Trademark

Trademark Registration

Frequent Ask Question (Trademark)

Simply put a trademark is a source indicator. It is in the form of an identification symbol which may be a word, a device, a label or numeral etc. or a combination thereof used in the course of trade which enables the purchasing public to distinguish one trader’s goods/services from similar goods/services of other traders.
  • An ideal trademark is an invented or coined word or symbol.
  • A trademark can be in the form of a word; letter; device; numeral or; any combination thereof. Domain names are also protected as trademarks. To ensure easier public identification with the mark, a proprietor should use simple design or a word that is easily to spoken, spelt and recollected.
  • Laudatory words should not be used. Similarly words that directly describe the character or quality of the goods/services should not be adopted. It is therefore advisable to use the trademark as an adjective rather than as verbs or nouns. This maintains its status as the owner’s brand.
  • Geographical names connected with the reputation or quality of the goods for which registration is sought should not be adopted.
  • The Indian Law does not allow registration of smell or sound marks.
The governing law is the Trade Marks Act, 1999 that replaced the Trade and Merchandise Marks Act, 1958 and the accompanying Trademark Rules, 2002.

A trademark owner in India can bring a:

  • Statutory action of infringement where the trademark is registered; and
  • The common law action of passing off where the trademark is not registered.
In the above mentioned actions, the claimant may ask the court for injunction, damages or an account of profits. Also, an action for passing off may be modified into an action for infringement if the proprietor obtains registration for his mark before the Court disposes off the suit.
  • Although not mandatory, one may conduct a prior search with the Trademarks Registry to ascertain whether an identical or deceptively similar mark is in use with regard to the same goods by any other person in the market. It is advisable to have a professional search carried out by a trademark firm.
  • If the trademark search reveals a similar mark in use for similar goods/services, the prospective applicant must consult with a trademark firm to see how he can use the sought mark.
  • The trademark application must contain a clear representation of the sign and set out the good/service in respect of which it is proposed to be filed at the appropriate Trademark Registry office. The Trademark Act allows a single application with respect to multiple classes.
The Trademark Act, 1999 sets out certain conditions for the registration of marks. The basic principle is that the law does not allow the registration of a mark which is not distinctive or which falls under a restrictive category. Such category will include a trademark of another trader who has been using the trademark earlier for the same goods or a trademark, which describes the character or quality of the goods which other traders may reasonably want to use in the course of their business. The mark should not conflict with a trademark already registered or pending registration in respect of similar goods.

The benefits of registering a trademark can be summed as follows:

  • Provides the proprietor with the exclusive right to use the mark in relation to the goods/services for which it is registered.
  • Provides a statutory right to take a legal action against others who may infringe the registered trademark or one resembling it in relation to similar goods.
  • It affords the proprietors the advantage of having the burden of proof in their favour. In case of the unregistered trademarks, the onus to prove that somebody is infringing on that trade mark is on the owner of the trade mark. Thus, registration passes the onus on the alleged infringer to prove that he has not infringed the registered trademark.
Without registration, a owner of a trade mark cannot bring an action for infringement to protect the mark if it is copied by others which is a much simpler action than the common law action for passing off for protection of unregistered trademarks.
An application for registration of trademark can be made by any person claiming to be the proprietor of a trademark used or proposed to be used. Such person can include an individual, company (includes a company still to be incorporated under the Companies Act, 1956), firm partner, the government, trust or joint-applicants.
No, registration of a trademark is not compulsory but the owner loses the benefits of a registered trade mark. The Trademarks Act, 1999 provides protection for a term of 10 years. Thereafter the owner can renew it. Non-renewal however lapses the trademark registration.

By filing an application in the prescribed form and fee at the concerned Trade Marks Registry office, depending on the place where the applicant resides or has his principal place of business. Thereafter, the application is examined to ascertain whether it is distinctive and does not conflict with existing registered or pending trademarks and examination report issued.

If it is found to be acceptable then it is published in the Trade Marks Journal to allow others to oppose the registration. If there is no opposition (within the prescribed period of four months) or if the opposition is decided in favour of the applicant, then registration of mark is granted and a certificate of registration is issued.

This process takes four to five years and once the trademark is granted, the date of registration is considered from the application date. With a payment of five times the application fee and reasons furnished by the applicant, the registration process may be expedited.

