Trademark

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TRADEMARK

As per the definition of the Trademark Act, 1999, any word, name, device, label, numerals, combination of colours, sound or shape of goods indicating origin of such goods can be counted as trademark if it is capable of being graphically represented.
WHAT CAN BE A TRADEMARK?
A trademark should be simple, eye catching and easy to remember and spell.
A trademark should not be generic, descriptive of the goods or services or laudatory in na-ture.
A trademark preferably should be a coined, arbitrary and invented word.
A trademark should not be identical or similar to any trademark which is already in use in the course of trade and business or which is filed for registration or registered whatsoever.
Before adoption of a trademark, a proper and thorough search of the trademark database ly-ing with the office of the Registrar of Trademarks must be done in order to rule out any ob-jection or conflict with the prior used /existing trademarks. Sometime few marks may be in used but might not have been applied for registration and therefore a web search and market search must be made prior to adoption and use of a trademark.

WHAT NATURE OF MARKS CANNOT BE REGISTERED AS TRADEMARK?
Any word, name, brand and mark which is not distinctive and not capable of distinguishing the goods or services of one person from those of another, cannot be registered as a trademark under the provisions of the Trade Marks Act, 1999;
Any word, name, brand and mark which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geo-graphical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
Any word, name, brand and mark which consist exclusively of marks or indications which have become customary in the current language or in the bonafide and established practices of the trade;
Any word, name, brand and mark which is of such nature as to deceive the public or cause confusion;
Any word, name, brand and mark which contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
Any word, name, brand and mark which comprises or contains, scandalous or obscene mat-ter;
Any word, name, brand and mark whose use is prohibited under the Emblems and Names (Prevention of Improper use) Act, 1950 (12 of 1950);
Any shape of goods which results from the nature of the goods themselves or the shape of goods which is necessary to obtain a technical result or the shape which gives substantial value to the goods;
Any word, name, brand and mark which is identical with and deceptively similar to a trade-mark already registered or pending registration in respect of the same /similar goods;
Any word, name, brand and mark which is identical with or deceptively similar to a trade-mark which is being used prior in point of time in respect of the same /similar nature of goods or services;
Any word, name, brand and mark which is identical /similar to a well-known trademarks; The well-known trademark has been listed under the Trade Marks Act, 1999 and the few exam-ples are like TATA, MICROSOFT, AMUL, CADBURY, COCO-COLA etc.
Any word, name, brand and mark which is commonly used an accepted name of any single chemical element or single chemical compound (as distinguished from a mixture) in respect of a chemical substance or which is declared by the WHO and notified in the prescribed manner by the Registrar from the time to time as an International non-proprietary name.

WHY TO REGISTER A TRADEMARK?
The registration of a trademark confers an exclusive right to use the trademark in respect of the goods and services upon the registered owner and proprietor.
The registration adds brand value to the goods /services and it gives sense of faith and con-fidence regarding the quality of goods /services in the minds of the ordinary consumers.
The registration confers statutory protection to the trademark and a legal action for infringe-ment may be initiated against the infringer.
Further the registration of a trademark is considered to be prima facie evidence of rights vested in the registered proprietor.

WHO CAN FILE A TRADEMARK APPLICATION?
Any person namely individual, sole proprietorship firm, partnership firm, company, society, trust and Hindu Undivided Family (HUF) can file a trademark application for registration of a trademark before the appropriate office of the Trademark Registry.

WHAT ARE THE DOCUMENTARY REQUIREMENTS OR INFORMATION FOR FILING THE TRADEMARK APPLICATION?

  • Representation of the mark or description or word;
  • Name, Address and nationality of the applicant
  • Description of goods and services
  • Details of the first use of the mark in case the mark has been used in the course of trade and business. If the mark has not been used in the course of trade and business even then the trademark application can be filed however the use of the mark is proposed to be used in future.
  • A power of attorney in the nature of authorizing the attorney to file a trademark applica-tion is also required as per provisions of Trademarks Act.

WHAT IS CLASSIFICATION OF GOODS AND SERVICES?
The goods and services have been classified in 1-45 classes. India follow the nice clas-sification and therefore the trademark application is filed in respect of goods and services falling in the nice classification. The Trademark Registry has also furnished one list of goods and services consistent with the nice classification.

