Trademark in India
The Government of India has notified the Trade Marks Act 1999 on 15 September 2003, thereby repealing the old Trade and Merchandise Marks Act 1958. The new Act brought into force statutory framework with respect to trademarks in India in line with emerging worldwide trends as well as with India’s obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).
What is Trademark
A TRADEMARK is a word, phrase, symbol or design, or combination of words, phrases, symbols or designs is 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. Normally, a mark for goods appears on the product or on its packaging, while a service mark appears in advertising for the services. A trademark is different from a “Copyright” or a “Patent” or “Geographical Indication”.
Almost all jurisdictions including India employ a classification system in which goods and services have been grouped into classes for registration. Most countries follow the same classification system, namely the International Classification of Goods and Services, which consists of 34 classes of goods and 8 classes of services.
The registration of a trademark in India 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. While registration of a trademark is not compulsory it offers better legal protection for action for infringement.
Who can apply?
Any person can apply for registration of a trademark to the Indian 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 favor.
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.
An application for trademark may be made on Form TM-1 with prescribed fee of Rs. 2500/- at one of the five office of the Trade Marks Registry located at Mumbai, Delhi, Kolkata, Chennai and Ahmedabad depending on the place where the applicant resides or has his principle place of business.
The application is examined to ascertain whether it is distinctive and does not conflict with existing registered or pending trademarks and examination report issued Once the applicant has overcome all objections raised by the registrar, the application proceeds to publication in the Indian Trade Marks Journal, with an endorsement stating either that it has been accepted or that it is being published before acceptance.
After publication in the Trade Marks Journal, anyone has three months (which may be extended by up to a further month at the registrar’s discretion) to file a notice of opposition to registration.
The question of acceptance or refusal of the trademark application will be considered only once the opposition proceedings have been completed. The onus is on the applicant to establish that it is entitled to registration of the trademark as applied for.
If an application has been published as accepted and is not opposed, or if any oppositions are decided in favour of the applicant, the mark will proceed to registration. If the application has been published before acceptance and is not opposed during the opposition period, the registrar will then consider afresh whether to accept the application; if he decides in the affirmative, the mark will be registered.
The fact of registration must be published in the Trade Marks Journal. Once an application has been accepted for registration and any opposition have been decided in favour of the applicant, 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.
Opposition or Refusal or Cancellation of Trademark
A common ground for refusal is likelihood of confusion between the applicant's mark with registered mark or pending prior mark. Marks, which are merely descriptive in relation to the applicant's goods or services, or a feature of the goods or services, may also be refused registration.
Marks consisting of geographic terms or surnames may also be refused. Marks may be refused for other reasons as well.
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. However, if a registered trademark is not renewed, it is liable to be removed from the register.
Anyone who claims rights in a mark can use the TM (trademark) or SM (service mark) designation with the mark to alert the public of the claim. It is not necessary to have a registration, or even a pending application, to use these designations. The claim may or may not be valid. The registration symbol, (R), may only be used when the mark is registered.
Two types of remedies are available in India to the owner of a trademark for unauthorized use of his or 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.
However, the registration cannot upstage a prior consistent user of trademark in India, for the rule followed is ‘priority in adoption prevails over priority in registration`.
Rules for Trademark Holder
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 Trademarks 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.
Trademark rights are granted on a country-by-country basis. An Indian registration provides protection only in India and its territories. 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.
There is no system as yet wherein a single trademark application is sufficient to protect the trademark right internationally. However, Paris convention provides certain privileges to member countries in trademark registration. A party that files their first trademark application in a member state of the Convention, such as India, can within six months of that filing date file applications in other member countries claiming the priority of the first application. If such a trademark is accepted for registration it will be deemed to have registered from the same date on which the application is made in the home country.
Almost all countries have trademark offices in which applications may be filed. Therefore, when contemplating trademark protection in various countries, it is most helpful to start with a list of countries where registered trademark protection is available. Deciding where to register a trademark involves various considerations. Countries where a trademark is currently in use, but prior use of trademark is not recognized, should be the first to be considered for seeking registered protection. If commencing use shortly or expanding use to other countries within a few years, then such countries should also be included. The last group of countries should be those have a history of unauthorized registration of other's trademarks.