Trademark Registration In India

Trademark search is very important, as most of the trademark applications so filed got stuck due to the Objection raised by the registrar either on the grounds of existing similar name or claiming a generic name. Search plays an important role in getting the trademark accepted in an early phase.

Goods and Services under trademarks are divided into 45 classes. Class 1 to 34 is defined for the products / goods and class 35 to 45 is defined for services. Classification helps in ascertaining the appropriate class for goods or service to be adopted for trademark filing.

Yes, a trademark can be filed in all the classes but this is not advisable until unless the applicant is actually not working in any of the good or service of the respective trademark class.

Yes, Trademark Registration provides monopoly, but with some restrictions and not for the entire class. A Trademark only provides monopoly rights on the goods / service description stated in the application only, no rights will be given on other goods / services belongs to the same class. This was settled in many cases by The Supreme Court.

A trademark can be filed by the applicant himself, or by a Registered Trademark Attorney or by a Registered Trademark Agent or by a practicing Company Secretary.

Appointing an Attorney is always advisable and recommended; we also assign the Trademark Filing to Attorneys. Filing done by applicant is never advisable; an applicant generally is not familiar with the provisions of the act and other requirements. And We personally don’t recommend to get it filed by Registered Trademark Agents and Company Secretary as they can file the Trademarks and can manage the other works with the registry and tribunals but they can’t protect and take parts in legal proceedings (Sending notices or representing the matters in the courts) in case of any infringement or legal issues as they can’t practice as an Attorney.

No, a registered trademark gives right only with the respective class in which it was filed and registered. Priority can only be claimed in other class if there are sufficient evidences to justify the claim of priority so raised.

This basically depends upon the applicant and his futuristic vision of working. If the applicant’s business is a start, we advise him to select the most appropriate class for his products or services and file the trademark in that relevant class first, as for startups filing trademarks in many classes could be an expensive matter. And if the applicant is well established in the market, we recommend for trademark filing in all the relevant classes.

No, Trademark once registered, to be renewed time to time; failing in renewal will lead to removal of Trademark.

Yes, an expired trademark can be renewed. Only if renewal application is filed within 6 months of expiry accompanied with renewal fee and surcharge.  Restoration of Expired Trademark application is also allowed if the application for restoration is filed within next 6 months after the grace period of 6 months from expiry, subject to the discretionary power of registrar.

Using of similar Trademark is termed as infringement of Trademark. There are legal options available to protect the Trademark infringed by others.

Online business is in class 35 and garments are in class 25, we suggest for filing the trademark applications in both the classes. If this feels an expensive matter then go for class 25 first and later on for class 35. As class 35 will protect only the online business not the relevant product, so one can’t claim any rights on the articles falling in other class. For example, A is selling garments online in a Trademark XYZ filed in class 35 and B is selling garments offline and online (from other portals) having trademark XYZ, here A cannot restrict B to use the trademark XYZ for garments as A having right only for selling goods online but not on the goods itself, and B can restrict A if he uses the Trademark XYZ on garments.

No, the Registration Certificate generated is not valid for legal purpose or filing trademarks abroad. A request should be made to the registrar for grant of Legal Certificate accompanied with respective fee for legal certificate.

Word mark and Device mark are not the same, as protection under the both are different. A Word Mark protects the WORD only whereas a Device Mark protects the Device as a whole. These days generally people comes to us with a view that, by protecting a Device Mark containing the Word and other artistic things, colour, images etc. also have protections on the Word and the other contents of the device separately, which is not correct. A Device mark provides protection on the device as a whole, one can’t raise any claim on the parts or elements of the Device Mark separately, until they have filed different trademark applications for every part of the Device. In simple terms one can’t claim any specific right on every element of the device until they have trademarks for every element separately.

This was settled in so many cases; some of the famous cases are:

1. Uttam Chemical Udhyog v Shri Rishi Lal Gupta trading as Rishi Soap Works, 1981 PTC 137(Del).
2. Registrar of Trade marks v Ashok Chandra Rakhit Ltd. AIR 1955 SC 558 : (1955) 2 SCR 252.
3. Three-N-Products Pvt Ltd v Emami Limited, 2009 (41) PTC 689 (Cal).

