In our everyday life we come across a sign, word or pictorial representation which strikes a bell within us. Even a child recognises a mark like Kurkure on a particular packet of wafers or Gattu (mischievous boy holding a can of paint) just as well known symbol three pointed star on luxury cars has become mark which provides assurance of safety, comfort and reliability. Just at looking the design we can tell which brand does it belongs to. What is this sign? Why is this sign associated with the name? Are some of the questions a lay man would like to know? This sign is known as Trade Mark.

Trademark, is a recognizable sign, design or expression which identifies products or services of a particular source from those of others. The use of the Trademark can be traced back to the ancient times when craftsmen or artisans reproduced their signatures or marks on their artistic products. A Trade Mark is any sign which can distinguish the goods and services of one trader from those of another. A sign includes words, logos, colours, slogans, three-dimensional shapes and sometimes sounds and gestures.

A trademark is therefore a “badge” of trade origin.

What does a trademark do? Is it of some importance: Yes, today’s world is full of competition .One needs an identity so that people can recognize the brand and keep its sanctity. A Trademark provides security to the possessor of   the mark by certifying the exclusive right to use it to make out goods or services or to authorize another to use it in return for fee. Trademarks promote initiative and enterprise worldwide by rewarding the owners of trademarks with recognition and financial profit. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar signs to market inferior or products or services. This arrangement enables people with ability and enterprise to produce and market their original goods and services in the fairest promising conditions, thus allowing spirit of fair competition and international trade.


Trademark protection in India is governed under The Trade Marks Act, 1999.

The trademark filing under trademark law in India can be done by a proprietor, partner, trust/society and company with a principle place of business. Principal place of business is important to determine the appropriate office for filing the trademark application. The appropriate offices for trademark filings are headed in Delhi, Mumbai, Kolkata and Chennai. If you don’t have a principal place of business in India, you can provide the address of your service provider (trademark agent/attorney).

The Trade Marks Act, 1999 and the Rules, 2002 provides in detail the procedure relating to registration and protection of these marks against infringement and rules and regulations applicable to registration in various classes (now even registration of service marks is provided), validity of such registration, payment of fees, action against infringement of marks etc.

The hierarchy of the process of trademark registration in India goes as follows:

  • The Trade Marks Act, 1999 read with Trade Marks Rules, 2002 provides for registration of various goods and services under 42 classes as specified under 4th UnderstandingClass Details is very important to classify your business under a certain class or classes of goods and services.
  • After checking with the class details you can conduct trademark search to get the gist as to whether your trademark is registrable or conflicting any other registered trademark in India. The Act and the Rules provide for registration of Collective mark and Certification trademarks as well.
  • Now a days trademark filing can be done online in 24 hours. After filing you can superscript TM with your brand name e.g.IntepatTM which means IP service provided by IP Services Pvt Ltd (“Intepat”) an Intellectual Property (IP) services Company that provides a customized service in Intellectual Property matters, that includes patents, trademarks and design. Then your trademark application is processed for examination which takes around 18-24 months (approx). During the process of examination if you get an objection from the Trademark Registry you need to file response within one month of receiving such objection and prove the genuineness of your mark
  • If your trademark does not receive such objections, your trademark is advertise/publish in the trademark journal. After publication if your brand name/trademark do not receive any opposition from third party within 3 months; your brand name/trademark get registered and you can put superscript ® to your brand name/trademark.
  • When your trademark gets registered under the Trademark Act 1999, you have to renew your trademark in every 10 years till you use your brand name/trademark for your business.

The process of trademark registration incurs reasonable government fees as provided in Schedule I under Rule 11 and professional fees when you take assistance of a trademark agent/ attorney. A trademark agent/attorney can boost your process of registration and take further care of your trademark even after the registration. Therefore it is always advisable to take assistance from a trademark agent/attorney for the Trademark Registration.

When you possess a registered trademark as a registered proprietor, the trademark law gives you an exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of trade mark


Infringement of Trademark is the burning issue today, since there are lot of vendors ready to copy ideas and creativity of others, remedy for infringement must be known and understood. It is an infringement of exclusive rights attached to a mark used for trade without the authorization or license of the trademark and occurs when a one uses a trademark that is symbol or a design, resembling to the products owned by the other party. The trademark possessor may begin legitimate proceeding against that party, which infringes its registration. In such a case two type of remedies are available i.e. an action for passing off for an unregistered trademark which is a common law remedy and second an action for infringement when trademark is registered, which is a statutory remedy.

