In India, the Trademarks Act 1999 and its rules govern trademark registration. The Act registers trademarks applied in the country and provides better protection of trademarks for goods and services while preventing fraudulent use of the mark.
The mark must be distinctive, not indicate the quality or describe the goods used. It must not contain any commonly used words and be part of everyday language. Additionally, it must not be similar to a well-known or registered trademark.
It's essential to familiarise yourself with these restrictions before registering a trademark in India. By understanding the rules and regulations, you can ensure that your trademark application is successful and your brand is adequately protected in the Indian market.
Did you know? Trademarks can be registered for various goods and services, including products, services, sounds, and smells.
The Absolute Grounds for Refusal of Trademark Registration
According to the Trademarks Act, 1999 of India, the absolute grounds for refusal of registration are -
- If the trademark consists of a single letter, a numerical figure, or any combination thereof without any distinctive character,
- If the trademark is a geographical name or an indication of geographical origin, unless it has acquired a secondary meaning,
- Trademarks are surnames or personal names unless they are derived from secondary meanings,
- If the trademark is a common noun, adjective, verb, or any combination thereof, without any distinctive character,
- If the trademark is primarily used to indicate the quality, quantity, intended purpose, value, geographical origin, or time of production of goods or services.
- If the trademark is a common trade name, trade mark, or any combination thereof without distinctive character,
- If the trademark is not distinctive or lacks inherent distinctiveness.
- If the trademark is likely to deceive or cause confusion with an existing trademark or trade name.
- If the trademark is deceptive or misleading in any way.
- If the trademark is scandalous, obscene, or against public policy.
The Act allows for an exception, i.e. when trademarks lack uniqueness, contain exclusive marks used in the trade to distinguish sort, quality, etc. Or have marks been adopted as industry standards.
With one exception: registration will not be denied if a trademark falls under the first three conditions and has been used for a while or is already a well-known brand before applying for registration.
Relative Grounds For Refusal Of Registration
The relative grounds for refusal of registration are outlined in Section 11 of the Act. The trademarks under section 11 can be registered if the exceptions are fulfilled. It states the following grounds for refusal:
- Trademarks mislead consumers because they resemble older, similar trademarks for goods or services.
- Trademarks that cause public confusion because they resemble a previous, identical brand for products or services.
The Registrar of Trademarks may grant registration if there is the honest concurrent use of the trademark, constituting an exemption from this rule.
What is Not Protected by Trademark Laws in India
Even though trademarks safeguard intellectual property rights, consumers and businesses in India should be aware of some exceptions and restrictions to trademark protection.
1. Generic Terms
Generic words are one of India's most important trademark exceptions. These are terms or expressions frequently used to describe a class or type of good or service. They are not connected to any specific brand.
For instance, "water" might refer to any form of water, not just those offered by a specific business, and it cannot be registered as a brand name as a result.
In general, trademarks cannot include words or phrases often used to describe goods or services sold in the industry. The Indian Trademark Registry will likely reject a company's trademark attempt.
2. Descriptive Phrases
Descriptive phrases are another exception to trademark protection in India. These are expressions that define a feature or quality of the product or service being sold.
For instance, the terms "delicious," "low-calorie," or "high-quality" can all be used to describe a range of goods.
Descriptive terms may only be trademarked once they have distinctiveness. When a term has grown so strongly linked with one brand that it has acquired a new, distinct meaning in the marketplace, such a scenario is called distinctiveness.
For instance, Nike has been linked to the term "Just Do It" for so long that it has become a recognisable component of the company's brand identity.
3. Geographical Indications
Geographical indications are words or symbols that designate a product as coming from a specific region. Geographical indications include "Darjeeling tea" and "Kanchipuram silk," for instance.
The Geographical Indicators of Goods (Registration and Protection) Act 1999 provides legal protection for geographical indicators in India. Geographical indications are given legal protection under this law to stop their unauthorised use of them by others.
4. Functional Features
Functional features are another exclusion to trademark protection in India. These are characteristics of a product that are crucial to its use or function. For instance, a computer keyboard's design or a bottle's form is utilitarian qualities that cannot be trademarked.
Generally speaking, trademarks are created to safeguard a product's aesthetic qualities, such as its brand name, logo, or packaging. Usually, functional characteristics are shielded by other legal systems, such as patent or design laws.
