9354924722 9121230280

Learning

Advisory Services

Archita Bhattacharjee
| Updated: 04 Aug, 2018 | Category: Trademark

Overall Trademark Registration in India: Current Development

Trademark Registration

Trademark is a word, symbol, design, or phrase, or any combination of them, which distinguishes and recognizes the source of goods or services. The special rights for the use of Trademark retains by the owner of a well-known Trademark. Using a parallel/similar Trademark for selling their same or similar products or services are forbidden from the competitors who are in the market.

The Trademark laws of a country helps the consumers to subordinate the products or services they use with a specific Trademark and the businesses to market their products and facilities. As soon as the protection of the Trademark is known to such products or services handed off by them, the consumers of products or services are assured reliability and quality in the products or service station they use. In this article, let us understand about trademark and its registration in detail henceforward. 

What is Intellectual property Rights?

  • Intellectual Property Right is the regulation that administers the rights of the unique composer from any trademark infringement or from anybody who duplicates his/her work. Intellectual property right protects the musical work, artistic work, novels, inventions, or business identity.
  • Intellectual property rights are the exclusive rights arranged to the lawful owner. It is significant to know in factors what are the protections, what is intellectual property rights, what are the rights approved to the owner, and how they can get advantage from these given rights.

Common forms of IP rights in India

forms of IP rights in India
  • Motivation and promotion of new inventions, technical expansion, an artistic and musical expressions is the chief purpose of intellectual property rights, generating overall economic growth.
  • If creators are aware of creating innovations, their work will be safe and protected as well as they can earn profit by way of royalty. Hereby, they can be more enthusiastic to create jobs, cultivate new things, and improve the overall economy.

What do you mean by Trademark Registration?

  • Trademark is a visual registered symbol which is used by an entity to differentiate its business from that of the other business allocating incomparable goods and services in the form of name, designation, logo, label or number.
  • The competitor practices its name to sell its product or service, when the business is popular or successful and has good will in the market. It shall guard its name in the form of trademark registration in India to protect the successful object from such infringements.
  • They frequently face the risk of failure to use their mark in the future or their product reduces from the market, when owners do not pay care to protect their legal rights. Trademark Act 1999 and Trademark Rules 2002 are the Legal provisions for prevailing and regulating the trademark registration in India.

What are the Considered Criteria and Procedure for Trademark Registration?

For the accomplishment of trademark registration in India, the logo or the mark shall meet few requirements.

Those are as follows:-

 Criteria for Trademark Registration

Procedure for Trademark Registration in India

Procedure for Trademark Registration
  • Identify Brand Name: With the help of a search of the trademark on the MCA portal, a registered trademark can be searched. The name should be eye-catchy and must not resemble with the previously registered name. You can also go for a search by trademark database maintained at the official website of intellectual property. Link is: – http://www.ipindia.nic.in/.
  • Prepare Trademark application: With an application for applying online, kindly prepare the supporting documents to take possession of the same. Necessary documents should be attached and the approved government fee of ‘INR 4500’ shall be paid for the Trademark registration application.
  • Apply for Trademark Registration in India: It can be done online or offline mode as per the suitability of an applicant. The applicant should move individually, or conveyance the application-supporting documents to the Registrar Office of Trade Mark, if willing to apply offline.
  • The applicant must official visit the online website of Trademark registration and shall complete the application and attach the supporting document, it applies online.
  • Delhi, Chennai, Mumbai, Kolkata, and Ahmadabad are the Regional office for trademark registration. The registrar will produce acknowledgment to an applicant on the receipt of the application.
  • Verification of Application: Registrar will verify the application upon receipt of such an application. He will scrutinize for its correctness and the brand name applied for shall be complied with existing law. There shall be no conflict or dispute existing between existing or pending brand name.  
  • Publication of TM in Indian Trade Mark Journal: Once the entire verification and examination are completed, the registrar shall publish the Trademark in Indian Trade Mark Journal. The trademark is kept open for any objection. and in case there is no objection within 3 months of publication such trademark can be used by the owner thereafter.
  • Trademark Registration Certificate: The registrar will issue a registration certificate even if the above stated period of 3 months expired, as there is no objection on such a period. Once the trademark certificate is issued, the applicant can use there registered trademark symbol beside the brand name.