Therefore, to ascertain infringement for a registered trademark, it is pertinent to establish that the infringing mark is deceptively similar to the registered mark and no more evidence is necessary whereas in a passing off action, proving that the marks are deceptively similar alone is not sufficient but should also deceive confusion. Additionally, in a passing off action it is compulsory to show that the use of the trademark by the defendant is expected to cause damage to the plaintiff’s goodwill.

Trademark Act 1999 provides provision for the registration as Registered user. Licensing of Trade Marks in India is permitted under the Trade Marks Act, 1999, where the proprietor of a trade mark may, license the rights in the trade mark to a third party, thereby permitting the third party to use the trade mark in the course of trade. The terms license or licensing is not mentioned anywhere in the Act but, instead, the term registered user is used. The word licensee is, however, found mentioned on two occasions, viz. under Section 29 (7) and under Section 140 (1) of the Act.

According to the Act, permitted use is the use of a registered mark by the registered user or any person, having consent from the registered proprietor, other than the registered proprietor or registered user having connection in the course of trade in relation to the goods or services. In accordance with Section 48 and, subject to the provisions of Section 49, a person other than a registered proprietor of a trade mark may be registered as a registered user thereof in any or all of the goods or services covered under the registered trade mark. The use of the trade mark permitted as above shall be deemed to be use by the proprietor of the trade mark for the purposes of the Act or any other law.

Registration of trademark in India is voluntary but it is advisable that the trademark be registered with the Registrar of Trade Marks. The registered proprietor and the proposed registered user have to jointly apply in the prescribed manner, in Form TM 28, to the Registrar, enclosing with the application, the written agreement between them and an affidavit of the registered proprietor or a person authorized by him, giving particulars of the relationship between them including the degree of control by the proprietor and whether the proposed registered user would be the sole registered user. Such particulars would also include the goods and services for which such registration is proposed, and also conditions or restrictions, if any, regarding the characteristics of the goods or services and the mode or place of permitted use and the period of permitted use. The application for recordal of the registered user in India should be made within six months from the date of the agreement.

Upon being satisfied about the compliance of the stipulations, the Registrar shall register the proposed registered user in respect of the goods or services and the date of such registration is the effective date against third parties. The recordals will be published in the Indian Trade Marks Journal within two months from the registration date. The Registrar will also issue a notice of the registered user in the prescribed manner to other registered users, if any.

In India, Trademark Licensing Agreement has to be in writing and even unregistered trademark can also be licensed under a contract, though the Act is silent on this. However, Assignment of an unregistered trademark is possible in India (with or without the goodwill) as per section 39 of the Act, and the analogy would be if Assignment is possible why not license. Trademark licensing is one of the channels for the authorized use of another’s trade mark rights which is granted by the owner to the authorized user, usually for a price which is referred to as ‘royalty’.

Transborder reputation of Trademarks

Transborder status is fundamentally the result of the modern strategy of liberalization and globalization and in India the safeguard of transborder reputation of trademarks was the creative craft of the Judiciary. Indian courts documented action by foreign plaintiff on the source of status of his goods or services on the foreign soil and have deceased from the conventional impression of requirement of use of the mark or registration in India is passing off actions. Transborder status has its origin from the English Law and   is embodied in Section 35 of the Trade Marks Act, 1999 and it offers guard to foreign trade marks on the foundation of their international reputation.

N.R.Dongre V.Whirlpol Corpn. Is the landmark judgment which accepted the doctrine of ‘transborder reputation’ in element? In this case, one of the questions before the court was whether the aggrieved party who was not selling in India could claim the benefit of Transborder reputation in the trademark ‘Whirlpool’ so as to maintain a passing off action in India or should its goodwill and reputation be confined to territories in which it has proved actual use of the trademark in the market? Answering the question in favour of the aggrieved party an injunction was granted by the Hon’ble Delhi High Court which was reaffirmed by the Hon’ble Supreme Court.

