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Registration of trademarks in India

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.

Introduction
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 of registration.1

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;

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.

Statutory Definition
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;
  1. 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.
  2. It must be capable of being represented graphically.
  3. It must be capable of distinguishing the goods or services of one person from those of others.
  4. It must be used or proposed to be used in relation to goods or services.
  5. The use must be of a printed or other visual representation of the mark.
  6. In relation to services, it must be the use of the mark or availability or performance of services.
  7. 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 environment are:
  1. 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:
    1. They encourage the production of quality products and
    2. They reduce customer's cost of shopping and making purchase decisions.
    Trade marks play a crucial role in own free market economic system.
     
  2. 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.
     
  3. 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 Trademark

There 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 6

Various types of trademarks are registered under the Trademarks Act, 1999:
Product Mark
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.

Service Mark
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.

Collective Mark
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.

Certification Mark
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, etc.

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.

Objection
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 “Objected”.

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 Act.

Objection under Section 9
Section 9 of the Act gives absolute grounds for refusal of registration. Section 9 rejects any mark that is:
  • descriptive,
  • generic,
  • 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

Objection under section 11
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 services provided.

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 the section.

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 opposition proceedings.

Opposition Proceedings
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 contain:
  1. in respect of an application against which opposition is entered,
  2. in respect of the earlier trademark or the earlier right on which the opposition is based,
  3. in respect of the opposing party,
  4. The grounds on which the opposition is based.
     
Rule 44:
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 same.

Rule 45. Evidence in support of opposition:
  1. 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:
  1. 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 first notice.

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.

Appeal

The Trade Marks Act, 1999 under section 9111 deals with appeal to appellate board.
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) Rules.

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 parties.
If one party fails to present themselves on the day of the hearing, the IPAB can:
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

Conclusion
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.

End Notes:
  1. https://www.wipo.int/edocs/pubdocs/en/intproperty/450/wipo pub_450.pdf
  2. https://blog.ipleaders.in/registration-of-trademarks/
  3. The Trade Marks Act, 1999 Section 2 (1) (2b)
  4. Reforms of Trade mark Law issued by the department of trade and industry in September 1990 pg. 440.
  5. Ibid
  6. https://www.wipo.int/trademarks/en/
  7. The Trade Marks Act, 1999 Section 9
  8. The Trade Marks Act, 1999 Section 11
  9. The Trade Marks Act, 1999 Section 21
  10. The Trade Marks Rules, 2002, rule 42 to 47
  11. The Trade Marks Act, 1999 Section 91
  12. https://cleartax.in/s/how-to-respond-to-a-trademark-objection#regis
Written By: Kavya Nargund studying final year B.B.A.,LL.B(Hons) at Karnataka state law University's law school.

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