Trademark General introduction:-
Trademarks already existed in the ancient world. Even at times when people either prepared what they needed themselves or, more usually, acquired it from local craftsmen, there were already creative entrepreneurs who marketed their goods beyond their localities and sometimes over considerable distances. As long as 3,000 years ago, Indian craftsmen used to engrave their signatures on their artistic creations before sending them to Iran. Manufacturers from China sold goods bearing their marks in the Mediterranean area over 2,000 years ago and at one time about a thousand different Roman pottery marks were in use, including the FORTIS brand, which became so famous that it was copied and counterfeited. With the flourishing trade of the Middle Ages, the use of signs to distinguish the goods of merchants and manufacturers likewise expanded several hundred years ago. Their economic importance was still limited, however. Trademarks started to play an important role with industrialization, and they have since become a key factor in the modern world of international trade and market-oriented economies.
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. These amendments were made by replacing the former act with the Trade Marks Act, 1999 and the Trade Marks Rules, 2002.
What is a trademark?
A Trade Mark is a visual symbol in the form of a word, a device, or a label applied to articles of commerce with a view to indicate to the purchasing public that is a good manufactured or otherwise dealt in by a particular person as distinguished from similar goods dealt or manufacture by other persons. The objective of the Trade Marks Act, 1999 is to register trademarks applied for in the country and to provide for better protection of trade mark for goods and services and also to prevent fraudulent use of the mark.
Why is trademark registration is important?
Registration of a trademark is very important for a company or if you’re starting a new business or trade. The company’s logo, name or signature is the first thing that should be unique from the rest. It should be protected from the others. Registering a trademark is a legal process that is provided under the Trade Marks Act,1999. A Trademark is a symbol that makes the mark legally valid. Hence, registering your mark under the trademark act is very important for a company, so that the mark can be secured from the rest of the competition of that business. Registration of trademark for your business is very easy. Anything like a symbol, mark, signature, etc which is important for a business should be registered, so that others cannot misuse the company assets.
The Trademarks Act, 1999 provides protection to the owner of a trademark and imposes criminal liabilities for the infringement of the trademark owner’s rights. To enjoy protection, the owner of a trademark must apply for registration with the Trademark Registrar of the Registry of Trademarks, India. The Trademarks Act is also applicable to the protection of service marks, certificate marks and collective marks.
Advantages of Registering a Trademark
There are many advantages to 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.
Trademark office located:-
The Trade Mark Registry Office performs the statutory duties in connection with the registration of Trade mark and other activities related thereto. Trademark offices are located in Ahmedabad, Chennai, Kolkata, Mumbai and New Delhi.
TYPES OF TRADEMARK 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.
DURATION FOR TRADEMARK APPLICATION PROCESS
About 12 to 18 months depending on various factors. Sometimes it can be longer if there are objections from the Registry or from third parties to be overcome. Importantly, protection will back-date to the date of your application and anyone who has been using your name illegally since that date will have been infringing your rights and may be liable to you in damages.
It lasts 10 years and can be renewed for further period of 10 years. If you do not pay your renewal fee by the next renewal date, your mark will expire. However, you are allowed an extra six months from the renewal date in which to renew your registration, but you will have to pay a fee for late renewal. Following this six-month period, there is a further six-month period, i.e. a total of up to one year after the renewal date, in which you may apply to restore your mark.
An INDIAN trade mark registration only covers INDIA. It does not, therefore, afford protection in any of other country, and a separate application must be filed in each of these countries if registered protection is required.
Section 18 in the Trade Marks Act, 1999
Application for registration.—
(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.
(2) A single application may be made for registration of a trade mark for different classes of goods and services and fee payable therefore shall be in respect of each such class of goods or services.
(3) Every application under sub-section (1) shall be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business in India of the applicant or in the case of joint applicants the principal place of business in India of the applicant whose name is first mentioned in the application as having a place of business in India, is situate:
Provided that where the applicant or any of the joint applicants does not carry on business in India, the application shall be filed in the office of the Trade Marks Registry within whose territorial limits the place mentioned in the address for service in India as disclosed in the application, is situate.
(4) Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit.
(5) In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.
PROCESS FOR APPLICATION OF TRADEMARK:
1) Make a public search before filling out an application for a trademark.
- Enter the link www.ipindia.nic.in
- Click on Trademarks
- Click on Public Search
- Click on class details to select the desired class With trademarks, the class or classification means what kind (class) of goods or services offered are being represented by a certain trademark.
