Focus keyword- Trademark Registration
Additional Keyword- Section 18, duration of registration, opposition to registration
The Trade Marks Act, 1999 and the Trade Marks Rule, 2015 lays down the procedure and duration of registration of a Trademark. In order to register a Trademark, the following process must be followed[i] –
Filing of Application[ii]
As per the Rules and Act given under the Trade Marks Registry, an application for a Trademark registration may be filed. The application must be prepared as per Section 18 of the Trade Marks Act, 1999[iii].
Section 18(1) – An application may be made by any person claiming the Trademark in writing to the Registrar in the prescribed manner.
Section 18(2) – A single application can be made for registration under different classes of goods or services. However, different fees shall be applicable to each class of the goods or services.
Section 18(3) – Where the applicant or joint applicants wish to file an application, it must be done so within the territorial limits of the principal place of business. In cases where they do not carry on any business, the application must be filed within the territorial limits of the place for services.
Section 18(4) – The Registrar may accept or reject or make certain amendments, modifications with some conditions or limitations.
Section 18(5) – In case the Registrar rejects or lays conditions, he must specify the reasons and materials used for the same.
According to Rule 23, to apply for registration of a trademark, the applicant or an authorised agent shall file an application through Form TM-A. The application for goods or services shall:
1. Contain a precise description of the Trademark.
2. Contain a graphical representation of the Trademark.
3. Qualify as a 3-dimensional mark, in case the application specifies it to be.
Rule 26 states the procedure for the representation of different types of Trademarks.
In case the Trademark is a combination of colours, the application must include a reproduction of the mark with that combination.
- In case the Trademark is a 3-D mark, the application must include:
- A reproduction of the mark in 3 different views.
- Reproduction in 5 different other views, in case the Registrar is not satisfied with the previously furnished ones.
- A specimen of the mark, in case the Registrar is not satisfied with any of the views.
- In case the Trademark is for the shape and packaging of goods, the applicant must reproduce 5 different views as well as a written description of the mark. In case the Registrar is not satisfied with the same, the applicant shall submit a specimen of the mark.
- In case the Trademark contains a sound mark, the application shall include a reproduction in MP3 format, not exceeding 30 days, along with a graphical representation of notations.
- The application should also include the period since which the Trademark had been in use and by whom it was used. The same should be supported by an affidavit and other related documents (User Affidavit). However, the affidavit and documents are not required where an application is filed for a Trademark proposed to be used in the future.
If the applicant desires to file an application for a series as per Section 15(3) of the Trade Marks Act, 1999[iv], he is required to submit copies of the representation of each Trademark of the series as per the provisions of Rule 26. If the Registrar is satisfied, further proceedings will take place.
According to Rule 30, the Registrar shall reject applications for the Trademarks carrying the name or description of the goods or services. However, if the name or description is said to vary when the Trademark is used, the applicant may sign an undertaking to that effect.
When the Registrar finds that the application does not entirely conform with the provisions of the Trade Marks Act, 1999 and Trade Marks Rules, 2015, the applicant shall be obliged to rectify the same within 1 month from such findings. If the applicant fails to do so, the application will be deemed to be abandoned, according to Rule 31.
Rule 32 states that if the Registrar is satisfied with the application, the same will be acknowledged and the applicant will be given a system-generated electronic receipt.
Application Number Allotment
Once the application is done, the Registry shall allot a unique number for that application. This number shall act as proof of application.
Once the Registry receives the application, all relevant data given by the applicant shall be entered into the system. This information will be used for further scanning and examination. With this information, the Registrar shall decide whether to accept or reject the application for registration.
Scanning (Vienna Codification)
After the data has been entered, it shall be scanned by the system. The scanning is needed to be done to check for already existing Trademarks of the same or similar nature, vulgar or obscene marks or any other marks that cannot qualify for registration. This process was codified at the Vienna Agreement, 1973 and is required to be followed by all the signatory countries. India is also a signatory of this Agreement and this Vienna codification shall be followed by India.
