SINGHANIA & CO. Indore Office: 501/5, Millindas Manor, 2RNT Marg, Opp. Central Mall, Indore – 452001 T: +91 73140 00486| Email: indore@singhania.net.in | Website: www.singhania.com

BANGALORE I CHENNAI I HYDERABAD I INDORE I KOLKATA I MUMBAI I NEW DELHI I LONDON

Newsletter Mid Week Issue 16 July 2016

TRADEMARK- A PARAMOUNT SPHERE OF

INTELLECUTAL PROPERTY

A trademark is recognized as a property which consists in the right of the owner to use

the Mark in relation to specific good and prevents other from using it. The objective of

having trademark laws is to deal with precise nature of rights a person can acquire in

respect of trademarks and the same has been covered in India under the Trademarks

Act,1999.

EVOLUTION AND IMPORTANCE OF TRADEMARK:

The evolution of internet has brought trending changes in the economy and has made

social media a ubiquitous part of our lives. With booming businesses and corporations,

the need for continuous development and changes in law and rules governing it to bring

stability and balance has also been enlarged. In these ongoing developments one thing

which has still been underrated by the big and small companies is the need to trademark.

Startups and small businesses fail to recognize that they are purely based on the subject

of intellectualpProperty. Registration of Trademark is one of the finest steps every

company has to make once it’s incorporated.

Trademark has played a vital role in providing business regardless of their size, be it big

or small. Trademark is not only treated as tools of communicating to the customer but is

also a valuable asset.

Trademark helps in creating a face value of the company, thus trademarking would be

legally protecting the identity of your business. Trademark registration clearly forbids

anyone from infringing and it makes it clear to customers and the competitors. From an

investors point of view trademark protects from any unfair trade practice to take place,

in the view that the individuality of the business they have invested is protected. In

future if any need arises to sell the business it calls out for potential investors. Thus, this

helps in having good congruence with the investors facing no future complications.

If there are any issues in relation to business license and an agreement having a

registered trademark fastens up the process creating a better goodwill.

REGISTRATION - APPLICATION, OPPOSITION AND RENEWAL:

The recent developments in Trademarks Act, 1999 has simplified the process of getting

a trademark registered

- The application of Trademark requires basic documents and information regarding the

word and logo which has to be registered. That could be a service mark i.e. restaurants

name, wordmark, a sound trademark i.e. jingle of a brand, and 3 dimensions mark.

- Once the application is been filled the same is sent for Vienna Codification and a data

entry is made with the Registrar of Trademarks.

- An examination Report is then sent, which would state the objections if any and the

parties will be given reasonable opportunity to present themselves.

ABOUT THE FIRM:

Singhania & Co. was founded in the

year 1969 by Mr. D.C Singhania, a

veteran in the legal profession with an

expertise of over five decades in

Commercial laws, Arbitration (both

National & International) and

litigation. Mr. Pradeep Jain is

currently heading the Mumbai and

Indore offices of the Firm.

The Firm operates out of 10 offices

including an office in London. In

India the Firm has offices in New

Delhi, Mumbai, Hyderabad, Indore,

Bangalore, Kolkata, Chennai,

Ahmadabad and Chandigarh.

The breadth of the Firm’s practice

includes Admiralty, Anti-Dumping,

Aviation, Arbitration & Dispute

Resolution, Banking, Securities and

Financial Services, Corporate &

Commercial, Infrastructure,

Intellectual Property, Joint Venture

& Technology, Litigation,

Mergers & Acquisitions, Technology

Transfer, Project Financing, Capital

Market, Private Equity and Fund,

Securitization & Structured Finance

and Taxation laws.

AUTHORS:

TANAY KASERA

ASSOCIATE PARTNER

SINGHANIA & CO. Indore Office: 501/5, Millindas Manor, 2RNT Marg, Opp. Central Mall, Indore – 452001 T: +91 73140 00486| Email: indore@singhania.net.in | Website: www.singhania.com

BANGALORE I CHENNAI I HYDERABAD I INDORE I KOLKATA I MUMBAI I NEW DELHI I LONDON

Newsletter Mid Week Issue 16 July 2016

- When a show cause hearing is sent , the Trademark Court sends a report if the

application is refused or accepted. Necessary evidences are to be provided by the parties

as per the objections stated in the examination report.

Once the said application fulfill all the necessary process the Trademark Registry Issues

a Certificate which is valid for 10 Years and the same can be renewed. The trademark

registration process takes 2 years but the user is given liberty to a symbol of TM next to

the logo and the wordmark to order to get protection. The new notice issued by the

Government of India in regards to ‘ Make in India’ is making deliberate efforts to

reduce and minimize the process and time frame of Trademark registration.

INTERNATIONAL APPLICATION:

The Trademark registration can be done in various classes through single application and

the same can be filled for an International registration. There is liberty to foreign

investors and domestic business enterprises to have the trademark registered in multiple

Jurisdictions internationally with the help of Madrid Protocol. The Madrid Protocol is

governed by the International Bureau and WIPO. Madrid Protocol makes it Plain- sailing

for a company to register and protect the trademark in different jurisdictions by filing an

application for international registration.

THE FIGHT FOR NAME- TRADEMARK LITIGATION:

The Indian judiciary has taken measures for the protection of Trademarks and improving

the process by ways of extension of the term of registration, and filing of multiclass

agreements. The process is more efficient and uniform. The Indian trademark Act has

maintained the standards of the international practice and TRIPS.

The Legal remedy for such trademark infringement is both civil and criminal. The

increasing agenda of a company having its goodwill through name has been seriously

taken by the marketing and strategic analysts of big corporate houses to ensure maximum

protection is attained.

The fight for name has bought an increase in the trademark litigation suits. One of the

landmark judgments given by Delhi High court was in Horlicks Limited and Ors. Vs.

Kartick Sadhukan, Delhi High Court 2002 (25) PTC 126 Del where the name Horlicks, a

product of GlaxoSmithKline contested with Kartick confectioners which manufactured

products in the name Horliks. This shows that no industry or company is now ready to

put anything at stake when it comes to protection of its trademarks.

CONCLUSION:

Thus, there is a need for our domestic based entrepreneurs and the new business

corporations to understand the importance of trademark and to have their rights and

benefits maximized. The Indian government under the ‘ Make in India’ campaign has

given a great deal of importance to IPR related subjects. Like it is rightly said "Name is

where all the Power is".

POOJA SAINI

SENIOR ASSOCIATE

SNEHA MEHTA

ASSOCIATE

Disclaimer:

The contents of this newsletter are

intended for information purposes

only, and parts of this newsletter are

based on news reports and have not

been independently verified. The

newsletter is not in the nature of a

legal opinion or advice. They may not

encompass all possible regulations

and circumstances applicable to the

subject matter and readers are

encouraged to seek legal counsel

prior to acting upon any of the

information provided therein.

Singhania & Co. neither assumes nor

accepts any responsibility for any loss

arising to any person acting or

refraining from acting as a result of

any material contained in this

newsletter. This newsletter is the

exclusive copyright of Singhania &

Co. and may not be circulated,

reproduced or otherwise used by the

intended recipient without the prior

permission of its originator.