2.

3 Trademark
In simple language, a Trademark (or Trade Mark) is a unique
symbol which is capable of identifying as well as differentiating
products or services of one organization from those of others. The
word ‗Mark‘ stands for a sign, design, phrase, slogan, symbol,
name, numeral, devise, or a combination of these. Essentially, the
Trademark is anything that identifies a brand to a common
consumer.
2.3.1. Eligibility Criteria
For goods/services to be legally classified as Trademark, they
need to pass the following conditions:
 Distinctiveness - The goods and services for which the
protection is sought should possess enough uniqueness to
identify it as a Trademark. It must be capable of identifying the
source of goods or services in the target market.
 Descriptiveness - The Trademark should not be describing the
description of the concerned goods or services. Descriptive
marks are unlikely to be protected under Trademark law.
However, descriptive words may be registered if they acquire
―secondary meaning‖, such as the brand name ‗Apple‘ is used
by a USA based multinational company that manufactures
electronic gadgets.
 Similarity to the prior marks - The mark should be unique
and should not be having similarity to the existing marks.
2.3.2. Who Can Apply for a Trademark
Any person who is a proprietor of the Trademark is eligible to
apply for registration of Trademark. The mark can be filed
collectively by two or more applicants and for that purpose, support
documents need to be submitted. An organization or association can
file for the collective mark and the same can be used by its
members. The most appropriate example for this mark is the
‗Reliance‘ symbol, which indicates all products falling under the
organization.

68
2.3.3. Acts and Laws
In India, Trademarks are governed under The Trademarks Act, 1999
([Link]
[Link]).The Trademark rules are governed by Trademarks
Rules, 2002, ([Link] data/Portal/IPO
Rule/1_56_1_1_59_1_tmr_rules_2002_1_.pdf). The Acts and Rules
have been amended from time to time. The latest amendments were
done in 2010 and 2017 for Trademarks Acts and Trademarks,
[Link] administration of matters pertaining to Trademarks
is carried out by the Office of CGDPDTM, GoI.
2.3.4. Designation of Trademark Symbols

TM
Represents that the Trademark is unregistered. This mark
can be used for promoting the goods of the company.
Represents that the Trademark is unregistered. This mark
SM
can be used for promoting brand services.
Represents a registered Trademark/Service. The applicant of
R
the registered Trademark is its legal owner.
2.3.5. Classification of Trademarks
Goods and Services under Trademarks are classified as per the
‗Nice Agreement‘ (1957) administered by WIPO. A total of 149
countries (84 state parties who are signatory to the Agreement and
65 additional states who are following this classification for the
Trademarks) and others (African Intellectual Property Organization,
African Regional IP Organization and Trademark Office of
European Union) are using the same Trademark classification.
Trademark classification comprises of 45 classes, out of which
34 are for goods and 11 are for services. ([Link]
static/html/nice-general-remarks-
[Link];jsessionid=8FBC790A663FAC9092ACCDD9ED1AC65E.e
c2t1). Two examples of the classes are:
Class 1 is for Chemicals for use in industry, science and
photography, agriculture, horticulture and forestry; Unprocessed
artificial resins, unprocessed plastics; Fire extinguishing and fire
prevention compositions; Tempering and soldering preparations;
Substances for tanning animal skins and hides; Adhesives for use in
industry; Putties and other paste fillers; Compost, manures,

69
fertilizers; Biological preparations for use in industry and science.
Class 45 is for legal services; Security services for the physical
protection of tangible property and individuals; Personal and social
services rendered by others to meet the individuals‘ needs.
The Vienna codification established under the Vienna
Agreement (1973) is an international classification of the figurative
elements of marks. The relevant Vienna code class can be
searched on the link: [Link] nivilo/
vienna/[Link]?lang=EN#. The classification is used to divide all
figurative elements into categories (from 1 to 29), divisions (from 1
to 19) and sections (from 1 to 30). For example, the representation
of "a little girl eating" belongs to Category 2 (Human beings),
Division 5 (Children), Main Section 3 (Girls). If auxiliary sections
are used, the figurative element can be identified additionally with
the Auxiliary Section 18 (Children drinking or eating, Code A
2.5.18). The codification of this example will be then indicated as
2.5.3, 18 (main and auxiliary sections).
2.3.6. Registration of a Trademark is Not Compulsory
Although, registration of a Trademark is not compulsory,
registration provides certain advantages to the proprietor of the
Trademark, such as:
 Legal Protection – prevents the exploitation of the Registering
Trademark by other companies/organizations/individuals, without
proper authorization by the legal owner/s of the Trademark. In case
of legal suits, a registered Trademark can serve as a potent
evidence of the lawful proprietorship of the Trademark.
 Exclusive Right - grants the Trademark owner full rights to use
it in any lawful manner to promote his business.
 Brand Recognition - products/ services are identified by their
logo, which helps create brand value over time. A strong brand
is a huge pull for new customers and an anchor for existing
customers. Registering a Trademark early and using it will
create goodwill and generate more business for the brand
owner.
 Asset Creation - registered Trademark is an intangible property
of the organization. It can be used for enhancing the business of

