Trademarks

Trademark

Trademark

Services Provided:

We provide the following services:

  • Filing of Indian and International Trademark Applications and prosecution thereof
  • Advice and filing of Assignment, Licensing, Franchising, rectification of trademarks
  • Litigation services such as filing suits at various district courts and High Courts to protect our clients’ trademarks
  • Intellectual property appellate board related services: Filing of applications and prosecution     thereof
  • Watching and renewal services (all jurisdictions/countries)
  • Retainership services
  • Portfolio management services
  • Valuation of IPR including trademarks

Detailed Description:

Introduction

Trademark Registration Procedure

Requirements for filing Application

Trademark Opposition Procedure

Rectification of a Trademark

Renewal, Restoration and Removal of a Trademark

Act/Rules

Forms and Fees

FAQs

Introduction

A trademark is a mark that distinguishes the goods of one from those of others. A trademark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.

Trademark Registration Procedure:

Any person intending to protect trademark/brand name may make an application to the Trademark office in one of the Jurisdictions based on the place where he is carrying on his business. (Jurisdiction: Mumbai, Delhi, Ahmadabad, Chennai and Kolkata). This means any person who is using or proposing to use a trademark with respect to certain goods or services may make an application in a prescribed manner at the Trademark office to protect his rights. In case of the applicant is situated outside India, it may make the application in any of the offices of the trademark registry as per the “address for service” given in the application.

A single application may be made for registration of a trademark for a single trademark in a particular class or for different classes of goods and services in various classes in a prescribed manner and on paying the prescribed fee under the Act/Rules.

Steps to file an Application:

The steps to file a trademark application and obtaining registration are:

  1. Conducting a Search :A trademark search is an important part of adoption and applying for a trademark. A properly conducted search and an expert opinion thereon go a long way in avoiding objections from the Trademark office, oppositions from third parties or litigation after the trademark is adopted. A search is conducted online on the website of the trademark registry nic.in to check if no identical or similar trademarks already exist in the database of trademark office that clashes with the trademark intended to be applied for. A market /internet search may also be conducted to see if there are any trademarks clashing with the trademark of the applicant.

A trademark is searched for particular goods and services as per the classification prescribed by the Trademark Act. Click here to view the classificationThe classification consists of list of goods from class number 1 to 34 and list of services from class number 35 to 45.

The search should be conducted for the word(s) as well as on the device(s) in the trademark application. A device mark search consists of search on the shapes, numerals etc. Figurative elements search or device mark search can be searched with the help of Vienna Classification. The Vienna Classification, established by the Vienna Agreement (1973) is an international classification of figurative elements of marks.

International Non-proprietary Names (INN) in India:

International Nonproprietary Names (INN) facilitates the identification of pharmaceutical substances or active pharmaceutical ingredients. Each INN is a unique name that is globally recognized and is public property. A nonproprietary name is also known as a generic name.

INNs are declared by WHO (World Health Organization) and notified by the Registrar of Trademarks from time to time.

Since INNs can be used freely, it is important to note that they should not be adopted as trademarks. Section 13 of The Trade Mark Act, 1999 prohibits registration as trademarks the INNs or any name of any chemical elements.

  • Filing an Application for Trademark Registration:Keeping in view the other various provisions of the Trademark Act and after a thorough search is conducted; one may file a trademark application at the trade mark office by paying the prescribed fees under the Trademark Act.
  • Examination of the Application:After the trademark office receives the application, it will scrutinize the application (known as examination) and may send objections if any with a reason as to why our mark should be accepted. The Trademark office will put the status of the trademark applied for to be “objected” in case any objections are raised by the trademark office.
    The objections sent by the Trademark office is in a prescribed format called an Examination report which sets out objections based on earlier trademark existing or that the mark applied for is not distinctive to the goods.
  • We then file our reply overcoming the objections and convince the Trademark office to accept and advertise the mark in the Trade marks journal. While filing a reply, we may have to file an affidavit stating that the trademark applied for is being used and sales has been affected of so and so amount and the trademark is advertised and so and so amount is spent on the advertisement of the trademark.
  1. Hearing:The Trademark office may appoint a hearing in case of some clarifications needed by it in respect of the trademark application and documents filed thereafter.
  2. Publication of the Trademark Application:On being convinced in respect of the trademark application and the documents submitted, the Trademark office will issue an order/ communication stating that the trademark shall be advertised in the official gazette called Trademarks journal that is published once a week. The purpose of publication in the Trademark journal is to receive oppositions, if any, from the aggrieved parties who may have some grounds as to the registration of the trademark in the name of the applicant.
  3. Registration:Once the mark is published and receives no oppositions, the mark proceeds to registration. A registration certificate is issued thereafter.
    If within 4 months of the mark being published in the trademarks journal, an opposition is received, the applicant has to face Opposition proceedings.

