Trademark

“A sign capable of distinguishing the goods or services produced or provided by

one enterprise from those of other enterprises”
Distinctive sign: Identifies certain goods/services as those produced or provided by
a specific person or enterprise
Exclusive rights: To prevent others from using identical or similar marks on
identical or similar goods
Renewable indefinitely !
Registration is required in most countries (exception: well-known trademarks)
Trademarks play an important role in the promotion of goods and products. It also
provides the exclusive right to market any goods to any particular individual or
organisation. Some of the benefits of registering the trademark are as follows:
Firstly, the registration of a trademark protects any particular brand all across the
country. Trademarks help to secure the brand name of any organisation. It also
prevents other businesses from trespassing on the intellectual assets of a particular
company. However, trademarks are granted on a territorial basis and are not valid
all across the world if they are not registered internationally.
Secondly, registering a trademark increases the brand value. Registration of a
trademark makes it easier to sell franchises or licence out a brand to any other
party if it is registered as a trademark.
Thirdly, in the case of any dispute relating to an unregistered trademark, the onus
of burden of proof will be on the party who owns the trademark. However, the
same is not applicable in the case of a registered trademark. Then it will be on the
other side to prove the following. Hence, if a trademark is registered, it is easier to
win any trademark related dispute.
Apart from that, a registered trademark offers protection against infringement.
Fourthly, registration of a trademark provides automatic protection against others
registering identical or similar trademarks. The trademark office will not register
any other trademarks that are confusingly or “deceptively” similar to the mark
already applied for or registered. Hence, through the registration of a trademark,
one can prevent a competitor from registering a similar trademark. Trademark
registration also protects against frauds and counterfeit goods.
Trademarks fall under the ambit of intellectual property rights and are protected by
national and international laws.
Under The Trade Marks Act, 1999, the word “mark” is defined as “a device, brand,
heading, label, ticket, name, signature, word, letter, numeral”. The term “Mark”
under the Act also includes the shape of goods, packaging, or combination of
colours or any other type of combination.
Trade Marks Act, 1999 defines trademark as a mark which is:
 capable of being represented graphically;
 capable of distinguishing the goods or services of one person from those of
others;
 may include the shape of goods, their packaging and combinations of
colours.

Act states that a person has the right to use the mark either as a proprietor or a
permitted user whether with or without any indication of the identity of that
person. The proprietor or a permitted user can also use a certification trademark or
a collective trademark in this regard.

Functions of a trademark
The following functions are performed by a trademark:
 Firstly, a trademark indicates the source or origin of the goods, products, or
services. In this case, it is presumed that any particular good can have only
one origin.
 It assures the quality of the goods bearing the trademark to the consumers.
  Apart from the quality which is related to the goodwill of the product, the
trademark also creates brand awareness and serves the marketing purposes
and advertising aspects. In other words, companies put a great amount of
resources into developing any product, marketing it to customers, providing
customer support and backing up their products with warranties. Trademark
assures that the effort to serve the consumers pays back.
 Provides legal protection and guards against counterfeiting and fraud of a
particular brand.
 Finally, trademarks are used to differentiate the product from others. This is
the distinguishing factor that falls under distinctiveness. The idea is that
trademarks would distinguish marketed goods and services from those of
competitors.

Different types of trademarks

1. Service mark
Service marks are exactly the same in principle as trademarks. However, the
words, names, symbols, or devices identify and distinguish the source of a service.
Service mark serves as a brand identifier. Service marks are used in services such
as sponsorship, management and investment, various services such as hotels,
entertainment, real estate services, etc. Examples of service marks include the
golden arches of McDonald’s or the phrase “Just Do It.” used by Nike.

2. Certification mark
A certification mark is any word, phrase, symbol or design or a combination of any
of these, owned by one party that certifies that the goods and services of another
party meet certain standards or requirements. A certification mark identifies either
the nature of any product or service. Examples of certification marks include star
ratings in electrical appliances based on the consumption of energy or the ‘India
Organic’ certification mark for organically produced farmed products in India.

3. Collective mark
A collective mark is used by members of any association collectively or any
collective group to identify the source of goods or services. It indicates a mark
which is used for goods, services and for a group of organisations with similar
characteristics. The organisation or group uses this mark for multiple people in a
group organisation.
Collective marks are of two types: collective trade and service marks and
collective membership marks.

Madrid Agreement
For international registration of Trademarks.
The Madrid Protocol is an international system for obtaining trade mark protection
in a number of countries and/or regions using a single application. Protection (an
"International Registration") can only be obtained for countries and regions which
have joined the system (member countries).
International Registrations give a bundle of rights administered centrally via the
World Intellectual Property Organisation (WIPO) in Switzerland.
Using WIPO's Madrid System, you can file one international trademark application
to secure trademark protection in all or any of its members in one language and
with one set of fees. And, you can track the status of your application as it moves
through the examination process.
International trademark applications are filed according to the requirements and
procedures established by the Madrid Protocol. The domestic laws of each
designated Madrid System member determine the scope of protection of your
international trademark registration

Who can use the Madrid System?

