This article tries to explain the detailed procedure on registration of
trademarks in india, why it is necessary and it's importance by referring to the
two legislations on trademarks i.e The Trade Marks Act, 1999 and The Trade Marks
Rules, 2002 and amendment rules 2017.
Intellectual property is a category of property that includes intangible
creations of the human intellect. Intellectual Property (IP) has been
traditionally categorized into Industrial property and Copyright. The term
Industrial Property includes patents, trademarks, industrial designs, and
geographic indications of source. Copyright protection is granted to protect
literary, artistic and musical works. Intellectual property rights are generally
said to be a bundle of exclusive rights granted to the lawful owner. In this
paper will discuss in detail about Trademark its importance, types and process
Trademark is a type of intellectual property. It can be a word, device, name,
symbol or any combination which is acquired by any institution or company to
show the difference between their product and the products of other companies.
It can also be known as the brand name. Trademark can be owned by any business
organization, individual or any legal entity. Rules and regulations of
trademarks are governed by The Trade Marks Act of 1999, The Trade Marks Rules of
2002, and The Trade Marks (Amendment) Rules of 2017.
History of Trademarks
The first official trademark law was passed in 1940. However due to its
limitations and non-use, it was replaced by the Trade and Merchandise Act, 1958.
In 1994, India became part of the TRIPS Agreements which set basic standards for
intellectual property rights. To meet these basic standards, a number of
amendments were introduced to the trademark laws in India. The Trade and
Merchandise Act, 1958 was revised by the latest Trademark Act of 1999. The main
purpose of this act was to improve trading and commercial practices and develop
the globalization of trade and industry. The Trademark Act, 1999 was governed by
the Trademark Rules of 2002.2
Meaning And Definition Of Trade Mark;
has many meanings according to the context in which it is used.
Dictionary meaning is “a sign affixed or impressed for distinction”. The mark
must be used visually and not orally and legally, a trade mark is recognized as
intellectual property. It has no meaning unless it is used in relation to some
goods. The life of a trade mark depends on its use and continued non-use may
lead to its eventual death.
The Trademarks Act 1999 came into force with effect from 15-09-2003. Section 2
(1) (2b) defines trademark as “Trade mark means a mark capable of being
represented graphically and which is capable of distinguishing the goods or
service of one persons from those of others and may include shape of goods,
their packaging and combination of colors.3
Essential Features Of A Trade Mark
A trade mark is visual symbol used in relation to any goods or services to
indicate some kind of trade connection between the goods or services and the
person using the mark. In order to bring it within the scope of the statutory
definition, a trade mark should satisfy the following essential requirements;
- It must be a mark that is a device, brand, heading, label, ticket, name
or an abbreviation of a name, signature, word, letter or numeral shape of
goods, packing or combination of colors or any combination thereof.
- It must be capable of being represented graphically.
- It must be capable of distinguishing the goods or services of one person
from those of others.
- It must be used or proposed to be used in relation to goods or services.
- The use must be of a printed or other visual representation of the mark.
- In relation to services, it must be the use of the mark or availability
or performance of services.
- The use must be for the purpose of indicating the connection in the
course of trade between the goods or services, and some person having the
right to use the mark either as proprietor or by way of permitted user as
the case may be. It is not necessary that the person using the mark should
reveal his identity.4
Importance of trademarks 5
Importance and justification of trade mark in present global business
- Economic justification
From the economic point of view, a trade mark is merely a symbol that allows a
purchaser to identify goods or service that have been satisfactory in the past
and distinguish the goods or service that have failed to give satisfaction.
Trade marks perform two important market functions:
Trade marks play a crucial role in own free
market economic system.
- They encourage the production of quality products and
- They reduce customer's cost of shopping and making purchase decisions.
- Quality Justification
An important purpose underlying trade mark law is the protection of the trade
mark owner's investment in the quality of the mark and the quality of the goods
or service, which the mark identifies. A certain amount of image differentiation
also helps consumers select products of high quality and reliability. It
motivates producers to maintain adequate quality standards.