- After the selection of class, return to the public search, write the class number in the prescribed field. Then, write the word mark for which application is to be made.
We can search word mark by splitting the word so that the similar trademark search will be displayed.
For e.g.: The word is Company Secretary, search can be made as below mentioned:
– Or full word, company secretary
- Click on the search button, the trademark similar to proposed trademark will be displayed on screen.
- After public search make an application for registration of trademark, through offline or online.
Offline (by submitting physical documents)
- TM 1: Application for registration of a trade mark for goods or services
- TM 48: Form of authorization of an agent (general power of attorney)
- One covering letter
- Board resolution (in case application is made by a Company)
- List of Directors (in case application is made by a Company)
- Along with a DD of Rs.4, 000/- per application in favor of “Registrar of Trademarks”
- Enter the link http://ipindiaonline.gov.in
- Sign up for first time registration
Steps to Register for e-Filing
- Procure a class III digital signature from any of the Indian Certifying Authorities and install the same on your computer.
- Download and install the Signing Component as per the instructions given in the Digital Signature Manual.
Click on proceed for registration and register yourself.
Create an ID and password which will be used at the time of filling applications.
On submitting the documents whether online or offline an application number will be generated for the said trademark, which can be used to check the status of application made.
Costs for trademark transactions
- To file a new application (Form TM-A): For physical filing Rs-5000 & For E-filing Rs-4500
- To file a notice of opposition to oppose an application published in the Trade Marks Journal a (Form TM-O): For physical filing Rs 3000 & For E-filing Rs 2700
- For Renewal of a registered trademark (Form TM-R): For physical filing Rs-10,000 & For E-filing Rs-9000
- Surcharge for late renewal (Form –TM-R): For physical filing Rs- 5,000 Plus renewal fee & For E-filing Rs- 4,500 Plus renewal fee.
- Restoration of removed mark (Form TM-R): For physical filing Rs- 10000 Plus renewal fee & For E-filing Rs- 9000 Plus renewal fee.
- In the registration of the trademark, it should contain the following
- The class/classes of the goods/services in respect of which it is to be registered.
- Name and address of the proprietor
- Proprietor Trade Description
- Agent/Attorney Detail
- Trade Mark text which is to be registered.
- Place where trademark has been registered
- Name of the Individual Applicant or Company Name with Age:
- Authorized Signatory’s Name, Father’s Name:
- Address for registration with pin code:
- Legal Status (Proprietorship / Partnership / Pvt Ltd / OPC / LLP):
- Name of the Brand:
- Logo if any (Please attach in JPEG format):
- Nature of Business:
- Date of first use of the Brand
After an application for trademark registration is made, it is analysed by trademark examiners. This is done within a period of six months to one year from the date of filing. The officials scrutinise the application forms, the mark and also run their own trademark search.
The trademark office scrutinises the fulfilment of procedural requirements of the Reply to the Examination Report. Like Form, manner, prescribed fee payment, proper classification, etc.
After this process, they take note of their opinions and analysis about the Scope of the mark getting registered, in which they usually give out reasons as to why the applied mark should not be registered under the Trademark Law. All of these objections along with the statutory provisions are put together in the form of a Trademark Examination Report. The trademark examination report is also put up on the trademark office website along with details of the trademark application.
What is an Examination Report Reply?
It is required that the Applicant replies within 30 days from the date of receipt of the examination report. This document is known as Trademark Examination Reply.
The response to an objection in a trademark examination report can be submitted by the trademark applicant. The response can also be made by an agent authorized by the trademark applicant. This authorization is made by a Power of Attorney by the virtue of Form TM48 under the Trade Marks Act, 1999. This response is called “Reply to Examination Report”.
The Reply can be submitted by email by attaching a scanned copy in colour pdf format to .firstname.lastname@example.org OR uploaded online to the website of the trademark office. It could also be submitted in person or by post to the relevant trademark office. Affidavits and documents (as per requirements) should be submitted along with the Reply to the Examination Report.
OBJECTION PERTAINING TO ABSOLUTE GROUNDS
Section 9, Trade Marks Act, 1999 deals with ABSOLUTE GROUNDS. These objections are primarily related to the mark itself and which are not register-able due to their inherent problems. This ground of refusal is primarily aimed at protecting the interests of general public instead of any specific third party.
