- For a trade mark to be registrable, should the mark be used?
- Is a statement of use of a trade mark required at the time of filing an application for registration?
- At the time of filing the trade mark application, is “intent to use” the trademark sufficient?
- Does the Indian Law permit trade mark registrations for goods as well as services?
- How does the trade mark registration system operate?
- What is the classification of the goods adopted in India?
- Is a three-dimensional mark registrable?
- Is sound or smell registrable as a mark?
- If sounds or smells are registrable, how are these marks specified?
- Are there any grounds for refusal of registration of trade marks?
- Can a Registered Trade mark be amended at a later date?
- Is it possible to get an opinion from the Registrar regarding the registerability of the marks?
- Can we know whether similar marks have already been registered in respect of the same type of goods?
- What is the procedure adopted by the Trade Mark Registry for completing the process of registration of a brand?
- Is there any opposition system for third parties?
- What if the Applicant doesn’t respond to the First Examination Report within the stipulated time?
- What are the ways to overcome the objection raised in the Examiners Report?
- What if the Examiner rejects the Application even after the Applicant had responded to the objection in the first examination report? Will the Applicant be heard before the rejection?
- Is renewal allowed?
- How long is the term of trade mark right (registration)?
- Is a renewal petition (application) examined?
- Is the trade mark holder supposed to use his registered trade mark?
- Is there any cancellation system on the ground of non-use of a registered mark?
- How many years of non-use does causes cancellation?
- What are Collective trade marks?
- What are Certification Trade Marks?
- Is registration of trade mark compulsory? What if a person has a mark which is well known and has been used for a long time and some one else fraudulently uses the identical or similar mark?
- Would the subsequent changes in ownership or right to use of the mark be notified to the Registry?
- Advice to foreign applicants who are interested in protecting their mark in India?
1. For a trade mark to be registrable, should the mark be used?
No, for a trade mark to be registrable it is not necessary that the trade mark must have been in actual use. Even the marks that are proposed to be used can be registered.
2. Is a statement of use of a trade mark required at the time of filing an application for registration?
Yes, a statement of use of a trade mark is required at the time of filing.
3. At the time of filing the trade mark application, is “intent to use” the trademark sufficient?
Yes, at the time of filing the trade mark application, “intent to use” the trade mark is sufficient.
4. Does the Indian Law permit trade mark registrations for goods as well as services?
Yes the revised Trademarks Act, 1999 permits registration of trade marks for goods as well as services.
5. How does the trade mark registration system operate?
Under the Trademarks Act; Goods and Services have been classified into 42 different classes and the applicant will have to ascertain as to which of the classes their goods fall under. Sometimes, the business of the applicant may relate to similar goods but (like tooth paste and tooth brush) under 4th Schedule of the Trademarks Act, these goods fall under different categories since 2 applications may be necessary to secure complete protection.
6. What is the classification of the goods adopted in India?
The 7th Edition of International Classification of goods and services (Nice Classification) is adopted in India.
7. Is a three-dimensional mark registrable?
Yes, a three-dimensional mark is registrable.
8. Is sound or smell registrable as a mark?
Yes, sounds or smells are registrable as a mark.
9. If sounds or smells are registrable, how are these marks specified?
They should be capable of being reproduced graphically and should be distinctive.
Sound - musical notations along with the sound recording
Smell - chemical formula along with the sample
10. Are there any grounds for refusal of registration of trade marks?
Under the Trademarks Act, there are 2 grounds for refusal of registration of trade marks:
(a) Absolute ground for refusal of registration of trade mark: marks that are devoid of any distinctive character which in the trade serve to designate the kind, quality, quantity and geographical origin will not be registered. However, if it can be proved that these marks have acquired a distinctive character prior to application by long continuous and uninterrupted use of the mark; marks will also not be registered if they are likely to deceive public or confusion. If the mark comprises scandalous or obscene matter or if the mark is likely to offend the religious sensibilities of the people the same cannot be registered. In addition, if the mark registration is prohibited under the Emblems and Names (Prevention of Improper Use) Act, it will not be registered. Normally, if the shape of the goods is necessary to obtain a technical result or the shape that adds substantial value to the goods it will not be registered.
