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Patent Attorney practicing Patents, Corporate Law, Mergers and Acquisitions, Venture Financing, Startup Technology Law
Patent Attorney practicing Patents, Corporate Law, Mergers and Acquisitions, Venture Financing, Startup Technology Law
Q1. What is a Trade Mark?
Q2. What are the essentials which every trademark must possess to be a trademark?
Q3. Who can file for registration of Trade Marks in India?
Q4. How much does it cost to get a trademark in India?
Q5. What are the different types of trademark applications?
Q6. How is Trademark designated in India?
Q7. What is Honest Concurrent Use?
Q8. What is the procedure to file for registration of a Trade Mark in India?
Q9. What is the trademark office procedure for trademark registration in India?
Q10. What is the Office Procedure for Registration of a Trademark?
Q11. Can a suit for infringement for a registered trade mark be instituted?
Q12. What is the procedure of Trademarks through the international registration under “MARDRID PROTOCOL”?
Before discussing the concept of Trademark, let us first understand what a Trademark is. In general terms, a trademark can be a word, logo, symbol, label, shape, smell and combination of colours etc. and acts as a source indicator and refers to the origin of goods or services. According to Section 2(1)(zb), “trade mark” means a mark which is:
i. Capable of being represented graphically; and
ii. 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;
• 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
• 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 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. Back to top
In order to bring it within the scope of statutory definition of trade mark, it should satisfy the following essentials:
i. It must be a mark;
ii. It must be used or proposed to be used in relation to goods which are the subject of trade or manufacture or in relation to services;
iii. The use must be of a printed or other visual representation of the mark.
iv. Such use (in relation to goods) must be upon, or in any physical or in other relation whatsoever to the goods, or (in relation to services) as a part of any statement about the availability, provision or performance of such services;
v. The use must be for the purpose of indicating or so as to indicate a connection in the course of trade between the goods/services and some person having the right to use the mark either as proprietor or as registered user. Back to top
The trademark law in India defines various categories of trademark applicants. Depending upon the category and type of the trademark applicant, the documentary requirements and the official filing fee varies. In essence, a trademark in India can be filed by:
1. Individual Startup/Small Enterprise; (Joint Owners, Proprietorship)
2. In all other cases (Private Limited Company, Partnership Firm, LLP etc.) Back to top
An approximate basic fee for filling of trademark in India under Form TM-A for:
(a) Individual Startup/Small Enterprise:
• E-filing – 4,500/-
• Physical filing – 5,000/-
(b) In all other cases:
• E-filing – 9,000/-
• Physical filling – 10,000/-
Note: Fee is for each class and for each mark. For details, please refer the trademark office website. Back to top
Trademark applications are divided into one or more types by the trademark office, and as per Indian Trade Marks Office, a trademark applicant can type multiple kinds of trademark applications. The documentary requirements and other formalities for each trademark application type are different, and hence it is crucial to identify the exact type of trademark application before initiating the trademark filing process. While filing for a trademark, few things are to be considered. The first is which type of application you are filling. In trademark, there are five types of trademark applications:
(a) Standard Trademark (also known as work mark) is used to register words, letters, device, numbers or any combination thereof. A single word mark will protect the phrase irrespective of how it is being displayed.
(b) Collective Mark (Section 63(1)) as the name suggests means, a collective mark is a mark that belongs to a collective group of people or an association of persons. Example – CA (device used by Indian Chartered Accountants).
(c) Certification Mark (Section 71(1)) is defined under Section 2(e) of the Trade Marks Act, 1999 as ““certification trade mark” means a mark capable of distinguishing the goods or service in connection with which it is used in the course of trade which are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of service not so certified and registrable as such under Chapter IX in respect of those goods or service in the name, as proprietor of the certification trade mark, of that person.” In short, it is a mark which certifies the characteristics like quality, origin etc. of other goods/services. Example – ISI (Indian Standard Institute) mark.
(d) Service Mark came into recognition after the commencement of the 1999 Trade Marks Act. A trademark pertaining to services is known as service mark. When someone registers for the service mark successfully the standard symbol of registration is used by them. This mark can also be used when the practice of trademark is done it can be used there also.