  • He should use and renew the trademark regularly and in time.
  • If his trademark is copied by others, he should file a suit for infringement and passing off and also take criminal action.
  • He should keep a watch in respect of trademarks advertised in the Trade Marks Journal and institute opposition proceedings if identical or deceptively similar trade marks are published.
  • He should initiate rectification proceedings if an identical or deceptively similar trade mark is registered.
A trademark is recognized as a form of property. It is therefore assignable and transferable as in the case of other forms of property. Registered and unregistered trademarks can be assigned with or without the goodwill in the trademark. Assignment must be in conformity with the rules of the Trademark Registrar.

Under the Trademarks Act, 1999 trademarks can be licensed by filing with the Registry the name of the registered users or where such use is with the consent of the proprietor under an agreement in writing and is in conformity with prescribed conditions.

The advantage of this system is that proprietors of Indian registered trademarks resident abroad (having no presence in India) can use their trademark in India through licenses granted to their Indian partners.

  • The allegedly infringing mark must be either identical or deceptively similar to the registered trademark.
  • The allegedly infringing mark must be used in relation to the same goods/services as the registered mark n the course of trade.
  • The alleged use must be in such manner as to imply being use as a trademark and confuse the public about the source of the goods/services in relation to which it is used.
No, for a trade mark to be registrable it is not necessary that the trade mark must have been in actual use. Even the marks that are proposed to be used can be registered.
Yes, a statement of use of a trade mark is required at the time of filing.
Yes, at the time of filing the trade mark application, “intent to use” the trade mark is sufficient.
Yes the revised Trademarks Act, 1999 permits registration of trade marks for goods as well as services.
Under the Trademarks Act; Goods and Services have been classified into 42 different classes and the applicant will have to ascertain as to which of the classes their goods fall under. Sometimes, the business of the applicant may relate to similar goods but (like tooth paste and tooth brush) under 4th Schedule of the Trademarks Act, these goods fall under different categories since 2 applications may be necessary to secure complete protection.
The 7th Edition of International Classification of goods and services (Nice Classification) is adopted in India.
Yes, a three-dimensional mark is registrable.
Yes, sounds or smells are registrable as a mark.
They should be capable of being reproduced graphically and should be distinctive.
Sound - musical notations along with the sound recording
Smell - chemical formula along with the sample

Under the Trademarks Act, there are 2 grounds for refusal of registration of trade marks:

(a) Absolute ground for refusal of registration of trade mark: marks that are devoid of any distinctive character which in the trade serve to designate the kind, quality, quantity and geographical origin will not be registered. However, if it can be proved that these marks have acquired a distinctive character prior to application by long continuous and uninterrupted use of the mark; marks will also not be registered if they are likely to deceive public or confusion. If the mark comprises scandalous or obscene matter or if the mark is likely to offend the religious sensibilities of the people the same cannot be registered. In addition, if the mark registration is prohibited under the Emblems and Names (Prevention of Improper Use) Act, it will not be registered. Normally, if the shape of the goods is necessary to obtain a technical result or the shape that adds substantial value to the goods it will not be registered.

(b) Relative ground for refusal of registration of trade mark: when the proposed mark for registration is in conflict with the identity of an earlier registered trade mark in respect of the same or similar goods or services or if it conflicts with the internationally well-known trade mark even if it is not registered in India.

Yes, the filed mark is allowed to be amended as per the provision of Section 22 of the Trademarks Act, which allows the amendment of the mark provided it does not amount to a substantial change in the character of the mark as such.

It is practice of the Registrar of Trade Marks that if the mark applied as a label mark, any superficial or insignificant character or feature of the said mark, is allowed to be amended, if a request filed in the prescribed format along with 16 copies of the amended label mark.

Yes, any person by applying in Form 55 and payment of an official prescribed fee can get an opinion from the registrar as to the distinctiveness of the proposed mark by mentioning the mark as well as the goods or services with which the marks are proposed to be used.
The Trade Mark Office requires that an application for registration must be made in Form 1 in triplicate along with a prescribed fee of Rs. 2,500/- per application per class. Form 1 should be accompanied by five representations of the brand in the prescribed manner.

On receipt of the Application, the Trade Mark Registry will issue an Examination Report and the Applicant will have to comply with the requirements of the report within a month of receiving the report.

On compilation of these requirements, the mark will be advertised in the Trade Mark Office Journal prior to the acceptance. If there is no opposition, the mark will proceed towards acceptance.

Yes, there is an opposition system for third parties wherein within three months after the publication of the mark in the Trade Marks Journal and from the date of publication (the same being extendable by another one month).

Soon after the receipt of Notice of Opposition, the Applicant for Registration must file Counter Statement against Opposition. There after, the Opponent will be allowed to file Evidence in Support of Opposition.

