1. SINGHANIA & CO.
Indore Office: 501/5, Millindas Manor, 2RNT Marg, Opp. Central Mall, Indore – 452001
T: +91 73140 00486| Email: indore@singhania.net.in | Website: www.singhania.com
BANGALORE I CHENNAI I HYDERABAD I INDORE I KOLKATA I MUMBAI I NEW DELHI I LONDON
Newsletter Mid Week Issue
16 July 2016
TRADEMARK- A PARAMOUNT SPHERE OF
INTELLECUTAL PROPERTY
A trademark is recognized as a property which consists in the right of the owner to use
the Mark in relation to specific good and prevents other from using it. The objective of
having trademark laws is to deal with precise nature of rights a person can acquire in
respect of trademarks and the same has been covered in India under the Trademarks
Act,1999.
EVOLUTION AND IMPORTANCE OF TRADEMARK:
The evolution of internet has brought trending changes in the economy and has made
social media a ubiquitous part of our lives. With booming businesses and corporations,
the need for continuous development and changes in law and rules governing it to bring
stability and balance has also been enlarged. In these ongoing developments one thing
which has still been underrated by the big and small companies is the need to trademark.
Startups and small businesses fail to recognize that they are purely based on the subject
of intellectualpProperty. Registration of Trademark is one of the finest steps every
company has to make once it’s incorporated.
Trademark has played a vital role in providing business regardless of their size, be it big
or small. Trademark is not only treated as tools of communicating to the customer but is
also a valuable asset.
Trademark helps in creating a face value of the company, thus trademarking would be
legally protecting the identity of your business. Trademark registration clearly forbids
anyone from infringing and it makes it clear to customers and the competitors. From an
investors point of view trademark protects from any unfair trade practice to take place,
in the view that the individuality of the business they have invested is protected. In
future if any need arises to sell the business it calls out for potential investors. Thus, this
helps in having good congruence with the investors facing no future complications.
If there are any issues in relation to business license and an agreement having a
registered trademark fastens up the process creating a better goodwill.
REGISTRATION - APPLICATION, OPPOSITION AND RENEWAL:
The recent developments in Trademarks Act, 1999 has simplified the process of getting
a trademark registered
- The application of Trademark requires basic documents and information regarding the
word and logo which has to be registered. That could be a service mark i.e. restaurants
name, wordmark, a sound trademark i.e. jingle of a brand, and 3 dimensions mark.
- Once the application is been filled the same is sent for Vienna Codification and a data
entry is made with the Registrar of Trademarks.
- An examination Report is then sent, which would state the objections if any and the
parties will be given reasonable opportunity to present themselves.
ABOUT THE FIRM:
Singhania & Co. was founded in the
year 1969 by Mr. D.C Singhania, a
veteran in the legal profession with an
expertise of over five decades in
Commercial laws, Arbitration (both
National & International) and
litigation. Mr. Pradeep Jain is
currently heading the Mumbai and
Indore offices of the Firm.
The Firm operates out of 10 offices
including an office in London. In
India the Firm has offices in New
Delhi, Mumbai, Hyderabad, Indore,
Bangalore, Kolkata, Chennai,
Ahmadabad and Chandigarh.
The breadth of the Firm’s practice
includes Admiralty, Anti-Dumping,
Aviation, Arbitration & Dispute
Resolution, Banking, Securities and
Financial Services, Corporate &
Commercial, Infrastructure,
Intellectual Property, Joint Venture
& Technology, Litigation,
Mergers & Acquisitions, Technology
Transfer, Project Financing, Capital
Market, Private Equity and Fund,
Securitization & Structured Finance
and Taxation laws.
AUTHORS:
TANAY KASERA
ASSOCIATE PARTNER

2. SINGHANIA & CO.
Indore Office: 501/5, Millindas Manor, 2RNT Marg, Opp. Central Mall, Indore – 452001
T: +91 73140 00486| Email: indore@singhania.net.in | Website: www.singhania.com
BANGALORE I CHENNAI I HYDERABAD I INDORE I KOLKATA I MUMBAI I NEW DELHI I LONDON
Newsletter Mid Week Issue
16 July 2016
- When a show cause hearing is sent , the Trademark Court sends a report if the
application is refused or accepted. Necessary evidences are to be provided by the parties
as per the objections stated in the examination report.
Once the said application fulfill all the necessary process the Trademark Registry Issues
a Certificate which is valid for 10 Years and the same can be renewed. The trademark
registration process takes 2 years but the user is given liberty to a symbol of TM next to
the logo and the wordmark to order to get protection. The new notice issued by the
Government of India in regards to ‘ Make in India’ is making deliberate efforts to
reduce and minimize the process and time frame of Trademark registration.
INTERNATIONAL APPLICATION:
The Trademark registration can be done in various classes through single application and
the same can be filled for an International registration. There is liberty to foreign
investors and domestic business enterprises to have the trademark registered in multiple
Jurisdictions internationally with the help of Madrid Protocol. The Madrid Protocol is
governed by the International Bureau and WIPO. Madrid Protocol makes it Plain- sailing
for a company to register and protect the trademark in different jurisdictions by filing an
application for international registration.
THE FIGHT FOR NAME- TRADEMARK LITIGATION:
The Indian judiciary has taken measures for the protection of Trademarks and improving
the process by ways of extension of the term of registration, and filing of multiclass
agreements. The process is more efficient and uniform. The Indian trademark Act has
maintained the standards of the international practice and TRIPS.
The Legal remedy for such trademark infringement is both civil and criminal. The
increasing agenda of a company having its goodwill through name has been seriously
taken by the marketing and strategic analysts of big corporate houses to ensure maximum
protection is attained.
The fight for name has bought an increase in the trademark litigation suits. One of the
landmark judgments given by Delhi High court was in Horlicks Limited and Ors. Vs.
Kartick Sadhukan, Delhi High Court 2002 (25) PTC 126 Del where the name Horlicks, a
product of GlaxoSmithKline contested with Kartick confectioners which manufactured
products in the name Horliks. This shows that no industry or company is now ready to
put anything at stake when it comes to protection of its trademarks.
CONCLUSION:
Thus, there is a need for our domestic based entrepreneurs and the new business
corporations to understand the importance of trademark and to have their rights and
benefits maximized. The Indian government under the ‘ Make in India’ campaign has
given a great deal of importance to IPR related subjects. Like it is rightly said "Name is
where all the Power is".
POOJA SAINI
SENIOR ASSOCIATE
SNEHA MEHTA
ASSOCIATE
Disclaimer:
The contents of this newsletter are
intended for information purposes
only, and parts of this newsletter are
based on news reports and have not
been independently verified. The
newsletter is not in the nature of a
legal opinion or advice. They may not
encompass all possible regulations
and circumstances applicable to the
subject matter and readers are
encouraged to seek legal counsel
prior to acting upon any of the
information provided therein.
Singhania & Co. neither assumes nor
accepts any responsibility for any loss
arising to any person acting or
refraining from acting as a result of
any material contained in this
newsletter. This newsletter is the
exclusive copyright of Singhania &
Co. and may not be circulated,
reproduced or otherwise used by the
intended recipient without the prior
permission of its originator.