Meaning and Scope of Trademarks
Definition of Trademark (Section 2(1)(zb))
A mark capable of distinguishing the goods or services of one person from those of others
According to Section 2(1)(zb) of the Trade Marks Act, 1999, a trademark means a mark that is capable of:
- Distinguishing the goods or services of one person from those of others, and
- May include words, names, symbols, logos, images, or any combination thereof.
It plays a crucial role in branding, identification, and marketing, allowing consumers to identify the source of goods or services and build trust in the quality associated with the brand.
Includes shape of goods, packaging, colour combinations, etc.
The definition of trademark has evolved to include non-traditional marks. As per Indian law, a trademark may consist of:
- Shape of goods – e.g., the distinctive shape of a Coca-Cola bottle.
- Packaging – unique packaging styles that make a product identifiable.
- Colour combinations – specific colours or colour schemes uniquely associated with a brand.
This broad interpretation ensures that any visual or sensory element capable of distinguishing a product in the market can be protected under trademark law.
Example 1. A soap company uses a unique lavender and gold packaging with a twisted oval shape for its bar soap.
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Types of Trademarks
Word Marks
Word marks consist of words, letters, or numerals. They do not have any stylized font or graphical element.
Example: TATA, RELIANCE, AMUL
Device Marks
Device marks include logos, symbols, or any graphical representation.
Example: The Nike “swoosh”, or the Apple logo
Combination Marks
Combination marks are a mix of word marks and device marks. They provide stronger protection as they cover both elements.
Example: Patanjali logo with name and leaf symbol
Colour Marks, Sound Marks, Shape Marks
Colour Marks:
Specific colours or colour combinations can be protected if they have acquired distinctiveness.
Example: Purple colour for Cadbury’s chocolate packaging
Sound Marks:
A distinctive sound can function as a trademark if it reminds the consumer of a particular brand.
Example: The Yahoo! yodel, or the Airtel tune
Shape Marks:
The unique shape of goods or containers may be registered as a trademark if it helps consumers identify the brand.
Example: The shape of Toblerone chocolate or Coca-Cola bottle
Certification Marks
Certification marks indicate that the goods or services meet a certain standard or have been certified by a competent authority, although the certifier does not manufacture or sell the goods.
Example: ISI mark, Agmark, Woolmark
Collective Marks
Collective marks are used by members of an association or group to identify their goods/services while indicating membership in that group.
Example: The mark used by Chartered Accountants of India (ICAI) or the logo of cooperative societies.
Example 2. A dairy cooperative uses a unique logo to be used by all member dairy farmers on their packaging.
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Registration of Trademarks
Process of Registration
Filing of application
The first step is the filing of a trademark application with the Registrar of Trademarks. The application must contain:
- Name and address of the applicant
- Representation of the mark
- Class of goods/services
- Date of first use (if any)
The application can be filed online or manually at the appropriate Trademark Registry Office.
Examination by Registrar
The Registrar examines the application for:
- Formal deficiencies
- Substantive grounds under Sections 9 and 11 – distinctiveness, non-deceptiveness, no conflict with existing marks
If objections are raised, the applicant is given an opportunity to respond or attend a hearing.
Opposition proceedings
If the Registrar is satisfied, the mark is published in the Trademark Journal for a period of 4 months. During this time, any third party can file a notice of opposition.
If opposed, both parties are given a chance to submit evidence and arguments. The Registrar then gives a decision.
Registration and renewal
If there is no opposition, or if the opposition is decided in favour of the applicant, the trademark is registered and a certificate is issued.
The registration is valid for 10 years from the date of application and is renewable indefinitely every 10 years upon payment of renewal fees.
Example 1. An Indian electronics company applies for a trademark for a new brand name in Class 9 (electronic devices).
Answer:
Conditions for Registration (Section 9)
Distinctiveness
As per Section 9(1)(a), a mark must be capable of distinguishing the goods or services of one person from those of another.
Invented words or unique logos are more likely to be accepted.
Non-deceptive and non-offensive
Section 9 also bars registration of trademarks that:
- Are deceptive or misleading
- Cause confusion among the public
- Contain obscene or offensive content
Such marks are rejected at the examination stage itself.
Grounds for Refusal (Section 11)
Likelihood of confusion
Section 11(1) provides that a trademark shall not be registered if:
- It is identical or similar to an earlier registered mark
- It is likely to cause confusion or association in the mind of the public
This ensures that trademarks protect brand identity without infringing others’ rights.
Trademarks contrary to law or morality
Section 11(3) states that marks which are:
- Contrary to law (e.g. promoting illegal substances)
- Hurt religious sentiments or are morally offensive
...will be refused registration in India.
Duration of Registration (Section 25)
10 years, renewable indefinitely
As per Section 25 of the Trademarks Act:
- Initial registration is valid for 10 years.
- It can be renewed indefinitely in blocks of 10 years upon payment of prescribed fees.
If not renewed within the prescribed time, the trademark is liable to be removed from the register. However, it can be restored within one year from expiration by paying a restoration fee.
Example 2. A company forgot to renew its trademark after 10 years. It later filed a restoration application within the next 12 months.
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