70
 the company as well as drawing new clients and retaining old
one by the account of brand identification.
To find out more about Registered Trademarks in India, one
may look at [Link] Images/
pdf/[Link].
It is pertinent to mention that no legal course of action can be
taken against the unlawful use of an unregistered Trademark. For
unregistered marks (sometimes known as ‗Common Law
Trademarks‘, which are defined as the law rights which generally do
not require formal registration for enforcement) action can be
brought against any person for the passing off goods or services as
the goods or services provided by another person. In such cases, the
unregistered Trademarks have to prove the establishment of
goodwill or reputation connected with the goods or service.
2.3.7. Validity of Trademark
In India, a registered Trademark is valid for 10 years. The
period can be extended every 10 years, perpetually. As per the
Indian Trademarks Act, the renewal request is to be filed in the form
‗TM-R‘ within one year before the expiry of the last registration of
the mark.
2.3.8. Types of Trademark Registered in India
Trademark can be a word that must be able to speak, spell and
remember. It is highly recommended that one should choose the
Trademark like invented word, created words, and unique
geographical name. One should refrain from Trademarks like
common geographical name, common personal name and the
praising words which describe the quality of goods, such as best,
perfect, super, etc. To ensure all these characteristics in a
Trademark, it is suggested to conduct a market survey to ensure if a
similar mark is used in the market. Following are some examples of
the registerable Trademarks:
 Any name including personal or surname of the applicant or
predecessor in business or the signature of the person e.g. the
Trademark ‗BAJAJ‘ is named after industrialist Mr. Jamnalal
Bajaj.

71
 A word having no relevance to the product/services e.g.
Trademark ‗INDIA GATE‘ is being used for food grains and
allied products.
 Letters or numerals or any combination thereof e.g. ‗YAHOO‘
is the abbreviation of the phrase ‗Yet Another Hierarchical
Officious Oracle‘. It has now become a worldwide famous
Trademark.
Table 2.7: Some of the famous examples of Trademarks.
S. No. Type of the Mark Mark Company/Firm
1. Distinctive General Word ‗Apple‘ IT Company
2. Fanciful Designation ‗Kodak‘ Photograph Film
Distinctive Personal
3. ‗Ford‘ Automotive
Names
Financial
4. Device ‗Udhaar‘
Technology
5. Number ‗4711‘ Perfume
Knitwear
6. Picture Allegator
Manufacturing
Drink it to
7. Slogan Soft Drinks
believe it
Note: Trademark Registry will object to yet to be registered Trademark if it is
similar in looks or sound to the ones already registered e.g. a keyword like
Ford can have the following terms that are similar sounding: Foard, Phord,
Fordd, Forrd. In case one wishes to carry out a search (identical as well as
similarity), one may use the free government portal [Link]
[Link]/tmrpublicsearch/[Link].

2.3.9. Trademark Registry

In India, the operations of Trademarks are carried out from five
cities i.e. Delhi, Mumbai, Ahmadabad, Kolkata, and Chennai. Each
city has been assigned a bunch of states (Table 2.8). The businesses
located in a particular state can only use the services of the assigned
Trademark Registration Office. In the case of foreign applicants,
jurisdiction is based on the location of the office of the applicant‘s
agent or attorney.

