Pre-Application Search
Before filing an application for registration of a trademark in India, it is advisable to conduct a search at the Trade Mark Registry for conflicting marks. Search will give you a list of similar or identical marks registered or pending registration at all the Trade Mark Registries in India. This would assist in the preparation of application, anticipating the objections that can be raised during prosecution.
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Filing of Application |
One of the requirements of registering a trade mark is that the mark should be capable of being represented graphically. eg. word, device, label, numerals, combination of colour, shape of goods and packaging and 3 dimensional marks. Sound mark is also registrable when represented graphically.
For registration, either the mark should be used or proposed to be used in relation to the goods or services. Mark is registrable in 34 classes of goods and 8 classes of services. The requirements for filing trade mark application are:
- The details of the applicant
- Representation of the Mark - In case of 3 Dimensional mark and shape marks representation showing different views of the mark.
- Specification of Goods or Services
- Certified copy of the Priority document, if any [ An application claiming convention priority can be filed within 6 months from the date of filing of corresponding application in a convention country ]
- Power of Attorney, if filing through an agent [Power of Attorney can also be filed subsequent to the filing of the application].
An address for service need to be furnished by the applicant. Foreign applicants can use their agent's address in India as their address for service.
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Prosecution of Application |
On receipt of the application with the prescribed fee, the Registry will issue a cash receipt bearing the trademark application number.
The application shall be examined mainly with regard to distinctiveness, deceptiveness and conflicting trade marks in addition to the rules of procedure. If the mark is prima facie not registrable, the Examiner shall send his objection with details of any similar or conflicting marks, if any, to the applicant or to its agent.
The applicant may file his reply with supporting evidence to overcome the objections. If necessary, a hearing before the Examiner may be requested to present the case. On hearing the applicant and based on the evidence submitted, the Examiner may either refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations. If accepted, the Registry publishes the same in the trade mark journal and if there is no opposition to the registration within the prescribed period from the date of publication, the mark shall be registered.
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| Opposition to Registration |
Any person, within three months from the date of publication of an application for registration, or within such further period of not exceeding one months in aggregate, may file his opposition to the registration in the prescribed form. The Registrar shall send a copy of the opposition to the applicant within two months from the date of receipt of the opposition. The applicant shall file his counter statement within two months from the date of receipt of opposition.
Thereafter, both parties shall lead evidence in support of their case by way of affidavit . On completion of evidence, the matter is set down for a hearing and the case is decided by a Hearing officer. This decision is appealable to the Intellectual Property Appellate Board. |
| Infringement and Passing Off |
Registration of trade mark shall give to the registered proprietor the exclusive right to use the mark in relation to the goods of services in respect of which the mark is registered. Section 27 of the Trade Marks Act says that no infringement action will lie in respect of an unregistered trademark and it also recognise the common law rights of the trade mark owner to take action against any person for passing off goods as the goods of another person or as services provided by another person or the remedies thereof.
The main grounds of infringements are :
1. a) the use of a mark is identical and is used in respect of similar goods or services
b) the use of a mark is similar to the registered trade mark and there is an identity or similarity of the goods or services
c) the use of a mark is identical and is used for identical goods or services
and such use is likely to cause confusion on the part of the public or is likely to be taken to have an association with the registered trade mark
2. if the use of a mark is identical or similar to the registerd trade mark and is used for goods or services which are not similar provided that the registered trademark has a reputation in India and the use of the mark without due cause would take unfair advantage of or is detrimental to the distinctive character or goodwill of the registered trademark.
3. adoption of someone else's trade mark as part of that person's trade name or business name.
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| Assignment |
A registered trade mark is assignable and transmissible with or without the goodwill of the business and in respect of either of all the goods or service in respect of which the trademark is registered or of some only of those goods or services. There are restrictions for recordal of assignment, like the assignment creates multiple exclusive rights to more than one person, which would likely to deceive or cause confusion and creating rights on differnt person at different place in India. However, the Registrar has been conferred the power to approve the such assignment or transmission if she is satisfied that it would not be contrary to public interest.
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