1. What is a trademark
A trademark is generally referred to as a brand/brand name and is an intangible and visual asset which may be a word, signature, name, device, label, numerals or combination of colours used by one undertaking on goods or services to distinguish it from goods or services of a different undertaking.
Section 2 (zb) of Trademark Act, 1999 defines "trade mark" as “a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours; and--
(i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used 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, as the case may be, and some person having the right as proprietor to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be used 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, as the case may be, and some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark;”
2. Need for a Trademark registration
Registration of a Trademark gives the Proprietor statutory right over the Trademark and amounts to prima facieevidence regarding its validity. Registration of a Trademark gives its Proprietor the right to initiate an action for infringement under the Trademarks Act, 1999 (“Act”). Whereas, in the absence of a registration, the Proprietor would be able to protect its Trademark under the common law remedy of “passing off” which has high threshold for proving misappropriation by the infringer. In a passing off action, the Proprietor would be first required to prove the validity of its Trademark and thereafter prove the act of passing off by the third party for the Proprietor to succeed.
3. Trademark Registration Process
Pre filing due diligence
The pre filing due diligence involves conducting research and seeking opinion on the prima facie validity of the Trademark and validity vis-à-vis third party trademark applications/registrations existing on the Trademark Register. This helps the Proprietor to understand the strength of their Trademark application, chances of securing a registration and strategizing on the how and in what manner the Trademark should be used and protected, and accordingly ascertain the financial viability of the using and applying for the registration of the trademark. The pre filing due diligence includes;
3.1.Conducting a Trademark search for ascertaining whether there exist similar or identical third party trademarks in the Trademark Register and based on the search result, seek advise on the chances of successfully securing a registration for the Trademark and also, strategizing on how to best proceed with the registration i.e. whether to file for a word mark or device mark or composite mark, drafting the specification of goods/services etc., so as to increase the chances of successfully securing registration for the Trademark. The above search report and advise covers a part of the possible objections that could be raised by the Trademark Registry i.e. objections under Section 11 of the Act based on the similarity and/or identity of the Trademark with prior existing third party trademarks.
3.2.The other possible objections can be those under Section 9 of the Act which are raised by the Trademarks Registry based on the lack of distinctiveness of the Trademarkvis-a-visthe goods and/or services for which it has been applied for such as descriptive nature of the Trademark vis-à-vis the goods/services for which it has been applied for, use of matters/words as part of the Trademark which are prohibited etc. The Applicant can also secure advise on the distinctiveness of the Trademark as applied vis-à-vis the concerned goods and /or services, possible objections that could be raised by the Trademarks Registry and if so, the possible means of overcoming the same, so as to ascertain the feasibility of proceeding with the application for registration of the Trademark and/or strategizing on how to best proceed so as to increase the chances of successfully securing a registration.
This stage is not statutorily mandated but is purely from a due diligence point of view and is thus advisable.
3.3.The second stage involves the drafting and filing of a Trademark application in the relevant form along with requisite fees. The Trademark application can be filed in hard copy format or online through the official website of the Trademark Registry. The Trademark application includes various details to be entered and documents to be filed including but not limited to;
a. Name of the Proprietor
b. Address of the Proprietor
c. Name of the attorney filing the application
d. Address of the attorney filing the application
e. Address for service for the purpose of official communication from the Trademark Registry
f. Description of the Trademark
g. Use date of the Trademark in dd/mm/yyyy format. In case the Trademark is yet to be put in use then the “proposed to be used” option needs to be opted for.
h. Representations of the Trademark in the manner stipulated under the Act and Rules.
In case the Trademark application is being filed through an attorney/trade mark agent, an appropriate power of attorney in favour of such person(s) who is filing the application on behalf of the Proprietor needs to be executed along with requisite stamp duty and filed along with the application.
3.4.In case the Trademark application is being filed on the basis of a use date for the Trademark, then a User Affidavit needs to be filed along with the Trademark application confirming the use date of the Trademark application on oath. Such User Affidavit needs to be executed by the Proprietor/authorized representative of the Proprietor before a Notary Public/Oath Commissioner, stamped with requisite stamp duty and filed along with the Trademark application.
3.5.Filing of a trademark application entitles the Proprietor to apply the ™ sign on its trademark.