What do you mean by Domain Name?

  • Domain Name a process of Internet Protocol address which is human-friendly. The Domain Name is usually used to find services which any consumer needs to explore for information regarding a product or services or websites of products. It is the online uniqueness of a specific person, organization, or creation.
  • It leads to the page in which the owner of the domain name desires to be observed by whole of the general public as soon as they visit the Domain of the website of the owner of the domain name.
  • In general, companies and traders usage the business or trade names used by them as their online identity in the course of business, or domain name itself.
  • Notwithstanding the location of the owner of the Domain Name, it is a perpetual address that can be accessed by anyone from any place in the world. Consequently, Domain Name registration stretches a worldwide presence to the online individuality of a person or organization.

What do you mean by Passing Off?

  • The owner of Trademark can take action if any person sells his/her goods as the goods of another person, as this act can turn out to be a case of Passing-Off of Trademark. 
  • The law of Passing-Off is casted-off to safeguard or protect the reputation and goodwill devoted to an unregistered Trademark. It becomes a suit for Trademark Infringement when any Trademark which is already registered by the owner and any generous of Infringement happens.
  • On the other hand, such case converts to a case of Passing-Off if the Trademark is not registered by the owner and Infringement happens. The Passing Off of Trademark is a common law remedy, not a statutory remedy.

What do you mean by Joint Ownership of Trademark?

  • If an entity jointly created by both or to share the goods and services produced by both jointly e acting as Owner of a Trademark, then it is known as Joint Ownership of a Trademark. It also witnesses the joining of the economic worth of Trademark.
  • Section 24 of the Trademark Act, 1999 has prescribed provision for Joint Ownership of Trademark. The Joint Ownership of Trademark is termed as a mutual agreement in the middle of both the parties and entities to possess/own a Trademark collectively.
  • It does not allow entity or anyone of the party to be the complete owner of the Trademark. Therefore, the Registration of Trademark will be done in the name of both the parties and entities jointly.
  • Either of the parties or entities whereas entering into Joint Ownership of a Trademark needs a standard place of business essentially in India (As per Section 18 of the Trademarks Act, 1999).
  • The profits produced from the business of Joint Ownership must be equally divided among both joint owners as per the standings mentioned in the contract agreement.

Read our article:Trademark of Domain Name in India

What do you mean by Trademark Infringement & Trademark Renewal?

  • Trademark Infringement is unlawful use of a mark by an unsanctioned person, which is matching or deceptively alike to an already registered Trademark.
  • The term ‘misleadingly/deceptive similar’ means that when a common consumer expresses at the mark, it will be puzzling the consumer with the other recorded/listed trademark.

The provisions related to Trademark Infringement three main objectives, which are as follows:

 Trademark Infringement provisions

Trademark Renewal Expiration Prospect

  • The Registration of Trademark expires after 10 years in India. In order to retain the Registration of Trademark everlasting, an application for Renewal of Trademark must be filed either ‘online or offline’ to the Registry of Trademark. The application must be filed with the recommended fees to the Registry as said above.
  • The procedure of Renewal of Trademark must begin at least 6 months in advance – the date of the expiration of Registration of the Trademark. It helps the owner of registered Trademark to keep the Trademark permanent and perpetual. The Renewal of Trademark can be done as many times & many years, the owner of Trademark wishes to keep the status registered and active.

What is Trademark Restoration & Trademark Opposition?

