PROCESS FOR TRADEMARK REGISTRATION

INTRODUCTION

Trademarks are used to identify and protect words and design elements that identify the source, owner, or developer of a product or service. Trademarks are generally considered a form of intellectual property and may or may not be registered. To qualify as a trademark it should be a mark that can be represented graphically. The mark used should also be distinctive, i.e. it should enable consumers to differentiate the goods of the trader from that of his competitors in the marketplace. It includes: “a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.”

TRADEMARK

The Trade Marks Act of 1999 defines a trademark as: “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include the shape of goods, their packaging, and combination of colours”.[1] Trademark is a sign that makes a difference in recognizing the items of a specific maker or undertaking from those of its competitors. By giving a particular sign to merchandise or administrations delivered by an enterprise, trademarks make an enduring picture within the customer’s minds. Trademarks may be a word or a combination of words, letters, and numerals. They may too comprise of drawings, images, 3D signs such as the shape and bundling of merchandise, or colours utilized as recognition.

A trademark is registered under Section 23[2]. When an application for registration of a trademark has been accepted and either – (I) the application has not been opposed and the time for notice of opposition has expired; or (ii) the application has been opposed and the opposition has been decided in favour of the applicant, the Registrar shall register the said mark within eighteen months of the filing of the application unless the Central Government directs otherwise. A trademark shall be registered as of the date of the making of the said application. The date of application is to be deemed to be the date of registration.

A trademark is a distinctive sign that identifies certain goods or services produced or provided by a specific person or enterprise. Its origin dates back to ancient times when craftsmen reproduced their signatures or “marks” on their artistic or utilitarian products. Over the years these marks evolved into today’s system of trademark registration and protection. The system helps consumers identify and purchase a product or service because its nature and quality, indicated by its unique trademark, meet their needs. A trademark protects the owner of the mark by ensuring the exclusive right to use it to identify goods or services.

National Bell Co. & Anr v. Metal Goods MFG.CO. (P) LTD & Anr[3] In this case the question that came up for consideration is whether a Trademark that is being used in India by foreign companies can be adopted by Indian Companies can adopt identical trademarks after the government of India imposed prohibition on import for similar goods.

The process to get a trademark registered involves the filing of the trademark registration application, examination of the trademark, publication or advertisement of the trademark, opposition (objections) if raised/ found, registration of the trademark, and renewal of the trademark after every 10 years.

WHO MAY APPLY FOR A TRADEMARK?

Any person “claiming to be the proprietor” of the trademark ‘used’ or ‘proposed to be used by him may make an application in the prescribed manner for registration of his trademark.[4]

In Ramdev Food Products (P) Ltd. v. Arvind Bhai Rambai Patel[5], the Apex Court held that the registration of trademarks is envisaged to remove any confusion in the minds of the consumers. If goods are sold which are produced from two sources, the same may lead to confusion in the mind of the consumers. In a given situation, it may also amount to fraud on the public. In the event of such use by any person other than the person in whose name the trademark is registered, he will have a statutory remedy in terms of Section 21 of the Trade & Merchandise Marks Act, 1958. Ordinarily, therefore, two people are not entitled to the same trademark, unless there exists an express license on that behalf.

A trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. Priority in adoption and use of a trademark is superior to priority in registration.[6]

The Supreme Court in Commissioner of Income-tax v. Finlay Mills Ltd,[7], has held that the expenditure incurred on registration of a trademark is capital expenditure thus allowable deduction under the Income-tax Act.

PROCEDURE FOR REGISTRATION OF TRADEMARKS

A single application may be submitted for registration of a trademark for multiple classes of goods and services, with a fee required for each class of goods and services. When a single application is made from a convention nation for one or more classes of goods or services, the applicant must provide sufficient ground to the satisfaction of the Registrar for the date of filing in each of those classes.

The Registration can be done through the official website of Intellectual property India. (https://ipindiaonline.gov.in/trademarkefiling/user/frmNewRegistration.aspx).

A class III or II digital signature from any of the Indian Certifying Authorities is required while e-filing trademark registration. Post-registration, the Applicant can log in using the User ID or the digital signature.