(e) Series Mark (Section 15(3)) is where the trademark applied for, is in the form of a series. In other words, the primary element of a mark might be used/intended to be used in several forms or ways by the proprietor and instead of filing separate applications for each, it is possible to file them as a series. Example – McDonald has series marks incorporating the term “Mc” like Mc chicken, Mc Café, Ms Donuts etc. Back to top
When a trademark has been registered, the symbol ® is designated to it. Using the symbol ® for an unregistered mark is illegal. A mark which is not registered may use the symbol ™ which simply means one claims to be the proprietor of that mark. Back to top
Section 12 of the Indian Trade Marks Act, 1999 takes about “Registration in the case of honest concurrent use, etc”. Section 12 provides for registration of same or similar trademarks by more than one proprietor in the case of honest concurrent use or other special circumstances. The provision establishes the superiority of trade mark rights acquired by use.
Concurrent use by two or more persons of the same trade mark for the same goods is contrary to the whole essence of trademark jurisprudence, for a trade mark is intended to denote that the goods come from one source and one source only. However, exceptional circumstances arise when more than one person honestly and independently adopts the same or similar mark and continue to use without objection and without knowledge of each other’s marks, often in different territories, and without causing any confusion or deception to the public. It is considered just and natural to confer the benefit of registration to such concurrent users, even if it causes some occasional confusion.
Section 12 permits the registration by more than one proprietor of identical or similar trade marks in respect of same or similar goods or services. It is an exception to the prohibition of registration of similar marks and it overrides the generality of prohibitions contained in Sections 9 and 11 of the said Act.
The power of granting concurrent registration under Section 12 is discretionary. This is clear from the use of the words “the Registrar may permit registration”. Back to top
A trademark is filed in India through Form TM – A with the respective Trade Mark Office (New Delhi, Mumbai, Chennai, Kolkata and Ahmadabad). A trademark can be filled either through e-filing or through physical filing. A requisite fee is payable for filling of the trademark which is mentioned under The First Schedule of Trade Marks Act, 1999. (See Rule 11).
The first and foremost thing to determine while filing for a trademark is to assign a particular class/classes to the trademark. For filing an application with the Indian Trade Marks Office, the goods and/or services need to be categorized according to the class they fall under. The Nice Classification is a system of international classification of goods/services born out of the “Nice Agreement”, to be used for application of trademarks. There are 1-45 classes in the Nice Classification out of which, classes from 1-34 categorize Goods and classes 35 – 45 classify services.
Each class specifies a broad heading called ‘Class Header’ which gives a clear idea as to the type of goods/services which fall under them and the detailed list of names of goods/services. The Classification also gives an ‘explanatory note’ which very clearly elucidates about the type of goods/services which would fall under the particular class. The explanatory note allays doubts as to the applicable class for a particular goods/service and that way very helpful to determine the class.
A trademark can be filed for a mark/logo which is proposed to be used or already in use. If the mark/and logo is proposed to be used, the date shall be mentioned in the application form in DD/MM/YYYY format. In case the use of the mark is clamed to be prior to the date of application, the applicant shall file an affidavit testifying to such use along with the supporting documents and the affidavit shall be attested by a notary public.
A Power of Attorney is mandatory to be filed along with the application duly executed by the Applicant in favour of the trademark attorney. Back to top
Once an application for registration of trademark is filled with the Trade Mark Office, the Registrar may, refuse the application, accept it absolutely or accept it subject to such amendments, modifications, conditions or limitations, if any, as the registrar may think fit.
The Registrar may also withdraw his/her acceptance if he is of the opinion that the application was accepted in error, or that the trademark ought not to have been accepted in the circumstances of the case, or proposes that the trademark should be registered only subject to conditions, limitation, divisions or to conditions additional or different from the conditions, or limitations, subject to which the application has been accepted. The Registrar shall send a written communication of such action to the applicant. (See section 19 r/w Rule 38 of Trade Mark Act, 1999 & Trade Marks Rules, 2017)
If the registrar accepts the application, the application enters into the stages of registration. The initial stage is the “FORMALITY CHECK”. If the application passes the general formalities that must be fulfilled by the applicant in check, the status of the application on the Trade Mark Registry Website will show “FORMALITY CHK PASS”, and if the formalities are not in accordance with the law, it will show “FORMALITY CHK FAIL.”
The second stage, “MARKED FOR EXAM” is when the application, only after passing the formality check, is assigned to an Examiner. The trademark would be examined as to its ability to be registered under the various Sections of the Trade Marks Act, 1999. An examination report is then issued either accepting the trademark for publication or raising objections as to its registrability. At this stage, the applicant needs to wait for the examination report to be issued. An examination report is usually issued within a period of one month to one year depending on the backlog of the registry.
