Trademark Law: Why and how to protect a trademark

A trademark is given to protect marks of the trade like brand names, signs,  symbols etc. The difference between trademarks and other IPRs is that trademark is offered for an indefinite time.

Definition of ‘trademark’ is in Section 2(zb) of Trademarks Act,1999

“Trademark” means a spot accomplished of existence signified vividly and is performed to distinguish the goods or services of one person from those of others and may include the shape of goods, their packaging, and the combination of colours.

Types of Trademarks

• Word Marks- Rights only in words, letters or numerals, no protection in the representation of the mark.

• Device Marks- Right of a unique representation of a word, letter, or numeral ( word + logo )

• Service Marks- Used only for services, not goods.

• Collective Marks- Marks used by a group of companies collectively.

• Certificate Marks- Used to define standards.

• Well known Marks- When a mark is recognised among a large percentage of the population, it is a well-known mark. It enjoys more excellent protection.

• Unconventional Trademarks- Marks that get recognition for their inherently distinctive feature.

1. Colour Trademark
2. Sound Trademark
3. Shape Trademark
4. Smell Trademark

Registration of Trademarks

• Application for registration of Trademark is made under Sec. 18 of the Act.
• The application is advertised under Sec.20 of the Act.
• Any person may file an opposition under Sec. 21 within four months from the advertisement of the trademark application.
• The applicant is entitled to correct any error or remove the opposition or make any amendment under Sec. 22 of the Act.
• The registrar is entitled to register the trademark within 18 months from applying under Sec. 23.

Rights conferred by Registration.

Section 28 mentions the rights enjoyed by a trademark owner. It gives the exclusive right to use the trademark about his goods and services.

Infringement of Trademark

Section 28 provides the remedy in case of trademark infringement.

• A registered trademark is infringed by a person who uses such registered trademark as a part of hid trade name of his business dealings in respect of which the trademark is registered.
• Any advertising of that trademark infringes a registered trademark if such advertising takes unfair advantage of its distinct character.

Remedies for such infringement

When a trademark is said to be infringed, both civil and criminal actions can be brought about.

Civil Remedies:

1. Injunction/ stay against the use of the
2. Appropriate damages.
3. Handing over of accounts and profits.
4. Appointment of the local commissioner by the respective court for custody or sealing of infringing material and accounts.
5. In an application under Order 39 Rule 1 and 2 of CPC for temporary or ad interim ex- parte injunction.

Criminal Remedies

1. Chapter XII of the AXII deals with offences, penalties and procedure.
2. 103 and 104 provide for imprisonment for a term not less than six months which may extend up to 3 years, and acceptable not less than 50,000 rupees, which may extend up to 3 lakhs rupees.
3. The provisions for enhanced punishment is laid down under Sec. 105 of the Act.
4. 27(1) states that no action for infringement can be taken against unregistered trademarks.
5. Further, 27(2) states that there is no alternate remedy for an unregistered trademark. 

This Article Does Not Intend To Hurt The Sentiments Of Any Individual Community, Sect, Or Religion Etcetera. This Article Is Based Purely On The Authors Personal Views And Opinions In The Exercise Of The Fundamental Right Guaranteed Under Article 19(1)(A) And Other Related Laws Being Force In India, For The Time Being. Further, despite all efforts made to ensure the accuracy and correctness of the information published, White Code Legal and Tax shall not be responsible for any errors caused due to human error or otherwise.