What is a Trademark?
A mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. Trademark signifies the origin or source of product not the quality of product. Trademark is a type of intellectual property to foster consumer trust, economic growth. The act is called “Trade Marks Act, 1999. Mumbai based “Controller general of Patents, Design and Trademarks” under ministry of Commerce (Government of India) is responsible for all intellectual property rights which includes Trademark.
Trademark or Product mark which are for manufactured goods are classified under class 1 to 34 and, those which are not subject to manufacture like services (Service Mark) are classified under class 35 to 45. Multiclass trademark (Class 99) allows all classes from 1 to 45 in single certificate. Manufacturer or service provider can register their Trademark/Service mark within the geographical boundaries of any country according to the regulation of that country or can register Trademark for multiple countries through International trademark registration under MADRID Protocol.
India is part of MADRID Protocol so any Indian applicant who wishes to apply International Trademark will automatically get protection for their Brand in all member countries through one application.
Trademark/Product Mark or Service mark are owned by Individual Person or a single firm he (owner) is known as Proprietor of that Brand. Collective mark is owned by an association or public institution or corporation they all are Proprietor of that Brand. However Certification mark is owned by a certification body for own purpose like safety, quality etc.
There are few non-conventional trademarks like Domain name, 3D symbol, Sound, Smell, Design or shape, Slogans or Tag Line, are allowed as trademark registration
Important Terminologies of Trademark
- Word Mark:-It Includes one or more word, Letter, Numeral, or anything which can be written.
- Device Mark:-It Includes any label, sticker, monogram, Logo, any geometrical figure or other then a word mark.
- Color Mark: – it includes the distinctiveness is claimed in the combination of colors with device or without device.
- 3D Mark:- It includes shapes or Packaging of goods.
Benefits of Trademark
A Registered trademark has its own benefits for the brand.
- Trade Mark registry Protect trademark and not allow similar looking trademark for registration which gives recognition to the trademark owner in one or multiple country. It gives a brand unique identity, increase Brand value and Trust in long term.
- Trademark owner has a right to sue for damages when infringements of trademarks occur, means it gives legal protection.
- It is efficient marketing tool and attach to customer. Once we have good brand value it helps to easily launch new products in market.
Provisions related to Wrong use of Name of Bureau and Penalties
Matter related to Certification mark (BIS Logo), wrong use of Name of Bureau is under the jurisdiction of BIS act 2016. As per BIS Act section 26 sub-section 1” Restriction on use of name of Bureau and Indian Standard”: No person shall deceive the public without the prior permission of Bureau-
- Any name which resembles the name of the Bureau or the name which contains the expression “Indian Standard” or any abbreviation etc.
- Any title of any Patent or Mark or Trade mark or Design of any goods, article, process, system or service, containing the expressions “Indian Standard” or “Indian Standard Specification” or any abbreviation of such expressions
Person who contravenes the above provisions of Bureau shall be punishable with fine which may extend to five lakh rupees.
Provisions Related to Certification Mark and Penalties
As per BIS Act 2016 section 17 “Prohibition to manufacture, sell certain goods without Standard Mark” sub-section 1: No person shall manufacture, import, distribute, sell, hire, lease, store or exhibit for sale any such goods, article, process etc. without Certification mark if that product is in mandatory certification.
Sub-section 3: No person shall use or apply or purport to use or apply in any manner, in the manufacture, Distribution, sale, hire, lease or exhibit or offer for sale of any goods, article, process, system or service, or In the title of any patent or in any trade mark or design, a Standard Mark or any colorable imitation thereof, except under a valid license from the Bureau.
Person found guilty under section 17 will be punishable with imprisonment for a term up to 2 years or with fine not be less than 2 lakh rupees for the first contravention. And not be less than 5 lakh rupees for the second and subsequent contraventions. It may extend up to 10 times the value of goods or articles with a Standard Mark.
Provisions Related to Trademark and Penalties
BIS is certification body and BIS has no role in Permitting/Approving any Brand name of trademark. BIS certification can be completed even trademark is not certified. Point 15(a) of BIS Form 1 has a provision to provide a self-declaration and acceptance for Trademark. All matter related to Trademark are under jurisdictions of “Controller general of Patents, Design and Trademarks” based at Mumbai. As per Trademark Act 1999 Unregistered Trademark get No protection from infringement by others registered/unregistered Brands exists in area. A new Trademark application can be filed through Trade Register official website or offline mode and TM-A required to be filled with applicable fee.
A Registered User of Brand can represent the Brand in BIS by producing certain document in BIS. A person other than the registered proprietor of a TM may be registered as a registered user of Brand for any/all of goods/services for which the trade mark is registered. Trademark application TM-U required to apply for any matter related to registered user. Under section 54 of Trade mark act registered user of brand has no right to assignment or Transmission. Which means if registered user of Brand entered into a partnership with other entity or person all rights related to Registered User from 1st entity will be seized.
As per the Trademark Act 1999 Falsifying and falsely applying trade marks (i.e. without assent of proprietor, editing/tampering, use similar mark, use false TM) is subject to penalties as per section 104 of act. Which includes Imprisonment of Min 6 Month and may extend up-to 3Yr, and Fine worth Min 50,000 to maximum 2,00,000. As per section 105 of act there is a provision of enhanced penalties too on second or subsequent conviction which includes Imprisonment of Min 1Yr, which may extend up-to 3Yr, and Fine worth Min 100,000 to Maximum 2,00,000.
Trademark is symbol of trust to end consumer, consumer feel cheated if product from a reputed brand is not worth of it, although trademark legally or technically not a guarantee a good quality, but it is the long term trust and faith which makes a trademark symbol of quality assurance, and goodwill. It became very important for proprietors of TM as well to abide by the various legal provisions while reaping the benefits of registered trademark.