STEPS FOR REGISTRATION

Following are the steps for the registration of a trademark in India:

i) SEARCH: Conduct a trademark availability search. A good trademark search helps you to know if there are similar trademarks present. It gives you an accurate view of where your trademark stands, as well as a heads-up on the risk of trademark litigation. Why squander money later on in time-consuming trademark litigation when you can avoid it in the first place?

ii) FILING: Trademark application to be filed with the Trademark office. Chennai, Delhi, Mumbai, and Kolkata are the Indian trademark offices. Nowadays, most filing is done online. Following the submission of the application, an official receipt is provided for future reference. You can also check the status of your trademark application online right now.

iii) EXAMINATION: Trademark Office examines the registration of the application. The examiner examines a trademark application after it is filed for any irregularities. It’s possible that the evaluation will take 1-2 months. The trademark may be accepted unconditionally, conditionally, or object. The trademark is published in the Trademark Journal whenever such a response is accepted. If the response is not acceptable, a hearing might be requested. If the examiner believes the trademark should be allowed to register after the hearing, it will be published in the Trademark Journal.

iv) PUBLICATION: Acceptance of application by the Registrar is published in Trademark Journal. The stage of publishing is included in the trademark registration procedure so that anyone who objects to the trademark being registered can raise an objection. If no opposition is filed within four months of publication, the trademark can be registered. If there is opposition, the Registrar holds a fair hearing and makes a decision.

v) OPPOSITION: After publishing applications in the Trademark Journal, third parties can oppose the registration within 4 months in a prescribed format. The applicant has the option to provide justification to the Trademark Office for such opposition.

vi) NO OPPOSITION: When there is opposition to the Trademark, it is entitled to registration.[8]

The application for registration of a trademark is to be filed in the office of the Trademarks Registry within whose territorial limits the principal place of business in India of the applicant or, in the case of joint applicants; the principal place of business of the first applicant is situated. However, where the applicant or any of the joint applicants does not carry on business in India, the application is to be filed in the office of the Trademarks Registry within whose territorial limits the place mentioned in the address for service in India as disclosed in the application is situated. A trademark is initially registered for a period of 10 years, calculated from the date of filing of the application. It can be renewed every 10 years by paying the requisite fees.

When selecting a trademark, the applicant must exercise caution. Because there are so many different types of trademarks accessible, it is critical to conduct a public search on the Trade Marks Registry’s trademarks database to ensure that the trademark is unique and that no other trademarks are similar or identical.

The granting of a trademark certificate takes about eight to nine months from the date of publication in the trademark journal. The requisite trademark would be legally valid for ten years and may be renewed after that.

OPPOSITION TO REGISTRATION

Section 21 enables a person to give notice of opposition to registration in writing to the Registrar within four months from the date of advertisement or re-advertisement of an application for registration. A copy of such notice of opposition is to be served upon the applicant.

Under Section 21, a notice of opposition may be given to the Registrar by any person opposing registration and the applicant may, in reply thereto, file a counter-statement. After giving an opportunity of hearing to the applicant and his opponent, to decide whether registration is to be permitted absolutely or subject to such conditions or limitations as he may deem fit to specify.

RENEWAL OF REGISTRATION

The 10 year period of registration is reckoned from the date of making of the application which is deemed to be the date of registration. Registrations can be renewed by payment of prescribed renewal fees in all cases (trademark /collective marks/certification marks) on form TM-12. The application is filed by the proprietor of the registered trademark or his agent. If there is any change in the proprietorship of the mark, and it has not been brought on record, proof of title should be filed in the first instance.

ADVANTAGES OF TRADEMARK REGISTRATION

1. It secures your hard-won goodwill.

2. Protects your name from being exploited by others and leaves a positive impression on your customers.

3. Supports in obtaining redress in the event of an infringement.

4. Allows you to license or assign trademarks.

CONCLUSION

Many trademark (TM) owners find themselves in protracted litigation because they did not register their brand name as a trademark when the time came. The process of registering a trademark does not take long. It’s a basic procedure, but it’s crucial for brand name registration. Registration of trademark protects it from being misusing their work by others. Section 29 dealing with infringement of trademarks explicitly enumerates the grounds which constitute an infringement of a registered trademark. Trademark identifies the goods/services and their origin, advertises the goods/services, and creates an image for the goods/services.


[1] The Trademarks Act, 1999, Acts 32 of 1999,Acts of Parliament, 1999.

[2] Id. 

[3] National Bell Co. & Anr v. Metal Goods MFG.CO. (P) LTD & Anr , A.I.R 1971.898.

[4]Supra note 1

[5]Ramdev Food Products (P) Ltd. v. Arvind Bhai Rambai Patel,(2006 )8 S.C.C 726.

[6] Foods Corporation v. Brandon & Co. Pvt. Ltd, A.I.R. 1965 Bom.35.

[7] Commissioner of Income-tax v. Finlay Mills Ltd A.I.R. 1951 S.C. 464.

[8] Ministry of Electronics & Information Technology,  National Informatics Centre  , 10-03-2017 04:14:15https://www.meity.gov.in/content/trademark


Authored By: Manjima Madhu, 4th year, SDM Law College, Mangalore

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