(b) Relative ground for refusal of registration of trade mark: when the proposed mark for registration is in conflict with the identity of an earlier registered trade mark in respect of the same or similar goods or services or if it conflicts with the internationally well-known trade mark even if it is not registered in India.
11. Can a Registered Trade mark be amended at a later date?
Yes, the filed mark is allowed to be amended as per the provision of Section 22 of the Trademarks Act, which allows the amendment of the mark provided it does not amount to a substantial change in the character of the mark as such. It is practice of the Registrar of Trade Marks that if the mark applied as a label mark, any superficial or insignificant character or feature of the said mark, is allowed to be amended, if a request filed in the prescribed format along with 16 copies of the amended label mark.
12. Is it possible to get an opinion from the Registrar regarding the registerability of the marks?
Yes, any person by applying in Form 55 and payment of an official prescribed fee can get an opinion from the registrar as to the distinctiveness of the proposed mark by mentioning the mark as well as the goods or services with which the marks are proposed to be used.
13. Can we know whether similar marks have already been registered in respect of the same type of goods?
Yes, it is possible to make a request for search.
14. What is the procedure adopted by the Trade Mark Registry for completing the process of registration of a brand?
The Trade Mark Office requires that an application for registration must be made in Form 1 in triplicate along with a prescribed fee of Rs. 2,500/- per application per class. Form 1 should be accompanied by five representations of the brand in the prescribed manner.
On receipt of the Application, the Trade Mark Registry will issue an Examination Report and the Applicant will have to comply with the requirements of the report within a month of receiving the report.
On compliantion of these requirements, the mark will be advertised in the Trade Mark Office Journal prior to the acceptance. If there is no opposition, the mark will proceed towards acceptance.
15. Is there any opposition system for third parties?
Yes, there is an opposition system for third parties wherein within three months after the publication of the mark in the Trade Marks Journal and from the date of publication (the same being extendable by another one month). Soon after the receipt of Notice of Opposition, the Applicant for Registration must file Counter Statement against Opposition. There after, the Opponent will be allowed to file Evidence in Support of Opposition. The Applicant would also be given an opportunity to rebut the Evidence filed by the Opponent. If the Applicant fails to lodge the Counter Statement against the Opposition, then the Application will be deemed to be abandoned.
16. What if the Applicant doesn’t respond to the First Examination Report within the stipulated time?
It is imperative that the Applicant must respond to the requirements of the Examination Report within 30 days. If the Applicant either does not respond to the Examination Report or fail to comply with the requirements of the Report, the Application shall be deemed to be abandoned. In such a case, the Applicant does not have a right of Appeal any where. However, the Applicant can file a Writ Petition.
17. What are the ways to overcome the objection raised in the Examiners Report?
The Applicant can produce evidence to the Examiner that the mark had over a period of time acquired distinctiveness and the consumers associate the brand only with the Applicant and none else. For this purpose, the Applicant can file an Affidavit along with evidence to show the amount of money spent on advertisements, produce publicity brochures and the other hand bills to popularize the brand.
18. What if the Examiner rejects the Application even after the Applicant had responded to the objection in the first examination report? Will the Applicant be heard before the rejection?
There is no automatic right of hearing before rejection of a trade mark Application. If the Applicant is so particular, the Applicant has to request for hearing while responding to the first examination report.
Despite the hearing and the response given by the Applicant or in pursuant of a opposition logged by a third party, if the Trade Mark Registry rejects the Application the aggrieved Applicant can file an Appeal to the Intellectual Property Appellate Tribunal within 90 days of the receipt of the order.
19. Is renewal allowed?
Yes, renewal of a trade mark is allowed. Renewal must be applied for in Form 12 along with a prescribed fee of Rs. 5,000/-.
