Legislation

The law of trademarks is governed by the Trade Marks Act, 1999. The Act seeks to provide for the registration of trademarks relating to goods and services in India.

What is a Trademark

A TRADEMARK is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs are used in the course of trade which identifies and distinguishes the source of the goods or services of one enterprise from those of others. A SERVICE MARK is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product.

Any substance/matter for being a trademark shall fulfil the following conditions

• It must be a mark as defined under section 2(1)(m).

• Such mark must be “capable of being represented graphically”.

• Such mark must be “capable of distinguishing the goods or services of one person from those of others”.

• The mark must be in use or proposed to be used in relation to specific goods and or service.

Rights conferred by registration

The registration of a trademark confers on the registered proprietor of the trademark the exclusive right to use the trademark in relation to the goods or services in respect of which the trademark is registered.

Who can apply?

Any person can apply for registration of a trademark to the Trademark Registry under whose jurisdiction the principal place of the business of the applicant in India falls. In case of a company about to be formed, anyone may apply in his name for subsequent assignment of the registration in the company’s favour.

Trademark Search

Before making an application for registration it is prudent to make an inspection of the already registered trademarks to ensure that registration may not be denied in view of resemblance of the proposed mark to an existing one or prohibited one.

How to acquire a right in a trademark?

A person may acquire a right of property in a trademark in the following modes:

(a) By use of the mark in relation to particular goods; or

(b) By registration under the Act; or

(c) By assignment or transmission of the right from another person.

Filing and Prosecuting Trademark Applications

An application for trademark may be made on Form TM-1 with prescribed fee of Rs. 2500/- at one of the five offices of the Trade Marks Registry located at Mumbai, Delhi, Kolkata, Chennai and Ahmedabad depending on the place where the applicant resides or has his principal place of business. If it is found be acceptable then it is advertised in the Trade Marks Journal to allow others to oppose the registration. If there is no opposition or if the opposition is decided in favour of the applicant then the mark is registered and a certificate of registration is issued. If the applicant’s response does not overcome all objections, the Registrar will issue a final refusal. The applicant may then appeal to the Intellectual Property Appellate Board, an administrative tribunal.

Territorial jurisdiction

Mumbai Office  :	Maharashtra, Madhya Pradesh and Goa
Ahmedabad Office :	Gujarat, Rajasthan, Daman, Diu, Dadra and Nagar Haveli
Kolkata Office :	Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Nagaland, Sikkim, Tripura, Andaman & Nicobar Islands
Delhi Office :	Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Delhi and Chandigarh
Chennai Office :	Andhra Pradesh, Kerala, Tamil Nadu, Karnataka, Pondicherry & Lakshadweep

Stages involved for obtaining registration of a trademark

1. Allotment of application number

Upon receipt of an application for registration, a serial number is allotted to the same, which is used as a reference number for application. Same number is used as Trademark Registration Number if the mark is registered.

2. Preliminary Examination Report

The Registry examines the application and sends a Preliminary Examination Report (“PER”) together with Formalities Check Report (“FCR”) to the applicant wherein the Registrar would call upon the applicant to remedy the deficiencies and departmental objections. The applicant has to reply to the PER and FCR within a period of one month.

3. Hearing

If the Registrar is not satisfied with the application and reply to PER, he may call the applicant for the hearing if the applicant in his reply requested for the same. If the Registrar is satisfied in the hearing he would order advertisement.

4. Advertisement in Trademark Journal

Upon acceptance of the application the Registrar should cause the application with the conditions and limitations, if any, to be advertised in the trademark journal as accepted.

5. Objections, hearing and registration

Any person within 3 months from the date of advertisement or re-advertisement may in prescribed manner (Form TM 5) oppose the registration by paying prescribed fees; i.e., Rs. 2,500/-. The applicant shall file counter statement in prescribed manner (Form TM 6) by paying prescribed fees; i.e., Rs. 1,000/-. Any party desirous of hearing must file application in prescribed manner (Form TM 7) by filing prescribed fees; i.e., Rs. 500/-. The Registrar after considering the written averments and after hearing, if any, decides as to the claims of the applicant and the opponent and thereafter if decision is in favour of the applicant, registers the trademark. Upon registration of the trademark, the Registrar shall issue registration certificate in prescribed form. Registration of the trademark shall be effective from the date of the application and shall be in force for the period of ten years from such date. In case any party to the opposition proceedings is aggrieved by the order of the Registrar, it may file an appeal against the same with the Tribunal.

Grounds of refusal

Section 9 provides the absolute grounds for refusal of registration of any mark and section 11 provides for the relative grounds for refusal of registration. The rejection order is generally for the reason of attracting provisions of either section 9 or section 11.

Conditions for being eligible for registration as a trademark

Mark must be capable of distinguishing goods or services of one person from those of another.