The Trademark Registration is the registering of visual symbols which can be a word, name, device, label, digits, etc. Trademark registration in India helps the candidate or the trademark owner to safeguard his logo or trademark. Trademark registration also helps to evade duplication within the trademarks.

The easiest way to get trademark registration done, involves the first step as “selecting a name then doing a trademark search, after that filing an application for the trademark registration”. Then filing the required documents like the name of the trademark or address. Then the application is examined after that the trademark is published in the Indian Trade Mark Journals. Lastly, the issuance of the trademark registration certificate.

Trademark registration is starting from Rs. 1000/- + Govt. fees basically starting from Rs. 5500/- only.

In case one uses a registered trademark without the authorization of the trademark owner, then it is considered trademark infringement. It is an offense under the Trade Marks Act,1999. Under this, the registered trademark owner can issue a notice to the infringer to stop the use of the mark.

Even after this, if the infringement is continued, then action to cease all goods that violate the Trade Marks Act could be initiated. And the claim for the damages can be initiated.

A registered trademark is valid for 10 years from the date of trademark application filing, which is to be renewed prior expiry of trademark registration.

1. Some common details for every type of applicant is as follow:
   •  Brand name
   • Product details
   • Using Date details
   • Registration / Incorporation certificate of firm
2. For Individuals / Proprietor:
   • Government issued I’d.
3. For Company / Partnership / LLP/ Society / Trust / NGO etc.
   • Resolution Passed in meeting.
   • KYC of authorized person as per resolution.
   • Certificate of registration under MSME (if registered).
   • Certificate of registration under Startup (if registered).
   • KYC of all the Directors / Partners / Members / Trustee.

Company or domain registration will not protect your brand identity. To protect your company’s identity, you need to get trademark registration.

Symbol “TM” can be applied after filing of a trademark application. After registering a trademark a symbol “R” must be used. The ® symbol may only be used in connection with the goods and services mentioned on the registration certificate.

No, Trademark registration is valid in territorial limits of India. But a registered trademark can be used as a base for trademark registration in other countries.

The term ‘objected’ implies that the particular trademark application has been examined and a report generated as well, laying down the objections against the registrability of the mark. Examination of a trademark means that the mark would be checked to see if it complies with the relevant provisions of the Trademarks Act and is fit to be registered. In general, the two main provisions of the Trademarks Act which come into play at this stage are Section 9 and 11 of the Act (called absolute and relative objections respectively). These Sections, broadly speaking, lay down that a trademark should either be inherently distinctive (and not similar to any earlier existing mark) or should have ‘acquired distinctiveness’ through its usage. Hence the Examiner would analyze the trademark in question (primarily in light of the two aforementioned sections) and generate a report mentioning the objections if any and also list similar/identical third party marks if any, during which the status would reflect “ objected ”

This is a very simple and preliminary stage wherein the Trademark Office asserts that all the formalities required to be observed while filing a trademark application have successfully been observed by the applicant and the application would soon proceed to the next level. The formalities here might imply submission of appropriate information or documents like Power of Attorney, User date affidavit or any other required document. If the status shows “formality check fail,” it naturally implies that there is some deficiency in observing the formalities, in which case, it is better to check with the Trademark Office as soon as possible to determine what is required, to fulfill the deficiency and proceed to the next level. There is no prescribed time frame in any of the above scenario. Where the status is “formality check pass,” one has to await the natural progress to the next stage which, currently, is seldom delayed.

EDP, as most of you would be aware, stands for ‘Electronic data Processing.’ In the recent years, the Trademark Office has been striving hard to go the techie way with digitization of records aiming at transparency and automation. Hence when applications are filed, the Trademark Office, broadly speaking, would, sort all applications received, sent them to the EDP section for scanning, uploading and data entry after which the actual legal procedure (like examination, advertisement) begins. Hence when a particular application is still with the EDP section, this status might be reflected in the Indian Trademark Office website. Many a time, the Trademark Office realizes that there are certain errors in data entry/processing with respect to a particular application and in such a case, the particular application finds its way back to the EDP section and the online status of that application reflects “sent back to EDP.”