- Advertising Justification
A trade mark is species of advertising, its purpose being to fix the identity of
the product and the name of the producer in the minds of the people, who see the
advertisement for marketing decisions. If the trade mark owner succeeds in
creating a favourable image for the trade mark in the market place, the mark
itself can become a significant factor in stimulating sales. The ability of a
mark to generate goodwill through advertising has also gained recognition under
the law of trade mark.
Advantages of Registering a TrademarkThere are many advantages of registering a trademark. Some of them are:
Trademarks make it easier for your customer base to find you: Trademarks
distinguish your services and products from those of your competitors. This
identifies you as the source and indicates a consistent level of quality of your
services and products. Trademarks also increase brand awareness and goodwill.
Trademarks help prevent marketplace confusion: Trademarks prevent confusion as
to the source of the goods and services.
Trademarks are economically efficient tools: Trademarks create a face value in
the market among competitors. Furthermore, they give your business a monopoly
over the brand name.
Types of Trademarks 6Various types of trademarks are registered under the Trademarks Act, 1999:
A product mark is a type of trademark which is used on a business good rather
than on service. This trademark is mainly used to identify the origin of the
product and helps in maintaining the reputation of the business. For example,
Nestle, Amul, etc.
A service mark is quite similar to the product mark but service marks are used
to identify the services of the entity rather than a product. These are used to
identify the proprietors from the owners of other services. For example, the
trademark for network and broadcasting services as they help the service
provided. Applications that are filed under trademark class 35-45 represent the
service mark. For example, Apple, Google, etc.
A collective mark is registered in the name of groups or organizations. These
are used to inform the public about the group during commercial activities. When
a group of individuals protects a service or goods collectively, this mark is
used. Any association or any public institution or a Section 8 Company can be a
mark holder. A common example of a collective mark in India is the Chartered
Accountant designation. For example, Reliance Communications, Tata Sons, etc.
This mark is a sign which shows the origin of the product, quality, material or
any other specific details of the product issued by the proprietor. The main use
of this mark is to standard and worth of the product. Certification marks are
commonly seen on packed foods, toys, and electronics. For Example, ISI, ISO,
Registration of trademarks
The registration process in India is a ‘first to file' basis. Therefore, it is
important to apply for registration as soon as possible. A trademark usually
takes 2-3 years to get registered, if the trademark is not being opposed by a
third party. Trademark applications are handled by the Office of the Controller
General of Patents, Trade Marks, Industrial Designs and Geographical
Indications. Branches for these offices are available in Mumbai, Kolkata,
Ahmedabad, Delhi and Chennai. The application must be filled as per territorial
jurisdiction. And as per provisions of trademarks act,1999 section 18.
To register a trademark in India the following steps must be followed:
Select a trademark agent in India: Proprietors are only allowed to file a
trademark application if their place of business is in India. If this is not the
case, the right holder must file a trademark application through an agent or
attorney. The agent or attorney usually takes care of the trivialities such as
searching, preparing, filing and prosecution of the trademark.
Determination of the eligibility and availability of the trademark: The agent
usually starts the registration process by determining whether the trademark is
eligible for registration and conducting a clearance search to see if there is a
similar mark in the office of the controller general.
Completing the application form and filing: If the trademark agent has the power
of attorney from the right holder he can complete and file the application form.
The form will require details such as name and address of the proprietor, a
description of the goods and services associated with the mark, whether the mark
is in use and a copy of the mark.
Review by the trademark office: The trademark office reviews the application to
see if it is complete and then allots the application a number. If the trademark
is registered, this number becomes the registration number.
Preliminary approval and publication, show cause hearing or rejection of the
application: The trademark association determines if the application is barred
from registration either on absolute or relative grounds for refusal as
prescribed in the Trade Marks Act, 1999.