Valuation of Brand equity

Brand equity is a idiom used in the advertising industry which describes the worth of having a famous brand name, based on the scheme that the possessor of a familiar brand name can engender more money from goods with that brand name than from goods with a less famous name, as consumers think that a commodity with a famous name is better than products with less famous names. Brand equity measures the total value of the brand owner and reflects the extent of brand franchise. Brand equity is built on the foundation of a protected trademark and this in turns becomes one of the most valuable assets of the business.

Much use the terms brand and trademark   interchangeably, they are different according to some. The value of a trademark is a fraction of the value of a brand and both the total brand value and the trademarks proportional value must be estimated when legal issues arise.

The President of Coca Cola, the most valuable brand in the world once famously said that if all their buildings and equipment burned down, they could get a loan to rebuild based on the value on the brand alone, but if the brand was taken away the company couldn’t recover. But how much is the trademark of coca cola worth? It is certainly, not as much as the brand because the trademark can be changed without necessarily diminishing the value of the brand. It is not rare for marketers to tweak the product name and even more common for them to change some facet of their trade dress, a brand signal that can be a logo colour, sound etc.

Trademark classification of  goods and services

Classification goods and services into different classes for the purpose registration of trademarks enable systematic storage and retrieval of information.

However, in determining whether two or more trademarks are confusingly similar, it is necessary to examine the nature of the goods or services. It is not sufficient to merely rely on the class number under which those trademarks are registered.

Although the classification system was established as an administrative tool, it has been playing an equally important role in evaluating the scope of rights and in determining infringement disputes.

When you file an application for registration of a trademark you need to mention the list of goods and services for which you intend to use the trademark. India follows an international system of  classification called the

Nice Classification according to which the goods and services are categorized into 45 classes, with goods covered in classes 1 to 35 and services covered under classes 36 to 45. If  the Trademark is AMUL the goods in which it is used are  cheese’s and the class will b 29.Similarly if the trademark is EXPEDIA the services for which it is used are online reservations and information regarding travel etc and the class will be 39.Indian trade mark office publishes the list of goods and services .

Service Marks

The Trademarks act 1999 defines  ‘’service’’ as any description which is made available to potential users and includes the provision of services in connection with business of any industrial or commercial matters such as banking ,communication ,education ,financing, insurance ,chit funds ,real estate, transport, storage, material treatment, processing supply of electric or other energy , boarding ,lodging , entertainment, amusement ,construction, repair, Conveying of new or information and advertising.

Whereas in regards to “mark”, it includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or, combination of colours or any combination thereof.

A service mark is a form of trade mark that is used in the sale or adverting of services. The services offered by one business from similar services offered by the other businesses.

Explaining it more elaborately word, name, or symbol that represents a company/firm/individual that provides service or a service provided by a company/firm/individual that differentiates it from the competition and establishes it as unique. The service mark may be legally registered for the exclusive use of that company.

Service Mark Vs. Trade Mark

A service mark and a trade mark though not very different are not the same. There is mainly one simple difference between service mark and a trademark. A Service mark is used for services rather than goods. A Trademark is to identify goods and to distinguish those goods from those made or sold by another. Though there is a difference in the definition of trade mark and service mark, procedure for the registration and rights created on registration or use are same.

Type of services: Services are divided in different classes according to classification. In Trade Marks act, 1999 there are in total forty two [42] classes. Out of these forty two classes class –1 to class – 34 are for Trade marks whereas class – 35 to class -42 are for service marks. Services included in these classes are as following:-

Class 35: Advertising, business management, business administration, office functions.

Class36: Insurance, financial affairs; monetary affairs; real estate affairs.

Class 37: Building construction; repair; installation services.

Class 38: Telecommunications

Class 39: Transport; packaging and storage of goods; travel arrangement.

Class 40: Treatment of materials

Class 41: Education; providing of training; entertainment; sporting and cultural activities.

Class 42: 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.

Defensive Registration

Defensive trademark is a form of trademark used to prevent trademark infringement. A defensive trademark can be applied for by a trademark owner of a well known trademark for goods or services that are not intended to be used by that owner. The purpose

Of filing a defensive application is to reduce the possibility of other traders using the trade mark for unrelated goods or services.

However, the prior trademark should be distinctive, famous, or even unique for applying for a defensive trademark.

Conclusion: Therefore, when you decide to sell something original with a self created design or symbol, with which people recognize or associate your product make sure it is registered with the Registrar of Trademarks.