WHAT IS PROCESS OF REGISTRATION?
Once the trademark is filed, it is electronically digitized and all the information of the trademark application is uploaded online on the portal of the Trademark Registry. After the completion of formalities the application proceeds further for examination and the application is examined. After the examination, the application is accepted and /or adver-tised in the trademark journal for public. If the application is objected by the Trademark Registry, the response to the objection is required to be filed and if the examiner is satis-fied with the response, the trademark is advertised in the Trademark Journal. If the ex-aminer is not satisfied with the response and seeks further explanation or clarification, the trademark application is listed for show cause hearing and after the hearing either the mark is accepted or refused as the case may be. The registration process of the trademark in India takes around one year from the date of filing the application. In case, no objection is raised by the office of the Trademark Registry. In case of objection, the time varies according to the case.
The examination of the application can be expedite by filing an application and explaining the reason for seeking expedite examination. The fee for filing the aforesaid application is five times the normal trademark application fee. The shortcoming of this expedite examination process is that once the trademark application is examined and examination report issued the normal procedure is followed.

CAN A TRADE MARK BE OPPOSED?
Once the trademark is published in trademark journal, it is open to the general public and any person who has sufficient reason and feels that the trademark advertised in the journal should not proceed for registration, may file an opposition against the trademark application within the 4 months of the date of the advertisement of the trademark journal. Once the trademark is opposed the normal course of opposition proceedings goes on and after completion of pleadings hearing takes place and either the application is al-lowed or rejected. Once the trademark application is allowed, the trademark proceeds for registration and it is registered.
The registration of the trademark is valid for 10 years and after every ten years the trademark is required to be renewed. If the trademark is not renewed it loses its validity and benefits of statutory protections.

WHETHER A TRADE MARK CAN ALSO BE CANCELLED OR RECTIFIED AFTER ITS REGISTRATION?
Any person aggrieved of the registration of a trademark can file cancellation /rectification petition /application either before the Registrar of Trademarks or before the respective High Court. The rectification /cancellation petition can be filed on the grounds as stipu-lated in the Trademarks Act, 1999.

WHAT ACTION CAN BE TAKEN AGAINST INFRINGEMENT OF TRADEMARK?
In case of misuse of trademark or any illegal and unauthorized use of trademark, a trademark owner can initiate action against the person who infringes the trademark. In case of registered trademark a civil action for infringement of trademark by way of filing a law suit is maintainable where as in case of unregistered trademark a law suit of passing off can be filed. The relief of injunction, damages and rendition of account are sought in the law suit. The suit is maintainable before the District Court as the District Court has the jurisdiction to entertain and try the suit under the provisions of Trademark Act, 1999. In addition to that the High Court of Delhi, Mumbai, Chennai and Kolkata has the original jurisdiction to entertain and try the original civil suit for infringement and /or passing off

INTERNATIONAL APPLICATION UNDER MADRID SYSTEM
India is the signatory of the Madrid Protocol. The Madrid protocol came into force in 2013 and as a consequence thereof the Trademark Rules were also amended. Under the Madrid Protocol system a trademark owner can protect and get registration of the trademark in number of countries, as per option, by way of filing a single application de-signating the countries in which the applicant seeks protection. The Madrid system pro-vides a simple and easy way of filing trademark application as the one single trademark application is filed in the trademark office of India in English language and the fee is paid with the Indian office as per the Calculation made depending upon the number of coun-tries in which the trademark is sought to be registered and protected. The applicant need not to engage individual and separate attorney in different countries and it is through the Madrid system the International Application is transmitted/forwarded to the International Bureau of WIPO after the formality and eligibility check and verification of the contents by the Indian Trademark Registry within the prescribed period of two months. The Inter-national Bureau further check and verify the details and after verification and checking and examination the trademark is recorded to be registered in the International Register. The trademark is published in the WIPO Gazette of International marks. Once the Inter-national registration is done, the International Bureau immediately notifies the trademark office of concerned designated country and the concerned designated country further proceed to examine the trademark application as per the prevailing law of the country. The designated country follows the normal procedure of examination of trademark appli-cation as per their respective laws and notify its acceptance/refusal /objection to the In-ternational Bureau. Further the International Bureau communicates the same with the trademark office of the country of origin. Invariably, the designated country does not issue separate registration certificate as the registration is done and certificate issued by the International Bureau of WIPO only. The Designated country however grant status to the trademark as protected and the protec-tion is given as per the law of the nation. Some country issues separate registration cer-tificate with separate registration number. India does not grant separate registration.

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Litigation / Enforcement

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