Trademark Law and Practice in India
The newly enacted Trademarks Law introduced the simplified procedures by adding new provisions and subtracting the old ones in interest of the owner of the trademark and consumer of the goods/services.
The new provisions of the Trademarks Law are also of more significance in context of filing of a trademark application by foreign applicants providing protection to them equivalent to the Indian applicants under Paris Convention and Inter Governmental Treaty.
|The Trade Marks Act, 1999 and Trade Marks Rules, 6th March, 2017 provide for the following :|
|• Service classes are included for same description as of International service classes.
• Multi class application i.e. a single application for different classes can be filed now.
• Registration of Collective mark i.e. a trademark distinguishing the goods or services of members of an association of persons.
• Protection of well known trade marks and test for determination of well known mark.
• The shape of goods, packaging and combination of colours included in purview of trademark definition.
• Period of registration extended from 7 to 10 years.
|Under the Trademarks Law a trademark is considered and recognized as a property and in the various provisions of the Act the term Proprietor is used for a registered/unregistered trademark and has been imposed various conditions and restrictions for the assignment and transmission of proprietary right vested in a trademark.|
|Requirements for Trademarks|
|A trademark should be intended to be used in India and the applicant at the time of application must have a definite and bonafide intention to use the mark. Bonafide commercial sale creates an impact on the buying public and is sufficient ground to establish the prior use of the mark to others|
|A trademark applied for registration should be capable of distinguishing the goods or services of one person from those of others.|
|A trademark means a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right as proprietor to use that mark.|
|Procedure for Registration of a Trademark|
|• Filing of a trademark application.
• Examination of the Application.
• Filing the response against the objections raised by the Examiner
• Acceptance of the application directly or by fixing a hearing.
• Advertisement of application.
• Opposition to registration of trademark application within a stipulated period of time i.e. Three months from the date of public domain.
|Applications Requirements for filing|
|Any person claiming to be the proprietor of a trade mark used or proposed to be used by him and desirous of registering it, shall apply on the prescribed form along with the official fee thereon to the Registrar for the registration of his trademark.|
|• Name and address of the Applicant
• Nationality/status of the Applicant
• We require the representation of trade mark (if not a word mark) in jpeg format whose size should not exceed from 8cm x 8cm.
• Class and description of goods/services
• Priority documents if a Convention Application
• Power of Attorney to be duly executed by the Applicant. No notarization is required only the Applicant has to sign the Power of Attorney to be sent by us. Further it would be duly stamped in India.
• if the mark has been used in India, we would require first date of use in India in the format [day/month/year]. Otherwise, the application would be filed as “Proposed to be used in India’. In case, the trade mark has been used in India prior to the date of application, the applicant shall have to file an affidavit testifying to such use along with supporting documents.
|In case of priority claim, it should be made within 6 months from the date of filing of a trademark application in a convention country and the priority documents should be filed within 2 months from the date of filing of a convention trademark application.|
|Examination of the Application|
|After filing a trademark application proceeds for examination whether the mark is a distinctive mark and is not of descriptive character and similar to the other marks which have been applied for prior to it.|
|In case the Examiner finds any objection in relation to distinctiveness and likelihood of similarity to the other marks in question he cites these objections in his Examination report and asks the applicant to submit his response within 30 days against his objections. A search report citing the conflicting marks against the mark of the applicant has to be sent along with the Examination report|
|Acceptance of Application|
|If the Examiner finds the trademark application in order, he may accept the application under direction of the Registrar of Trademarks and will issue an order of acceptance to the Applicant, otherwise a hearing/discussion would be appointed by the Registrar of Trademarks to settle the trademark application fro registration.|
|After acceptance the accepted trademark application would be advertised in the Trademarks Journal for an opposition by any third interested party and in absence of any opposition the trademark application would be registered.|
|Under the notification of the Government of India now service classes are extended to classes 43, 44 and 45 conforming to the International classification. Previously all services falling in the classes 43, 44 and 45 had to be taken in class 42.|
|An Intellectual Property i.e. copyright, trademark, patent, design and geographical indication right holder can register with Custom Authority in order to take action against the counterfeiting goods entering in the Indian port.|
|Indian Parliament has passed Trademarks Act [amended] to become India a signatory to the Madrid protocol. After being signatory to the Madrid Protocol Indian registrants would be deemed to be registered proprietor of their trademark also in member countries and registrants of a trademark in member countries would be deemed as registered proprietor of their trademark in India.|