Trademark Registration Flowchart:

The procedure of trademark application is depicted in the form of a flowchart from the search stage to the registration stage as follows:

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Trademark Application Requirements

Documentary Requirements:

  • Sales Invoices from date of using the trademark (if already using the trademark)
  • In case of a partnership concern: Copy of partnership deed
  • In case of a company: copy of memorandum and articles and certificate of       incorporation duly attested as true copy
  • In case of a trust or an NGO: copy of trust deed with names and addresses of trustees
  • Required logo / writing style of trademark in soft copy to be mailed to

info(at the rate of )trademark.in and to the concerned advocate/executive in our firm

Informational Requirements:

  1. The name, address and nationality of the applicant.
  2. Form of Organization. (Proprietorship/Partnership/Company/Trust)
  3. Full name & Age of signatory of the application
  4. Father’s / Husband name of signatory & nationality with Residential address.
  5. Trademark to be registered
  6. A list of goods and/or services for which registration is required with trade description (such as manufacturers/merchants/dealers).
  7. Date of first use of the trademark (if already using), If user not claimed then mention as to when you propose to be use the trademark.

Trademark Opposition Procedure

  1. Receiving or Filing a Trademark Opposition:A Notice of Opposition is filed, within 4 months from the date of publication, by the one who is opposing as prescribed by the Trademarks Act 1999 setting out the grounds of opposition which is based on distinctiveness/deceptive similarity of the two trademarks. After the notice of opposition is received, a copy thereof is sent by the Trademark Office to the Applicant.
  2. Replying to the Notice of Opposition by filing a Counter Statement:Within 2 months from the date of receipt of the copy of notice of opposition, the applicant has to file a reply in the form of a Counter Statement giving reply to the contents of the notice of opposition. A copy thereof is sent by the Trademark office to the Opponent.
  3. Filing of Evidence by the Opponent:Within two months from the date of receipt of the copy of counter statement, the Opponent has to file evidence by filing an affidavit in support of opposition along with evidence (like invoices/promotional/marketing materials). In case the opponent does not intend to file evidence, the opponent may merely write to the Trademark office that he intends to rely on the statements made in the Notice of opposition. A copy of evidence is serviced by the Opponent upon the applicants too. The period of 2 months prescribed may be extended by one month by filing an application for extension by the opponent. In case the evidence is not filed by the Opponent he is assumed to have abandoned his opposition. These provisions are as per Rule 50 of the Trademark Rules.
  4. Filing of Evidence by the Applicant:Within two months from receipt of the affidavit /evidence of opposition, the applicant is required to file his affidavit in support of the counter statement along with evidence. A copy thereof is sent by the Applicant to the Opponent. The period of 2 months prescribed may be extended by one month by filing an application for extension. These provisions are as per Rule 51 of the Trademark Rules.
  5. Filing of Evidence in reply by the Opponent:Within one month from the date of receipt of the affidavit in support of the counter statement, the Opponent may file Evidence in reply by the Opponent. These provisions are as per Rule 52 of the Trademark Rules.
  6. Filing of further evidence upon Registrar’s discretion:No further evidence is allowed to be filed. However the Registrar of Trademarks may allow the applicant or the Opponent to file additional evidence if he thinks fit in the circumstances. These provisions are as per Rule 53 of the Trademark Rules.
  7. Appointment of a Hearing: After the completion of the evidence stage, the Trademark Office may fix a date of hearing and hear the parties. The decision of the Registrar thereafter is communicated to both the parties.

