Registration Of Trade Marks In India
How do trademarks work?
A TRADEMARK is any word, phrase, symbol, or design that is used in the course of commerce to identify and distinguish the source of the goods or services of one firm from those of competitors. The only difference between a service mark and a trademark is that a service mark indicates and differentiates the source of a service as opposed to a product.
Any material that wants to be a trademark must meet the requirements listed below.
It has to be a mark as that term is used in section 2(1). (m).
It must be "capable of being depicted graphically" for such a mark.
To "distinguish the goods or services of one person from those of others," a mark must be able to do this.
The trademark must be used or contemplated for use in connection with certain products or services.
The Trade Marks Act of 1999 is responsible for regulating trademark law. The Act aims to establish a framework for the registration of trademarks for goods and services in India.
Rights granted by registration:
When a trademark is registered, the registered owner of the trademark is given the sole right to use the trademark in connection with the products or services for which the trademark is registered.
Who may submit a submission?
Anyone may submit an application to the Trademark Registry whose jurisdiction includes the applicant's principal place of business in India for the registration of a trademark. Anyone may submit an application in his name for a later assignment of the registration in the name of a soon-to-be-formed corporation.
To file a trademark application, you must:
1. The name of the trading style or the firm's or business's name.
2. Ownership information or the names of the partners
3. The Business Place's Address
4. 20 labels bearing the trademark logo in the size, font, or design of a visiting card
5. The commodities that the mark is relevant to are specified
6. The first date the trade mark was used, if one was ever used. A "planned to be utilised" application may be submitted in the absence of this.
You may check this by looking at your first invoice.
If the product is a medicinal preparation, you can confirm this by looking at the Drug Endorsement established for that specific product in your drug licence.
7. Form TM-48 Authorization Form, which must be printed on stamp paper and signed by the authorised signatory if the applicant wishes to hire a trademark attorney.
8. If it is a private limited company or a public limited company, please provide the articles of association and the memorandum of incorporation.
Application's full name and address. A list of the specific names of the products or services being described.
Global Classification of Goods and Services. A trademark may be a character, device, figure, three-dimensional mark, logo, or colour. An application can be submitted without prior use. Details of Convention Priority, if any: First filed country, filing number, and date; priority is granted for a period of six (6) months.
Documents: Power of Attorney, to be signed by an individual or a corporate representative (neither notarization nor consular legalisation necessary).
Search for trademarks
When submitting a registration application, it is wise to review the list of already registered trademarks to guarantee that registration won't be rejected due to the proposed mark's similarity to an already registered or forbidden mark.
How may one obtain a trademark right?
By using a trademark in connection with specific goods, a person may gain a right of ownership in that trademark.
By registration pursuant to the Act; or
By transfer or assignment of the right from one person to another.
Application for Trademark Registration and Enforcement:
Depending on where the applicant lives or operates their primary place of business, they may submit a trademark application on Form TM-1 at one of the five Trade Marks Registry offices situated in Mumbai, Delhi, Kolkata, Chennai, or Ahmedabad with the statutory price of Rs. 2,500. If it is deemed acceptable, it is then published in the Trade Marks Journal so that others may object to the registration. If there isn't any resistance or if it is rejected in the applicant's favour, the mark is registered and a certificate of registration is given out. The ultimate rejection will be made by the Registrar. An administrative body called the Intellectual Property Appellate Board is where the applicant can then appeal.
Office in Mumbai serving Goa, Madhya Pradesh, and Maharashtra
Gujarat, Rajasthan, Daman, Diu, Dadra, and Nagar Haveli are represented at the Ahmedabad office.
West Bengal, Manipur, Mizoram, Meghalaya, Nagaland, Sikkim, Tripura, Andaman & Nicobar Islands, Assam, Bihar, Orissa, Kolkata Office
Delhi Office: Chandigarh, Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, and Himachal Pradesh
Office in Chennai: Andhra Pradesh, Kerala, Tamil Nadu, Karnataka, Pondicherry, and Lakshadweep.
The following actions must be taken in order to register a trademark:
1. The assigning of an application number
When a registration application is received, it is given a serial number that serves as a reference for future applications. The same number is used if the mark is registered as a trademark.
2. Report of the Preliminary Exam
The application is examined by the Registry, which then provides the applicant a Preliminary Examination Report (oePER) and Formalities Check Report (FCR) with a request for the applicant to address any faults and departmental objections. The applicant has one month in which to respond to the PER and FCR.
If the applicant sought a hearing in his reply and the Registrar is not pleased with the application and PER's response, the Registrar may call the applicant for the hearing. The Registrar would order advertisement if the hearing satisfied him.
4. Publicity in the Trademark Journal
The application should be announced as accepted in the trademark journal by the Registrar after it has been approved, together with any terms and limits that may have been included.
