an eCA to help you resolve the
objections and get your trademark registered. If the application is accepted, the registrar
advertises the trademark in the trademarks journal.

Step 5: Publication of Trademark in the Trademark Journal: Assuming your trademark

application is accepted, the flowchart proceeds to the publication stage. The accepted

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application is published in the Trademark Journal, which is available to the public. This
publication is available to the public to raise objections. If the proposed trademark
appears to be infringing upon any existing trademark, the public can raise an objection
to the same.

Step 6: Replying to Opposition: If there is any opposition to the trademark application,

then the applicant must reply to the trademark within 2 months and provide a counter
statement that states that the opposition is not valid and the trademark does not infringe
on any other existing trademark. The application is again examined by the registrar and
either accepted or rejected.

Step 7: Paying Fees: After the trademark application is submitted, you also have to pay
fees which are subject to factors like the type of applicant and the number of goods and
services covered under the trademark. Upon submitting the trademark application, you
need to pay the prescribed fees. You can pay using online mode, net banking,
credit/debit cards, or demand draft.

Step 8: Registration and Certificate: If no opposition is raised or successfully defended

against, the online trademark registration process moves forward, and the trademark is
registered. The registration certificate is issued, providing legal protection to the
trademark owner. The entire registration process typically takes around 1-2 years,
depending on factors such as the complexity of the application, etc. With the
digitization of government services, services like trademark registration have become
very accessible to the public. The steps mentioned above can easily get your trademark
registered. And if you are finding it hard to conduct the trademark search and get your
trademark registered, you can also hire an eCA from tax2win to help you with the
trademark registration process.

DISTINCTIVENESS OF TRADEMARK IN INDIAN PERSPECTIVE

WITH JUDICIAL DECISIONS

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In India, distinctiveness is required to exclude marks that do not even perform the basic
function of distinguishing between two goods or products. In the case, Hindustan
Development Corporation v. The Deputy Registrar Of Trade Marks (1955) 24, the
Calcutta High Court held that the word ‘Rasoi’ for a hydrogenated groundnut oil had
direct reference to the character or quality of goods. The word ‘Rasoi’ means kitchen in
common Hindi parlance. So it is a descriptive mark and not a distinctive one in the case
of a cooking oil product, to the people in the trade and also to the ordinary consumer.
Therefore, the Court held the mark to be descriptive and not distinctive enough to be
registered as a trademark.

In another case of J.L. Mehta And Anr. v. Registrar Of Trade Marks (1962)25, the
trademark “SULEKHA” is a Hindi word meaning “good handwriting”. But since the
word is used for fountain pens, inks, nibs, etc., it serves as a distinctive trademark.

The Calcutta High Court has held that in order to be distinctive, a trademark should
have at least some qualities which differentiate it from its competitors in the matter
of Imperial Tobacco Co. Of India Ltd. v. Registrar of Trade Marks And Anr. (1977) 26.
The judgement is still reiterated several times to define distinctiveness as “some quality
in the trademark” which earmarks the goods so marked as distinct from the other
products or such goods. Distinctiveness may either be ‘inherent’ or ‘acquired’. The
notion of distinctiveness is essentially to segregate between two competitors, goods and
services. Inherent distinctiveness means that any trademark has enough distinguishable
features that differentiate it from other goods and products available in the
market. Acquired distinctiveness is also known as “secondary meaning” in the United
States. It may be assessed based on several factors which include the perceptions of the
consumers, the exclusivity of use, the manner and discretion of use, the volume of the
goods marketed, advertisements, consumer surveys etc. Essentially, marketing and
strategies ultimately decide the preferences of the consumers which in turn, goes on to
be called as acquired distinctiveness.

24
Hindustan Development Corporation ... vs The Deputy Registrar Of Trade Marks And ... on 12 April,
1954 (indiankanoon.org)
25
J.L. Mehta And Anr. vs Registrar Of Trade Marks on 11 January, 1961 (indiankanoon.org)
26
The Imperial Tobacco Co. Of India Ltd. vs The Registrar Of Trade Marks And Anr. on 14 June, 1977
(indiankanoon.org)

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In the case of Godfrey Phillips India Ltd. v. Girnar Food & Beverages Pvt. Ltd.
(1998)27, the Supreme Court of India has held that a descriptive trademark is only
entitled to protection if it has acquired secondary meaning which serves as
distinctiveness.

In another case of Metropolitan Trading Company v. Shri Mohanlal Agarwal

(2008)28, the Intellectual Property Appellate Board (Chennai) held that if a trademark
has been in use for many years, it can claim acquired distinctiveness. Here, the
trademark “ZODIAC”, though being a dictionary word, has been in use for more than
three decades and has acquired distinctiveness.

Acquired distinctiveness can be achieved in a limited time and there is no particular

time bar. If a product is new and fascinates the customers, it can become a hit overnight.
The Delhi High Court observed the following in the case of Mrs. Ishi Khosla v. Anil
Aggarwal And Anr. (2007)29.

CONCLUSION

In conclusion, trademarks are essential for businesses as they establish brand identity,
protect intellectual property, and prevent confusion in the market. Registering a
trademark provides enhanced legal protection, while consistent use of the mark helps
establish rights. Understanding the distinctions between trademarks, patents, and
copyrights is crucial for any business looking to effectively protect its intellectual
property rights.

27
Godfrey Phillips India Ltd. vs Girnar Food & Beverages Pvt. Ltd. on 5 December, 1997
(indiankanoon.org)
28
Metropolitan Trading Company, A Firm ... vs Shri Mohanlal Agarwal (Shri Ram Baboo ... on 15 October,
2007 (indiankanoon.org)
29
Mrs. Ishi Khosla vs Anil Aggarwal And Anr. on 25 January, 2007 (indiankanoon.org)

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Trademarks play a vital role in protecting intellectual property and establishing brand
identity. This article will explore the concept of trademarks, their significance, and how
they differ from patents and copyrights. We will also discuss the importance of owning
a registered trademark versus simply using a trademark symbol.

Remember, trademarks are the cornerstone of brand recognition and consumer trust. By
utilizing proper trademark symbols and registering your mark, you can solidify your
brand’s presence and enjoy the benefits of trademark protection.

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