Conditions for Registration of a Trademark in India

Conditions for Registration of a Trademark in India

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Additional keyword- Conditions for registration of trademark in India, Section 3, Registrar.

Intellectual Property Law has become one of the most developing sectors of law in the present day and age.  Intellectual Property includes, copyright law, Patents law, Design, Geographical Indication, Plant Varieties, Trade Secrets and trademark law.  Trademarks are such that it has become a part of our daily lives, from the television to every other part of the business world.

What is a Trademark ?

A trademark is a distinctive sign that identifies certain goods and services produced or provided by a company or an individual  It is  used to distinguish the goods or services of one enterprise from another.1 These trademarks are protected under the intellectual property rights.2

Coca-cola and Pepsi are two examples of trademarks from the same industry, i.e beverages, but are distinct.

Brief History of Trademarks.

The concept of trade marks has existed since time immemorial though probably not always recognized in its very way. The origin of trademarks can be traced back to 3000, years ago when Indian craftsmen and artisans used to engrave their signature or specific mark on their products to distinguish them from the others.These goods were sent to Iran for sale. The Chinese also sent their products over to the Mediterranean with their marks.3 With the development of trade and commerce in the Middle Ages, the use of signs to distinguish the products expanded and took the form of what is known today as a trademark.

In present times, the trademark law is governed by the Trade Marks Act of 1999. Section 2(zb) of the Trademarks Act defines what is a trademark. In 2017, a new set of rules came into being known as the Trade Mark Rules 2017.4

Treaties of Trademark

WIPO along with other national and regional laws has administered numerous treaties which make the base for trademark law in the international scenario. They are as follows :

  • Paris Convention
  • Vienna Agreement
  • Madrid Agreement (Marks )
  • Madrid Protocol
  • Singapore Treaty.5

Trademark Registration

Every business enterprise which has the job of providing particular goods or services has its distinct identity. To protect the same distinctiveness, the intellectual property law as a field has developed. In that, trademark is of the utmost importance. To ensure that the particular symbol or logo or colour or shape is not similar to an already existing enterprise, it is the duty of the person to whom it belongs to register it with the Trade Marks Registry in the Trade Marks Register. A trademark has certain important functions. 

  • Firstly, it identifies the specific product or service and its source.
  • Secondly, it guarantees that the goods and services will meet the standards of quality.
  • Thirdly, it will help in distinguishing one product from another which in turn will help in the promotion and popularity of the product.

Who Can Apply For A Trademark ?

Before delving into the details of the registration of the trademark, it is essential to know who can file for a trademark.

Section 18(1) of the Trade Marks Act of 1999, lays down the rules as to who can file an application for a trademark. 

Firstly, any person who claims to be the proprietor of the trade mark in relation to goods or services may apply for the registration of a Trade Mark. The person who claims to be a proprietor must be clearly identified as one. When we speak about a ‘person’, it includes the following ,

  • A Natural Person, 
  • A Body Incorporate, 
  • A Partnership Firm,
  •  HUF,
  •  Association of Persons (in case of collective Trademarks), 
  • Joint Proprietor 
  • A Trust, 
  • A Society.
  •  A Government Authority/Undertaking

A trademark which has been applied for registration may either be already in use or it has been proposed to be used or it is intended to be used. Lastly, the trademark is intended to be assigned to a company that is about to be formed and registered under the Companies Act 1956 with a view to using thereof in relation to those goods and services by the company.6 In case of an individual, start-up or a small enterprise the government fees would be ₹ 4500 and in all other cases it would be ₹9000 and the fees of the trademark attorney professional fees is ₹3500. In case the applicant is a start-up having a DIPP certificate, professional charges will not be applicable but the official fees will be ₹ 5000.

 Section 24  deals with the concept of Jointly Owned Trademark. In this two or more persons who use a trademark independently or propose so to use it, as joint proprietors, may apply for registration of a trade mark as joint proprietors. An application for trademark can be filed with the symbol , “ TM “ . It takes the Trademark Registry eighteen to twenty-four months to complete all the required formalities. This certification of trademark can be used once it has been registered and the registration certificate has been issued.7

General Rules Of Registration

 The Registration of Trademark is one of the most crucial steps that have to be taken by a business enterprise to avail protection in India. Registration under the trademarks gives one the right to use the unique symbol which helps in distinguishing the products or services from one’s competitor. Apart from the specific rules of the registration of trademarks, there exists certain basic and cardinal steps of registration which must essentially be followed. They are as follows :

  1. Firstly, an application for the registration of trademark has to be filled with the appropriate national authority, national and regional.
  2. The application has to contain a clear reproduction of the sign filed for the registration, which may include, colour , design or any other three-dimensional features.
  3. The list of goods or services to which this sign will apply also has to be included in this application.
  4. The sign should fulfill the conditions in order to be protected under trademark law. It should be distinctive from any other signs so that, the consumers can identify the products.
  5. It is to be ensured that the signs must not be misleading or in any way deceive the customers.
  6. Lastly, the rights applied for cannot be similar to that granted to another trademark owner. This has to be ensured by the national officials.8

Trademark Registration in India 

Chapter II of the Trade Marks Act 1999, lays down the details with regard to the conditions of registration and the appointment of Registrars. In India, trademarks are registered online by the Controller General of Patents, Designs and Trademarks. The validity of the trademarks is for ten years, but it may be further renewed from time to time in accordance to the provisions of this section. This has been laid down under Section 25(1) of the Act of 1999.

