A Trademark is any sign that individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors. Trademarks already existed in the ancient world. As long as 3,000 years ago, Indian craftsman used to engrave their signatures on their artistic creations beyond sending them to Iran. Any sign or any combination of signs, capable of distinguishing the goods and services of one undertaking from those of other undertakings, must be eligible for registration of trademark, provided that it is visually perceptible. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colors as well as any combination of such signs, must be eligible for registration as trademarks. Members are free to determine whether to allow the registration of signs that are not visually perceptible (e.g. sound or smell marks). Registration of TM is valid for 10 years. Service marks must be protected in the same way as trademarks used for goods. Marks that have become well-known in a particular country enjoy additional protection.
Well-known trade marks
A new rule allows for determination and inclusion of trademarks on a “list of well known trademarks”. Any person, by filling an appropriate form with fees (INR 1,00,000) along with a statement of case supported by documentary evidence, can request the registrar to determine its mark as “well-known”.
In modern trade consumers are confronted not only with vast choice of goods of all kinds, but also with an increasing varieties of services which tend more and more to be offered on a national and even international scale. There is therefore also a need for signs that enable the consumers to distinguish between the different services such as insurance companies, car rental firms, airlines, etc. These signs are called service marks, and fulfill essentially the same origin-indicating and distinguishing function for services as trademarks do for goods.
Trademarks typically identify individual enterprises as the origin of marked goods or services. Some countries provide for registration of collective and certification marks, which are used to indicate the affiliation of enterprises using the mark or which refer to identifiable standards met by the products for which the mark is used.
A collective mark may be owned by an association which itself does not use the collective mark but whose members may use the collective mark; typically, the association has been founded in order to ensure the compliance with certain quality standards by its members; the members may use the collective mark if they comply with the requirements fixed in the regulations concerning the use of the collective mark. An enterprise entitled to use the collective mark may in addition also use its own trademark.
The certification mark may only be used in accordance with the defined standards. The users of a collective mark form a “club” while, in respect of certification marks, the “open shop” principle applies.
Signs which may serve as trademarks
Words, devices, logotypes, labels, colored marks, three-dimensional signs, audible signs (sound marks), olfactory marks (smell marks), other (invisible) signs
During the process of trademark registration one must specify about the trademark class in which the proposed category of products and services fall. There are total 45 classes of which 34 classes for products and 11 are stated for services category. There is no rule that items which resemble in some sense could fall under same category, so one must be very careful while selecting the class of their products while registering. Trademarked product symbol-™
Trademark classification serves two functions: It provides a guideline for registering trademarks, and it can help you identify potential trademark infringes.
Product (“Goods”) Classes
- Class 1- Chemicals used in industry, science and photography, agriculture, plastics etc. In particular compost and salt for preserving other than the food stuffs.
Does not include – chemical products for use in medical science, raw natural resins, fungicides…
- Class 2- Paints, varnishes, lacquers, colorants for foodstuffs, preservatives against rust and wood
Does not include – laundry bluing, cosmetic dyes, paint boxes used by children…
- Class 3- Bleaching preparations, cleaning, polishing, soaps, perfumes, cosmetics etc.
Does not include – chemical chimney cleaners, deodorants other than for personal use, sharpening hand tools…
- Class 4- Industrial oils and greases, fuels
Does not include – certain special industrial oils and greases
- Class 5- Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes, baby foods, plasters, dental wax, fungicides etc.
Does not include – supportive bandages, sanitary preparations being toiletries
- Class 6- Common metals and their alloys, materials of metal for railway tracks etc.
Does not include – bauxite, mercury, alkaline-earth metals
- Class 7- Machines and machine tools, incubators for eggs, motors and engines (except land vehicles)
Does not include – motors and engines for land vehicles, hand tools and implements
- Class 8– Hand tools and implements, razors, side arms
Does not include – fencing weapons, paper knives, surgical cutlery
- Class 9- Instruments for scientific research in laboratories, controlling ships,protractors, punched card office machines…
Does not include – electromechanical apparatus for kitchen
- Class 10- Artificial limbs, eyes and teeth, orthopedic articles
- Class 11- Apparatus for lighting, heating, cooking, refrigerating, ventilating, electric cooking utensils and sanitary purposes.
Does not include – electrically heated clothing
- Class 12- Vehicles, apparatus for locomotion by land, air or water.
Does not include – railway material of metal, parts of motor and engines.
- Class 13- Firearms, ammunition, explosives and projectiles.
Does not include – matches
- Class 14- jewellery items, precious stones, tie pins, cuff links.
Does not include – pen nibs of gold, cutlery, amalgam of gold for dentists etc.
- Class 15– Musical instruments, mechanical piano’s, electronic musical instruments.
Does not include – apparatus for the recording, transmission and reproduction of sound.
- Class 16- paper, cardboard, printed matter, photographs, stationery, typewriters etc.
Does not include – colours, hand tools for artists.
