Trade Marks in India: An Overview

A Trade Mark is any sign which can distinguish the goods and services of one trader from those of another. A sign includes words, logos, colours, slogans, three-dimensional shapes and sometimes sounds and gestures.

A trademark is therefore a "badge" of trade origin. It is used as a marketing tool so that customers can recognise the product of a particular trader. To be registrable in India it must also be capable of being represented graphically, that is, in words and/or pictures.

Changes in the Indian Trade Mark Law

1. Legal Basis

• The Trade Marks Act, 1999
• The Trade Marks Rules, 2002

The law is based mainly on the United Kingdom Trade Marks law and provides for the registration of Trade Marks which are being used, or which will be used for certain goods to indicate a connection between them and some person who has the right to use the marks, with or without any indication as to the identity of the person.

2. Filing a Trademark Registration in India

• Application for registration:

  An application for registration may be made by any person claiming to be the proprietor of a mark but only as regards the particular goods or service in respect of which he/she is using or proposing to use the mark. At the time of filing the application, the proprietor must have the intention to use the mark himself/herself or though a registered user.

• Foreigners and nationals not living in the country:

  Such persons may be recorded as being registered proprietors of Trade Marks but they must provide the Registry with an address for service in India, otherwise, they must appoint a registered agent or representative.

• Kind of marks:

  The law provides for the registration of association trademarks, certification marks, defensive marks and collective marks.

• Registrability:

  To be registrable, a Trade Mark application must contain or consist of the following essential particulars:

  • The name of a company, individual or firm represented in a special or particular manner;
  • The signature of the applicant for registration or some predecessor in his/her business;
  • An explanation with sufficient precision, a description by words of the Trade Mark, if necessary, and depiction of the graphical representation of the Trade Mark, which may be:
    • One or more invented words;
    • One or more words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name, or a surname, or a personal name, or any common abbreviation thereof, or the name of a sect, caste or tribe in India;
    • Any other distinctive mark. No Trade Mark shall be registered in respect of analgin, aspirin, chloropromazine, ferrous sulphate, piperazine and its salts such as adipate, citrate and phosphate or for a new single ingredient drug first introduced in India. The Indian national flag, the name or pictorial representation of Mahatma Gandhi, Jawahar Lal Nehru, Chatrapati Shivaji or the Prime Minister of India and the names and emblems of certain international organizations may not be registered as Trade Marks. In the case of portraits, the name of the person depicted must be stated.

• Service marks:

  Registrable in India in eleven classes (35-45).

• Priority:

  Can be claimed from the earliest corresponding application in a Convention country provided that an application is filed in India within six months of the priority date. Multiple and partial priorities are allowed.

• Classification:

  The international classification of goods is used and separate applications must be filed for goods falling in different classes. Classes 1 to 34 are available for goods; and classes 35-45 are available for services.

• Territory Covered:

  The Trade Mark legislation covers the whole of the territory of India, including the States of Jammu and Kashmir and the territories of Goa, Daman, Diu, Dadra, Nagar Haveli and Pondicherry.

3. Examination

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.

• Amendments:

  An application may be amended provided the amendment does not constitute a major alteration of the mark.

• Ground for refusal:

  Registration may be refused in respect of marks which are scandalous or obscene, which are likely to deceive, cause confusion, or offend religious susceptibilities, which are contrary to the law or morality, or which would otherwise be disentitled to protection in a court, which are accepted chemical names or which are identical to other marks for the same goods or description of goods. In the case of identical marks, registration may however be allowed upon proof that the mark was being used concurrently and in good faith.

• Hearing:

  A hearing may be sought with regard to applications which the Registrar proposes to refuse and an appeal may be made to the Intellectual Property Appellate Board against any orders issued at a hearing.

4. Grant of Trade Mark & Protection

• Opposition:

  Applications that have been accepted are advertised in the Trade Marks Journal and opposition may be filed within three months of the date of advertisement; an extension time of one month for filing the opposition may be obtained upon application. The Register was formerly divided into two parts. Part A contained the marks already registered under the Trade Marks Act 1940, and all marks which were distinctive or had acquired distinctiveness (satisfactory evidence to this effect must be produced) could be registered in Part A of the Register. Part B contained marks which could not be registered in Part A or which were not distinctive but were capable of distinguishing the goods of the applicants. Since 2003 this distinction has been removed. There is now only a single register.

• Duration of registration:

  Ten years, renewable for further periods of ten years each.

• Renewal fees:

  Must be paid before but not more than six months before the date of expiry of the last registration; a mark may be restored within one year from the last date of renewal upon application to the Registrar, either completely or subject to such conditions and limitations as he/she may think fit to impose. A Trade Mark which has been removed from the Register for non-payment of renewal fees can be cited against an application for registration during a period of one year as from the date of removal.

• Assignment:

  A registered Trade Mark can be assigned with or without the goodwill of the business concerned. An unregistered Trade Mark is not assignable without the goodwill of the business concerned except if it is used in the same business as a registered Trade Mark and assigned to the same person and along with a registered Trade Mark covering the same goods.

• Registered user:

  The Central Government can refuse the registration of a registered user if it is against the public interest or the development of industry, trade or commerce in India. Before doing so the Central Government must disclose the facts and circumstances on the basis of which it proposes to refuse the registration of a registered user and give the applicant an opportunity of a hearing.

• Marking of goods:

  The law does not prescribe that a registered Trade Mark, when used by its proprietor, be described as such on the goods to which it is applied nor does it require that the proprietor's identity be disclosed. Where a mark is used by a registered user, however, goods must be marked in such a way as to disclose the identity of the registered proprietor and the fact that the mark is being used by the registered user by permission of the registered proprietor. All goods imported into or manufactured or assembled in India may be required to be marked in such a way as to indicate their country of origin. Under Section 139 of the Act, the Indian Government will, from time to time, issue notifications specifying the manner in which the goods are to be marked.

• Rectification for non-use:

  The Register may be rectified (removal of a mark) in respect of a registered mark and one of the grounds for applying for rectification is the non-use of a mark for a period exceeding five years and one month before filing of the rectification application unless there are special circumstances excusing non-use.

• Infringement:

  Suits may be filed against the infringement of registered marks and in any suit, registration may be regarded as valid in all respects even years from the date of registration. Unregistered Trade Marks with reputation in India or internationally Well-known Trade Marks can be protected against misuse in a passing off action.