A trademark is a unique sign that identifies the goods or services of one business and distinguishes them from others. The procedure for trademark registration in India is provided in the Trade Marks Act, 1999. It is important to register a trade mark to get benefits of such registration. A registered trademark ensures that no one copies or misrepresents your brand. Further, it helps your business to build goodwill and protects the customers from any deception or confusion. A trademark does not have a set limitation period and can be renewed every 10 years.
Trademark Search in India
The trademark search finds out whether a proposed trademark is available for use in connection with certain goods and services. To file a trademark Application, the goods/services need to be categorized as per their Class or Classes so that the Application seeking protection is filed in the correct class. For this purpose, India follows the Nice Classification of goods and services. A public trademark search is made in the database of the Indian Trade Marks Registry. Similar word marks, as well as phonetically similar names in a specific class, can be searched in this Registry.
Why conduct a Trademark Search
1. A trademark search provides details of any existing similar trademark.
2. Provides details of the trademark which are phonetically like the proposed trademark.
3. Provides details of any well-known trademark which are like the proposed trademark.
4. A trademark search can give details of a similar logo or device under the Vienna Code Classification.
Trademark Search in India
An online trademark search can be done free of charge at the database of the Trade Marks Registry of India. The trademark search interface is divided into three categories:
1. Wordmark: Filing a wordmark prevents third parties from using the brand name of the original trademark. A wordmark can be searched using the following prefix methods:
Starts with: Shows all trademarks starting with the keyword.
Contains: Shows all the trademarks containing the keyword.
Match with: Shows all trademark matching with the keyword.
2. Vienna Code: The Vienna Code classification is an international standard of figurative elements. It contains a broad category of 29 elements that may form a part of the trademark.
3. Phonetic: The Phonetic search is important as they show how the mark may be perceived by a customer. If phonetically similar marks exist in the same industry, they may cause confusion.
Trademark Classification
There are 45 Classes of trademark registration in India. Classes 1 to 34 deal with various goods and Classes 35 to 45 deal with services according to the Nice Classification. Only a single Class can be searched at a time in the Trade Marks Registry of India.
Trademark Registration in India
The application for trademark registration in India is followed under Section 18 of the Trade Marks Act, 1999. Any person who is the proprietor of the trademark used or proposed to be used may apply in the prescribed manner to the Registrar of the Trade Marks Registry, India. The application should be filed under their specific classes. A single application may be made for different classes of goods or services and fees should be paid separately for each class.
Application details
The name, business, principal place of business, et cetera, is mentioned in the first half of the application. After this, the Class of the goods or services is mentioned as per the Nice Classification. In the following part, a detailed written description of the trademark is entered.
Eligibility
The applicant must be eligible to file a trademark registration application. An applicant is eligible if he is the owner of the trademark and can prove his ownership. Ownership of a trademark is proven by stating that the trademark has been used for a good amount of time. Thus, the people associate the goods or services of the applicant with his trademark.
Application filing procedure
The application should be filed at the Trade Marks Registry office. The Place of business of the applicant must be under the territorial limits of the office of the registry. If there are joint applicants, the name of the applicant whose name is mentioned first in the application is given. For this, the joint applicants must have a place of business in India. In the case that the applicant or the joint applicant does not carry on business in India, the application should mention the place for service in India and must be filed at the Trade Marks Registry office within whose territorial limits that place is situated.
Who can file an application for trademark registration in India?
A trademark application can be filed by:
1. The owner of a trademark.
2. The attorney of the owner.
3. Persons who have the authority to become owners. For example – Licensee, Assignee or any other agent.
The applicant must attach an annexure with the trademark application. An annexure is the graphical representation of the trademark. An application for trademark registration in India can be filed at the head office or any of the 4 registered offices. Yet, most applications are filed digitally.
How much does it cost to register a trademark in India?
The applicable fee for trademark registration in India is Rs. 9,000 per class for a company in a single application. In the case of an individual, the fee for trademark registration is Rs. 4,500 per class and application.