As per Sec 9(1) of the Trade Marks Act, 1999 a trademark should be distinctive and non-descriptive. That means it should be distinct in itself and it should not be indicating the goods it stands for nor should it be common to the trade in which the Mark would do to business in.
For example, If the wordmark “Apple” is chosen by a company selling Apples then it would be a descriptive trademark but if the wordmark “Apple” is chosen by a company selling computers then it is a non-descriptive trademark. Similarly if the word “Salon” is registered by Salon service then no other Salon can use it.
If there is an objection regarding the trademark being non distinctive, the applicant can submit a reply to the ER stating that the Applicant’s mark can be distinguished from the goods and services it stands for OR the Applicant’s mark has acquired distinctiveness due to its extensive use relating to the goods it stands for by long time before the application was even made. If acquired distinctiveness is being claimed then an affidavit containing evidence of the extensive use of Applicant’s mark along with documents needs to be filed.
OBJECTION PERTAINING TO RELATIVE GROUNDS
There might be an objection based on the relative grounds of refusal under Section 11 of Trade Marks Act 1999. A trademark faces this objection during registration on the ground of same or similar trademark have been already registered or applied for before the registry of Trade Marks by some third party. The purpose of this grounds of refusal is to protect, rights of the party holding a similar or identical trademark and also to safeguard general public from confusion or deception as to the origin of the goods or services.
In case of objections as to relative grounds of the trademark, the applicant needs to decide carefully if he wants to state that his mark is different and so it has to be registered or if it is similar then an argument of a prior user of the mark can be put forward. In addition, the applicant can also produce consent or no objection from the proprietor of marks cited as conflicting in the examination report.
Why is my Trademark Application Status showing ‘READY FOR SHOW CAUSE HEARING’?
In case the office objections to acceptance of the application for registration cannot be waived even after considering the applicant’s response to his trademark application examination report, the matter is set down for trademark hearing.
This hearing commonly known as show cause hearing is scheduled and conducted at the appropriate office of the Trade Marks Registry. A hearing notice is sent to the applicant/agent/attorney concerned, intimating him about the application No & date of hearing. The hearing notice is usually sent approximately 15 days before the date of hearing.
Trademark show cause hearing is just an appearance before the Registrar of Trademark. The applicant or his agent on behalf of him can attend the hearing.
What is trademark hearing?
Trademark hearing is nothing but an appearance before the registrar of trademarks either in person or through trademark agent or trademark attorney for removing the objections raised under examination report issued earlier few days after Trademark Registration application. The chances for trademark objection are high nowadays and trademark hearing happens if the registrar does not get satisfied with the reply filed against the objection raised in the examination report in the process of trademark registration.
After submitting the reply within 30 days from the date of issuance of the examination report, the registrar goes through the reply and read all the submissions made therein. It is at the discretion of the registrar whether to accept the submissions and defense of the reply filed. If unsatisfied with the trademark reply filed, the trademark status will get changed to “Ready for show cause hearing” and in few months hearing notice will be issued inside which the date and time of the hearing will be mentioned. The name of the concerned hearing officer will be mentioned on the same day of the trademark hearing. It is important to track your trademark status online in order prevent your brand name getting abandoned.
DOCUMENTS REQUIRED FOR TRADEMARK HEARING
Documents for the trademark hearing vary from case to case, but few of the documents are mentioned below for reference: –
Power of Attorney to be executed in favor of trademark attorney
Letter of authorization – In Order to authorize the attorney or any person for attending the hearing an authorization letter shall be given by the applicant.
Affidavit of Usage- The date of usage plays a crucial role in getting your trademark registered. Thus, the applicant emphasizes the usage date of a trademark filed by filling a usage affidavit for it. In the affidavit prepared the applicant must give the complete details about the usage of the brand name.
Additional Submissions – For reference make sure to keep the short notes of the important things like case laws and examples related to your case. Also, you must carry the evidence that makes your claim strong and prove the capability of your trademark getting registered.
Proof of Business
PROCEDURE OF TRADEMARK HEARING
As per the time and date mentioned in the hearing notice, the person or his agent/trademark attorney has to be present before the authority with the requisite documents and submissions. No dress code has been specified for the hearing but it has to be formal. After reaching to the concerned trademark officer, the case has to be put up along with your submissions, documentary evidences and relevant case laws, After putting up your complete case to the officer, he will either give his decision at that moment only (accepted or abandoned) or he will hold his decision for few days.