There is no set time frame during which an application lies with the EDP section. On the same note, it is not an alarming status wherein the applicant of that particular application is bound to take some action, for, once the data entry/processing is completed, the application automatically progresses to the next step, examination. But at times, an application might remain stagnated with EDP for a considerable time and in such cases, the applicant might, approach the Trademark Office to check on it. But such a need seldom arises these days with the Trademark Office being quite efficient in its operations.

The term ‘marked for exam’ implies that a trademark application has been taken up for examination or is due to be examined shortly by the Trademark Office. The term “examination” per se means that the particular trademark would be examined to see if it satisfies and overcomes the objections enunciated in the Indian Trade Marks Act, 1999 (what we call “absolute and relative grounds” under Section 9 and 11), only after which it proceeds to advertisement and ultimately registration.

The term “opposed” means that a third party, has found the mark objectionable primarily in light of Section 9 or 11 or both (and any other provisions of the Trademarks Act), intimates the same in writing to the Trademark Office and requests for its refusal. Section 21 of the Trademarks Act 1999 clearly elucidates about opposition. Simply put, a mark predominantly gets opposed either owing to its similarity with an existing mark or due to alleged non-distinctiveness or both.

Once the mark gets advertised, it is open to opposition for a period of four months from the date of advertisement, during which any third party can oppose the mark on the grounds mentioned above. It is important to note that any third party wishing to oppose a mark should intimate the same in writing (through what is called a ‘notice of opposition’) to the Trademark Office within the four month period after which the status of the mark is changed from advertised to “opposed.”

Trademark Registration protects the brand name for the respective products and services only. Any mark cannot enjoy the monopoly over the entire class, so there is nothing to worry about it you can have trademark registration for the same until the mark is well known (like Pepsi, MRF)

• Complete Assignment to another entity- The owner transfers all its rights with respect to a mark to another entity, including the transfer of the rights such as right to further transfer, to earn royalties, etc. (E.g. X, the proprietor of a brand, sells his mark completely through an agreement to Y. After this X does not retain any rights with respect to the brand)

• Assignment to another entity but with respect to only some of the goods/ services- The transfer of ownership is restricted to specific products or services only. (E.g. P, the proprietor of a brand used for jams and jellies and dairy products. P assigns the rights in the brand with respect to only dairy products to Q and retains the rights in the brand with respect to jams and jellies.) This is called partial assignment.

• Assignment with goodwill- Such assignment is where the rights and value of a trademark as associated with the product is also transferred to another entity.(E.g. P, the proprietor of a brand \”Shudh\” relating to dairy products, sells his brand to Q such that Q will be able to use the brand \”Shudh\” with respect to dairy products as well as any other products it manufactures.)

• Assignment without goodwill- Such assignment also referred to as gross assignment, is where the owner of the brand restricts the right of the buyer and does not allow him to use such brand for the products being used by the original owner. Thus, the goodwill attached to such brand with respect to the product already being sold under such brand, is not transferred to the buyer. (E.g. P, the proprietor of a brand \”Shudh\” relating to dairy products, sells his brand to Q such that Q will not be able to use the mark \”Shudh\” with respect to dairy products but can use this brand for any other products being manufactured by it. In such case the goodwill which is associated with brand \”Shudh\” for dairy products is not transferred to Q and Q will be required to create distinct goodwill of brand \”Shudh\” for any other product or service like Restaurant wherein Q proposes to use this brand.). In many jurisdictions like United States, assignment of mark without goodwill is not allowed at all. India on the other hand allows assignment without goodwill.

• Restriction on assignment that results in the creation of exclusive rights in more than one persons with respect to the same goods or services, or for same description of goods or services or such goods or services as associated with each other.
• Restriction on assignment that results in different people using the trademark in different parts of the country simultaneously.

Trademark Rectification or trademark cancellation refers to the process through which a person applies for removal of a registered trademark from the Register of Trademarks. An aggrieved person can apply for trademark rectification/ cancellation on the grounds of contravention or failure to observe a condition of the trade mark already entered in the Register or an error in registering the trade mark. Section 57 of the Trade Marks Act, 1999 provides for the grounds for Rectification of the Register. An application for rectification or cancellation of a trademark can also be filed on the grounds of non-use of the trademark for a prescribed period of time after the registration of the trademark. An application for rectification of a registered trade mark is required to be filed before the same Trade Marks Registry where the application for its registration was filed.