After the examiner has scrutinized the mark up for registration he may object to
its registration. In this case, the status of the application will show
At this point, the applicant has the chance to put forward his case to the
examiner. Usually, the objection is either raised under Section 9 or 11 of the
Objection under Section 9
Section 9 of the Act gives absolute grounds for refusal of registration. Section
9 rejects any mark that is:
Objection under section 11
- deceptive of origin of goods or services,
- deceptive about the nature of the goods or services,
- deceptive about the quality of the goods or services
Section 11 of the Act provides for relative grounds for refusal. If the examiner
objects under this section it will be due to the mark having similarities with
an already registered trademark. In this case, the examiner will attach the
conflicting parts of the mark as well as the trademarks that it is conflicting
with. At this point, the applicant has to overcome the objections placed by the
examiner. This has to be done according to the section under which the objection
has been raised.
Section 9 of the Act
To counter this objection the applicant has to prove that the mark of the
applicant can be easily distinguished by the consumer pertaining to the goods or
For example Apple the electronic company has the trademark of
an apple and therefore can be deceptive on the product sold by the company. Even
so, it can be proved that the mark has since acquired a distinctive meaning and
is easily recognizable by consumers as to the products sold are electronics.
Section 11 of the Act
Here the applicant has two options:
Contest that the mark is different from the conflicting mark. In this case, he
must prove that his mark is distinctively different from the conflicting mark
and can definitely by distinguished as two separate marks.
Get a no objection affidavit from the owner of the conflicting registered mark.
After this, they issue an examination report within a period of one month. The
applicant has to reply to the examination report within one month. Depending on
the examination report the registrar of the trademark determines whether the
application must be accepted, rejected or put up for ‘show cause. During a ‘show
cause hearing' subject to the facts an application might be rejected, accepted
or accepted with certain limitations. If the application is rejected, the
applicant can appeal at the Intellectual Property Appellate Board within 3
months of issue of rejection order from the registrar.
Whereas, if the application for registration has been accepted by the registrar
after examining the report issued by the examiner then the mark will be
published in the official gazette, the Trademark Journal as per the provisions
of Trademark Act, 1999 under section 20 i.e advertisement of application.
Upon publishing it on the Journal within 4 months, will be open for the public
or third parties to object to the registration of the trademark. If there are no
objections then the trademark will be registered and the applicant will be given
the registration certificate as under section 23 of Trademark Act, 1999 and he
will be protected for ten years from the date the application was filed as under
section 25 for renewal from time to time in accordance with the provisions of
However, if the application for registration of trademark has been opposed by
the public or any third party during the period of 4 months then begins the
Section 21 of the Trade Marks Act, 19999 deals with opposition to registration
and is read in conjunction with The Trade Marks Rules, 2002, rule 42 to 4710
deals with the same.
Rule 42. Notice of Opposition:
A notice of opposition to the registration of a
trademark under sub-section (1) of section 21, with such particulars as
specified in Rule 43, shall be filed in form TM-O within four months from the
date of publication of the trademark journal in which the application for
registration of the trademark was advertised or re advertised.
Rule 43. Requirements of Notice of Opposition.- A notice of opposition shall
- in respect of an application against which opposition is entered,
- in respect of the earlier trademark or the earlier right on which the
opposition is based,
- in respect of the opposing party,
- The grounds on which the opposition is based.
The counterstatement required by sub-section (2) of section 21 shall
be sent on Form TM-O within two months from the receipt by the applicant of the
copy of the notice of opposition from the Registrar and shall set out what
facts, if any, alleged in the notice of opposition, are admitted by the
applicant. A copy of the counterstatement shall be ordinarily served by the
Registrar to the opponent within two months from the date of receipt of the
Rule 45. Evidence in support of opposition:
- Within two months from service of a copy of the counterstatement,
the opponent shall either leave with the Registrar, such evidence by way of
affidavit as he may desire to adduce in support of his opposition or shall
intimate to the Registrar and to the applicant in writing that he does not
desire to adduce evidence in support of his opposition but intends to rely
on the facts stated in the notice of opposition. He shall deliver to the
applicant copies of any evidence including exhibits, if any, that he leaves
with the Registrar under this sub-rule and intimate the Registrar in writing
of such delivery.
If an opponent takes no action under sub-rule (1) within the time mentioned
therein, he shall be deemed to have abandoned his opposition.