Section 3(1) of the Act, appoints a person who is known as the Controller-General of Patents, Designs, and TradeMarks,  and who shall be the Registrar of TradeMarks.9 Section 4 of the Act determines the powers of the Registrar.

According to Section 6 of the Act, there exists a Register of TradeMarks at the Trade Marks Registry, wherein all the trademarks with names, address and other descriptions and other matters of registration will be noted.

For any registration of trademark to take place, the Registrar, shall classify the goods and services in accordance with the  International classification of goods and services for the purposes of registration of trademarks.10

Basic Rules Of Registration

  1. Firstly, the name, nationality, and address of the applicant has to be submitted.
  2. Secondly, the details of the goods or services to be registered has to be submitted.
  3. Thirdly, a soft-copy of the registered trademark has to be submitted.
  4.  Lastly, the translation of all non-English words is required.

There are some very simple steps which have to be followed for the registering of a trademark in India.

  • Firstly, a trademark attorney or agent has to be selected to represent oneself.
  • Secondly, a trademark search has to be conducted to ensure that the trademark has not been used by someone else.
  • Thirdly, on the basis of the search, the trademark application has to be made and has to be subsequently filed at the Trademark Office.

Purposes Of  Trademark Registration

 Having a specific trademark for one’s business enterprise is very important. Not only does it make different from other products but it also makes a product or service unique. The others have been listed below.

  • Firstly, trademark turns out to be a great asset to one’s business as it generates an amount of goodwill along with it and also stimulates further purchase.
  • Secondly, with a registered trademark you can stop others from using your trademarked business name or logo with regards to goods or services it is registered.
  • Thirdly, trademark like any other asset can be sold licensed or assigned.
  • Fourthly, it guarantees the identity of the goods or services.
  • Fifthly, it serves as an identity and affiliation.11

Benefits of Trademark Registration

After discussing the details and the importance of the application and the registration of trademark it is essential to know as to why it is so important, rather what benefits or advantages does one gets with the registering of the trademark. These benefits have been discussed below.

  • Firstly, it grants exclusive rights. The owner of a trademark has exclusive right over it. The owner of the particular trademark can use the same for all the products falling under the class applied. Further, the owner can enjoy the sole ownership of the Trademark. The registering of the trademark ensures that if a person uses this trademark in an unauthorized way he will be held liable for infringement.
  • Secondly, it builds and creates goodwill. The establishment of the product along with its quality is known by all through the trademark. It helps in the creation of a loyal customer base.
  • Thirdly, it distinguishes the product from another. It creates a separate identity for the product. The logo associated with the brand often signifies the thought process and the aim behind the product and company.
  • Fourthly, the product quality is recognized. The quality of the product is recognized and the customers associate it with the brand.
  • Fifthly, it protects against infringement. If any unauthorized person attempts to use the trademark for their benefit, they will be held liable for the same as the trademark has already been registered previously.
  • Sixthly, trademark creates an intangible asset i.e. Intellectual Property for an organisation.
  • Seventhly, the trademark is registered for a minimal cost for a period of ten years. It is cost-effective and helps in creating a unique image of the company.
  • Lastly, it attracts people for job purposes and that happens when the registered brand instills a positive image in the minds of the people.

Conclusion

Trademark law from its inception until now has evolved at a steady pace. With each new case, a newer and a different interpretation has been seen. Its use and benefits in the present day are immense and of vital importance. Trademark as a branch of Intellectual Property Rights is growing by leaps and bounds with new additions and modifications to it every day.

Endnotes

1.  https://www.wipo.int/edocs/pubdocs/en/intproperty/450/wipo_pub_450.pdf

2.  World Intellectual Property Organization;https://www.wipo.int/trademarks/en/

3.  Introduction to Trademark Law & Practice;https://www.wipo.int/edocs/pubdocs/en/wipo_pub_653.pdf

4.  Trade Marks Rules 2017; Ministry of Commerce and Industry.

5.  World Intellectual Property Organization ; https://www.wipo.int/trademarks/en/

6.  Manual of Trademarks; http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf

7.  Trademark  Registration India ; https://patentinindia.com/trademark-registration-india/

8.  What is Intellectual Property ?;https://www.wipo.int/edocs/pubdocs/en/intproperty/450/wipo_pub_450.pdf

9.  Trade Marks Act 1999.

10.  Section 7 of the Trade Marks Act 1999.

11.  Trademark  Registration India ; https://patentinindia.com/trademark-registration-india/


Nayantara Bhattacharya

Nayantara Bhattacharya

Author

Nayantara has incredible writing skills and you will never miss a flow in her writings. Her favourite leisure activity is reading. She is also a very humble person. In other words, she is as bright as a new penny. For any clarifications, feedback, and advice, you can reach us at editor@lawcirca.com

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