• What are trademarks?
Trademarks are words, names, symbols, or devices used by manufacturers of goods to identify their goods, and to distinguish their goods from goods manufactured and sold by others. A person who sells his goods under a particulate trademark acquires a sort of limited exclusive right to use the mark in relation those goods. Trademark law protects this right of the owner of a mark to use marks that distinguish his goods from others and to prevent others from using marks that are likely to cause confusion. Trademark law protects the goodwill of a business and also protects the consumers' ability to accurately ascertain the source of goods and services.

• What is classification of goods/services?
As per the Trademarks Act, 1999, all goods and services have been classified in 42 different classes.

• How do I protect my Trade Mark?
By ensuring that the mark is registered on a national trade mark register. In the main, trademark owners use the services of a Registered Trade Mark Agents to achieve registration.

• Why should I protect it?
Primarily to ensure that the only persons who are able to exploit it are you or your company. Your reputation is represented by your trade mark. Others may seek to use your trade mark or something akin to your trade mark for their own use and thus take advantage of the reputation you have earned. Registration of your trade mark is the surest and quickest means of seeking redress in these circumstances. Furthermore, registration establishes your exclusive rights to use that trade mark for your goods or services.

• Where can I protect my Trade Mark?
Trade marks can be registered in nearly every country in the world. You should aim to protect your trade mark wherever your goods are sold or your services provided now or in the future.

• What is my Trade Mark worth and how can I exploit it?
Your trade mark is a tangible and marketable asset. It can be sold as a separate commodity and can be licensed out for use by others. The value you place on your trade mark is normally based on the success of your product, turnover and other factors. Your trade mark is a valuable asset which grows in value as your business grows. You should protect this asset by trade mark registration. To control its exploitation you need trade mark registration.

• What does constitute infringement of a trademark?
. A registered trademark is infringed if a person uses the same/deceptively similar mark in the course of trade, in respect to the same goods. The test for deceptive similarity is whether the defendant's use of a mark is likely to cause confusion, i.e., whether an appreciable number of reasonably prudent consumers are likely to be confused or deceived as to the source, affiliation or sponsorship of the parties and their goods and services. The plaintiff need not demonstrate actual confusion or intent to confuse. The 'likelihood of confusion' analysis encompasses an evaluation of a variety of interconnected market factors, relating to the likely expectation, perception and memory of consumers.

• Where should I file an infringement suit?
A suit for infringement of registered trademark must be filed in the District Court having jurisdiction or in the High Court that has original jurisdiction to try such suits. The jurisdiction and procedure are governed by the Civil Procedure Code. The period of limitation for filing the suit is three years from the date of infringement.

• What are relieves that the court may grant in an infringement suit?
The relieves in a suit for infringement include: - Injunction, restraining the further use of the trademark; - Damages or an account of profits; and - An order for delivery of the infringing labels and marks for destruction. If the infringement committed was innocent only nominal damages will be awarded. However, criminal action is possible if fraudulent intention on the part of the infringer is proved.

• What are service marks and are they protected in India?
Service marks are trademarks used by business rendering various kinds of services, for eg: travel agents, finance companies etc. There is no provision for the registration of service marks in India, and they can only be protected by an action for passing off.

• What forms of protection are available for trademarks?
There are two forms of legal protection that are available for trademarks. Under the Trade and Merchandise Marks Act, 1958, the procedure for registration of trademarks is prescribed in order to afford protection for the same. The most effective trademark protection is obtained by filing a trademark registration application in the Registrar of Trademarks. Once the trademark is registered, infringement can be easily established. In case of unregistered marks and marks which are not registerable, the only form of protection is the common law remedy of passing off. The plaintiff would have to prove sufficient use of the mark so as to create valuable goodwill of the business connected with the goods bearing the mark

• What is the procedure to be followed for the registration of a trademark?
Any person/entity who claims to be the proprietor of a trademark can apply for registration. Before applying for registration, the applicant may apply for a report from the Registrar of Trademarks, as to whether the mark or one similar to it has already been registered or applied for. The applicant can also conduct private searches using the records maintained in the Registry. Thereafter, the application for registration should be filed in Form TM-1, under the Trade and Merchandise Marks Rules, 1959 ("Rules"). The Rules also prescribe the classes of goods with respect to which registration can be applied for (in the Fourth Schedule). If applications are made for registration of the mark in respect of more than one class of goods, then separate applications should be filed for each class. The application should be accompanied by the prescribed fee. After the application is received, the Registrar of Trademarks will examine the same and communicate any objections to the applicant. The objections will mainly be with regard to distinctiveness and similarity with already registered trademarks. The applicant can put forward his case in writing or at a hearing. If the submissions are accepted, the application will be advertised in the Trademarks Journal. In case any objections are received, the Registrar will conduct a hearing and give a decision regarding the same. If no objections are received, the Registrar will enter the mark in the Register of Trademarks and issue a certificate of registration to the applicant. The certificate of registration is valid from the date of application for registration.