The Applicant would also be given an opportunity to rebut the Evidence filed by the Opponent. If the Applicant fails to lodge the Counter Statement against the Opposition, then the Application will be deemed to be abandoned.

It is imperative that the Applicant must respond to the requirements of the Examination Report within 30 days. If the Applicant either does not respond to the Examination Report or fail to comply with the requirements of the Report, the Application shall be deemed to be abandoned. In such a case, the Applicant does not have a right of Appeal any where. However, the Applicant can file a Writ Petition.

The Applicant can produce evidence to the Examiner that the mark had over a period of time acquired distinctiveness and the consumers associate the brand only with the Applicant and none else.

For this purpose, the Applicant can file an Affidavit along with evidence to show the amount of money spent on advertisements, produce publicity brochures and the other hand bills to popularize the brand.

There is no automatic right of hearing before rejection of a trade mark Application. If the Applicant is so particular, the Applicant has to request for hearing while responding to the first examination report.

Despite the hearing and the response given by the Applicant or in pursuant of a opposition logged by a third party, if the Trade Mark Registry rejects the Application the aggrieved Applicant can file an Appeal to the Intellectual Property Appellate Tribunal within 90 days of the receipt of the order.

Yes, renewal of a trade mark is allowed. Renewal must be applied for in Form 12 along with a prescribed fee of Rs. 7,000/-.
The trade mark right can be perpetual (provided it is renewed after every 10 years).
Yes, usually the examination includes whether the renewal application is in time, the same is filed along with the prescribed fees and the same is filed by the proprietor of the mark on record.
Yes, the trade mark holder is supposed to use his registered trade mark. But if the Law prohibits the employment of the mark in Indian market by the Registered Owner, in such a case, the non-use of the mark by the owner can be condoned.
Yes, there is a cancellation system on the ground of non-use of a registered mark or fraudulent obtaining of the trade mark by filing petition for rectification of the trade mark under Section 92 of the Trademarks Act.
5 years of non use causes cancellation.

A collective trade mark can be obtained by an organization which can permit the members to use the mark. The association has to prepare and file a regulation with the Trade Mark Registry setting out the rules specifying standards and criteria for membership.

Collective trade mark cannot be owned by individuals or a body corporate. It has to be a registered association or Trust having many members or beneficiaries.

Certification trade marks guarantee that the goods or services that use the mark have been certified by to have been made of a particular material, method of manufacture, quality, accuracy or origin.

This can be owned by individuals or a corporate body. Regulation governing the Certification would have to be logged with the Trade Mark Registry along with the application.

Registration of a trade mark is not compulsory. However, the Registration of the trade mark establishes that the registered owner is the proprietor of the mark covered by the registration. Obtaining registration is like having a reserved ticket for a journey even though Law doesn’t compel you to reserve a ticket for traveling.

In the case unregistered yet well known brands, the owner of the brand can initiate a passing off action. Differences between Passing Off action and trade mark infringement are given as under:

 

Trade Mark Infringement

Passing Off

1

Mere possibility of confusion is enough for getting interim and final relief.

Actual deception has to be proved for any relief.

2

Trade Mark infringement is actionable per se and the Registered Owner need not prove specific monetary damage because of the infringement.

In a Passing Off case, the owner of the unregistered brand has to prove actual damage because of the wrongful adoption.

3

Trade Mark registration is prima facie proof of ownership of the mark.

In a Passing off case, the Plaintiff has to lead evidence showing long uninterrupted use of the brand and the fact that the infringer adopted the mark knowing the goodwill of the Plaintiff’s mark

4

Registered owner can initiate proceedings within the Jurisdiction of a Court where the Owner / Plaintiff resides or carries on business.

Passing Off case can only be initiated in a place where the Defendant resides or carries on business or where any part of the cause of action arose.

Trade Marks can be either assigned in full of transmitted in part. All transmissions or assignments must be registered with the Registrar of Trade Marks on Form 23 or 24 of the Trade Marks. Under the Act there is a classification if the owners delay the registration of the transmission or assignment, the Applicants will have to increased registration fee.

The Trade Mark Rules make a classification between assignment of a trade mark with goodwill and assignment of a trade mark without goodwill. In case of Assignment without goodwill the Registry would insist on Advertisement in Newspapers and permit assignment only after ensuring that interest ;of the third party would not be affected.

Indian Law has been harmonized and the same have now become TRIPS compliant. Further, the Indian Law now protects a well-known and famous mark irrespective of the facts as to whether the same is used and/or registered in India.

Moreover, it also provides for claiming priority based upon an earlier application made in a convention country.