- Class 17- Rubber, gum, mica, packing materials, flexible pipes (not of metal)
- Class 18- leather and imitations of leather, animal skins, hides.
Does not include – Clothing, footwear, headgear.
- Class 19- (non- metallic) Building materials, rigid pipes for buildings, monuments, glass granules for marking out roads.
Does not include – Cement preservatives and cement, waterproofing preparations, fireproofing preparations.
- Class 20- Furniture, picture frames, mirrors, cork, ivory, whalebone.
Does not include – special furniture for laboratory and medical use, bedding linen.
- Class 21- Combs and sponges, brushes (except paint brushes), steel wool, glassware, Dish stands, porcelain, kitchen utensils.
Does not include – cleaning preparation, soaps, cooking utensils, electric, toilet mirrors.
- Class 22 – Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks, bags and raw fibrous textile materials.
Does not include – strings for musical instruments.
- Class 23 – Yarns and threads, for textile use.
- Class 24- textiles and textile goods, not included in other classes, bed and table covers.
Does not include – Electrically heated blankets, table linen of paper, horse blankets.
- Class 25- Clothing, footwear, headgear.
Does not include – Certain clothing and footwear for special use.
- Class 26- lace and embroidery, hooks and eyes, pins and needles, artificial flowers.
Does not include – Yarns and threads for textile use, certain special types of hooks and needles.
- Class 27- Includes mainly products intended to be added as furnishings to previously constructed floors and walls. (floor coverings and wall hangings)
- Class 28- Games, toys, playthings, gymnastic, sporting articles not included in other classes, decorations for Christmas trees.
Does not include – Christmas tree candles, diving equipment, fishing nets
- Class 29-Meat, fish, poultry , preserved, dried and cooked fruits and vegetables, jellies, jams, eggs, milk and milk products, edible oils and fats.
Does not include – certain foodstuffs of plant origin, baby food, fertilised eggs for hatching, live animals.
- Class 30- Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee;
flour and preparations made from cereals, bread, pastry and confectionery, ices;
honey, yeast, baking-powder; salt, mustard; vinegar, sauces (condiments).
Does not include – salt for preserving other than for foodstuffs, baby food, raw cereals, foodstuffs for animals
- Class 31- Agricultural, horticultural and forestry products and grains not included in other classes, live animals, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt.
Does not include – cultures of micro-organisms and leeches for medical purposes, semi-worked woods, artificial fishing bait, rice, tobacco
- Class 32- Beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages.
Does not include – beverages for medical purposes, milk beverages (milk predominating) , beverages with coffee, cocoa or chocolate base.
- Class 33- wines and spirits, Alcoholic beverages (except beers).
Does not include – medicinal drinks, de-alcoholised drinks .
- Class 34- Tobacco, smoker’s articles, matches, tobacco substitutes (not for medical purposes).
Does not include – cigarettes without tobacco, for medical purposes, certain smoker’s articles in precious metal.
Service mark classes
- Class 35- Advertising, business management, business administration, office functions.
Does not include – the activity of an enterprise the primary function of which is the sale of goods, i.e., of a so-called commercial enterprise, services such as evaluations and reports of engineers which do not directly refer to the working or management of affairs in a commercial or industrial enterprise.
- Class 36- Insurance, financial affairs, monetary affairs, real estate affairs, services of banking establishments, brokerage in shares and property.
- Class 37- Building construction, repair, installation services.
Does not include – services consisting of storage of goods such as clothes or vehicles, services connected with dyeing of cloth or clothes.
- Class 38- telecommunication services
Does not include – radio advertising services.
- Class 39- Transport, packaging and storage of goods, travel arrangement.
does not include – services relating to advertising transport undertakings such as the distribution of prospectuses or advertising on the radio, services relating to insurances (commercial, fire or life) during the transport of persons or goods…
- Class 40- Treatment of materials.
Does not include – repair services.
- Class 41- Education, providing of training, entertainment, sporting and cultural activities, services consisting of all forms of education of persons or training of animals, services having the basic aim of the entertainment, amusement or recreation of people, presentation of works of visual art or literature to the public for cultural or educational purposes.
- Class 42- Industrial analysis and research services, design and development of computer hardware and software.
Does not include – business research and evaluations, mining and oil extraction, medical treatment services, garden design.
- Class 43- (hotels and restaurants services)Services for providing food and drink, temporary accommodation.
Does not include – rental services for real estate such as houses, flats, etc., for permanent use, arranging travel by tourist agencies, preservation services for food and drink
- Class 44- Medical services, veterinary services, hygienic and beauty care for human beings or animals, agriculture, horticulture and forestry services.
Does not include – ambulance transport, animal slaughtering services, timber felling and processing, animal training services, health clubs for physical exercise, boarding for animals, retirement homes.
- Class 45- Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals; legal services (earlier in the class 42);
Does not include – escorting of travelers, security transport, services consisting of all forms of education of persons, performances of singers or dancers
(sources : International Bureau of WIPO, Comparative Trademark Law and Internet)