• What is the duration of registration?
The first registration is valid for a period of ten years and can be renewed for further periods of ten years each by paying the renewal fee. If the mark is not renewed, it will be removed from the Register but it can be restored if a request is made to that effect within one year from the date of expiry of registration or last renewal

• Is assignment of a trademark possible?
The assignment/licensing of trademarks is restricted, because unrestricted licensing has been considered as trafficking in the mark which is against public interest. This is because, a trademark indicates the origin of the goods to the consumer and unrestricted licensing can lead to confusion and deception among the public as to the nature of the goods. According to the law, the assignment of a trademark should not result in the creation of concurrent exclusive rights in more than one person with respect to the use of the same/similar mark in respect of same/similar goods. Confusion or deception can be avoided by territorial limitation or limitation of the goods.

Trade Mark Classification

FOLLOWING IS A LISTING OF THE 42 CLASSES OF GOODS AND SERVICES. WHILE NOT A COMPLETE LIST, IT GIVES AN INDICATION OF WHAT GOODS AND SERVICES FALL IN EACH CLASS.

CLASSES OF GOODS:

CLASS1:

CHEMICALS USED IN INDUSTRY, SCIENCE AND PHOTOGRAPHY, AS WELL AS IN AGRICULTURE, HORTICULTURE AND FORESTRY; UNPROCESSED ARTIFICIAL RESINS, UNPROCESSED PLASTICS; MANURES; FIRE EXTINGUISHING COMPOSITIONS; TEMPERING AND SOLDERING PREPARATIONS; CHEMICAL SUBSTANCES FOR PRESERVING FOODSTUFFS; TANNING SUBSTANCES; ADHESIVES USED IN INDUSTRY.

CLASS2:

PAINTS, VARNISHES, LACQUERS; PRESERVATIVES AGAINST RUST AND AGAINST DETERIORATION OF WOOD; COLORANTS; MORDANTS; RAW NATURAL RESINS; METALS IN FOIL AND POWDER FORM FOR PAINTERS, DECORATORS, PRINTERS AND ARTISTS.

CLASS3:

BLEACHING PREPARATIONS AND OTHER SUBSTANCES FOR LAUNDRY USE; CLEANING, POLISHING, SCOURING AND ABRASIVE PREPARATIONS; SOAPS; PERFUMERY, ESSENTIAL OILS, COSMETICS, HAIR LOTIONS; DENTIFRICES.

CLASS4:

INDUSTRIAL OILS AND GREASES; LUBRICANTS; DUST ABSORBING, WETTING AND BINDING COMPOSITIONS; FUELS (INCLUDING MOTOR SPIRIT) AND ILLUMINANTS; CANDLES AND WICKS FOR LIGHTING.

CLASS5:

PHARMACEUTICAL AND VETERINARY PREPARATIONS; SANITARY PREPARATIONS FOR MEDICAL PURPOSES; DIETETIC SUBSTANCES ADAPTED FOR MEDICAL USE, FOOD FOR BABIES; PLASTERS, MATERIALS FOR DRESSINGS; MATERIAL FOR STOPPING TEETH, DENTAL WAX; DISINFECTANTS; PREPARATIONS FOR DESTROYING VERMIN; FUNGICIDES, HERBICIDES.

CLASS6:

COMMON METALS AND THEIR ALLOYS; METAL BUILDING MATERIALS; TRANSPORTABLE BUILDINGS OF METAL; MATERIALS OF METAL FOR RAILWAY TRACKS; NON-ELECTRIC CABLES AND WIRES OF COMMON METAL; IRONMONGERY, SMALL ITEMS OF METAL HARDWARE; PIPES AND TUBES OF METAL; SAFES; GOODS OF COMMON METAL NOT INCLUDED IN OTHER CLASSES; ORES.

CLASS7:

MACHINES AND MACHINE TOOLS; MOTORS AND ENGINES (EXCEPT FOR LAND VEHICLES); MACHINE COUPLING AND TRANSMISSION COMPONENTS (EXCEPT FOR LAND VEHICLES); AGRICULTURAL IMPLEMENTS OTHER THAN HAND-OPERATED; INCUBATORS FOR EGGS.

CLASS8:

HAND TOOLS AND IMPLEMENTS (HAND-OPERATED); CUTLERY; SIDE ARMS; RAZORS.

