INTRODUCTION
Trademarks are visual representations of a name, word, label, device, or numeric characters used by businesses to distinguish their goods and/or services from those of their competitors.
An individual’s trademark allows them to distinguish their goods and/or services from those of others. Once registered, a trademark becomes the company’s untouchable intellectual property or asset that gives the company protection from competitors who claim ownership of the ideogram or brand.
To register a trademark, it must be unique to the goods and services being offered. Registration is not permitted for trademarks that are identical or similar to trademarks already registered. Furthermore, a trademark cannot be registered if it is deceptive, generic, offensive, similar, or contains an exclusive protected emblem, etc.
In India, trademarks are registered by the Office of the Controller General of Patents, Design and Trademarks Department of for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry, Government of India, under the Trade Marks Act 1999 (as amended to date)[1] (“Act”) read with Trade Marls Rules, 2017[2] (“Rules”) and grants the trademark owner the right to sue for damages when trademarks are violated.
THE PROCESS
In India, trademark registration is done on a first-come, first-served basis. As a result, everyone must apply for registration as soon as possible. In general, unless there is no opposition from a third party, registering a trademark takes time.
The procedure of registration of a trademark is given under Chapter III of the Act. The following steps are involved under the process of registration of a trademark:
1. SEARCH:
To register a trademark, it is imperative to conduct a trademark search. Once a trademark has been selected, it is essential to conduct a public search on the Trade Marks Registry’s trademark database to verify that it is unique and that there are no other trademarks that are either similar or identical to the trademark.
This search will show you all the different types of existing trademarks regardless of whether they are registered or unregistered. Additionally, the search determines whether the trademark applied for competes with another trademark.
2. TRADEMARK CLASS:
An attorney must also search about the trademark classes. A trademark can belong to one of 45 trademark classes, and all goods and services are classified in accordance with these classes. Selecting the appropriate classes is critical because this will determine whether the trademark is valid for the specific products/services of the respective company. An attorney must apply for trademarks in all applicable classes if the company is selling a variety of goods and services that fall into different classes.
In India, some of the most popular trademark classes are:
- Class 9: consists of computer software and electronics.
- Class 25: It is for clothing.
- Class 35: It is for business management and advertising.
- Class 41: It is for education and entertainment.
If the company operates in one of these trademark classes, the competition for a trademark may be more intense. However, as long as the trademark is distinct, this shouldn’t be an issue.
3. FILING OF THE APPLICATION:
Under Section 18(1) of the Act, read with Rule 23(1) of the Rules, any person who is claiming to be the proprietor of a trademark used or proposed to be used by him and wishes to register the trademark must apply in writing to the Registrar for registration of his trademark.
The application for the registration of the trademark shall specify the goods or services offered by the proprietor and shall be signed by the applicant or his agent and made in Form TM-A (see here).
Depending on the goods and services offered by the business, trademark applications may be filed in a single-class or multi-class format. A trademark registration application must be accompanied by several documents containing full details about the trademark. Additionally, if the applicant claims prior use of the trademark, a user affidavit supporting the usage, as well as evidence of its prior usage, must be submitted.
A trademark application can be filed by the proprietor, or an attorney or an agent appointed by such proprietor.
A trademark registration application must contain a set of the following requirements[3]:
- The application should explain a description of the trademark in words with sufficient precision to determine the applicant’s right;
- The application should be able to depict the graphical representation of the trademark; and
- The application shall be considered a three-dimensional trademark only if the application contains a statement to that effect.
When an applicant files a single application and the Registrar determines that the goods or services fall in other class or classes, the applicant shall either limit the specification or amend the application by filing an application on Form TM-M (see here) and paying the application fee or INR 1000 in case of physical application and INR 900 in case of online filing.[4]
4. WITHDRAWAL OF ACCEPTANCE:
If the Registrar is satisfied that the application has been accepted in error or the trademark should not be registered or should be registered subject to conditions or limitations, he/she may, after hearing withdraw the acceptance and proceed as if the application has not been accepted. The registrar shall give a chance of hearing to the applicant.[5]
5. ADVERTISEMENT OF THE APPLICATION:
Upon the acceptance of the registration application, the trademark is advertised and published in the Trade Marks Journal by the Registrar.[6] This publication and advertisement are intended to encourage the public to file an opposition to the mark’s registration.
The Registrar may insert a notification in the journal instead of advertising the application[7]. The notification shall set out the following:
- the number of the application,
- the class or classes in which the application was made,
- the name and address of the principal place of business in India, if any, of the applicant or where the applicant has no principal place of business, his address for service in India, and
- the Journal number in which it was advertised and the correction or amendment made in the application.
6. OPPOSITION TO REGISTRATION:
After the trademark has been advertised and published in the journal, anyone who is dissatisfied with the trademark can file a notice opposing its registration.
Within four months of the date of publication of the trademark journal, a notice of opposition to the registration of a trademark in Form TM-O (see here) must be filed.[8]
The following is the process of opposition:
- The person opposing such registration may within 3 months of the advertisement or re-advertisement of the application give the notice of the opposition in writing to the Registrar.[9]
- The Registrar then serve the copy of the notice of opposition to the applicant within 2 months from the receipt of application of such notice. The applicant shall then send a counter-statement of the grounds on which he relies for his application and if he does not do so, he shall be deemed to have abandoned his application.[10]
- The Registrar may then hear both the parties and decide whether and on subject to what conditions the registration is to be permitted.[11]
7. CORRECTION OR AMENDMENT:
The Registrar may permit the correction of any error in or in connection with the application or permit an amendment of the application on the terms decided by him.[12]
8. REGISTRATION:
When the application of the trademark has been accepted and either the application has not been opposed or if opposed, such opposition has been decided in the favour of the applicant, the Registrar may register such trademark[13] and enter the trademark on the register[14].
The Registrar may then issue the registration certificate to the applicant sealed with the seal of the Trademarks Registry.[15] Such certificate of registrations shall be made in Form RG-2.[16]
The registration of the trademark shall be for 10 years and may be renewed from time to time.[17]
DOCUMENTS REQUIRED
All of the documents required for trademark registration are listed below:
- Application form (Form TM-A).
- Identity, address and nationality proof documents.
- Udyog Aadhar Registration Certificate.
- A document containing a list of goods and services for registration.
- Trademark entity documents and soft copy of the trademark.
- Applications and details of applications filed in other countries.
- A document containing the use of the trademark.
- Power of attorney.
CONCLUSION
The procedure of registration of the trademark can be online too. There is no complicated process involved in filing a trademark application electronically. The first step under e-filing is to log in to the website (see here). New users must register while existing users can log in with their username and password or their digital signature. After a successful login, the username and user code will be displayed. The website portal lets you file both domestic and international trademarks.
You can find the user manual here.
[1] https://ipindia.gov.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf
[2] https://ipindia.gov.in/writereaddata/Portal/IPORule/1_69_1_Trade_Marks_Rules_2017.pdf
[3] Rule 23(2).
[4] Rule 23(6).
[5] Section 19 of the Act.
[6] Section 20 of the Act.
[7] Rule 40.
[8] Rule 42(1).
[9] Section 21(1) of the Act.
[10] Section 21(2) of the Act.
[11] Section 21(5) of the Act.
[12] Section 22 of the Act.
[13] Section 23(1) of the Act.
[14] Rule 53(1).
[15] Section 23(2) of the Act.
[16] Rule 56(1).
[17] Section 25(1) of the Act.
YLCC would like to thank Nikunj Arora for his valuable insights in this article.
