as the ‘goods and services description’ in a trademark is one of the most important aspects of online trademark registration. In this blog, we will understand the role this description plays in the process of trademark registration.
WHAT IS A TRADE DESCRIPTION
As the name suggests, a trade description means the description of the business activity. When a business owner wants to apply for a trademark registration, they do so to protect their name from competitors. Hence, online trademark registration takes place under different classes of business activities.
There are a total of 45 classes, for different goods and services. The first 34 classes cover the manufacturing of different types of goods, such as chemicals, colors, cosmetics, clothes, toys, and more. Classes 35 to 45 cover services ranging from digital marketing consultancy, real estate advisory, education, restaurant services, legal consultations, financial consultations, and more.
These classifications help in sorting out the applications based on their business activity. Hence, selecting the most relevant classes applicable to your business is the first and most important step of online trademark registration.
IMPORTANCE OF TRADE DESCRIPTION
Each classification covers a varied number of descriptions for the goods and/or services. As an applicant, you need to select the ones that are most applicable to you. The examination of your mark for objections is completely based on the trade description that you provide while filing the trademark application.
Let’s understand the importance from the below-mentioned landmark judgements:
Yahoo! Inc. v. Akash Arora and another, 1999 Arb. L. R. 620 (Delhi High Court) –
This judgment is a great example of how a specific trade description can secure a trademark.
In this matter, providing a specific trade description helped Yahoo! Inc. in protecting its mark from infringement. Let’s see how:
The defendant Akash Arora filed a trademark application for a mark deceptively similar to that of Yahoo! Inc. and also had almost similar trade description in his application. His mark was “Yahoo India!” which means he was trying to gain profits from the goodwill and repute of the leading internet company. As a result, the hon’ble court held that the defendant was punishable for passing off of an existing mark and was further restricted from using his mark, i.e., a domain name similar to that of Yahoo! Inc.
In this case, a specific trade description played an important role in proving the passing off of Yahoo! Inc.’s mark.
P. Manikam v. Assistant Commissioner
In 2017, the Madras High Court, in a case similar to the Akash Arora case, charged the culprits under sections 103 and 104 of the Trademarks Act 1999 (the Act).
‘Syed Beedi’ is a brand of beedis. The culprit in this case was using a similar mark and label to sell duplicated beedi products.
This caused damage to the reputation of the original proprietor of the said mark. Hence, it was held that the culprit was using a ‘false trade description’ and an injunction order was passed to refrain them from doing so in the future.
THINGS TO KEEP IN MIND WHILE WRITING THE TRADE DESCRIPTION
As proven above, the trade description plays a very important role in the online trademark registration process. Hence, when you decide to apply for a trademark, you need to keep the following points in your mind:
Be as specific as you can:
Trademark classes have a general description, which gives a broad description of all the goods and services covered in that class. Ideally, you should only include those activities in your name that you are dealing with. This helps in avoiding unnecessary objections related to similarities with an existing mark.
Concept of false trade description
As stated above, the Act has a provision for false trade descriptions. This concept is applicable when an applicant who is dealing with different goods and or services tries to get their brand names registered under completely different classes, to get legal backup.
Sometimes, people also try to file misleading trademark applications to hurt the reputation or goodwill of a brand, this is also punishable under the law.
Hence, while filing a trademark registration application, you need to ensure that the goods and services description that you provide are genuine to your business activity.
Make your description error free!
Once a trademark registration application is filed with the concerned trademark registry, you cannot make any changes to your application. Hence, while choosing the correct trade description, you need to make sure that ;
- It is relevant to your business activity;
- That it falls under the class that you are applying for; and
- That there are no clerical errors or typos in the description.
CONCLUSION
When applying for online trademark registration for the first time, it becomes very difficult to understand the concept of classification and figure out which class or classes would be the most relevant for your business. There are many trademark class search tools available online that not only help you in figuring out the relevant class but also in deciding the precise specific description for your mark.
