In India, the process of registration is governed by Chapter III of The Trademark Act, 1999 (hereinafter referred to as the Act). The trademarks are registered by the Trademarks Registry. On registration of a Trademark, the ® symbol is used to denote the completion of the registration after the registered word or logo. Registration of a Trademark is mandatory in India if the owner wishes to enforce their related rights. But since India is a first-to-use country, an unregistered trademark may be protected by passing off under the common law. A first-to-use system provides for protection of the mark which was in use first, irrespective of its registration status. This protects the goodwill attached to the unregistered Trademark. Thus, if any other person tries to pass off his/her products as the owner’s product by using a similar trademark, the owner can file for an injunction and damages under the remedy for passing off.
REQUIREMENTS FOR TRADEMARK REGISTRATION
For a Trademark to be eligible for registration, certain basic requirements must be met:
The mark must be capable of being represented graphically.
The mark should be unique and capable of distinguishing the owner’s goods from the others’.
The mark must not be barred under any Indian law.
The mark may be suggestive but not descriptive.
PROCEDURE FOR REGISTRATION
Trademark Search: The primary step for proprietors in the process of registration should be to conduct a trademark search to ensure that a substantially similar trademark doesn’t already exist. It determines if the owner is eligible to use a certain mark or a phrase, etc. in relation to a certain class of goods or services. This search may be conducted online, on the Trademark Registry by putting the proposed trademark and the class of goods or services associated with it. The Registry then provides a list of all the similar trademarks ever registered in the same class. This allows the owner to conduct a comparative analysis and decide upon the eligibility of the proposed trademark.
Application for Registration: Section 18 of the Act provides for application for registration of a trademark. Accordingly, the person claiming to be the trademark owner shall apply to the Registrar in writing by submitting Form TM-A and pay the required fee as per the class the said product or service belongs to. The application must be filed in the office of the Registry within whose territorial limits the place of business is established. The head office of the Registry is located in Mumbai. Additionally, there are four branch offices at Ahmedabad, Chennai, Delhi and Kolkata. The application may also be filed online (E-filing) via the Trademark Office Portal.
A Trademark application must mandatorily include:
the details of the logo or the mark,
name and address of the owner,
the date since the Trademark has been in use and
the description of goods or services.
On filing of the application, an allotment number is given to the owner, post which the trademark can be displayed with the ‘TM’ symbol.
Examination of the Application: After filing, the Registrar shall apply Vienna Codification to the proposed mark. On completion of the codification, the application may be refused or accepted by the Registrar after a thorough examination of the application. The acceptance may be conditional or absolute. In case of the former or in case of refusal, the grounds and the material used by the registrar shall be recorded in writing as an Examination Report. The Applicant shall file a response to the Examination Report by stating his part of the arguments.
Section 19 provides for withdrawal of the acceptance before the registration is completed in case of an error.
Further, under Section 22, the Registrar may, at any time, permit an amendment to the application for correction of any error or otherwise. This may be done by filling Form TM-M and paying the prescribed fees.
Advertisement of the Application: As per Section 20, the application after acceptance must be advertised and published in the Trademark Journal. Within 4 months of such advertisement, a notice of opposition to the registration may be given to the Registrar along with a prescribed fee. A counter statement must be filed to such notice within 2 months by the applicant. For submitting the notice of opposition, an Application for Rectification of the Register or filing a Counter statement , Form TM-O shall be filled.
Under Section 21, after hearing both the parties, the Registrar shall decide upon the grant of permission to register.
Registration: After the expiry of time of opposition or the denial of opposition, the Registrar shall register the trademark within 18 months of filing of the application. On such registration, a Certificate shall be issued with the seal of the Registry. The register or the certificate may be amended under Section 23, by the Registrar, in case of any correction.
Renewal: As per section 25, the registration of the trademark shall be valid for 10 years before the applicant may file for renewal via Form TM-R with the required fee within 6 months of expiration. The Registrar ought to send a notice of expiration before the date of expiration of the registration or last renewal. In case of removal of the trademark from the register in case of non-payment, the same may be restored if the applicant files for renewal within one year of the expiration of the trademark.
E-filing of TradeMarks, Controller General of Patents, Designs & Trademarks, https://ipindiaonline.gov.in/trademarkefiling/user/frmLoginNew.aspx
Forms and Fees, Trade Marks, Controller General of Patents, Designs & Trademarks, https://ipindia.gov.in/form-and-fees-tm.htm
The Trademark Act, 1999
Trade Marks Registry, Department of Promotion of Industry and Internal Trade, https://ipindia.gov.in/trade-marks.htm