CLASS9:

SCIENTIFIC, NAUTICAL, SURVEYING, PHOTOGRAPHIC, CINEMATOGRAPHIC, OPTICAL, WEIGHING, MEASURING, SIGNALING, CHECKING (SUPERVISION), LIFE-SAVING AND TEACHING APPARATUS AND INSTRUMENTS; APPARATUS AND INSTRUMENTS FOR CONDUCTING, SWITCHING, TRANSFORMING, ACCUMULATING, REGULATING OR CONTROLLING ELECTRICITY; APPARATUS FOR RECORDING, TRANSMISSION OR REPRODUCTION OF SOUND OR IMAGES; MAGNETIC DATA CARRIERS, RECORDING DISCS; AUTOMATIC VENDING MACHINES AND MECHANISMS FOR COIN-OPERATED APPARATUS; CASH REGISTERS, CALCULATING MACHINES, DATA PROCESSING EQUIPMENT AND COMPUTERS; FIRE-EXTINGUISHING APPARATUS.

CLASS10:

SURGICAL, MEDICAL, DENTAL AND VETERINARY APPARATUS AND INSTRUMENTS, ARTIFICIAL LIMBS, EYES AND TEETH; ORTHOPEDIC ARTICLES; SUTURE MATERIALS.

CLASS11:

APPARATUS FOR LIGHTING, HEATING, STEAM GENERATING, COOKING, REFRIGERATING, DRYING, VENTILATING, WATER SUPPLY AND SANITARY PURPOSES.

CLASS12:

VEHICLES; APPARATUS FOR LOCOMOTION BY LAND, AIR OR WATER.

CLASS13:

FIREARMS; AMMUNITION AND PROJECTILES; EXPLOSIVES; FIREWORKS.

CLASS14:

PRECIOUS METALS AND THEIR ALLOYS AND GOODS IN PRECIOUS METALS OR COATED THEREWITH, NOT INCLUDED IN OTHER CLASSES; JEWELLERY, PRECIOUS STONES; HOROLOGICAL AND CHRONOMETRIC INSTRUMENTS.

CLASS15:

MUSICAL INSTRUMENTS.

CLASS16:

PAPER, CARDBOARD AND GOODS MADE FROM THESE MATERIALS, NOT INCLUDED IN OTHER CLASSES; PRINTED MATTER; BOOKBINDING MATERIAL; PHOTOGRAPHS; STATIONERY; ADHESIVES FOR STATIONERY OR HOUSEHOLD PURPOSES; ARTISTS' MATERIALS; PAINT BRUSHES; TYPEWRITERS AND OFFICE REQUISITES (EXCEPT FURNITURE); INSTRUCTIONAL AND TEACHING MATERIAL (EXCEPT APPARATUS); PLASTIC MATERIALS FOR PACKAGING (NOT INCLUDED IN OTHER CLASSES); PRINTERS' TYPE; PRINTING BLOCKS.

CLASS17:

RUBBER, GUTTA-PERCHA, GUM, ASBESTOS, MICA AND GOODS MADE FROM THESE MATERIALS AND NOT INCLUDED IN OTHER CLASSES; PLASTICS IN EXTRUDED FORM FOR USE IN MANUFACTURE; PACKING, STOPPING AND INSULATING MATERIALS; FLEXIBLE PIPES, NOT OF METAL.

CLASS18:

LEATHER AND IMITATIONS OF LEATHER, AND GOODS MADE OF THESE MATERIALS AND NOT INCLUDED IN OTHER CLASSES; ANIMAL SKINS, HIDES; TRUNKS AND TRAVELLING BAGS; UMBRELLAS, PARASOLS AND WALKING STICKS; WHIPS, HARNESS AND SADDLERY.

CLASS19:

BUILDING MATERIALS (NON-METALLIC); NON-METALLIC RIGID PIPES FOR BUILDING; ASPHALT, PITCH AND BITUMEN; NON-METALLIC TRANSPORTABLE BUILDINGS; MONUMENTS, NOT OF METAL.

CLASS20:

FURNITURE, MIRRORS, PICTURE FRAMES; GOODS (NOT INCLUDED IN OTHER CLASSES) OF WOOD, CORK, REED, CANE, WICKER, HORN, BONE, IVORY, WHALEBONE, SHELL, AMBER, MOTHER-OF-PEARL, MEERSCHAUM AND SUBSTITUTES FOR ALL THESE MATERIALS, OR OF PLASTICS.