The Registry shall despatch the examination report following the scanning of the mark. The Examination Officer is given the responsibility of scanning and submitting the Examination Report to the Registrar. The Report should contain the observations made through the scanning process.
A search will be conducted with other Trademarks to check whether a same or similar or deceptively similar Trademarks already exist. Re-examination may also be ordered by the Registrar, but he is not bound to do so.
The Registrar shall accept the application for registration after considering the Examination Report. Such acceptance shall be communicated to the applicant and advertised as per Section 20(1) of the Trade Marks Act, 1999[vi].
The Registrar shall reject the application for registration or accept it subject to conditions after considering the Examination Report. Such rejection or conditional acceptance shall be communicated to the applicant in writing as per Section 18(4) of the Trade Marks Act, 1999[vii].
The applicant may withdraw his application within 1 month after receiving the communication to this effect.
After the Examination Report has been submitted to the applicant, the applicant must communicate his response within 1 month. The application will be abandoned if he fails to do so.
If the applicant replies to the Examination Report within that period, the Registrar can accept the application and communicate the same to the applicant and also advertise it or reject the application.
The applicant may request a hearing in case he is not satisfied with the Examination Report and the Registrar shall subsequently adjourn a hearing. However, if the applicant fails to appear for the hearing, the Registrar may abandon the application.
Advertised before acceptance[viii]
If the Examination Report has accepted the Trademark, the mark shall be published in the Trademark Journal to inform the public of registration of such mark.
Once the Trademark has been published in the Journal, the public is given an opportunity to oppose such a mark, in case of any violation. If there is no opposition within 90 days from the publication of the Journal, the Trademark shall qualify for Registration. Subsequently, the Trademark Manuscript and the Trademark Registration Certificate shall be prepared. After issuing the Certificate, the applicant becomes the rightful owner of that Trademark and is granted exclusive use of that mark.
If the public opposes such a mark, the Trademark Hearing Officer shall adjourn a hearing. The applicant and the opposing party shall have the opportunity to appear for such hearing to justify the registration or rejection of the mark with sufficient evidence. Following this, the Hearing Officer shall deliver the judgement on merit.
If the opposition is rejected, the application shall proceed for registration. If the opposition is accepted and the application is rejected, the mark may either go for a review or the aggrieved party may approach the Intellectual Property Appellate Board.
If the application is Objected
If the Examination Report has objected to the registration of the intended mark, the Trademark Hearing Officer shall adjourn a hearing, giving an opportunity to the applicant to address the objection. If the Officer is satisfied with the justification, the mark may be accepted for registration. If the Officer rejects such justification, the aggrieved party may approach the Intellectual Property Appellate Board.
Within 4 months after publication in the Journal, the Trademark will be open to the public for any opposition against the same. On receiving an opposition, the Registrar must send a copy to the applicant within 3 months.
Rule 43 lays down certain requirements for filing an opposition:
i) An application against which opposition is entered must contain:
- Application number.
- Indication of the goods or services in the application.
- Name of applicant.
ii) An application against an earlier Trademark:
- Indication of the status.
- Application number or registration number and filing date.
iii) An application against an earlier well-known Trademark:
- Indication of the well-known mark.
- Indication of the countries in which they are recognised as well-known.
iv) An application by the opposing party:
- Name and address of the party.
- The indication that the party is the proprietor.
The above requirements should be required by the grounds on which the opposition is based. Rule 44 states that the applicant may file a counterstatement for the opposition. The applicant must respond to the opposition to the Registrar within 2 months, which shall be communicated by the Registrar to the opposing party within 2 months. Both the parties may submit evidence in support of their claims in the opposition or counterstatement.
The Registrar shall call for the first hearing by giving notice to the applicant and the opposing party. The notice should be given 1 month before the first hearing. Either party may request for adjournment on reasonable grounds through Form TM-M. The request should be given 3 days before the hearing. However, the Registrar is not obliged to accept such a request and he may reject the same. If the applicant does not appear for the hearing, the Registrar shall abandon the application. If the opposing party does not appear for the hearing, the Registrar shall dismiss the opposition. After the hearing, the Registrar shall pass an appropriate order after considering the opposition of the opposing party as well as the counterstatement of the applicant, along with supporting evidence. The decision shall be communicated to both parties in writing.