Term of trademark registration in India
Trademark registration in India lasts for a term of 10 years from the filing date. Thereafter, a renewal application can be filed within 1 year before the expiry or within 1 year after the expiry of the registered trademark. A trademark can be renewed an unlimited number of times, lasting for a period of 10 years each.
Trademark Opposition in India
During the trademark registration procedure in India, a refusal provision can be brought against the registration of any trademark in two situations:
First instance – Objection and refusal from the Indian Trade Marks Registry
Second instance – Opposition from the third party after publication in the Trademark Journal.
The Learned Examiner while examining the application mostly raises objections under Section 9 and Section 11 of the Trade Marks Act,1999. Section 9 relates to the distinctiveness of a trademark and Section 11 deals with conflicting trademark issues.
Trademark Opposition Procedure
Once the Learned Examiner of the Trade Marks Registry allows for registration, the trademark is published in theTrademark Journal. Thereafter, it is open for opposition from any third party who may be affected by the registration of such a trademark in India. The period of opposition is 4 months from the date of publication of the trademark. A trademark is published in the Trademark Journal so that anyone may object against the registration of a trademark. It is a legal challenge in the trademark registration process.
After filing the opposition, the status of the trademark application appears as Opposed in the records of the Trade Marks Registry.
Timeline for filing an Opposition
The Notice of Opposition against any published trademark in India is 4 months from the date of publication in the Trademark Journal. The application for Opposition should be filed with the Govt. Fees within the specified period. There is no provision for an extension of the time limit.
Who can file a Trademark Opposition?
According to Section 21 of the Trade Marks Act,1999, “any person” can file an application for opposition before the Trade Marks Registry of India. “Any person” can be an individual, incorporated body, partnership firm or any trust. There can be multiple applications for Opposition. But each application is dealt with individually.
Generally, an applicant for trademark opposition can be:
1. The owner of a trademark that is in prior use and where the advertised trademark is conflicting in nature. It can be visually and phonetically conflicting.
2. The owner of any pre-existing trademark. When the goods and services are similar to the advertised trademark.
Grounds for Trademark Opposition
After the advertisement of any trademark in the Trade Marks journal. An application for opposition can be filed before the Registrar of Trade Marks, India within 4 months on the following grounds:
1. The trademark is confusingly similar or identical to a trademark registered before.
2. There is a descriptive quality to the mark.
3. The mark has a descriptive quality to it.
4. The trademark application is made in mala fide intention.
5. The mark is common in today’s language or in established practices of the business.
6. The trademark is likely to deceive the public or cause confusion.
7. The trademark is illegal or is prohibited by law.
8. The Emblem and Names Act of 1950 prohibits the use of the trademark.
9. The mark contains material that could offend the religious sentiments of any class or group of persons.
Where can the Notice of Opposition be filed?
During the trademark registration in India, a third party may wish to oppose the trademark. The Notice of such Opposition should be filed before an appropriate branch office of the Trade Marks Registry. The Opposition should be in the same office where the trademark application has been filed. For Example, If the trademark application has been filed at the Mumbai office of Trade Mark Registry, the Opposition must be filed at the same office.
Procedure for filing Trademark Opposition
During the trademark registration procedure in India, anyone can oppose a trademark. The Opposition can be filed if a mark is deceptively similar in nature to the opposing trademark. The Trademark Opposition procedure follows the various stages, such as:
Filing of Notice of Opposition – Anyone can file an application for the opposition of a trade mark. The same should be filed within 4 months from the date of publication of the trademark in the Trademark journal. The application should be filed before the Trade Marks Registry of appropriate jurisdiction. The third-party will be referred to as the Opponent in the process.
Filing of Counter-Statement – The applicant should file the submission against the notice of Opposition. It must be filed within 2 months from the date of receiving the notice of opposition. If not submitted on time, the application for registration will be abandoned by the Registrar of Trade Marks. There is no provision for extension of time in the Indian Trade Marks Act, 1999.