  • The owner of the registered Trademark can apply for Trademark Restoration, as per Section 22(4) of the Trademarks Act, 1999.
  • Trademark Restoration is the procedure of carrying back the Trademark, which is removed to the Register of trademarks at the Registry. Due to absence of timely Trademark Renewal of the previous or original Registration of the Trademark, such removal of Trademark from Register gets instigated.
  • After 6 months and within 1 year from the date of expiration of the last registration of Trademark, the application for Restoration can be filed. It should be filed in Form TM-R by means of the Restoration fee and the prescribed Renewal fee. 
  • The Registrar should create an advertisement in the Trademark Journal about the Trademark Restoration after the acceptance of the request for Restoration.

Trademark Opposition Prospectus

When the Registrar approves the application of Trademark Registration in India, then the Trademark Opposition comes into operation. The Trademark Register purity is the vital concern, therefore, the Indian Trademark Act, 1999 has a scrutiny process (3 tires) to check and confirm the purity of Register of Trademark.

The three tires scrutinize are as follows:-

Trademark Opposition Prospectus
  • Trademark Rules, 2017: The guidelines given under Trademark Rules, 2017 says that third party can file the Opposition as per prescription. The primary motive of common public should get to know about the overall content of the application to make via an advertisement for the application of Registration.

What are the Significant Developments in relation to Trademark, 2019?

There have not been many legislative or regulatory developments in the last year concerning the Trade Mark. Nevertheless, two prime case laws have considered with some jurisprudential few.

Those are as follows:-

Case Law: – M/A Nandhini Delux Vs. M/S. Karnataka Cooperative Milk Producers Federations LTD (Civil Appeal Nos. 2937-2942 of 2018 with Civil Appeal No. 2943-2944).

Held: –

The Supreme Court in this case, has re-affirmed that, there will be no trademark infringement if two different products are marketed by different companies applied with deceptive similar trademarks. 

Case Law: – Carlsberg Breweries A/S vs. Som Distilleries and Breweries

Held: –

The court in this case has discussed two relevant topics, the Under Design Act and Trademark Act. It says that, two-act can be adjudicated together within its deliberations. It says that, the remedy for a Passing off for a registered design can bring:-

  • If the Design which is registered not functional as a trademark
  • If passing off is claimed for trademark infringement or any by that name.

Conclusion

With the contemporary situation of the Novel Coronavirus at hand and the lockdown position in India, numerous courts, tribunals and other judicial organizations have taken diverse steps for functioning amidst the unparalleled situation. Hereby, the Intellectual Property Offices comprising of the Trademark office, Copyright Office, Patent Office, and Design Office have delivered various notifications regarding scheduled hearings and also document compliances.

You can visit their official website to get all the Updates as per your requirements. Moreover, the group of Corpbiz has experienced professionals to help you with the process of trademark Registration inclusive of all the compliances. Our expert will ensure the successful and favorable completion of your work.

Read our article:Advertisement of Trademark Application in Trademark Journal

  •  
  •  
  •  
  •  
  •  
  •  
  •  
  •  
Archita Bhattacharjee

Archita Bhattacharjee is working as Legal Analyst (Team Lead, Research & Development) at Corpbiz and has proving experience about 2 years as Corporate Legal Researcher in law firms as well as Rajya Sabha and authors in diverse publications. She has refined her skills by representing India in Paris, France and the University of Leiden over implications of International Humanitarian and Criminal Law being certified member of many Legal Centers.

Advisory Services

Sakshi Srivastava
Sakshi Srivastava | Date: 27 Oct, 2020

How to win a Trademark Infring...

Trademark infringement case is famous due to numerous grey areas in the analysis of intellectual property rights la...

Continue Reading
Sakshi Srivastava
Sakshi Srivastava | Date: 07 Dec, 2020

Overview on Cost of Trademark...

A Trademark is a branch of Intellectual Property Rights which aims to protect the owner of the goods and services f...

Continue Reading

Request a Call Back

Are you human? : 6 + 4 =

Transform your Business. Subscribe our Newsletter.