Types of trademark

Trademark protection can be offered to a multitude of representations. It is important for a business to find out the perfect way to which they wish to characterize the organization and the goods and services which they offer. As per the trademark law a device, brand, heading, label, ticket, name, signature, word, letter, numeral, a shape of goods, packaging or combination of colours or any such combinations can be registered as a trademark. Often, trademark protection is given to the following kinds of representations.

1. Words :

A word mark consist of one or more words or a combination of words, numbers and letters. A name which may be a personal name or a surname may also be registered as a word mark. Further, any coined word or any arbitrary word without having any meaning may also be registered. A word mark is not characterized by specialized fonts or shapes for which one needs to apply for a device mark or logo.

Example – The name of our firm Djuris is a wordmark.

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2. Device Marks/ Logo :

Logo or device mark consist of a figure or a figure combined with a word or numeral. Any unique graphical representation may qualify to be a device mark. It may also include a word written in stylized fonts.

Example – Our wordmark Djuris represented in a stylized font is a device mark.

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3. Label :

A label on a packaged good can be registered as a trademark as it contains many distinct elements which enable the average consumer to identify the product and associate it with a certain quality.

Example – The following label which helps a customer to identify the softdrink ‘PEPSI’ may be registered as a trademark.

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4. The combination of colours :

Any combination of colour without any word, numeral or figure may also be registered as a trademark. But it has to be noted that the registration would not be valid if the colours are altered while being represented to end consumers.

Example – The shade of purple (Pantone 2865c) used by Cadbury has been registered as a colour trademark in many countries by the company, though few countries have refused to register it.

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5. Collective Marks :

A collective mark is owned by an association and can be used by the members of that association. A collective mark is primarily used to indicate a trade connection with the association.

Example – The logo used by chartered accountants to denote their association to the Institute of Chartered Accountants of India is a collective mark.

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6. Certification Marks :

Certification marks are used by standard setting bodies which assure the consumer that the product or service meets a certain standard. The presence of a certification mark indicates that the organization has successfully verified the quality of a product or service and has allowed the use of that mark.

Example – The ISI Mark used by the Bureau of Indian Standards for certifying products to be sold in India is a certification mark.

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7. Sound Mark :

Even a sound may indicate a connection between the goods or services and enable the consumer to recognize the brand of the product or service. Therefore, a sound may also be registered as a trademark.

Example – The three note yodel used by Yahoo Inc. is a sound mark.

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8. Shape Marks :

Even a distinct shape of a good, which enables the consumer to distinguish it from other goods in the market may be registered as a trademark.

Example – A distinctive torso shaped perfume bottle of the company Gaultier has been registered as trademark in many countries.

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Overall, a trademark serves an important purpose in protecting the goodwill and reputation of a business while creating a lasting impact on the minds of the consumer who starts associating the trademark with certain qualities and characteristics.

Note: The photographs used in this page have been used only for indicative and educational purposes only.

Who can file a trademark?

Any person who is a proprietor of a business in which the trademark is being used can apply for trademark registration. Companies, partnership firms, trusts and societies may also file a trademark application.

The applicant may choose to engage a trademark attorney or agent for representing the applicant at the trademark registry.

Where the trademark application should be filed?

A trademark has to be filed with the Trademark Registry in India at any of its office at Mumbai, Ahmedabad, Chennai, Delhi or Kolkata, as per the principal place of the business.

What should I do before I file the trademark?

A proposed trademark should be thoroughly searched on the internet as well as Trademark Registry database so as to find out if there are marks which might be conflicting in nature with regards to the proposed mark. Though, it can be conducted by the business owner, it is recommended that an experienced attorney is entrusted with the work so that the legal implication of the search results can be ascertained. Otherwise, the business owner may get into legal hassles on a later stage.

What are the contents of the trademark application?

Based on a thorough trademark search, the trademark application has to be drafted carefully. If any other person in India is using a similar trademark for similar goods or services, the trademark registry may reject the application.

