Procedure For Registration Of Trademark



Procedure For Registration Of Trademark

Section 2(m) of the Trademarks Act, 1999 prescribes a non-exhaustive list regarding what can be considered as a “mark”. A “mark” may include a “device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof 1. Further, when such a mark is capable of any kind of graphical representation and such a mark is further capable of distinguishing between the goods and services of one person in contrast with any other person, then in such a case, it may be classified as a trademark. Such trademark gets registered when it is actually on record and is, for the time being, in force.

A general contention is raised about the need for registration of a trademark. The main reason why registration of trademark is of paramount importance can be observed from the law as stated under section 27 that “no person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark.”

Further, Section 28 of the Act provides that a successful and valid registration shall confer upon the registered proprietor of the trademark the “exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to further obtain requisite relief in respect of infringement of such trade mark”. When these two provisions of the act are read and interpreted in harmony, it becomes logically clear that trademark protection shall subsist only after successful and valid registration.

A [TM] symbol is used when an application for trademark is made with the Trademark Registry. Further, a [®] symbol depicts that the Trademark has now been validly and successfully registered and now the proprietor enjoys all the protection provided under law.

Indian Trade Mark Law under Trademarks Act, 1999 provides for both penal as well as fiscal sanctions for compliance as well as deterrence. While penal sanctions can vary from six months to three-year imprisonment, the fiscal sanctions range from 50000 INR to 200000 INR.

Even a foreign corporation, file a single application for use of a mark on more than one good or in association with more than one service in India since India recognizes the International Classification and system of multi-class applications. There are 42 classes in which the goods and services have been divided and hence multi-class applications can be filed for both goods and services. It is not necessary to make a sale for the goods or services regarding which a trademark is sought. Indian trademark law allows the filing of a trademark application for ‘intent-to-use’ objective. However, the mark has to be in use within 5 years and 3 months from the date of registration or may have to face invalidation, termination or cancellation.

The fee structure for the purposes of registration of trademark is divided into either physical filing or e – filing. E – filing is generally a more economic, reliable and efficient mode for filing an application for the registration of trademark. For filing an application under form TM – A, for the purpose of registration of a trademark/ collective Mark/ Series of trademark for the specification of goods and services that fall under one of more than one classes, the desirous applicant is required to pay INR 10,000/- only when going through physical filing mode. A discount of INR 1,000/- is given when the application is processed online. A special fee of INR 5000/- only is applicable in case where the applicant is either an individual, a start-up or a small enterprise when filing for the application for registration of trademark in manual mode with further discount of INR 500/- which is made available in case of e – filing of the registration application. The fee must be paid for each class and each mark separately.

The goods and services in respect of which trade mark registration is required, shall be classified in accordance with the International classification of goods and services as mentioned under section 7 of the Act. If an application is not suited for the purpose under Trade Marks Rules 2017, an application can also be made under the First and Second Schedule of the Trade Marks Rules, 2002 accordingly.

The procedure undertakes the following steps.

First, an appropriate application is filed, along with corresponding form and fee. Such application is generally received either at the head office or at the branch office of a Trade Mark Registry under whose local jurisdiction the Head Office or the Principal place of business of the applicant is located. The procedure followed can be either online or manual.

After successful filing, application undergoes scrutiny and examination of officers who then releases an examination report to the Registrar. The examination of applications is a central process that takes place in the Head Office of the Trade Marks Registry located in Mumbai. The application is examined on the principal ground as to whether the relevant mark in question is capable of distinguishing applicant’s good or services or not, or whether the mark is prohibited for registration under any law for the time being in force, or whether the registration of that relevant mark is likely to cause confusion or deception because of earlier identical or similar marks existing on records and on certain other relevant barriers.

In case of an objection made during the examination process, a response is sought by the applicant which is then considered. In case objection is not waived after the response received at the show cause hearing, the application is then refused. In this case, the applicant can make an appeal before the IPAB (Intellectual Property Appellate Board). However, if there are no objections raised in the first instance, of the objections so raised are waived off after the response of the applicant in show cause hearing, the application goes for registration in the Trade Marks Journal. In case of opposition provided at this stage, the proceeding is conducted at the Branch office accordingly. If such opposition is allowed, the application is refused and the applicant may appeal to IPAB. However, after publication, if no opposition lies, or any such opposition is raised in the favour of the applicant, the application is proceeded towards registration.

FLOW OF TRADEMARK APPLICATION

1. File trademark application

2. Submit fee

3. Get receipt number

4. Examination

- a. Objections raised

- b. Submit response

- c. Response show cause hearing

-- i. Objections not waived

I. Application Refused

(a). Appeal to IPAB

-- ii. Objections waived

II. Published in Trade Marks Journal for Opposition

(a). Opposition

(i). Opposition proceeding at Branch Office

(1). Opposition allowed

a. Application Refused

b. Appeal to IPAB

(2). Opposition refused

a. Registration

(b). No Opposition

(i). Registration

d. No objections raised

i. Published in Trade Marks Journal for Opposition

I. Opposition

(a). Opposition proceeding at Branch Office

(1). Opposition allowed

a. Application Refused

b. Appeal to IPAB

(2). Opposition refused

a. Registration

II. No Opposition

(a). Registration

 


1- http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf , March 31, 2018 23:51 IST
2-  http://www.ipindia.nic.in/writereaddata/Portal/IPOAct/1_43_1_trade-marks-act.pdf , June 09, 2018 23:51 IST
3-  http://www.ipindia.nic.in/writereaddata/Portal/News/312_1_TRADE_MARKS_RULES_2017__English.pdf, April 01, 2018 03:53 IST
4- http://www.ipindia.gov.in/form-and-fees-tm.htm , April 01, 2018 23:49 IST
5- http://www.ipindia.gov.in/administrative-steps-involved.htm , April 02, 2018 03:29 IST
6- http://www.ipindia.gov.in/workflow-chart.htm , April 02, 2018 06: 19 IST
(Disclaimer: The information provided in this article is given only to provide helpful information and understanding on the subject/topic of law discussed. The contents of this article are not the views of Amie Legal and Amie Legal does not take any responsibility or liability for the opinions expressed by the Author herein.)
Intellectual Property Rights
Intellectual Property Rights (IPR) Act
IPAB (Intellectual Property Appellate Board)
Trade Marks Registry
Trade Marks Rules 2017
Trademark
Trademarks Act 1999

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