JURISDICTION OF TRADEMARK HEARING
The territorial jurisdiction for the trademark application and hearings has been divided into 5 zones, under which different states and union territories have been categorized, which is as follows:-
MUMBAI: The State of Maharashtra, Madhya Pradesh, Chhattisgarh and Goa
AHMEDABAD: The State of Gujarat and Rajasthan and Union Territories of Daman, Diu, Dadra and Nagar Haveli.
KOLKATA: The State of Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal, Manipur, Mizoram, Meghalaya, Sikkim, Tripura, Jharkhand and Union Territories of Nagaland, Andaman & Nicobar Islands.
NEW DELHI: The state of Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Uttarakhand, Delhi and Union Territories of Chandigarh
CHENNAI: The state of Andhra Pradesh, Telangana, Kerala, Tamilnadu, Karnataka and Union Territories of Pondicherry and Lakshadweep Island
The Solution for hearing:
The applicant or his agent has to appear before the Concerned Officer designated for their hearing and has to submit requisite documents and evidences. The applicant has to show the concerned officer documents like Power of Attorney, Letter of Authorization, proof of business, similar case laws where the marks with similar objections were accepted for registration and any other proof pertaining to the distinctiveness or usage or popularity of the mark. The applicant or his trademark agent has to convince the designated officer for acceptance of their mark and how their mark follows all the provisions of the Trademarks Act, 1999 and deserves to get registered.
The hearing officer may give his decision or adjourn the hearing and ask the applicant or his agent to submit necessary documents on a specific date. The trademark hearing can only be adjourned 2-3 times, based on the reasons. For the next appearance after adjournment, the officer can set a date, or the applicant or his agent can file an application to the Registry of Trademark for the next hearing.
If the hearing officer is convinced with the applicant or his agent’s arguments, he may choose to inform the applicant or agent the outcome of hearing on the spot. This means after hearing the arguments, the hearing officer may Accept the mark for registration and send it for publication in the Trademarks Journal or refuse or abandon the mark in case he is not satisfied or adjourn the hearing.
A communication notice shall be sent to the applicant or his agent, in respect of all types of orders passed by the Hearing Officer. The said letter shall be sent to the applicant/applicant’s authorized agent concerned, latest within one week of the order.
The applicant or applicant’s authorized agent is expected to abide by the order of the Hearing Officer. In case he is aggrieved he may file an appeal before the IPAB or review, as per relevant provisions of the Trade Marks Act & Rules
Adjournment of Hearing
If the applicant or his authorized agent is not prepared or is unable to appear for hearing and files an application for adjournment of hearing, the
Hearing officer may allow the request for adjournment and then a next date will be fixed for hearing. However no adjournment will be given on frivolous grounds. Hearings may also be adjourned and may be fixed on another date due to administrative reasons. In all adjournments of hearing, a fresh hearing notice fixing hearing on another date shall be issued to the Applicant /agent /attorney concerned.
HOW TO ADJOURN TRADEMARK HEARING
Trademark hearing may either by adjourned by the concerned officer for the want of appearance or can be adjourned suo moto by filing form TM-M with fees of Rs 900/- but has to atleast 3 days before the date of the hearing. If you do not attend trademark hearing, the concerned officer may adjourn 2 to 3 times on his discretion, but not more than that and your trademark will get abandoned.
What is the next step once the trademark has been advertised in the Trademarks Journal?
After the examiner reviews the trademark, if the trade mark application is considered allowable, the application is advertised in the Trademarks Journal. Once advertised, the trademark is open for opposition purposes for a compulsory period of four (4) months. In case no opposition is filed within this stipulated time period, the mark proceeds to registration. The purpose behind publishing a Trademark in the Journal is to enable any third party to view the trademark and file a trademark opposition against it.
What are the stages in an Opposition proceeding?
Stage 1 – Filing a Notice of Opposition/Filing a Counter-Statement : Any person wanting to oppose a mark can do so by filing a Notice of Opposition on the prescribed form along with the prescribed fee within four (4) months of advertisement of the mark. It is first sent to the Registry for review and if all the formalities are met, the Registry will then serve the notice on the other party.A counter-statement or reply to the opposition must be filed within two (2) months. There is no extension to file a counter-statement which means that if the Trademark Applicant fails to file a counter-statement within two (2) months of receiving the Notice, the mark shall be deemed abandoned. The counter- statement is first sent to the Registry for review and if all the formalities are met, the Registry will then serve the counter-statement on the Opponent.