Evidence in Support of Opposition – The opponent should file evidence in support of the opposition in the form of an affidavit. The same must be done within 3 months after the applicant submits the counter statement. The Opponent may also write to the Registrar by not filing for any Evidence and solely relying on the statements made in the Notice of Opposition.
Evidence in Support of Application – The applicant after receiving evidence from the opponent can file an affidavit. The affidavit has to come with evidence supporting the application. The same must be filed within 2 months (maybe extended to one month).
Reply Evidence: The Opponent can file extra evidence to counter the evidence of the Applicant within 1 month(maybe extended to one month).
Trademark Opposition Hearing
After completion of all procedures, the Registrar will serve the notice for hearing for trademark opposition. The applicant and the opponent may appear at the hearing. Both parties can appear personally or through an attorney. Both the parties should intimate the Registrar about the participation. The intimation from both parties should reach the Trade Marks Registry within 14 days after receiving the notice. On hearing both sides, the Registrar decides the trademark opposition case and passes the appropriate order.
The trademark application is registered if the opposition proceeding is dismissed. Thereafter, the trademark registration certificate is issued accordingly.
If the opposition proceeding is valid and the trademark application is refused. The trademark will not be registered and no registration certificate will be issued.
Conclusion
The trademark opposition procedure ensures the non-registration of any deceptively similar trademark. Thus, the opposition procedure prevents the possibility of deception or confusion in business. It is important for the prior user to be alert against any deceptively similar trademark. For this, the help of an Intellectual Property Attorney is essential.
Trademark Renewal in India
In India, the registration of a trademark is valid for 10 years. Thus, the registered trademark should be renewed after every 10 years. The registered proprietor can renew the trademark for 10 years either from the date of registration or from the date of last renewal by paying the renewal fees.
Under Rule 57 of Trade Marks Rules, 2017, an application for trademark renewal may be filed through form TM – R along with the fees. The application for renewal can be filed not more than 1 year before the due date of renewal. The due date of renewal is considered from the date of registration or from the last renewal date. On receiving the renewal fees, the Registrar will renew the trademark for 10 years under the provision of Section 25(2) of the Trade Marks Act,1999.
According to Section 25(3) of Trade Marks 1999 and Rule 58 of Trade Marks Rules, 2017, if no application for trademark renewal in India has been filed, the Registrar will serve notice through RG – 3 to the registered owner or to the authorized attorney for renewal of trademark. It is served not more than 6 months before the expiration of the registration of the trademark.
When any trademark is due for renewal, it can be renewed at any time within 6 months after the actual date of registration. If the renewal fee is not paid within the specified period, the Registrar will remove the trademark from the register subject to Rule 60.
Under Rule 59, the Registrar may remove the trademark from the register. It is done for non-payment of renewal fees after the registration expires. The removal is advertised in the journal.
The Registrar will not remove the trademark if the renewal fees are paid with surcharge under proviso to sub-section (3) of Section 25. This payment should be made within six months from the expiration of the registration of the trademark.
Under Rule 60, an application for restoration and renewal of a trademark can be made within 1 year from the expiration of the registration of the trademark. The application should be filed through TM-R along with requisite fees.
A notice is sent to the registered proprietor on the renewal and restoration of the trademark. The provisions for the same is under Rule 61 of the Trade Marks Rules, 2017. The trademark, when restored and renewed, will be advertised in the Trademark Journal.
Legal Protection
In the court, one may take legal action against anyone who infringes upon the trademark.
Continuous Ownership Rights
The owner gets an extension on his exclusive rights. He continues to enjoy his rights for a further period of 10 years. Thus, it continues long-term protection.
A Different Identity
The very first stage in guaranteeing your customers’ contentment in identifying your services or products with your brand is to register your trademark. Following that, the legislation will prohibit the registration of any comparable terms or slogans for any other goods or services.
Brand Name Security
Renewal of a trademark ensures the indefinite protection of the brand name is and without interruption, as well as providing security. Disappointment and failure to renew the trademark results in the loss of legal protection for the brand name.
The trademark renewal fees in India for each class is Rs. 9,000 for e-filing and Rs.10,000 for physical filing.
