Trademark Registration in India

Article authored by V. Krishna Laasya, a law student from School of Excellence in Law, Tamilnadu Dr. Ambedkar Law UniversityChennai

Preface (Abstract)

The Article on Trademark Registration in India aims to analyse the introduction of the Trade Mark Registry (who is in charge of Trademark Facilitation and Registration) and the Generalized Process of Registration of the Trademark in India through the norms laid down in the Trade Mark Act, 1999.

Introduction

The Trade mark Registry, established by the Government in 1940 acts as a facilitator and registers those trademarks which qualify as a mark distinctive and satisfactory of fulfillment of requirements. Head Office of the Trademark Registry is set up at Mumbai with branch offices at Ahmedabad, Delhi, Calcutta and Chennai. For facilitation of International Registration, there is an international wing set up at Mumbai (Head Office).

Trademark Registry does not only confine itself to registration as per the Trade mark rules and the Trade Mark Act, 1999 but also is in charge of the maintenance of the Trademark register[1]

The discharge of functions like offering the preliminary advice and the issuance of certificate under S. 45(1) of the Copyright Act, 1957 where there is a deceptively similar work or registration of the trademark in a fraudulent manner.

Controller General of Patents, Designs and Trademark is the head of the Trademark Registry office and acts as the Registrar of the Trade Marks.

The function of the Registry is done through a Trade Mark automated system and the Central Server is at the Intellectual Property Office Building in Delhi with VPN.

Trade Mark Act, 1999 provides for registration of those trademarks registered in India with the main purpose of removal of fraudulent use of the usage of the trademark.

Process

Trademark is a mark that is used in trade and can consist of logos, words, slogans and other 3 dimensional marks. It is that word or logo that has the ability to be graphically presented and is used by businesses and individuals to identify and establish the goods that are filed.

Generalized Process[2] includes

  • Filing the Application after thorough search of the market and going through those marks which have either been granted as trademarks or are pending for registration. This search can be made for less charge and free on ipindia.nic.in
  • Examination of the trademark in such a way that it does not fall within the grounds for refusal (under S. 9 and 11 of the Trade Mark Act, 1999)
  • Publication of the Mark (4 month wait for opposition to be initiated)
  • Registration of the mark (validity for 10 years)
  • Renewal after the expiry of the trademark (has the discretion to be filed 1 year prior to the renewal of the deadline).

Process as enunciated in the Act[3] includes

  • Filing of Application with the concerned authority and receipt of the application allotment number. Data entry is made and the scanning is undertaken.
  • Examination and report of the same is dispatched to the person or the individual who has filed the application.
  • If accepted, then it is published as a manuscript in Journal and there is a wait for opposition.
    • If there is no opposition, then the registration of the manuscript is made and associated marks presence is checked. Further, the renewal and steps for post registration are taken.
    • If there is opposition, then hearing is fixed for both the parties and the delivery of judgment is made on evidence taken. If the case is proved against the opposition, then the application is registered. If no, then the application is refused and the applicant may opt for a review.
  • If the application is objected to, after the (2) step, then a show cause hearing is mandated.
  • If the application is outright rejected, withdrawn or is abandoned after (2) step, then a further appeal may be made to the Intellectual Property Appellate Board.

Grounds for Refusal

Grounds of Refusal of Grant of a Trademark is relevant in the process of registration, as the availability and allotment of a trademark is based on the fulfillment of criteria laid down by the concerned authority (Trade Mark Registry).

Under S. 11 of the Trademark Act, 1999 relative grounds of refusal include the marks which are identical or similar to the earlier trademark in respect of the similarity of the goods and services[4].

In these aspects, spectrum of distinctiveness is based on Generic, Descriptive, Suggestive, Arbitrary and Fanciful. Absolute Grounds of Refusal of Trademarks include marks which are devoid of the character that is distinctive and the quality of the nature of good which is similar to the good by itself. S. 9(2) includes causing confusion obscene matter and hurt of religious susceptibilities and prevention of those marks under the Name and Emblems (Prevention of Improper use) Act, 1950[5]


[1] For aspects of the Authority in charge of the Trade Mark Registration and the Duties of Controller General of Patents, Designs, Trade Marks and the Office of the Registrar of Trade Marks, see the Department for Promotion of Industry and Internal Trade by the Government of India at < http://ipindia.nic.in/about-us-tm.htm>. Last accessed 11th Sep 2020

[2] Intellectual Property and Process of Trademarks by FICCI, India.

[3] For the process enunciated by the Act and the Concerned Department, see < http://www.ipindia.nic.in/writereaddata/images/pdf/trade-marks-registration-in-india.pdf>. Last accessed 10th Sep 2020.   

[4] For Relative Grounds of Refusal of Trademark, see < https://www.ipos.gov.sg/docs/default-source/resources-library/trade-marks/infopacks/tm_work-manual_7-relative-grounds_feb2018.pdf>. Last accessed 11th Sep 2020

[5] For Absolute Refusal of Trade Marks, see < https://www.ipd.gov.hk/eng/intellectual_property/trademarks/registry/Absolute_grounds_for_refusal.pdf>. Last accessed 11th Sep 2020

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