Stage 2 – Filing of Evidence in support of Opposition : Within two months (extendable by one (1) month of receiving the counter-statement, the Opponent has the choice of providing evidence in support of his opposition in form of an Affidavit to strengthen the case. The Opponent can choose to waive filing an Affidavit if he wants to rely on the facts stated in the notice of opposition. Whatever maybe the choice, the Opponent has to inform the Officials and the other party within the prescribed time otherwise the opposition will be tagged as abandoned.
Stage 3 – Filing of Evidence in support of Counter- Statement : Within two (2) months of receiving evidence/intimation of waiver by the Opponent, the Applicant has to file evidence in support of his counter-statement /application. The Applicant also has an option to waive his right to submit any evidence.
Stage 4 – Filing of Evidence in Reply : Within one (1) month of receiving evidence/waiver, the Opponent again has the option to file additional evidence in support of his opposition. This option is given to achieve some sort of finality in the proceedings, to rebut the evidence produced by Applicant.
Stage 5 – Hearing : Ordinarily with three (3) months of the completion of evidence, a hearing is appointed and the parties are notified. After hearing the parties and considering the evidence, the Registrar shall decide whether the trademark is to be accepted or not.
What is the period within which a Notice of Opposition can be filed?
The Notice of Opposition has to be filed within four (4) months from the date of publication of the mark in the Trademark Journal. The period is not extendable under any circumstance.
Who is eligible to file a TM Opposition?
As per Section 21 of the Trademarks Act, 1999, any person or entity can file the notice of trademark opposition. These entities could be anyone, for example, individuals, partnership firms, companies, and trusts.
There may be a case where two different individual or entity has to file the opposition against the same trademark. In such cases, issues of both parties could be combined as opponents.
Essential conditions for filing a Trademark Opposition in India
There are several grounds on which a person can raise a TM opposition. Some of them are as follows:
The proposed trademark resembles with the existing TM which someone else has already registered.
The logo or brand name violates the Emblem and Names Act, 1950 which means the proposed TM is prohibited under the said law.
The nature of the trademark is descriptive.
The proposed TM contradicts with the law or any law prevents it.
The trademark consists of name, logo, symbol, image, etc. which hurt the sentiments of a particular religion, community, society or any specific class of people.
The proposed name represents bad faith.
The trademark is conventional in the instituted practices of a business or the present language.
In the case, the trademark seems to cause confusion or mislead the public.
Where to file the Notice of Opposition in India?
One can file the notice for TM opposition at the registry of trademark, at the same place where the other has applied to the conflicting mark.
Suppose that you have applied for trademark registration in Delhi and somebody has raised an opposition against it at the Noida office. Then, you too need to initiate the proceedings in the Noida office only.
Procedure for Trademark opposition in India
Step1: Filing a notice of opposition
Any person or entity willing to raise an opposition or to file the notice of TM opposition against the one in the TM Journal needs to file within four months from the date of publishing.
Step2: Filing a counter statement
The entity can file the counter-statement within two months of the receiving of the notice of opposition. If the applicant fails to submit the counter statement within the prescribed time, then it will be clear that the applicant has abandoned the TM application.
Step3: Evidence regarding the TM opposition
If the applicant has submitted the Counter-Statement within the required time, with an extendable time of one month, then the opponent must present the evidence via an Affidavit. In the case, the opposition doesn’t wish to submit the evidence, then he can write to the Registrar for the same. Instead, he proposes to rely on the matters declared in the Opposition’s notice.
Step4: Evidence in favour of Application
Once the opponent has provided the evidence in support of TM opposition, the applicant will again get three months for presenting the evidence in favour of the application, if any.
Step5: Again evidence in reply
Moreover, the Opponent again gets with two months to submit the evidence in response to the evidence of the applicant.
Based on all the above facts, the Registrar at trademark registry shall call for a hearing. Both parties need to notify the Registrar within fourteen days of the receipt of the hearing notice. Eventually, the Registrar of Trademark will hear the matter and take the decision upon merits.
Step7: Rejection or Registration
If the evidence and facts hold valid for the applicant, the trademark will get the status of registered. Additionally, the applicant will receive the trademark registration certificate. However, if the decision is in favour of the opposition, then the trademark application will stand rejected.