Trademark
in India: Registering Procedures & Laws and Challenging
Trademarks
Intellectual Property Laws in India
LEGISLATION (INDIA TRADEMARK LAW)
The Indian law of trademarks is enshrined the new Trade Marks Act,
1999 came into force with effect from September 15, 2003. The old
Trade and Merchandise Marks Act, 1958 was repealed at the same time.
The new Trademarks Act of 1999 is in line with the WTO recommendations
and is in conformity with the TRIPS Agreement to which India is a
signatory.
MAIN FEATURES OF NEW LEGISLATION IN INDIA
Under the new Trademarks Act of 1999:
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Registration of Service Marks allowed in addition to
Trademarks for goods.
-
No
separate application necessary for each category/class of
goods or services; a single application would do, however
filing fee will be charged separately for each class of
goods/services.
-
The term of registration of trademark is ten years, subject
to renewal thereafter.
-
The system of maintaining registration of trademark in Part
A and Part B with different legal rights, dispensed away.
-
Registration of trademarks which are imitations of well
known trademarks not permitted.
-
Registration of Collective Marks owned by associations
allowed.
-
Offences relating to trademark made cognizable.
-
Filing Fees enhanced by more than 8 times.
-
Extension of application of convention countries.
TRADEMARKS IN INDIA - FAQ'S
WHAT IS A TRADEMARK
A ‘Mark` may consist of a word or invented word, signature, device,
letter, numeral, brand, heading, label, name written in a particular
style, the shape of goods other than those for which a mark is
proposed to be used, or any combination thereof or a combination of
colors and so forth. Subject to certain conditions, a trademark may
also be symbolized by the name of a person, living or dead.
|
Under
the new law, service marks can be registered as well as trademarks.
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For the purpose of registration, a mark chosen should be capable
of distinguishing goods or services of one person from those of
the others. Further it should not be deceptively similar to an
existing mark of another person and not the one expressly
prohibited under the Act.
The marks devoid of any distinctive character, or which are only
indicative of the kind, quality, quantity, purpose, value or
geographical origin of the goods, or which are marks already in
vogue in the trade due to their customary use may not be
registered. But these disqualifications do not apply to marks,
which have already acquired distinction due to their popularity
and consistent use. Internationally acclaimed brand names are
freely available for use in India.
WHAT IS COVERED UNDER TRADEMARKS
A trademark is a mark used in relation to
goods or services so as to indicate a connection in the course
of trade between the goods or services and some person having
the right as proprietor to use the mark.
WHAT IS THE FUNCTION OF A TRADEMARK
Under modern business condition a trade mark
performs four functions:
- It identifies the goods / or services and its origin.
- It guarantees its unchanged quality
- It advertises the goods/services
- It creates an image for the goods/ services.
HOW TO SELECT A TRADEMARK
- If it is a word it should be easy to speak, spell and
remember.
- The best trade marks are invented words or coined words.
- Please avoid selection of a geographical name. No one
can have monopoly right on it.
- Avoid adopting laudatory word or words that describe the
quality of goods (such as best, perfect, super etc)
- It is advisable to conduct a market survey and a search
at Trademark office to ascertain if same/similar mark is
used in market.
WHAT ARE THE TYPES OF TRADEMARKS THAT CAN BE REGISTERED
Under the Indian trademark law the following are the types
of trademarks that can be registered:
- Product trademarks: are those that are affixed to identify
goods.
- Service trademarks: are used to identify the services of an
entity, such as the trademark for a broadcasting service,
retails outlet, etc. They are used in advertising for
services.
- Certification trademarks: are those that are capable of
distinguishing the goods or services in connection with which
it is used in the course of trade and which are certified by
the proprietor with regard to their origin, material, the
method of manufacture, the quality or other specific features
- Collective trademarks: are registered in the name of groups,
associations or other organizations for the use of members of
the group in their commercial activities to indicate their
membership of the group.