Formality Check of the Trademark Application by the Trademark Registry
3.6.This process involves the Trademark Registry examining the Trademark application for verifying whether particulars contained in the Trademark application are correct and as per the provisions of the Act and Trademark Rules, 2017 (“Rules”) such as checking if the type of Proprietor as mentioned in the Trademark application is correct, if any user date is claimed and if so, supporting documents stand filed. If the Trademark Registry finds any defects in the Trademark application then the Trademark Registry shall send a notice to the Proprietor for remedying the deficiencies within a period of one month from the date of receipt of such notice and reflect the status of the Trademark application as “Formalities Check Fail”. In case the Proprietor fails to remedy the deficiencies specified in the notice, the Trademark Registry shall treat the application as abandoned. However, should there be no deficiencies in the Trademark application or after filing the reply to the notice informing the Proprietor of the deficiencies in the Trademark application, the Trademark application will be marked as “Formality check pass”.
Examination of the Trademark Application by the Trademark Registry
3.7.Scrutiny of the Trademark application by the Trademarks Registry under Section 9 and Section 11 of the Act i.e. the Trademarks Registry would check if the Trademark application is objectionable based on prior existing similar/identical third party trademarks and/or the lack of distinctiveness of the Trademark vis-a-vis the concerned goods and/or services for which it has been applied for.
3.8.In case the Trademarks Registry raises objection/s with the Trademark application, an Examination Report containing the objections of the Trademarks Registry would be issued to which the Proprietor would be required to file a reply within a period of thirty days from the date of receipt of the Examination Report so as to persuade the Trademarks Registry to allow the Trademark application to be advertised in the Trademarks Journal.
3.9.If the response to the Examination Report is not satisfactory or where the Proprietor has requested for hearing, the registrar shall provide an opportunity of hearing to the Proprietor. The Proprietor shall be required to attend the hearing and make his submissions, failing which the Trademark Registry may abandon the Trademark application.
3.10.If the Trademark Registry is satisfied with the Proprietor’s response to the Examination Report and/or the submissions made during the oral hearing, the Trademark Registry shall communicate such acceptance to the Proprietor and cause the Trademark application to be advertised in the Trademarks Journal.
3.11.In case the Trademarks Registry does not raise any objection/s, the Trademark application the Trademark Registry shall accept the Trademark application, communicate such acceptance to the Proprietor and cause the Trademark application to be advertised in the Trademarks Journal.
Advertisement in the Trademark Journal
3.12.Once the Trademark application is accepted and published in the Trademarks Journal for a period of four months, such application becomes open to opposition by any third party(s). Additionally, this affords the Proprietor with the opportunity to review the Trademarks Journal to ascertain if all the particulars of the Trademark application have been correctly stated therein. In case any particular(s) has not been correctly mentioned, Proprietor can an appropriate form before the Trademarks Registry requesting it to correct the error.
Opposition by a third party(s)
3.13.In case a third party opposes the Trademark application within a period of four months from the date of its advertisement in the Trademarks Journal by filing a formal Notice of Opposition, the Proprietor would be required to file a Counter-Statement to the Notice of Opposition within a period of two months from the date of receipt of the Notice of Opposition. In case the Proprietor fails to file a Counter-Statement within the said period, the Trademark application would be abandoned by the Trademark Registry.
3.14.Upon the Counter-Statement being filed within the mandated time, the third party would be required to file its Evidence in Support of Opposition within a period of two months from the date of receipt of the Counter-Statement or shall intimate the Registrar and Proprietor 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. Failing the same, the opponent shall be deemed to have abandoned his opposition.
3.15.Within two months from the receipt of the Evidence in Support of Opposition or the intimation that the opponent does not desire to adduce any Evidence in Support of Opposition, the Proprietor shall file its Evidence in Support of Application or intimate the Registrar and opponent that he does not desire to adduce any evidence but intends to rely on the facts stated in the counterstatement. Failing the same, the Proprietor shall be deemed to have abandoned his application. Within one month from the receipt of the Evidence in Support of Application the opponent may file an Affidavit in Reply. No further evidence allowed unless the Registrar gives leave to either party to leave any evidence upon such terms as he may think fit.
3.16.Once the pleadings are complete, the Registrar shall fix the matter for hearing and post the hearing, the Registrar shall communicate its decision to both parties. In case the opposition is allowed, the Trademark application would be rejected, in which case, the Proprietor can move an appeal before the Intellectual Property Appellate Board.
3.17.In case the opposition is dismissed or if no opposition is filed against the Trademark application within a period of four months from the advertisement of the Trademark application in the Trademarks Journal, the Trademark application would proceed to registration. Upon registration, the Trademark Registry will issue a Registration Certificate to and in favour of the Proprietor. Such registration would entitle the Proprietor to use ® with its Trademark.
3.18. A Trademark registration is valid for a period of 10 years from the date of registration (which is the date of the application). The Trademark registration has to be renewedover each 10 year period by filing the requisite form and paying the relevant fees so as to keep the registration valid and continuing enjoying the statutory protection.
Kindly treat this as an information update and the same shall not constitute as an advisory by the firm.
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