5. Refusal, hearing, and registration
Any individual may object to the registration by paying the required fees, which are $2500, in writing within three months of the date of the initial or subsequent advertisement (Form TM 5). The applicant must submit a rebuttal statement in accordance with the rules (Form TM 6) and pay the required fees ($1,000). Any party that wants to be heard must fill out Form TM 7 in the proper manner and pay the required fees, which is 500/-. The Registrar makes a determination about the claims of the applicant and the opponent after taking into account the written averments and any necessary hearings. If the applicant is successful, the trademark is then registered. The Registrar shall issue a registration certificate in the required form upon registration of the trademark. The trademark registration shall take effect on the application date and shall remain in effect for a period of 10 years following that date. Any party to the opposition proceedings may appeal the Registrar's decision to the Tribunal if they feel they have been wronged by it.
Sections 9 and 11 outline the absolute and relative justifications for rejecting the registration of any mark, respectively. The rejection order is typically issued because certain provisions of either Section 9 or Section 11 are attracted.
Eligibility requirements to register as a trademark:
Mark must be able to tell one person's products or services apart from those of another.
Mark should not be solely composed of customary signs or indicators in the present language or in genuine or accepted trade practises;
Marks shouldn't be solely determined by the shape of the items as determined by their nature.
Marks or indicators used to relate to qualities of goods or services such sort, quality; quantity, intended use, values, geographical origin, etc. should not be the only elements of a mark.
The phonetic equivalent of words that can be registered would also not be registered. For instance, "EXTRA" cannot be registered since it is the phonetic equivalent of "extra."
A designer watch with an exclusive shape that offers it substantial worth may not be registered since it should not only consist of shape that adds value to the items. Such a shape may be registered as a design rather than a trademark under the Designs Act of 1911.
It should not include or include anything that could harm the religious sensitivities of any class or group of Indian citizens;
It should not consist of or contain scandalous or pornographic material;
It shouldn't have a purpose of misleading the public or causing misunderstanding;
The Emblems and Names (Prohibition of Improper Usage) Act of 1950 should not forbid its use;
Moreover, registration of a mark may be refused if there is a public confusion risk, including a risk of association with:
A trademark that is similar to another one that was previously used for similar goods or services
Any brand that is confusingly similar to a well-known brand that is used for any goods or services
If a mark's use in India is likely to be prohibited by copyright laws or by the common law of passing off, which protects unregistered trademarks, registration of the mark may also be disallowed.
Timeframe of a Trademark:
The duration of a trademark registration is ten years. Renewal is allowed for further 10-year periods. Contrary to patents, copyrights, or industrial designs, trademark rights can continue to exist for as long as the mark is used.
A remedy for infringement and passing off is:
The owner of a trademark has two options for legal action when a third party uses his or her mark without permission or copies it. These cures are: In the instance of a registered trademark, "an action for infringement" would be filed, whereas "an action for passing off" would be filed in the case of an unregistered trademark.
An action for passing off and an action for infringement basically differ in that the former is a common law remedy and the latter is a statutory remedy. Thus, all that is necessary to prove infringement in relation to a registered trademark is that the infringing mark is the same as or confusingly similar to the registered mark; no other evidence is needed.The marks must be identical or deceptively similar in order to prove a passing off claim, but this is not enough of a defence. It should be possible to be duped or confused by the use of the mark.
The owner of a registered trademark must take the following precautions:
The owner should make timely and consistent use of the trademark. If someone else uses his trademark improperly, he should sue them for trademark infringement and passing off, as well as seek criminal action.
The owner should keep an eye on trademarks listed in the Trade Marks Journal and launch opposition actions if similar or identical trademarks are promoted. If a trademark that is identical or confusingly similar to his is registered, he should start rectification proceedings.
Usage of Trademarks in Other Nations:
Country-by-country agreements govern the granting of trademark rights. In order to protect a mark in other nations, the owner must apply for protection under local legal requirements in each nation.
There is currently no system in place that enables a single trademark filing to provide adequate international trademark protection.
In some areas, using global filing systems to get trademark protection is also an option. One such trademark register is the Benelux Trademark Registry, which is shared by Belgium, the Netherlands, and Luxembourg.
The Trade and Merchandise Act of 1958 requires the following forms:
Application for Registration of a Trademark, Form TM-01
Notification of Opposition to Application for Registration of a Trademark, Form TM-05
Form of Counter Statement (TM-06)
Renewal of Trademark Registration, Form TM-12
Form TM-13: Restoration of Trademarks Deleted from Register for Failure to Pay Renewal Fees
Request for Correction of Clerical Error or for Modification, Form TM-16
Form TM-24: Application to Register a Later Owner of a Trademark
Form TM-26: Request to Remove a Trademark from the Register
Form TM-38: Request for an Additional or Alteration of a Registered Trademark by a Registered Owner
Request for a Certificate of Legal Proceeding, Form TM-46
Form TM - 48: Form of Agent Authority in a Proceeding
Request for search using TM-54 form.