WHAT ARE DIFFERENT TYPES OF TRADEMARKS AVAILABLE FOR
ADOPTION
- Any name (including personal or surname of the applicant
or predecessor in business or the signature of the person),
which is not unusual for trade to adopt as a mark.
- An invented word or any arbitrary dictionary word or
words, not being directly descriptive of the character or
quality of the goods/service.
- Letters or numerals or any combination thereof.
- The right to proprietorship of a trade mark may be
acquired by either registration under the Legislation or by
use in relation to particular goods or service.
- Devices, including fancy devices or symbols
- Monograms
- Combination of colors or even a single color in
combination with a word or device
- Shape of goods or their packaging
- Marks constituting a 3- dimensional sign.
- Sound marks when represented in conventional notation or
described in words by being graphically represented.
WHO CAN APPLY FOR A TRADEMARK
A person who claims to be the proprietor of
the trademark can apply for the registration of its mark for
goods as well services.
A person may apply for registration of a trade mark to the
Trademark office under whose jurisdiction the principal place
of the business of the applicant in India falls.
In case, the principal place of business is outside India,
then the application can be filed in the Trademark office
under whose jurisdiction the office of the lawyer appointed by
you is located.
In case of a company about to be formed, anyone may apply in
his name for subsequent assignment of the registration in the
company's favor.
Before making an application for registration it is prudent to
conduct a trademark search in the Trademark office in context
of the already registered trademarks to ensure that
registration may not be denied in view of resemblance of the
proposed mark to an existing one or prohibited one.
WHO CAN USE A TRADEMARK
The right to use a mark can be exercised
either by the registered proprietor or a registered user.
WHAT ARE LEGAL REQUIREMENTS FOR REGISTRATION OF TRADEMARK
IN INDIA
The legal requirements to register a trade
mark under the Legislation are:
-
The selected mark should be capable of being
represented graphically (that is in the paper form).
-
It should be capable of distinguishing the
goods or services of one undertaking from those of others.
-
It should be used or proposed to be used
mark in relation to goods or services for the purpose of
indicating or so as to indicate a connection in the course
of trade between the goods or services and some person have
the right to use the mark with or without identity of that
person.
WHAT IS THE DURATION OF A TRADEMARK IN INDIA?
Term of registration of a trademark is ten
years, which may be renewed for a further period of ten years
on payment of prescribed renewal fees.
Non-user of a registered trademark for a
continuous period of five years is a ground for cancellation
of registration of such trademark at the behest of any
aggrieved party.
CONVENTION APPLICATION AND INTERNATIONAL
TREATIES
India has declared certain countries as
convention countries, which afford to citizens of India
similar privileges as granted to its own citizens. A person or
company from a convention country, may within six months of
making an application in the home country, apply for
registration of the trademark in India. If such a trademark is
accepted for registration, such foreign national will be
deemed to have registered his or her trademark in India, from
the same date on which he or she made application in the home
country.
Where the applications have been made for the
registration of trademark in two or more convention countries,
the period of six months would be reckoned from the date on
which the earlier or earliest of those applications was made.
Although the recovery of damages for
infringement of a trademark is possible only if the
infringement takes place after the date of filing application
for registration with the concerned trademark office in India,
yet the deemed seniority in making application in home country
may entitle the applicant to initiate an action in India for
injunction, delivery of impugned labels and so on.
WHAT ARE BENEFITS OF TRADEMARK REGISTRATION
The registration of a trade mark confers upon
the owner the exclusive right to the use of the registered
trade mark and indicate so by using the symbol (R) in relation
to the goods or services in respect of which the mark is
registered and seek the relief of infringement in appropriate
courts in the country. The exclusive right is however subject
to any conditions entered on the register such as limitation
of area of use etc. Also, where two or more persons have
registered identical or nearly similar mark due to special
circumstances such exclusive right does not operate against
each other.
REMEDIES FOR INFRINGEMENT OF TRADEMARK IN
INDIA AND PASSING-OFF
Two types of remedies are available to the
owner of a trademark for unauthorized use of his or her mark
or its imitation by a third party. These remedies are:
While former is a statutory remedy, the latter is a common
law remedy. In an action involving infringement or passing
off, a court may grant relief of injunction and/or monetary
compensation for damages for loss of business and/or
confiscation/destruction of infringing labels and tags etc.
