Intellectual property – The very term itself connotes that it is property of one’s intellectual skill and labour. For every industry, their intellectual property which propels or augments their business will become protectable asset. In that respect, if you are in publishing industry, book or literature gains value, if you are in trade or service, the mark or logo which is being public reference of your product gains value. If you are in the industry of discovering new things, every innovation adds value to your business. In short, if you feel that a specific element pulls the customer into your business or a specific element of your business is vulnerable to be imitated or copied by your competitor, then that element warrants protection under intellectual property rights. In the current trend of expanding global business through internet and other communication modes, Intellectual property gains advantage not only in terms of protecting your intellectual assets but also help to steer your business away from hostile legal suits from the allegation of infringement.
Intellectual properties are broadly classified into :
a) Trademark and Service marks.
b) Plant varieties protection.
Amongst the above seven, only the first four categories are frequently used and widely popular in the industry. We will discuss each of the four widely used Intellectual Properties in the following session.
Trademark is a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.
The above statement is a definition for trademark as defined in Trademarks Act. The same may be dissected for our convenience and for better understanding.
A trademark should be :
a) A graphical representation.
b) It should be capable of distinguishing a goods or services.
c) It may include shape of goods, specific design adopted for packaging or even combination of colours.
Hence, we can say that some mark/ brand / logo/ label you adopted on the goods or services to distinguish the product or services from that of the others, the same may be better protected by registering the same under Trademarks Act. So, a trademark is not restricted to just a mark, it may a brand, a logo, a label, a design, a ticket, a letter, numeral, shape of goods, etc.
A mark may be registered in the name of an individual or a partnership firm or a company. No restriction on the nature of registrants. Somebody may doubt that whether only new mark can be registered. It is not so, infact, a mark already put to use can also be registered with a claim of priority since its actual use. In other words, if you are using a brand or mark since 1980, you can apply the mark for registration even now with the user reference of 1980.
Please note registration of a mark is goods or service specific. Before register the mark you have find on which class you goods or services falls. There are 45 classes in the Trademarks Act. Once a mark is registered under specific class, it will extend protection only to the concerned Goods or Services. For example, if you are running business for consultancy under the brand and name “Spectrum”, your service of consultancy falls in the class 35. If you are desirous in registering the mark “Spectrum” in Class 35, it alone and not the use of the same mark “Spectrum” for textile goods.
Sometime a common mark may be used by your group company. In such event, you are entitle to claim multi-class registration. In fact, if you are flouting a new company or firm or going to start a proprietorix concern, once you finalized the mark or brand, you can apply the mark for registration as “Proposed to be used”. Later, if the mark is put to actual use, you can amend the user with particulars about actual date of use of the mark/ brand. Therefore, Trademarks Act, allows registration of the mark which has been used since long back and also a mark which is yet to be used.
But some time the same mark may be applied for registration. So, before applying for registration, we suggest to do search for the availability of the mark for registration. Once it is found that no similar or identical mark is applied for registration or registered, your mark will be registered without any hassle. In case the mark which you have been using is registered, we have to look for other legal lee-ways to over come the same and in such case you may take advise from a trademark consultant for better appreciation of facts and to guide you in better manner.
You may have another doubt whether once the mark is registered in India, will that protection be extended to whole of the world. Answer is No. Universally trademark is territorial. So for each and every nation or Union, a separate and fresh registration is necessary. But even if a mark is registered in the jurisdiction of Tamil Nadu wherein the Regional office is located at Chennai, you can claim protection across whole of India.
Next query on your part would be regarding the renewal. Though it has not warranted frequent renewals like payment of insurance or other taxes, renewal once in ten year is mandate.
Why trademark has to be registered ?
You are well aware that Trademark is not just a mark or brand. As we are being identified by our name, our goods or services are very much identified by our mark or brand. If your products acclaims best quality, best customer centric service, public identifies your product or service only by the brand. Hence, all the best factors of your product or service are attributed to your brand. Brand carries reputation and goodwill of your business. Some time the brand may grow more than the product. So, protection of trademark from other unauthorized user is necessary. For such protection, registration of a mark will the statutory evidence and prime document to claim priority and ownership. Value of a mark is not just determined by extensive advertising or its public recognition, statutory protection by registration and steps to curb other intruders from diluting the mark is the only which really amplifies the value behind the mark. After knowing the values of a brand, it is better to be registered. Comparing the value of the brand, registration expenses are negligible. Therefore, if you mark is not registered yet, consult a trademark attorney to apply for registering your brand at the earliest.
There are two stages in business vis-à-vis brands. The first stage would be that you nurture the brand by vigorous advertisement. By adopting good advertising strategy coupled with catering the need of the public by maintaining expected quality, you brand will gain public recognition. Once the brand has attained a status and has become identifiable, the second stage would mature wherein the brand would nurture your business. Most of the companies at the nascent stage may think that registration of brand is not needed. But our advice is earlier the registration, stronger the protection.
In most of cases, a mark may be adopted by an individual. After some years, the proprietorship concern will be converted either into a partnership firm or as a private limited company. In such an event, the individual who adopted the mark can demand good chunk of share once if the mark registered in his name. So, it is false attitude that one a company or big group can register the mark. Irrespective of the size of your business, prefer registering your mark at the earliest so as to claim statutory protection and to crystallize your priority.
We are yet to discuss advantages of registering other Intellectual Properties.
For any query relating to registration of trademark, please don’t hesitate to contact lawyersclubindia.com or email your query to firstname.lastname@example.org
Author: A.K. RAJARAMAN
Advocate, Madras High Court.
 Section 2 (zb) of Trademarks Act, 1999