5. Names and Titles
Another group of phrases not often covered by Indian trademark law are names and titles. For instance, you cannot register a trademark for a book's or movie's title, a band's name, or a restaurant's name.
Titles and names, however, may occasionally be safeguarded by additional legal systems, such as copyright or unfair competition regulations. For instance, copyright legislation may protect a book title that has developed a strong connection to a particular author. This means it now has a new meaning in the marketplace.
6. Satire and Parody
Finally, trademark protection in India does not apply to parody and satire. Satire uses a trademark to critique or comment on a certain topic or circumstance, whereas parody uses a trademark humorously or mockingly.
Generally speaking, the Indian Constitution, which upholds the freedom of speech and expression, protects parody and satire. However, it is crucial to remember that using a trademark in satire or parody must be appropriate. It must refrain from encouraging viewers to believe that the user is connected to the trademark holder or their goods.
Limitations on the Protection of Trademarks
There are restrictions on the length and extent of trademark protection in India, with exceptions.
In India, trademarks are first registered for ten years, following which they may be renewed for additional ten-year periods. However, a trademark owner's right to keep their mark may be revoked if they fail to utilise it continuously for five years.
The scope of a trademark's protection is restricted to the products and services for which it has been registered. This means that someone may use the same or a mark that is similar to a trademark for a different good or service without permission.
For instance, a trademark for a certain soda brand wouldn't stop another business from using the same or a similar mark for a particular brand of chips. For example, a trademark for one kind of clothing would not stop another business from using the same or a similar mark for a different product, like furniture or electronics.
Illustrations Of Refusal Of Registration
Here are some illustrations of the grounds for refusal of trademark registration in India, as outlined in the Trademarks Act, 1999 -
- Lack of Inherent Distinctiveness: A trademark cannot be registered if it is not distinctive or lacks inherent distinctiveness. This means that it must be able to distinguish one company's goods or services from another. For example, the word "Apple" could not be registered as a computer trademark because it is a common word and does not distinguish computers from those of other companies.
- Confusion with an Existing Trademark: A trademark cannot be registered if it is likely confused with an existing trademark or trade name. This means it must be different enough from the existing mark to ensure consumers understand. For example, the trademark "iMac" could not be registered by a company other than Apple because it is already associated with Apple's line of computers and could cause confusion among consumers.
- Deceptive or Misleading: A trademark cannot be registered if it is deceptive or misleading in any way. This means it must accurately represent the goods or services it identifies. For example, a trademark for a product that claims to be organic but is not would be misleading and could not be registered.
- Scandalous or Obscene: A trademark cannot be registered if it is scandalous or obscene, meaning it must not offend public morals or decency. For example, a trademark using explicit or offensive language cannot be registered.
- Geographical Name: A trademark cannot be registered as a geographical name or an indication of geographical origin unless it has acquired a secondary meaning. This means it must be associated with a specific company or product in consumers' minds. For example, the trademark "Paris" could not be registered for a clothing line unless it becomes associated with that specific brand in consumers' minds.
- A Common Noun, Adjective or Verb: A trademark cannot be registered if it is a common noun, adjective, verb, or any combination, without any distinctive character. This means it must have some additional elements that make it unique and distinguishable. For example, the trademark "Blue" could not be registered for a clothing line unless it becomes associated with that specific brand in consumers' minds.
- Similarity to a Brand: The trademark "Coca-Cola" could not be registered for a soft drink unless it becomes associated with that specific brand in consumers' minds.
- A Surname or a Personal Name: A trademark cannot be registered as a surname or a personal name unless it has acquired a secondary meaning. This means it must be associated with a specific company or product in consumers' minds. For example, the trademark "Smith" could not be registered for a clothing line unless it becomes associated with that specific brand in consumers' minds, like “Agarwall Sweets” or “Jain Sweets”.
In conclusion, a trademark is a symbol, word, or phrase used to identify and distinguish a company or product from others. To be eligible for registration, a trademark must meet specific requirements, including being distinctive, not causing confusion with existing trademarks, and not being deceptive or misleading.
There are also certain types of names, such as generic terms, descriptive terms, surnames, and geographical names, that cannot be registered as trademarks. Understanding the rules and regulations surrounding trademark registration is essential to protect your intellectual property and brand in the marketplace.
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