The trademark application usually contains the following details:

• Name and details of the proprietor of the trademark
• The principle place of business of the proprietor
• Type of mark – Word, Logo, Label, Device, Signature, Combination of colour etc
• The classes of goods and services to which the trademark belongs
• The description of goods and services
• The date from which the trademark has been used in course of business

What happens after the trademark application has been filed?

After the trademark application has been filed along with the requisite fee, the Trademark Registry takes the following actions :

1. Allots an application number

2. The application is then examined by an examiner in the Trademark Registry and an examination report is issued.

3. The examination report may contain objections as to why the registration should not be granted for the trademark. The examiner may also seek clarification regarding the trademark.

4. The applicant or his attorney needs to reply back with a written submission clarifying the objections of the examiner regarding the trademark.

5. If the examiner is satisfied, he accepts the application for registration. Otherwise, he issues a hearing notice to the Applicant.

6. The Applicant or his authorized attorney has to attend the hearing in person and justify the bonafide usage of the mark. The hearing stage is partly judicial in nature and therefore care should be taken regarding the evidences and statements which are given before the examiner.

7. If the examiner is satisfied after the hearing, the trademark application is accepted. Otherwise, the application is rejected at this stage.

8. After the acceptance of the trademark application, the trademark is advertised in the trademark journal published by the Trademark Registry.

9. After the trademark is advertised, it becomes open for other persons to oppose the registration of the trademark.

10. If the trademark is not opposed or the opposition to the trademark fails, a registration certificate for the trademark is issued which can be renewed every 10 years by paying the requisite fee.

It is highly recommended that trademark registration should be entrusted to an experienced attorney who can increase the value and benefits of the registered mark by minimizing the legal hurdles.

Some of these advantages are :

Using trademarks as effective communication tool

A trademark is used for distinguishing the goods and services of one person from that of another. It essentially identifies the source of the service or product and helps the organization build an association in the minds of the consumer with regards to the quality and characteristics of the goods or services. Trademarks are used in many instances by the organization which includes the use in an advertisement as well as digital space. Thus, the chances of the trademark rights being violated increases in such a situation.

Today’s marketplace is crowded. Having a distinct registered trademark helps the consumers to find out the products and services easily and increases the revenue of the organization. Further, if the renewal fee is paid on time, trademarks never expire and thus a brand name is created which may survive centuries.

Extending the scope of protection of the trademark

The proprietors of the business often think that registration of the company or acquiring a domain name prevents competitors from using the same name. Though some form of remedy is available, but not registering the trademark can turn out to be a costly affair for the organization.

Registration of trademark serves a notice to the public that the proprietor or the organization is the owner of such a mark and is entitled to the exclusive use of the mark as such. It also puts a legal presumption that only the proprietor of the mark can use the same in course of the business. The business owner can not only have the common law remedy of passing off but also avail the benefits of claiming damages under an infringement suit if the trademark is registered.

Registration of the trademark brings in additional advantages as the owner can use ® symbol, which cannot be used if the mark has not been registered.

Avoiding Litigation and Conflicts

Before the trademark is registered, the attorney usually searches the database of the Trademark Registry to find out if there are any marks which may be conflicting with the mark proposed to be registered. Moreover, a thorough search is also done by the examiner of the trademark while examining the application. Thus, this two-stage search process minimizes the risk of the business owner being sued for the infringement of other’s trademark.

In the absence of the registration process, the business owner may get involved in an expensive litigation process and may lead to the payment of hefty damages. Further, the business owner may have to change the brand name, leading to loss of reputation and goodwill in the market.

Financial incentives and Building Value

A registered trademark is an intellectual property and thus an intangible asset. An intangible asset can be valued in monetary terms. Further, as an intangible asset, a trademark may be licensed or sold thus adding to the revenue stream of the organization. As an intangible asset, a trademark can also be used as a security or collateral for raising funds.

Further, registered trademarks of a company are held in better esteem as compared to unregistered ones by the investors. Potential investors are always looking out for a strong intellectual property portfolio and a business which has registered the trademark for its name, goods and services would have a better portfolio as compared to a business which is running with unregistered marks, as registration apart from increasing value provides clarity as to the holding of the rights during mergers and acquisitions.