HOW CAN ONE REGISTER A TRADEMARK IN INDIA?

Author: Kashish Khurana, 2nd year, B.A.LL.B (Hons.), School of Law, Jagran Lakecity University, Bhopal.

INTRODUCTION

According to the Collins dictionary, “A trademark is a name or symbol that a company uses on its products and that cannot legally be used by another company.” These marks or symbols are used by the companies to have their products and themselves recognized in the market. The main reason for undergoing this process is the protection of one’s business from illegal replication of their products.

Trademarks are protected from infringement as they are classified as one of the intellectual properties. They give the owner exclusive rights to use a certain image or phrase and prevents confusion amongst the consumers. These exclusive rights are however subject to certain conditions which may differ. If there are two registered trademarks which are nearly identical due to special circumstances, then such exclusive rights shall not vest in either of them[1]. The rights of a trademark are protected under the Trade Marks Act, 1999. The trademark should be registered to avoid any misuse or replication of products of the company. However, the registration for a trademark is not a mandate. A trademark is only valid up to 10 years of registration, but it can be renewed again for the next 10 years[2]. The process of renewal does not have a limit, it can be done for an indefinite period of time.

WHAT CAN BE TRADEMARKED IN INDIA?

Those features which indicate trade can be registered as a trademark. There are three legal requirements to register a trademark under the Trade Marks Act, 1999[3]:

  • The selected mark should be capable of being represented graphically.
  • It should be capable of distinguishing the goods or services of one undertaking from those of others.
  • It should be used or proposed to be used as a mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services.

There are different types of trademarks which can be registered in India. Some of them are:

  • Any Letter, word or name which is not usually used by others.
  • An invented word.
  • Combination of colours or a combination of colour and symbol/word.
  • Monograms.
  • Devices /Device Marks.
  • The shape of goods or their packaging.
  • Three-dimensional signs.
  • Sound Marks.
  • Slogans.
  • Signatures.
  • Domain names.

PROCESS OF REGISTRATION OF TRADEMARK IN INDIA

There are some steps that need to be followed for the process of registration of trademark. They are as follow:

Trademark Search: The initial step for the registration of a trademark in India in the search of a trademark. This is the most important aspect of the registration of a trademark as the individual or the company should make sure that the trademark is unique before filing an application for the registration. Therefore, the individual should check the trademark which is approved or are waiting for the approval. The entire list of the registered trademark is available on “Indian Controller General of Patents, Designs & Trade Marks – Office of the Registrar of Trade Marks[4]”. If the trademark is found to be occupied already, then the application of the registration of trademark would be rejected.

Filing Application: The application for the registration of the trademark can be either online or through a trademark agent/ lawyer[5]. The first step in filing the application is getting TM-1 form. This form is available online on the website of the Controller General of Trade Marks. After filling the application form, the person applying for the registration must compile all the documents as per the directions given in the form. In case of non-compliance of the conditions of the form, the application would be subject to rejection. The application is to be submitted along with the fees either online with the Ministry of Commerce and Industry or at the trademark registry office. In India, there are only five Trademark registry offices. They are at Chennai, Kolkata, Delhi, Mumbai and Ahmedabad. Manual filing can take 15-20 days for acceptance. However, if the Registrar feels that the application for the registration has been accepted due to an error, he can withdraw such application any time after the acceptance of the application but before the registration of the trademark[6].

Advertisement: After the acceptance of the application, the Registrar may cause the application to be advertised in the weekly Trademark Journal[7]. This Journal publishes all the trademarks accepted by the Trademark Registry of India[8].

Opposition to registration: After the publication of such registration, any third party has the right to file for an objection within three months of publication of such advertisement or re-advertisement if it infringes his/her rights[9]. The Registrar on receiving of such objection shall serve a notice to the applicant within two months of receiving such objection. On receiving such notice of objection, the applicant is obliged to reply to the Registrar with the counter-statement to the objection. On failure of serving such counter-statement, his application would be rejected. After receiving the copy of the applicant’s statement, the Registrar would serve the notice to the party which raised the objection. The Registrar, within prescribed limits, if deemed fit may hear both the parties.

Amendment or Correction in the application: The Registrar while examining the application of the registration for a trademark, anytime after accepting the application and before registration may permit the correction or amendment of the application for the registration[10].

Registration & Certificate: When the Registrar accepts the application for the registration or the time for opposing the application has been expired or the application has been opposed but decided in the favor of the applicant, then the Registrar shall register the said trademark. The trademark will be registered from the date of the application for the registration. After the successful registration of the trademark, a certificate is issued by the Registrar sealed with the seal of Trade Marks Registry[11].

CONCLUSION

A trademark is a unique identification for the goods or services of an individual or company which is required to safeguard the business from illegal marketing of the products by other competitors in the market. There are different categories in India under which a trademark is registered. The process for the registration of a trademark can be completed online as well as offline. As already discussed above, the registration process is not much complicated and can be completed without much effort. Though the registration of a trademark is not a mandate but it adds authenticity to one’s product or service.


REFERENCES: [1] Section 28, The Trade Marks Act, 1999, Act No. 47 of 1999.

[2] Section 25 (1), The Trade Marks Act, 1999, Act No. 47 of 1999.

[3] “Indian Controller General of Patents, Designs & Trade Marks – Office of the Registrar of Trade Marks”.

[4] Ibid.

[5] Sec 18, The Trade Marks Act, 1999, Act No. 47 of 1999.

[6] Sec 19, The Trade Marks Act, 1999, Act No. 47 of 1999.

[7] Sec 20, The Trade Marks Act, 1999, Act No. 47 of 1999.

[8] “How to Register a trademark in India” published on 13th October 2019 < https://www.wikihow.com/Register-a-Trademark-in-India>.

[9] Sec 21, the Trade Marks Act, 1999, Act No. 47 of 1999.

[10] Sec 22, The Trade Marks Act, 1999, Act No. 47 of 1999.

[11] Sec 23, The Trade Marks Act, 1999, Act No.47 of 1999.


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