Mark should not consist exclusively of customary marks or indications in the current language or in the bona fide or established practices of the trade;

Mark should not consist exclusively of shape of the goods resulting from the nature of the goods themselves

Mark should not consist exclusively of marks or indications used in general for referring to the characteristics of goods or services like kind, quality, quantity, intended purpose, values, geographical origin etc

Phonetic equivalent of unregistrable words would also be unregistrable. For example, “Kadbery” cannot be registered for chocolates, as the same is phonetic equivalent of “Cadbury”.

It should not consist exclusively of shape that gives substantial value to the goods; a designer watch having exclusive shape that gives it substantial value thus may not get registration. Such a shape may be registered under the Designs Act, 1911 as a design and not as a trademark.

It should not contain or comprise of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;

It should not comprise or contain scandalous or obscene matter;

It should not be of the nature as to deceive the public or cause confusion;

Its use should not be prohibited under Emblems and Names (Prohibition of Improper Use) Act, 1950;

Registration of a mark may also be refused if there is a likelihood of confusion on the part of the public including likelihood of association with:

• any trademark similar to earlier trademark used for similar goods or services

• any trademark similar to well-known trademark used for any goods or services

Registration of a mark may also be refused if its use in India is liable to be prevented under the law of copyright or under the common law of passing off protecting an unregistered trademark.

Requirements for filing Trademark application

1. Name of the Trading style or Firm name, Company name.

2. Name of the proprietor or the name of the partners

3. Address of the Business Place

4. 20 Labels of trade mark logo in visiting card size or lettering style or device

5. Specification of goods to which the mark is applicable

6. Date of the first use of trade mark, if the mark is already in use. Otherwise application may be filed as ‘proposed to be used’

(i) This you can verify from your first invoice

(ii) If the product is medicinal preparation, then you can verify from the Drug Endorsement made for the particular product in your drug license.

7. Authorization Form on Form TM-48 in stamp paper and then to be signed by the authorised signatory in case if the applicant wants to engage the services of a Trademark Attorney.

8. If it is a Private Ltd Company or a Public Limited Company, please furnish the Memorandum and Articles of Association

Information

Full name and address of Applicant. Specification of goods or services specified in terms of individual names.

Class: International Class of goods and services. Mark-character, device, figure, three-dimensional mark, logo and/or colour. Prior use is not required to file an application. Details of Convention Priority, if any — first filed country, filing number and date; the term of priority is six (6) months.

Documents

Power of Attorney (neither notarization nor consular legalization required) to be executed by an individual or a representative of a corporation.

Duration of a Trademark

The term of a trademark registration is for a period of ten years. The renewal is possible for further period of 10 years each. Unlike patents, copyrights or industrial design trademark rights can last indefinitely if the owner continues to use the mark.

Remedies for Infringement and passing-off

Two types of remedies are available to the owner of a trademark for unauthorized use of his/her mark or its imitation by a third party. These remedies are: — ‘an action for infringement’ in case of a registered trademark and ‘an action for passing off’ in the case of an unregistered trademark.

The basic difference between an infringement action and an action for passing off is that the former is a statutory remedy and the latter is a common law remedy. Accordingly, in order to establish infringement with regard to a registered trademark, it is necessary only to establish that the infringing mark is identical or deceptively similar to the registered mark and no further proof is required. In the case of a passing off action, proving that the marks are identical or deceptively similar alone is not sufficient. The use of the mark should be likely to deceive or cause confusion.

Safeguards to be taken by the proprietor of a registered trade mark

The proprietor should use and renew the trademark regularly and in time. If the trademark is misused by others he should file a suit for infringement and passing off and also take criminal action.

The proprietor should keep a watch in respect of trademarks published in the Trade Marks Journal and institute opposition proceedings if identical or deceptively similar trademarks are advertised. He should initiate rectification proceedings if an identical or deceptively similar trademark is registered.

Use of trademarks in foreign countries

Trademark rights are granted on a country-by-country basis. If the owner of a mark wishes to protect a mark in other countries, the owner must seek protection in each country separately under the relevant laws.

International trademark protection

There is no system as yet wherein a single trademark application is sufficient to protect the trademark right internationally.

It is also possible to utilize multinational filing systems in certain regions in order to obtain trademark protection. For example, Belgium, the Netherlands and Luxembourg have a single trademark registry, commonly referred to as the Benelux Trademark Register.

Important forms under The Trade and Merchandise Act, 1958

Form TM - 01 : Application for Registration of a Trademark

Form TM - 05 : Notice of Opposition to Application for Registration of a Trademark

Form TM - 06 : Form of Counter Statement

Form TM - 12 : Renewal of Registration of a Trademark

Form TM - 13 : Restoration of Trademarks removed from the register for Non-payment of renewal fees

Form TM - 16 : Request for Correction of Clerical error or for Amendment

Form TM - 24 : Request to register a Subsequent Proprietor of a Trademark

Form TM - 26 : Application for Removal of Trademark from the register

Form TM - 38 : Application by a registered proprietor for an additional or alteration of a regd Trademark

Form TM - 46 : Request for a Legal Proceeding Certificate

Form TM - 48 : Form of Authorization of Agent in a matter of proceeding

Form TM - 54 : Request for search.