72
 Table 2.8: Territorial jurisdiction of Trademark
registration offices.
S. No. Office Location States
Maharashtra, Madhya Pradesh, Chhattisgarh
1. Mumbai
and Goa.
Gujarat and Rajasthan and Union Territories
2. Ahmedabad
of Daman, Diu, Dadra and Nagar Haveli.
Arunachal Pradesh, Assam, Bihar, Orissa,
West Bengal, Manipur, Mizoram,
3. Kolkata Meghalaya, Sikkim, Tripura, Jharkhand and
Union Territories of Nagaland, Andaman &
Nicobar Islands.
Jammu & Kashmir, Punjab, Haryana, Uttar
4. New Delhi Pradesh, Himachal Pradesh, Uttarakhand,
Delhi and Union Territory of Chandigarh.
Andhra Pradesh, Telangana, Kerala,
5. Chennai Tamilnadu, Karnataka and Union Territories
of Pondicherry and Lakshadweep Island.
Source: [Link]

2.3.10. Process for Trademarks Registration

To seek Trademark registration, the proprietor of the Trademark
has to fill an application. The proprietor may choose to hire an agent
to fill and submit the application on his behalf. Before applying, the
applicant needs to conduct a prior art search to ensure the
registration criteria.
[Link]. Prior Art Search - Prior to applying for Trademark
registration, it is always prudent to check whether the intended
Trademark is already registered or not. Also, it is ascertained
whether the intended Trademark is not similar to the ones already
registered. The requisite search can be carried out using various
web portals, such as:
 Public search for Trademarks by CGPDTM
([Link]
 WIPO‘s Global Brand Database

73
 ([Link]
 Trademark Electronic Search System (TESS).
([Link]
7u.1.1)
 MARKARIA Trademark Search Engine ([Link]
[Link]/en/asia/india-trademark-search).
 VAKIL Search ([Link]
search/trademarks?search=bajaj).
Once the ‗prior art search‘ is over and the applicant is convinced
about the distinctiveness of the Trademark, he can proceed to fill the
application form for registration (TM-A). The application is filed at
the Trademarks Office subject to the jurisdiction of the applicant.
The steps involved in the registration process are as follows:
 After the prior art search has been conducted, the applicant can
apply for the registration on his own or with the help of a
certified agent.
 The application is assigned an application number within a few
days. The same can be tracked online at [Link]
[Link]/tmrpublicsearch/[Link].
 The application is scrutinized by a professional examiner. If
everything is in order, the particulars of the application are
published in the official Trademark journal ([Link]
[Link]/[Link]). Otherwise, he will send the objections to
the applicant for rectification. Based on the satisfactory response,
the examiner would recommend the revised application to be
published in the journal. If the application is rejected, the
applicant may approach the Intellectual Property Division to
challenge the rejection of an application by the examiner.
 Once the Trademark is published in the official journal, the
public has an opportunity to file an objection, if any, within 90
days. After hearing both the parties, the officer decides whether
to proceed further for the grant of Trademark or disallow the
grant of Trademark. In case of unfavourable outcome, the
applicant has the right to contest the decision in front of the
IPAB.

74
 Once the application has successfully completed all formalities,
a Trademark registration certificate is issued in the name of the
applicant.
Figure 2.8: Flow chart for the process of Trademark
registration.

Source: [Link] (slightly modified)

One should keep in mind that while filing an application for the
registration of a Trademark, an English translation of the non-
English words has to be provided. If the applicant wishes to claim
the priority from an earlier-filed application, he has to provide
details like application number, filing date, country and
goods/services of that application.

75
 Table 2.9: Fee and forms related to Trademarks.
Form
Amount (₹ )
Entry No.
Contents
No. Physical
E-filing
Filing
Where the applicant is an
Individual / Start-up/Small 5,000 4,500 TM-A
1.
Enterprise.
In all other cases. 10,000 9,000
Opposition/Application for
Rectification of the
2. Register/Counter statement / 3,000 2,700 TM-O
Refusal or invalidation of a
Trademark.
For renewal of registration of a
3. 10,000 9,000 TM-R
Trademark.
On application to register a
subsequent proprietor in case of
4. 10,000 9,000 TM-P
assignment or transfer for each
Trademark.
Application for registration of
Registered User/Variation of
Registered User/Cancellation of
5. Registered Users and Notice of 5,000 4,500 TM-U
intention to intervene in
proceeding in
cancellation/variation.
Request for search and issue of
6. 10,000 9,000 TM-C
the certificate.
Application/Request for any
miscellaneous function in
7. respect of a Trademark 1000 9,000 TM-M
Application/
Opposition/Rectification.
On application for registration of
8. 5,000 4,500 TM-G
a person as a Trademark agent.
Source: [Link]