Although registration of trademark is prima facie an evidence
of validity of a trademark, yet the registration can not
upstage a prior consistent user of trademark, for the rule is
‘priority in adoption prevails over priority in registration`.
HOW TO APPLY FOR REGISTRATION OF A TRADEMARK IN RESPECT OF
PARTICULAR GOODS OR SERVICES
Goods and services are classified according to
the International Classification of goods and services.
Currently schedule IV of the Legislation provides a summary of
list of such goods and services falling in different classes
which is merely indicative. The Registrar is the final
authority in the determination of the class in which
particular goods or services fall. The Schedule IV of the
Legislation is annexed at the end of this questionnaire on
trade marks.
WHAT PURPOSE THE TRADEMARK SYSTEM SERVES
- It identifies the actual physical origin of goods and
services. The brand itself is the seal of authenticity.
- It guarantees the identity of the origin of goods and
services.
- It stimulates further purchase.
- It serves as a badge of loyalty and affiliation.
- It may enable consumer to make a life style or fashion
statement.
WHO BENEFITS FROM TRADEMARK REGISTRATION
The Registered Proprietor: The Registered Proprietor of a
trade mark can stop other traders from unlawfully using his
trade mark, sue for damages and secure destruction of
infringing goods and or labels.
The Purchaser and ultimately Consumers of trademarks goods and
services.
The Government: The Trademarks Registry is expected to earn a
substantial annual revenue, which is perpetually on the rise.
WHAT DOES THE REGISTER OF TRADEMARK CONTAIN
The register of trade mark currently
maintained in electronic form contains inter alia the trade
mark the class and goods/ services in respect of which it is
registered including particulars affecting the scope of
registration of rights conferred or disclaimers, if any; the
address of the proprietors; particulars of trade or other
description of the proprietor; the convention application date
(if applicable); where a trade mark has been registered with
the consent of proprietor of an earlier mark or earlier
rights, that fact.
CAN ANY CORRECTION BE MADE IN THE APPLICATION OR THE
REGISTER OF TRADEMARKS
Yes. But the basic principle is that the trade mark applied
for should not be substantially altered affecting its
identity. Subject to this changes are permissible according to
rules detailed in the subordinate legislation.
CAN A REGISTERED TRADEMARK BE REMOVED FROM THE REGISTER
It can be removed on application to the Registrar on
prescribed form on the ground that the mark is wrongly
remaining on the register. The Registrar also can suo moto
issue Notice for removal of a registered trade mark. Non use
of a registered trademark for continuous period of 5 years is
also a ground of removal.
CAN I APPLY FOR A DESIGN/LOGO REGISTRATION FOR SAME GOODS
AND SERVICES IN BLACK & WHITE AS WELL AS COLOR
Yes. You can do so in one application as India recognizes
the system of series application.
WHAT RECOURSE I HAVE IF A COMPETITOR HAS ALREADY
REGISTERED MY MARK IN INDIA
The Indian trademark law provides for invalidation proceedings
and you have the right to initiate a cancellation action
should a competitor have registered your trademark in India.
You also have the right to initiate either a civil or a
criminal action against any party that is violating your mark
in India.
WHO CAN USE SYMBOL ® IN INDIA
Only the proprietor of a trademark whose trademark has been
registered in India can use the symbol ® in India. Using the
symbol ® unless your mark has been registered in India is
unlawful.
WHEN CAN THE SYMBOL ™ BE USED IN INDIA
Using this symbol with your trademark simply implies that
you claim to be the proprietor of the trademark. There is no
prohibition on the use of the symbol ™ in India.
WHAT IS THE PENALTY PRESCRIBED UNDER CRIMINAL LAWS FOR
INFRINGEMENT OF A TRADEMARK IN INDIA
The penalty for selling or providing services using a false
trademark is a minimum of six months and maximum of three
years and with fine not less than Rupees fifty thousand but
which may extend to Rupees two lakh.