Grounds for Trademark Rectification in India

Section 57 of the Indian Trade Marks Act, 1999 (hereinafter referred to as \”Act\”) provides for the grounds for Rectification of the Register:

• Clauses (1) and (2) of Section 57 of the Act provides that when any person aggrieved of any entry in the Register of Trade Marks makes an application to the Appellate Board or to the Registrar, the Tribunal may take such steps for cancellation or variation of the registration of the trade mark on the ground of any contravention or failure to observe a condition. The right to file an application for rectification under Section 57 is a statutory right conferred upon a party who is aggrieved by an entry made in the Register. The said right is circumscribed by certain requirements such as:
• Contravention or failure to observe a condition entered in the Register in relation to the registration of the mark; (Section 57(1)).
• The Register suffers from the absence or omission of an entry e.g. a disclaimer, a condition or a limitation on the registered mark; (Section 57(2)).
• The entry made in the Register was made without any sufficient cause i.e. registration was obtained by fraud or misrepresentation of facts or the mark registered was similar to an already registered mark, etc. (Section 57(2)).
• Error or defect in any entry made in the Register (Section 57(2)).
• The entered mark was wrongly remaining on the Register i.e. it is contrary to some of the provisions of the Act or is likely to cause confusion amongst the public and trade; e.g. The mark is in contravention of Sections 9 and 11 of the Act (Section 57(2)).
• The renewal fee has not been paid.
• Clause (4) of Section 57 provides that the Tribunal i.e. the Registrar or the Appellate Board, after giving a notice as well as an opportunity of being heard to the concerned parties, may either cancel, vary, make or remove the entry in question.
• Under Section 31(1) of the Act the original registration of the trade mark shall be prima facie evidence of the validity of the mark in all legal proceedings relating to a trade mark (including in an application under section 57)
• An application for rectification of a registered trade mark is required to be filed before the same Trade Marks Registry where the application for its registration was filed. The procedure before the Registrar is prescribed under Rules 97 to 100 of the Trade Marks Rules, 2002. An application under Section 57 is to be made in duplicate on Form TM-O (in the case of a collective mark or a certification mark). The application is to be accompanied by a statement of case, setting out the nature of the Applicant\’s interest, facts upon which the case is based and the relief that is sought.
• Although the Registrar of Trademarks is empowered to hear rectification petitions against registered trademarks, in cases where an infringement suit is pending before a civil court and where the defendant in the suit is contesting the validity of the plaintiff\’s trade mark, the power to hear applications for rectification of such trademarks vests only with IPAB and not with the Registrar.

According to the NICE classification, the trademark is classified into 45 categories. Among this, 34 classes represents goods and 11 represents services. Since each class shows a unique category of goods and services, so you should choose the right class for your trademark. The process is carried out, once you select the category/class for your goods/services.

Classification of goods

• In the case of finished goods, it is classified according to it’s purpose or function. If the function is not mentioned, then the user can classify it by analogy with other comparable finished products (mentioned in the alphabetical list). And even if this is not possible, then an applicant can classify on the basis of the material of which the product is made or it’s mode of operation.
• In the case of multi-purpose finished goods, it could be classified on the basis of any of it’s functions. If the function is not mentioned, then it could be classified on the basis of the material of which the product is made or it’s mode of operation.
• In the case of raw materials, whether unworked/semi-worked, they are classified on the basis of the material they consist of.
• In case a product is made using different materials, then it is classified on the basis of the material that predominates.
• Any good that forms part of another product is in principle classified in the same class as that product only when the same type of goods cannot normally be used for another purpose. In any other case, the first point mentioned above applies.

Classification of services

• The principal basis on which the services are classified is according to the branches of activities specified in the headings of the service classes and in their explanatory notes. And if this is not the case, then this is done using other services mentioned in the Alphabetical List.
• In the case of any rental services, the classification is in the same class as the ‘services provided by means of rented objects’.
• Any service that provides advice, information, or consultation is classified in the same class as in the case of matter of the advice, information, or consultation.