The stage of “OBJECTED”. If an examination report has been issued raising objections, a reply has to be filed by the applicant with a period of one month from the date on which the examination report was received by the applicant, failing which the trademark application may be treated as abandoned by the Registry. If the Examiner is not convinced with the written response, a hearing is posted for allowing arguments to be put forth in person.
The status “EXAM REPORT ISSUED” or “ACCEPTED” is used by the Trade Mark Registry to indicate that the trademark application has been ordered for publication in the Trade Marks Journal prior to registration. This status is used by the Registry when no objections are raised by the Examiner as to the registrability of the trademark or when the objections are overcome by way of written submissions or hearing. No action is required by the applicant at this point unless the application does not move forward for journal publication.
The status is shown to be as “AVERTISED BEFORE ACC” or “ADVERTISED” or “ACCEPTED & ADVERTISED” when the trademark application is advertised/published in the Trade Marks Journal. This is one of the final stages in the trademark registration process. Once the trademark is published in the Trade Marks Journal, 4 months’ time is given for any third party to oppose the registration of the trademark. If no oppositions are filed during the 4 month opposition period, then the trademark registration certificate is usually issued within 3 months thereafter.
But if the application is opposed, the status will reflect as “OPPOSED”. This happens when a third party files an opposition to the registration of your trademark. The notice of opposition is sent by the Registry to the applicant or its agent. In order to contest the opposition, a counter statement should be filed within 2 months from the date of receipt of notice of opposition, failing which the trademark application will be abandoned and cannot be revived. No extension of time is granted for filing the counter statement. (See Section 21 of Trade Marks Act, 1999)
If there is any error regarding the data entry of application or if the documents were not digitized properly and which needs to be corrected, the application is “SENT BACK TO EDP” (Electronic Data Processing) section.
In case any amendments which were filed prior to registration such as proprietor details, address, specification of good, etc, the application is “SEND TO PRAS” (Pre-Registration Amendment Section). Back to top
When no notice for opposition is advertised or re-advertised to an application in the Journal within a period of 4 months, or where the opposition was made and was dismissed, the Registrar shall, subject to the provisions of sub-section (1) of Section 23 and Section 19, enter the trademark on the register. (Rule 53 of Trade Marks Rules, 2017)
The Certificate of Registration will be issued by the Registrar under sub-section (2) of Section 23 on FORM RG-2 and shall include the trademark. The form shall bear the seal of the Trade Marks Registry. (Rule 56 of Trade Marks Rules, 2017)
The term of registration for a trademark in India is 10 Years. A trademark is to be renewed after every 10 years by filing FORM TM-R along with a prescribed fee of Rs. 10,000 for physical filing and Rs. 9,000 for e-filing for each class. ((Rule 57 of Trade Marks Rules, 2017). Back to top
The holder of a “registered” trademark has exclusive right over his/her mark. If a registered trademark is infringed by another trader, he is liable for an action against him for infringement of that registered trademark. (See Section 29 of Trade Marks Act, 1999)
NO ACTION for infringement of an UNREGISTERED trademark can be instituted. (See Section 24 of Trade Marks Act, 1999)
The period of limitation for filing a suit for infringement is Three Years from the date of infringement. Back to top
The Madrid Protocol is a treaty, signed by India in 2013, that provides for international registration of trademarks by filling a single application with one set of fee. The regulatory body of Madrid Protocol is the International Bureau of World Intellectual Property Organization (IB of WIPO). An application for registration of a trademark under the Madrid Protocol can be filled though the Indian Trademark Office of the respective jurisdiction. The application under Madrid Protocol can be filed under 3 languages, i.e., English, French and Spanish.
An application for registration of a trademark under Madrid Protocol can be filled through FORM MM2 for a prescribed fee with the respective Trade Marks Office of the applicant’s jurisdiction.
Refer: (1) Forms
The Trade Marks Office then certifies such application and forwards it to WIPO. WIPO then formally examines such application and forwards it to the other designated contracting parties for thorough examination in accordance with their respective domestic law within 12/18 months.
If no objection is found by any of the designated contracting parties, WIPO registers the mark in the International Registry and then publishes the International registration in a Gazette. Back to top