Trade mark

Trademark generallyrefers to a “brand” or “logo”.
It can also be obtained for a business name,
distinctive catch phrases, taglines or captions.
Properly used and promote, a Trademark may
become the most valuable asset of a business.
Trademarks such as Coca Cola, HP, Canon, Nike
and Adidas serve as an indication of origin of the
goods as well as an indication of quality.
© 2016 L.R. Swami Co. All Rights Reserved.

•SMService
mark
•TMTrade mark
•®Registered

Before adopting a trademark
O a trademark search is highly recommended,
 this will give an indication of any existing trademarks
which have been applied for/or registered in the
Trademarks Registry.
O The cost of conducting a trademark search is quite
insignificant in comparison to the efforts and costs
involved in rebranding due to infringement of others
rights.
O Therefore, a trademark availability search is highly
advisable before huge amounts of money and time are
invested in a trademark and the guidance of an
experienced trademark attorney are extremely
worthwhile.

Classes of trademark
• An application should be made in the
relevant classes of current goods/services
as well as in classes where there is intent
to use.
• All goods and services are divided into 45
classes.
• The 9th edition of the NICE international
classification system is followed in India.

Selection of a trademark
O scope of legal protection you would obtain
depends on the type of trademark chosen.
O Thus should be chosen carefully
O coined word, which has no reference to the
goods/services upon which it is used. E.g.
Canon
O Another option is to adopt an arbitrary word,
which has no relevance to the goods/services
upon which it is used. E.g. Apple computers;
Lotus software

Guidelines followed
O AVOID Superlative or Laudatory words E.g. Premium, Gold,
Deluxe
O AVOID Descriptive words E.g. Coffee shop for coffee bars;
Cooler for Refrigerators
O AVOID trademarks Confusing Similar to existing trademarks
O AVOID words which have direct reference to the Character or
Quality of the product/service. E.g. Best Choice, Easy Cook,
Super
O AVOID Common Personal Names or surnames. Such names
are registrable only if it has acquired distinctiveness through
advertisements and long use
O Well known geographical names such as SWISS chocolates
or U.S.A. pizza are also not registrable.
O There are also other factors to be considered in the adoption
of trademarks, which is beyond the scope of this text.© 2016 L.R. Swami Co. All Rights Reserved.

Bass Brewery's logo became the
first image to be registered as a
trademark in the UK, in 1876

Requirement of filing a trademark
application
O The name, address and nationality of the applicant. If
the applicant is a partnership firm, the names of all the
partners. Also mention whether any minor is a partner.
O If the applicant is a company, the country or state of
incorporation.
O A list of goods and/or services for which registration is
required.
O Soft copy of the trademark to be registered.
O If the mark contains or consists of non-English words, a
translation of those words into English is required.

O If the application is to claim priority from an earlier filed
convention application, details of that application is
also required (application number, filing date, country
and goods/services). A certified priority document or its
duly notarized copy is to be submitted. If the certificate
is not in English, a certified/notarized English translation
is also required. If it is not readily available, the
application can be filed based on the basic application
number, date of the application and country of the
application. A copy of the priority document can be
submitted within 1 month from the filing date of the
application.
O Date of first use of the trademark in India, if at all
used
O Power of attorney simply signed by the applicant
(no legalization or notarization is required).

Process of trademark
Filing of
application
Examination
by Indian
trade mark
office
Trade mark
journal
Waiting for
objection till
4 months

International trademark
O trademark only protects a brand with in line of country.
O Registering a trademark abroad renders the company an
exclusive right to commercialize its products in those
markets.
O This not only provides a solid foundation to stop
counterfeiters but also ensures that the company enjoys
exclusive rights over what may be one of its most
valuable business assets.
O Registering a trademark abroad also provides the
opportunity to license the trademark to others or may be
the basis for a company’s franchising or merchandising
strategy.

In India
O India has joined the Madrid protocol with effect from
8th July 2013.
O At present, there are 91 countries which are
members of the Madrid protocol.
Advantages of filing an International Application
under Madrid protocol
O 1. Lower costs compared to individual foreign filings
O 2. Managing renewals, change in address, change in
ownership is easier and more cost-effective
O 3. Additional countries may be designated at a later
stage

Thank you!!

Trade mark

Recomendados

Recomendados

Mais conteúdo relacionado

Mais procurados

Mais procurados (20)

Destaque

Destaque (7)

Semelhante a Trade mark

Semelhante a Trade mark (20)

Último

Último (20)

Trade mark