Trademarks and Service Marks in India
Filing of Trademarks Application
What is a Trademark?
A Trademark 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 Trademark Law
On February 8, 2007, India ratified its accession to the Madrid Protocol, a system for international registration of Trademarks. In order to bring into force the Madrid Protocol in India, The Trademarks (Amendment) Act, 2010 was passed on 21st September, 2010. The Amendment Act has been implemented as of 8th July, 2013.
- The Trademarks (Amendment) Act, 2010, incorporates a new chapter IV-A containing special provisions relating to international registration of Trademarks. An international application may be made in India for extending the protection in the designated countries within a period of 18 months.
- The Trademarks (Amendment) Act, 2010, also removes the discretion of the registrar to extend the time for filing a notice of opposition for published applications and provides a uniform time limit of four months in all cases.
Trademarks Act, 1999
Some of the important features of the present Trademarks Act, 1999, which was introduced in India from September 15, 2003, are as follows:
Service Marks
A mechanism is available to protect marks used in the service industry. Thus businesses providing services like computer hardware and software assembly and maintenance, restaurant and hotel services, courier and transport, beauty and health care, advertising, publishing and educational services and the like are now in a position to protect their names and marks.Collective Marks
Marks being used by a group of companies can be protected by the group collectively.Well-known Marks
Marks which are deemed to be well-known have been defined by the Trademarks Registry. Such marks will enjoy greater protection. Persons will not be able to register or use marks which are imitations of Well-known Trademarks even in respect of non competing goods/services.Enlarged scope of registration
Persons who get their marks registered for particular goods in a particular class and commence using their marks can sue and prevent other persons from:
- Using the same or similar marks even for different goods falling in other classes
- Using the same or similar marks even only as part of their firm name or company name
- Using the same or similar mark only in advertising or on business papers
- Importing or exporting goods under the said Trademark
- Unauthorized oral use of the said Trademark
Stringent Punishment
The punishment for violating a Trademark right has been enhanced. The offence has now been made cognizable and wide powers have been given to the police to seize infringing goods. At the same time the power of the Courts to grant ex parte injunctions have been amplified.
Appellate Board
An appellate board (IPAB) has been constituted (based in Chennai) for speedy disposal of Appeals and rectification applications.Expedited Procedure
Mechanisms have been set in place for expediting search and registration by paying five times the normal fee.Enhanced Renewal Period
Registered Trademarks need to be renewed every ten years.- License agreements do not need to be compulsorily registered.
- Marks may include the shape of goods.
- Marks may include a combination of colours.
Procedure for Filing a Trademarks Application
1. Legal Basis
- The Trademarks Act, 1999
- The Trademarks Rules, 2002
The law is based mainly on the United Kingdom Trademarks law and provides for the registration of Trademarks 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
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 services 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 Trademarks but they must provide the Registry with an address for service in India, otherwise, they must appoint a registered agent or representative.
Kinds of marks
The law provides for the registration of association trademarks, certification marks, defensive marks and collective marks.
Registrability
To be registrable, a Trademark 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 Trademark, if necessary, and depiction of the graphical representation of the Trademark, 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 Trademark 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 Trademarks. In the case of portraits, the name of the person depicted must be stated.
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.
4. Grant of Trademark
Upon successful examination, the trademark application is published in the Trademarks Journal to allow for any opposition by third parties. If no opposition is filed within the prescribed period or if opposition proceedings are resolved in favor of the applicant, the Registrar proceeds to grant the trademark. The registration is then formalized by issuing a trademark registration certificate. This certificate signifies that the mark is now officially registered, granting the proprietor exclusive rights to its use and protection from infringement.
Once granted, the trademark is valid for a period of ten years from the date of application and can be renewed indefinitely in successive ten-year periods, provided that renewal applications are timely filed. The proprietor is also responsible for maintaining the trademark by ensuring its active use and compliance with relevant laws.
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 Trademark 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.