Registration of trademarks is one of the important
protections that businesses should avail in India. Many
foreign and domestic Applicants have been able to successfully
register their marks in India. Indian courts have upheld many
of those registrations and granted favorable decisions to
rights holders.
In addition to the registering of their trademarks in
India, businesses need to adopt other strategies for
protecting their trademarks. Some of them are mentioned below:
- Get trademark searches conducted in the Indian Trade
Marks Registry in the classes that are of interest to you
including the ancillary classes.
- Get common law searches (this includes the internet,
market surveys, yellow pages and directories) conducted to
ascertain whether third parties are using your trademarks
and if so, the extent of such use.
- Based on this information and after seeking the local
counsel’s opinion decide if the trademark is available for
use or not.
- Should the trademark be available for use, immediately
apply for the registration.
- The rights holder should also consider hiring a watching
service to monitor the trademark journals in order to alert
them to any published, deceptively similar trademarks or
descriptive trademarks that might be of concern.
- Should the rights holder own a trademark that has been
used and has acquired goodwill and reputation, it is
advisable that along with filing of the trademark
application in India, they should also make press releases,
publish cautionary notices and advertise the mark to ensure
that the relevant section of the public is aware that they
are entering the Indian market and are protecting their
trademark from any kind of third party violation.
- The rights holder should also take immediate steps to
register their domain names including country coded top
level domain names in India, as there have been many
instances of third parties registering domains for certain
well known marks with the intention of extracting money by
selling these domain names to the rights holders.
- Should the rights holder discover that their trademark
is being infringed, they should take immediate steps to
protect their trademark, either by the means of filing
oppositions, cancellations, conducting investigations,
sending cease and desist notices or initiating appropriate
civil and criminal actions.
AS A FOREIGN CORPORATION CAN I FILE A SINGLE APPLICATION FOR
USE OF MY MARK ON MORE THAN ONE GOOD OR IN ASSOCIATION WITH
MORE THAN ONE SERVICE IN INDIA
Yes. India recognizes the system of multi-class
applications and follows the International Classification.
There are 42 classes in which the goods and services have been
divided in India and you can file for multi-class applications
both for goods and services.
BEING A FOREIGN CORPORATION, MUST I SELL MY PRODUCTS OR
SERVICES IN INDIA BEFORE SEEKING TRADEMARK REGISTRATION
No, Indian trademark law allows filing of a trademark
application in India on an ‘intent-to-use’ basis. However the
registered proprietor of the trademark in India has to
commence use of the mark within 5 years and 3 months of the
date of registration. Otherwise the registered trademark is
open to invalidation proceedings.
WHAT ARE THE SOURCES OF TRADEMARK LEGISLATION
- (1) The national statute i.e., the Trade Marks Act,1999
and rules made there under .
- (2) International multilateral convention.
- (3) National bilateral treaty.
- (4) Regional treaty.
- (5) Decision of the courts.
- (6) Office practice and rulings
- (7) Decision of Intellectual Property Appellate Board.
- (8) Text books written by academician and professional
experts.
WHAT ARE THE FORMALITIES FOR MAJOR TRADEMARK TRANSACTIONS
For filing new applications there are prescribed forms
depending on the nature of application such as Form TM-1,
TM-2, TM-3, TM-8, TM-51 etc.
To file a Notice of Opposition to oppose an application
published in the Trade Marks Journal (FormTM-5).
For Renewal of a Regd. trademark (Form TM-12 ).
Surcharge for belated renewal (Form -10)
Restoration of removed mark (Form TM-13)
Application for rectification of a registered trade mark (Form
TM-26)
Legal Certificate (Form TM-46)
(Providing details of entries in the Register)
Official search request (Form TM-54).
Preliminary advise of the Registrar as to the registrability
of a mark (Form TM-55).
Copyright search request and issuance of certificate (Form
TM-60)
See also
Patent in India |
Trademark in India