Registration of the Trademark[ix]
When no opposition was filed against an application or when the opposition was filed and was dismissed, the Registrar shall enter the Trademark in the Register. The registration in Register must include the following:
- Date of filing of the application.
- Date of registration.
- Goods or services along with class or classes.
- Address of the principal place of business, if any. In case when there is no business, the address of the proprietor or joint proprietors.
- Particulars of the Trademark, business, profession or occupation of the proprietor or joint proprietors.
- Convention application date, if any.
- Particulars of the Trademark, if it is a collective or certification Trademark.
- Appropriate office of the Trademark Registry.
Issuance of Registration Certificate[xi]
The Registrar shall issue a Certificate of Registration on Form RG-2. The certificate shall include the Trademark and the seal of the Registry. It is to be noted that this certificate cannot be used in legal proceedings. Only certificates issued under Section 137 of the Trade Marks Act, 1999[xi] can be used in legal proceedings.
According to Section 25(1) of the Trade Marks Act, 1999[xii], the registration of a Trademark shall expire within a period of 10 years from the date of registration. However, the Trademark may be renewed whenever needed.
Landmark Judgements on the process of registration
DM Entertainment v. Baby Gift House and Ors.[xiii]
The appellant company was incorporated in 1996 to manage and improve the career of the famous Punjabi singer, Daler Mehndi to reach a wider audience. The defendants began to sell toys of Daler Mehndi but the company sued them for wrongfully endorsing the singer and infringing his right of publicity. The appellant company had full rights, titles and interests to endorse the singer under the Trademark, Daler Mehndi.
Section 29 of the Trade Marks Act, 1999 states the aspects of infringement stating that when anyone uses a Trademark which is similar or deceptively similar to an already existing Trademark and has not been entitled to do so, has committed an infringement of Trademark. The Trade Marks Act, 1999 does not, however, speak about passing-off. Through previous judicial decisions, it has been drawn that passing off does not only involve using marks of similar nature but also creating confusion in the public of the rightful proprietor of the mark.
Yahoo! Inc. v. Akash Arora & Anr.[xiv]
The Delhi High Court decided in this case that a domain name was similar to a Trademark and shall be equally protected under the Trade Marks Act, 1999. “Yahoo!” and Yahoo! India were similar in their domain names and phonetic sounds and hence, the Court observed that such a name would clearly confuse the public of the original name. The Court also held that though the defendants used a disclaimer to show its difference from “Yahoo!”, it would still confuse the public and will not be effective to prevent infringement.
Cadila Health Care v. Cadila Pharmaceutical Ltd. [xv]
The Court laid down the following criteria to constitute an act of passing off:
- Nature of marks.
- Degree of resemblance.
- Nature of the goods or services used in the marks.
- The resemblance in the nature and character of the goods or services.
- Class of public who will buy the goods or avail the services.
- Method of purchasing the goods or availing the services.
- Any other circumstance which may affect the act of passing off.
The Court also observed that it does not matter whether the two competing companies are in the same or similar line of business. It is always necessary for companies to prove the above-mentioned criteria.
[i] http://www.ipindia.nic.in/writereaddata/images/pdf/trade-marks-registration-in-india.pdf [ii] http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_69_1_Trade_Marks_Rules_2017.pdf [iii] http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf [iv] http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf [v] http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_69_1_Trade_Marks_Rules_2017.pdf [vi] http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf [vii] http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf [viii] http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_69_1_Trade_Marks_Rules_2017.pdf [ix] http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_69_1_Trade_Marks_Rules_2017.pdf [x] http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_69_1_Trade_Marks_Rules_2017.pdf [xi] http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf [xii] http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf [xiii] MANU/DE/2043/2010 [xiv] 1999 (19) PTC 201 (Del) [xv] 2001 PTC (SC) 561
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