20. How long is the term of trade mark right (registration)?
The trade mark right can be perpetual (provided it is renewed after every 10 years).
21. Is a renewal petition (application) examined?
Yes, usually the examination includes whether the renewal application is in time, the same is filed along with the prescribed fees and the same is filed by the proprietor of the mark on record.
22. Is the trade mark holder supposed to use his registered trade mark?
Yes, the trade mark holder is supposed to use his registered trade mark. But if the Law prohibits the employment of the mark in Indian market by the Registered Owner, in such a case, the non-use of the mark by the owner can be condoned.
23. Is there any cancellation system on the ground of non-use of a registered mark?
Yes, there is a cancellation system on the ground of non-use of a registered mark or fraudulent obtaining of the trade mark by filing petition for rectification of the trade mark under Section 92 of the Trademarks Act.
24. How many years of non-use does causes cancellation?
5 years of non use causes cancellation.
25. What are Collective trade marks?
A collective trade mark can be obtained by an organization which can permit the members to use the mark. The association has to prepare and file a regulation with the Trade Mark Registry setting out the rules specifying standards and criteria for membership. Collective trade mark cannot be owned by individuals or a body corporate. It has to be a registered association or Trust having many members or beneficiaries.
26. What are Certification Trade Marks?
Certification trade marks guarantee that the goods or services that use the mark have been certified by to have been made of a particular material, method of manufacture, quality, accuracy or origin. This can be owned by individuals or a corporate body. Regulation governing the Certification would have to be logged with the Trade Mark Registry along with the application.
27. Is registration of trade mark compulsory? What if a person has a mark which is well known and has been used for a long time and some one else fraudulently uses the identical or similar mark?
Registration of a trade mark is not compulsory. However, the Registration of the trade mark establishes that the registered owner is the proprietor of the mark covered by the registration. Obtaining registration is like having a reserved ticket for a journey even though Law doesn’t compel you to reserve a ticket for traveling.
In the case unregistered yet well known brands, the owner of the brand can initiate a passing off action. Differences between Passing Off action and trade mark infringement are given as under:
Trade Mark Infringement
Passing Off
- Mere possibility of confusion is enough for getting interim and final relief.
Actual deception has to be proved for any relief.
- Trade Mark infringement is actionable per se and the Registered Owner need not prove specific monetary damage because of the infringement.
In a Passing Off case, the owner of the unregistered brand has to prove actual damage because of the wrongful adoption.
- Trade Mark registration is prima facie proof of ownership of the mark.
In a Passing off case, the Plaintiff has to lead evidence showing long uninterrupted use of the brand and the fact that the infringer adopted the mark knowing the goodwill of the Plaintiff’s mark
- Registered owner can initiate proceedings within the Jurisdiction of a Court where the Owner / Plaintiff resides or carries on business.
Passing Off case can only be initiated in a place where the Defendant resides or carries on business or where any part of the cause of action arose.
28. Would the subsequent changes in ownership or right to use of the mark be notified to the Registry?
Trade Marks can be either assigned in full of transmitted in part. All transmissions or assignments must be registered with the Registrar of Trade Marks on Form 23 or 24 of the Trade Marks. Under the Act there is a classification if the owners delay the registration of the transmission or assignment, the Applicants will have to increased registration fee. The Trade Mark Rules make a classification between assignment of a trade mark with goodwill and assignment of a trade mark without goodwill. In case of Assignment without goodwill the Registry would insist on Advertisement in Newspapers and permit assignment only after ensuring that interest of the third party would not be affected.
29. Advice to foreign applicants who are interested in protecting their mark in India?
Indian Law has been harmonized and the same have now become TRIPS compliant. Further, the Indian Law now protects a well-known and famous mark irrespective of the facts as to whether the same is used and/or registered in India. Moreover, it also provides for claiming priority based upon an earlier application made in a convention country.
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