CLASS21:

HOUSEHOLD OR KITCHEN UTENSILS AND CONTAINERS (NOT OF PRECIOUS METAL OR COATED THEREWITH); COMBS AND SPONGES; BRUSHES (EXCEPT PAINT BRUSHES); BRUSH-MAKING MATERIALS; ARTICLES FOR CLEANING PURPOSES; STEELWOOL; UNWORKED OR SEMI-WORKED GLASS (EXCEPT GLASS USED IN BUILDING); GLASSWARE, PORCELAIN AND EARTHENWARE NOT INCLUDED IN OTHER CLASSES.

CLASS22:

ROPES, STRING, NETS, TENTS, AWNINGS, TARPAULINS, SAILS, SACKS AND BAGS (NOT INCLUDED IN OTHER CLASSES); PADDING AND STUFFING MATERIALS (EXCEPT OF RUBBER OR PLASTICS); RAW FIBROUS TEXTILE MATERIALS.

CLASS23:

YARNS AND THREADS, FOR TEXTILE USE.

CLASS24:

TEXTILES AND TEXTILE GOODS, NOT INCLUDED IN OTHER CLASSES; BED AND TABLE COVERS.

CLASS25:

CLOTHING, FOOTWEAR, HEADGEAR.

CLASS26:

LACE AND EMBROIDERY, RIBBONS AND BRAID; BUTTONS, HOOKS AND EYES, PINS AND NEEDLES; ARTIFICIAL FLOWERS.

CLASS27:

CARPETS, RUGS, MATS AND MATTING, LINOLEUM AND OTHER MATERIALS FOR COVERING EXISTING FLOORS; WALL HANGINGS (NON-TEXTILE).

CLASS28:

GAMES AND PLAYTHINGS; GYMNASTIC AND SPORTING ARTICLES NOT INCLUDED IN OTHER CLASSES; DECORATIONS FOR CHRISTMAS TREES.

CLASS29:

MEAT, FISH, POULTRY AND GAME; MEAT EXTRACTS; PRESERVED, DRIED AND COOKED FRUITS AND VEGETABLES; JELLIES, JAMS, COMPOTES; EGGS, MILK AND MILK PRODUCTS; EDIBLE OILS AND FATS.

CLASS30:

COFFEE, TEA, COCOA, SUGAR, RICE, TAPIOCA, SAGO, ARTIFICIAL COFFEE; FLOUR AND PREPARATIONS MADE FROM CEREALS, BREAD, PASTRY AND CONFECTIONERY, ICES; HONEY, TREACLE; YEAST, BAKING-POWDER; SALT, MUSTARD; VINEGAR, SAUCES (CONDIMENTS); SPICES; ICE.

CLASS31:

AGRICULTURAL, HORTICULTURAL AND FORESTRY PRODUCTS AND GRAINS NOT INCLUDED IN OTHER CLASSES; LIVE ANIMALS; FRESH FRUITS AND VEGETABLES; SEEDS, NATURAL PLANTS AND FLOWERS; FOODSTUFFS FOR ANIMALS, MALT.

CLASS32:

BEERS; MINERAL AND AERATED WATERS AND OTHER NON-ALCOHOLIC DRINKS; FRUIT DRINKS AND FRUIT JUICES; SYRUPS AND OTHER PREPARATIONS FOR MAKING BEVERAGES.

CLASS33:

ALCOHOLIC BEVERAGES (EXCEPT BEERS).

CLASS34:

TOBACCO; SMOKERS' ARTICLES; MATCHES. CLASSES OF SERVICES

CLASS35:

ADVERTISING; BUSINESS MANAGEMENT; BUSINESS ADMINISTRATION; OFFICE FUNCTIONS.

CLASS36:

INSURANCE; FINANCIAL AFFAIRS; MONETARY AFFAIRS; REAL ESTATE AFFAIRS.

CLASS37:

BUILDING CONSTRUCTION; REPAIR; INSTALLATION SERVICES.

CLASS38:

TELECOMMUNICATIONS

CLASS39:

TRANSPORT, PACKAGING AND STORAGE OF GOODS, TRAVEL ARRANGEMENT.

CLASS40:

TREATMENT OF MATERIALS

CLASS41:

EDUCATION: PROVIDING OF TRAINING: ENTERTAINMENT: SPORTING AND CULTURAL ACTIVITIES;

CLASS42:

PROVIDING OF FOOD AND DRINK; TEMPORARY ACCOMMODATION; MEDICAL, HYGIENIC AND BEAUTY CARE; VETERINARY AND AGRICULTURAL SERVICES, LEGAL SERVICES, SCIENTIFIC AND INDUSTRIAL RESEARCH, COMPUTER PROGRAMMING; SERVICES THAT CANNOT BE CLASSIFIED IN OTHER CLASSES