Trademark law in India is governed by the Trade Marks Act, 1999 & Trade Marks Rules, 2002 (and amendments thereof). The Trademark Act & Trademark Rules seeks to provide for the registration of Trademarks relating to goods and services in India.
The advantage of having a Trademark registered is that the owner can give its Trademark a unique image thereby ensuring a brand name. Registration of a Trademark helps in instant recognition for buyers thereby ensuring that brand loyalty is created. Under the Indian laws a letter, number, word, phrase, logo, graphic, shape, smell, sound or combination of these things is registerable.
Definition of Trademark
A Trademark is a sign that is used to distinguish the goods and services of one party from those of others. A Trademark can be a letter, number, word, phrase, logo, graphic, shape, smell, sound or combination of these things.
Classification of Goods and Services
For the purposes of registration of trademarks under the Act, the Registrar has to classify goods and services. The classification has to be, as far as possible, in accordance with the international classification of goods and services. Any question as to the class in which a particular goods or services should fall has to be decided by the Registrar.
Marks that are registerable in India
All marks used in the trade are not registerable. Only those marks that can satisfy certain requirements under the Trademarks Act are registerable. Hence, a mark is registerable if it can satisfy the following:
1. The mark should be capable of being represented graphically.
2. The mark should be capable of distinguishing the goods or services of one from those of others.
3. The mark must be 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 and services.
The following Trademarks are not registerable under the Indian law.
1. Marks that contain or comprise of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;
2. Marks that comprise or contain scandalous or obscene matter;
3. Marks which have the nature as to deceive the public or cause confusion;
4. Marks prohibited under the Emblems and Name (Prevention of Improper Use) Act, 1950;
5. Mark consisting exclusively the shape of goods which results from the nature of the goods themselves;
6. Marks containing the shape of goods which is necessary to obtain a technical result or the shape, which gives substantial value to the goods.
Grounds for refusal of Trademarks in India
According to the Trademarks Act grounds for refusal for Trademark registration in India can be divided into two headings namely as absolute grounds and relative grounds.
Absolute grounds for refusal of Trademark registration in India are:
1. Marks devoid of any distinctive character or not capable of distinguishing the goods or services of one person from those of others.
2. Marks which indicate quality or other descriptive character of the goods or services.
3. Marks which have become customary in the current language or in the bona fide or established practice of the trade.
4. Marks likely deceive public or cause confusion.
5. Marks comprising scandalous or obscene matter or likely to hurt religious susceptibilities of any class or section of the citizens in India.
6. Marks prohibited under Emblems and Names (Prevention of Improper Use) Act, 1950.
7. Marks shape of which results from the nature of the goods themselves.
8. Marks the shape of which is necessary to obtain a technical result.
9. Marks the shape of which gives substantial value of the goods.
Relative grounds for refusal of Trademark registration in India are:
1. Marks which are identical or similar to an earlier Trademark and the respective goods or services are identical or similar.
2. Mark which are identical or similar to an earlier Trademark, but the goods or services are not similar.
3. Marks under passing off or law of copyright.
TrademarkRegistration Process in India Trademark Search A Trademark search is the first requirement for a Trademark registration. A search enables the Trademark owner to (a) determine the uniqueness of the mark, (b) check its similarity if any to other products, and (c) check pre-existing marks. Failure to do a search increases the chances for being sued for Trademark infringement, the rejection of the Trademark application, and a third-party challenging the Trademark application.
Filing of Trademark Registration Application
After the search, the next step would be the filing of a Trademark registration application. Once the applicant receives the acknowledgment of his application, he can use the symbol TM along with the applied mark.
Examination of Trademark Registration Application
Upon receipt of Trademark Registration Application, the Registrar issues an examination report after examining the application. Applications are examined to ensure that they comply with the requirements of the law and that they do not conflict with marks which are already registered, or which are the subjects of earlier pending applications.
Publication of Mark in Trademark Journal
If the Registrar considers the mark as a distinctive mark or after the removal of the objections, if any, raised by the Registrar he may cause the application to be advertised in the Trademark Journal. If no opposition to the mark is filed within 90 days from the date of publication, or 120 days if request for extension of time is given to the opponent and opposition is refused, the mark proceeds for the acceptance of registration.
The final step in the Trademark registration process is acceptance by the Registrar. The Registrar shall issue to the applicant a Certificate of Registration under the seal of the Trademark Registry. A Certificate of Registration is valid for a period of 10 years.
Online Trademark Registration in India
Recently the Government of India has introduced e-filing system of Trademark Registration, which is very fast and accurate system for filing the Trademark registration applications. The system of e-filing allows filing of an application even where the applicant is located in a remote part of the world.
Flow chart for Trade Mark Registration
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