76
2.3.11. Important Queries/Facts About Trademarks
[Link]. Can any correction be made in the application or register
Yes, The rectifications are possible, but the applicant has to ensure
that the corrections made in the Trademark do not alter its identity
significantly.
[Link]. Can a registered Trademark be removed from the register
Yes, it can be removed if:
 Trademark was registered without any bona fide intention of
using it.
 If the Trademark is not being used for a continuous period of
5 years from the registration date or 3 months prior to filing
the application for registration.
 Registered Trademark was disallowed but inadvertently
existed in the official register.
 Trademark Registrar has the power to terminate a registered
Trademark on a suo moto basis.
[Link]. Is the sound or smell registrable as a Trademark - Yes,
sound or smell is registrable as a mark, as long as it is distinct and
can be reproduced graphically. The Trademark, ‗4711 cologne‘ has
been registered as a chemical formula. The sound can be registered
as a Trademark, provided it can be recorded in MP3 format and
depicted graphically.
[Link]. Can a registered user restrain the third party from using
an identical or similar mark which is not registered -
There is no clear cut answer for such situations. It depends on the
circumstances of the matter. But ordinarily, a registered user cannot
restrain the third party from using identical or similar marks if the
third party has been continuously using the mark concerning the
same goods or services from a date prior to the date of use of the
registered mark or date of registration.
According to the Trademarks Act, 1999, the rights and
protection in the form of remedies are not only to the registered
mark but also to the unregistered Trademarks. Although, a
registered Trademark has been given a statutory remedy under
section 28 of the Act, but 27(2) of the Act provides a remedy for an

77
unauthorized use of unregistered Trademark. Passing off is a
common law tort which is most commonly used to protect goodwill
that is attached to the unregistered Trademarks. The action of
passing off is available to both registered and unregistered
Trademarks, but a suit for infringement is available for only
registered Trademarks.
[Link]. Seeking Trademark protection in a foreign country - To
file the Trademark in a foreign country, there are two options
available for the applicant. He can either file the Trademark
application with the Trademark Office of the country in which he
wishes to seek protection, or he can use WIPO‘s Madrid System
through which the registration can be filed in multiple countries by
claiming priority of one of the signatory countries. This priority has
to be claimed within six months of the first filing. The applicant can
file a single application for seeking protection in any number of
countries that are members of WIPO by paying a single set of fee.
List of jurisdictions that can be accessed through Madrid Protocol
for filing Trademark is available at [Link] wipo.i nt/
treaties/en/[Link]?treaty_id=8.
2.3.12. Trademarks Statistics
Figure 2.9 represents the statistics for Trademarks (filed,
examined and registered) for the period 2010-20. During this period,
an increase of 95%, 65% and 154% was observed in the parameters
of trademarks filed, examined and registered, respectively. Overall,
a gradual increase was seen in the number of TM filed, but a zig-zag
curve was observed for the TM examined for the period 2010-16.
The highest number of TM applications (5,32,230) were examined
in 2016-17 followed by dip (nearly two folds) in the following year
(2017-18). The following two years (2018-20) showed some
recovery, with 3,38,551 applications examined in 2019-20. In case
of TM registration, first, five years (2010-15) showed a downward
trend. But, a significant leap of nearly four-folds was observed in
the next year i.e. 2016-17. The maximum number of TM (3,16,798)
were registered in the year 2018-19.

78
 Figure 2.9: Trademarks profile (India) for the period 2010-20.
TM FILED TM EXAMINED TM REGISTERED

550000
532230
500000
450000
400000
# tRADE mARKS

338576 348918
350000 272974
283060 338551
300000 278170 306259 337541
316798
250000 210501 294172
179317 194216 200005 267861
183588 300913
200000 250070
202385 203086
150000 205065
168026
100000
115472 116263
50000
67873 65045
51765 44361 41583
0
2 0 1 0-11 2 0 1 1-12 2 0 1 2-13 2 0 1 3-14 2 0 1 4-15 2 0 1 5-16 2 0 1 6-17 2 0 1 7-18 2 0 1 8-19 2 0 1 9-20

YEAR

Source: Annual Reports, Office of CGPDTM, Mumbai (2011-20)

([Link]

2.3.13. International Treaties and Conventions

There is a provision to file an international application for the
Trademarks to seek protection in other Convention countries. The
rules and regulations to file international applications in Convention
countries are concluded under the following treaties and agreements
administered by WIPO.
 The Madrid Agreement for International Registration of Marks
(1891) ([Link]/treaties/en/registration/madrid/).
 The Nice Agreement for International Classification of Goods
and Services (1957).
([Link]
 The Trademark Law Treaty (TLT) (1994) ([Link]
int/ treaties/en/ip/tlt/summary_tlt.html).
 Vienna Agreement (1973) for the Classification of Figurative
Marks
([Link]

79