• You can file for international trademark protection if you are a national of – or
have a domicile or business in – any Madrid System member. The intellectual
property (IP) Office of that Madrid System member will be your "Office of origin".
• Important- Before you file an international trademark application, you must
register – or apply for – a national trademark through your home IP Office (Office
of origin). This "basic mark" forms the basis of your international trademark
registration.

The process
• Submit the application to your Office of origin.
• Formal examination. Check if the international trademark application complies
with all formal requirements (sufficient contact details, designation of at least one
Madrid System member, quality of images, payment of fees, etc.).
• Mark is registered in the International Register, publish it in the WIPO Gazette of
International Marks,
• Substantive examination. The Office of each designated member performs
substantive examination. Each Office must grant or refuse protection within a
given time limit – 12, or in some cases 18 months from the date on which we
notified the Office of its designation

Benefits
The Madrid System is the one-stop solution for trademark holders to obtain and
maintain protection in multiple markets. Whether you’re a small startup or a large
multinational exporter, the Madrid System can help you manage your brand
efficiently.
• Convenient - File a single application in one language, and pay one set of fees to
apply for trademark protection in multiple territories; manage your brand portfolio
through a centralized system, and easily expand protection into new markets.
• Global- Register and manage your trademark in the territories of the Madrid
System, representing over 80% of world trade.
• Cost-effective - Save time and money by filing one application, rather than a
bundle of national applications; no need to pay for translations or hire a
representative in each country
Protection for some countries/regions may be obtained more quickly than by using
the national route. This is because strict time limits are set under the Madrid
Protocol.

Drawbacks
i. The international registration can extend only to Protocol territories.
ii. Under the protocol, the international applications have to be processed within 18
months. Because of this, the national filings might get delayed.
iii.Impact on national filings because of the lack of manpower.
iv.The international application is dependent on the basic application/registration,
thus, if there is any change in the "basic" application or registration (like
cancellation), these changes shall automatically apply to the international
applications as well.
v. Assigning the ownership of an International registration to entities residing or
having a connection with Non- Madrid Protocol state is prohibited under the rules
of the Madrid Protocol.
vi.If basic mark is cancelled or limited in first five years then the International
mark will similarly be cancelled or limited. After the expiry of this five-year term,
however, the international registration becomes independent.

TRIPS
Article 15-21
15- Protectable Subject Matter- Any sign, or any combination of signs, capable
of distinguishing the goods or services of one undertaking from those of other
undertakings, shall be capable of constituting a trademark. Such signs, in particular
words including personal names, letters, numerals, figurative elements and
combinations of colours as well as any combination of such signs, shall be eligible
for registration as trademarks. Where signs are not inherently capable of
distinguishing the relevant goods or services, Members may make registrability
depend on distinctiveness acquired through use. Members may require, as a
condition of registration, that signs be visually perceptible.
16- Rights Conferred- The owner of a registered trademark shall have the
exclusive right to prevent all third parties not having the owner’s consent from
using in the course of trade identical or similar signs for goods or services which
are identical or similar to those in respect of which the trademark is registered
where such use would result in a likelihood of confusion. In case of the use of an
identical sign for identical goods or services, a likelihood of confusion shall be
presumed. The rights described above shall not prejudice any existing prior rights,
nor shall they affect the possibility of Members making rights available on the
basis of use.

17- Exceptions- Members may provide limited exceptions to the rights conferred
by a trademark, such as fair use of descriptive terms, provided that such exceptions
take account of the legitimate interests of the owner of the trademark and of third
parties.

18- Term of protection- Initial registration, and each renewal of registration, of a

trademark shall be for a term of no less than seven years. The registration of a
trademark shall be renewable indefinitely.

19- Requirement of use- If use is required to maintain a registration, the

registration may be cancelled only after an uninterrupted period of at least three
years of non-use, unless valid reasons based on the existence of obstacles to such
use are shown by the trademark owner. Circumstances arising independently of the
will of the owner of the trademark which constitute an obstacle to the use of the
trademark, such as import restrictions on or other government requirements for
goods or services protected by the trademark, shall be recognized as valid reasons
for non-use.
When subject to the control of its owner, use of a trademark by another person
shall be recognized as use of the trademark for the purpose of maintaining the
registration.
20- Licensing and agreement- Members may determine conditions on the licensing
and assignment of trademarks, it being understood that the compulsory licensing of
trademarks shall not be permitted and that the owner of a registered trademark
shall have the right to assign the trademark with or without the transfer of the
business to which the trademark belongs.