Trademark Opposition Flowchart:

The procedure of trademark op position is depicted in the form of a flowchart as follows:

microsoft-new-flowchart3

Trademark Renewal, Restoration and Removal:

A trademark can be renewed for any number of times. The renewal must be filed every 10 years. First renewal must be filed 10 years after the date of application of trademark provided it is registered by then. Request of renewal must be filed 6 months before the date of due date of renewal. The due date is the date on which 10 years is completed.

In case the renewal is not filed within the due date as above, the same may be filed within 6 months from due date with enhanced fees.

In case the renewal is not filed as above, the same may be removed from the register of trademarks. In that case, application for restoration of trademark shall be filed within 1 year from the due date i.e. after completion of 6 months of the due date and before completion of 1 year of the due date.

Trademarks Acts

For accessing the Trademarks Act, please  click here
For accessing the Trademark Rules please  click here

Forms and Fees

The Trademark Rules, 2000 prescribes various forms and prescribes fees for various purposes. The same can be accessed here

FAQs

Question: What are trademarks?

Trademarks are words, names, symbols, or devices used by manufacturers of goods or service providers to identify their goods/services and to distinguish their goods and services from goods and services offered and sold by others.

A person who sells his goods /services under a particulate trademark acquires a sort of exclusive right to use the mark in relation those goods/services. Trademark law protects this right of the owner of a mark to use marks that distinguish his goods or services from others and to prevent others from using marks that are likely to cause confusion. Trademark law protects the goodwill of a business and also protects the consumers’ ability to accurately ascertain the source of goods and services.

Question: What type of trademarks can be registered in India under Indian Trademark law?

The following types of trademark can be registered under the Indian Trademark Law:
Names, brands, slogans, numerals, devices, shape of goods, signatures, or any combination of these, sound marks and 3 d marks

Question: What are the qualities of a good trademark?

A good trademark is short, easy to remember and pronounce, and preferably does not have a dictionary meaning or is not a common name.

Question: What is the procedure for registration of a trademark?

The following are the steps:

  1. Conduct a search of the trademark required to be registered
  2. Depending upon the advocates opinion, if the trademark can be applied for, apply for the same by filing an application with the Trademark Registry (TMR)
  3. Trademark Registry will conduct an Examination and issue an Examination Search Report (ESR) stating objection if any to the registration of the subject trademark under certain provisions of trademark law.
  4. Reply to the ESR supporting it with an affidavit stating sales and other details
  5. Trademark Registry if not satisfied fully with the reply, issues notice of hearing
  6. Advocate attends the hearing and argues the case.
  7. Thereafter the TMR notifies its decision such as Accepted or Advertised before Acceptance
  8. The TMR publishes the subject trademark along with the particulars in the official gazzatte knows as Trademark Journal (TMJ)
  9. A waiting period of 4 months is allowed by law for any person to file an opposition to the registration of the trademark published in the TMJ
  10. If the Trademark is opposed, the opposition proceedings begin. If not the trademark proceeds to registration.

Question: What documents are required for registration of a trademark?

Besides the basic details of the particulars of the applicant, we need to have the details of sales affected under that particular trademark and advertisement or publicity carried out for that trademark. These details are required since inception of the trademark. In case the same is not available, sales details and advertisement details of the last few years must be submitted to support the claim of the applicant. In case the trademark is not as yet used or is proposed to be used, these details are not required. To summarize the following details/information is required:

  1. The yearly figures of sales in the last few years or since inception
  2. The yearly figures of advertisement carried out for that trademark in the last few years or since inception
  3. Sales invoices copies (5 to 10 invoices) of each year
  4. Advertisement invoices copies (3 to 5 invoices) of each year
  5. Any other details establishing the track record of the trademark

Question: What does constitute infringement of a trademark?