Rule 46. Evidence in support of application:
- Within two months on the receipt by the applicant of the copies of
affidavits in support of opposition or of the intimation that the opponent
does not desire to adduce any evidence in support of his opposition, the
applicant shall leave with the Registrar such evidence by way of affidavit
as he desires to adduce in support of his application and shall deliver to
the opponent copies thereof or shall intimate to the Registrar and the
opponent that he does not desire to adduce any evidence but intends to rely
on the facts stated in the counterstatement and or on the evidence already
left by him in connection with the application in question. In case
the applicant adduces any evidence or relies on any evidence already left by
him in connection with the application, he shall deliver to the opponent
copies of the same, including exhibits, if any, and shall intimate the
Registrar in writing of such delivery.
If an applicant takes no action under sub-rule (1) within the time mentioned
therein, he shall be deemed to have abandoned his application.
Rule 47. Evidence in reply by opponent:
Within one month from the receipt by
the opponent of the copies of the applicant's affidavit the opponent may leave
with the Registrar evidence by affidavit in reply and shall deliver to the
applicant copies of the same including exhibits, if any, and shall intimate the
Registrar in writing of such delivery.
Rule 50. Hearing and decision. - The Registrar, after the closure of the
evidence, shall give notice to the parties of the first date of hearing. The
date of hearing shall be for a date at least one month after the date of the
The registrar may call for a hearing between the two parties. He then will then
rule based on the submissions of the two parties. If he rules in favour of the
applicant the trademark will be registered. If he rules in favour of the
opposing party, the trademark will be removed from the Journal and the
application for registration will be rejected.
The Trade Marks Act, 1999 under section 9111 deals with appeal to appellate
If the registration is refused the applicant has the final option of appealing
to the Intellectual Property Appellate Board (hereinafter referred to as IPAB).
An appeal to the IPAB must e filed within three months of the date of issuance
of the refusal order by the registrar. This time limit may be extended if the
appellant can show reasonable cause as to why he could only approach the IPAB
after the time limit.
Appeal to the IPAB has two different processes depending on the type of
trademark registration that was sought after by the applicant/appellant. The
appeal must be filed in the prescribed manner following the Trade Marks
(Applications, Appeals and Fees to the Intellectual Property Appellate Board)
Once the case is registered the IPAB will hear the case. The place of the
hearing will be decided upon the jurisdiction under which the case falls
according to rule 2(m). A date will be given for the hearing of the case. The
hearing will follow as such.
The IPAB will decide on the case based on the submissions made by the two
If one party fails to present themselves on the day of the hearing, the IPAB
Rule on the merits of the case
Give an order ex parte (in the absence of one party)
Dismiss the case
If the case is dismissed or is ruled ex parte a period of 30 days from the date
of the ruling is given to file a petition against the earlier order.
The case will be heard and the order passed by the IPAB will stand. If the
applicant is aggrieved by the order passed by the IPAB he still has the option
to file an appeal to the corresponding High Court. Further appeal can also be
filed to the Supreme Court of India.12
At the end of this paper we now understand how important it is to register your
trade and what is the procedure to register the trademark which protects your
companys goodwill. Trademarks are the exclusive rights which a person enjoys
with respect of his good and services. It allows the owners to have the benefits
from their works when these are exploited commercially. A party who holds the
rights to a certain trademark can sue other parties for trademark infringement.
Written By: Kavya Nargund
- https://www.wipo.int/edocs/pubdocs/en/intproperty/450/wipo pub_450.pdf
- The Trade Marks Act, 1999 Section 2 (1) (2b)
- Reforms of Trade mark Law issued by the department of trade and industry
in September 1990 pg. 440.
- The Trade Marks Act, 1999 Section 9
- The Trade Marks Act, 1999 Section 11
- The Trade Marks Act, 1999 Section 21
- The Trade Marks Rules, 2002, rule 42 to 47
- The Trade Marks Act, 1999 Section 91
studying final year B.B.A.,LL.B(Hons) at Karnataka state law University's law school.