A registered trademark is infringed if a person uses the same/deceptively similar mark in the course of trade, in respect to the same goods. The test for deceptive similarity is whether the defendant’s use of a mark is likely to cause confusion, i.e., whether an appreciable number of reasonably prudent consumers are likely to be confused or deceived as to the source, affiliation or sponsorship of the parties and their goods and services. The plaintiff need not demonstrate actual confusion or intent to confuse. The ‘likelihood of confusion’ analysis encompasses an evaluation of a variety of interconnected market factors, relating to the likely expectation, perception and memory of consumers.

Question: Where should I file an infringement suit?

A suit for infringement of registered trademark must be filed in the District Court having jurisdiction or in the High Court that has original jurisdiction to try such suits. The jurisdiction and procedure are governed by the Civil Procedure Code. The period of limitation for filing the suit is three years from the date of infringement.

Question: What are relieves that the court may grant in an infringement suit?

The relieves in a suit for infringement include: – Injunction, restraining the further use of the trademark; – Damages or an account of profits; and – An order for delivery of the infringing labels and marks for destruction. If the infringement committed was innocent only nominal damages will be awarded. However, criminal action is possible if fraudulent intention on the part of the infringer is proved.

Question: What are service marks and are they protected in India?

Service marks are trademarks used by business rendering various kinds of services, for eg: travel agents, finance companies etc. There is no provision for the registration of service marks in India, and they can only be protected by an action for passing off.

Question: What forms of protection are available for trademarks?

There are two forms of legal protection that are available for trademarks. Under the Trade and Merchandise Marks Act, 1958, the procedure for registration of trademarks is prescribed in order to afford protection for the same. The most effective trademark protection is obtained by filing a trademark registration application in the Registrar of Trademarks. Once the trademark is registered, infringement can be easily established. In case of unregistered marks and marks which are not registerable, the only form of protection is the common law remedy of passing off. The plaintiff would have to prove sufficient use of the mark so as to create valuable goodwill of the business connected with the goods bearing the mark.

Question: What is the procedure to be followed for the registration of a trademark?

Any person/entity who claims to be the proprietor of a trademark can apply for registration. Before applying for registration, the applicant may apply for a report from the Registrar of Trademarks, as to whether the mark or one similar to it has already been registered or applied for. The applicant can also conduct private searches using the records maintained in the Registry. Thereafter, the application for registration should be filed in Form TM-1, under the Trade and Merchandise Marks Rules, 1959 (“Rules”). The Rules also prescribe the classes of goods with respect to which registration can be applied for (in the Fourth Schedule). If applications are made for registration of the mark in respect of more than one class of goods, then separate applications should be filed for each class. The application should be accompanied by the prescribed fee. After the application is received, the Registrar of Trademarks will examine the same and communicate any objections to the applicant. The objections will mainly be with regard to distinctiveness and similarity with already registered trademarks. The applicant can put forward his case in writing or at a hearing. If the submissions are accepted, the application will be advertised in the Trademarks Journal. In case any objections are received, the Registrar will conduct a hearing and give a decision regarding the same. If no objections are received, the Registrar will enter the mark in the Register of Trademarks and issue a certificate of registration to the applicant. The certificate of registration is valid from the date of application for registration.

Question: What is the duration of registration?

The first registration is valid for a period of ten years and can be renewed for further periods of ten years each by paying the renewal fee. If the mark is not renewed, it will be removed from the Register but it can be restored if a request is made to that effect within one year from the date of expiry of registration or last renewal.

Question: Is assignment of a trademark possible?

The assignment/licensing of trademarks is restricted, because unrestricted licensing has been considered as trafficking in the mark which is against public interest. This is because, a trademark indicates the origin of the goods to the consumer and unrestricted licensing can lead to confusion and deception among the public as to the nature of the goods. According to the law, the assignment of a trademark should not result in the creation of concurrent exclusive rights in more than one person with respect to the use of the same/similar mark in respect of same/similar goods. Confusion or deception can be avoided by territorial limitation or limitation of the goods.

Question: What is licensing of a trademark and how it is useful?

Licensing is allowing the other person to use the trademark on certain terms and conditions against payment of “royalty” by the user to the owner of trademark. Where the owner cannot exploit the trademark on his own, he may enter into licensing arrangements with a user. This way his trademark is used in that area and he earns royalty out of it too.

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