Procedure For Trademark Registration In India- Nasimuddin Khan

INTRODUCTION:

Trademark is a distinctive mark which can be represented in graphical form and includes a recognizable insignia, word, phrase or symbol or combination of colour that denotes a specific product. These marks are used for distinguishing goods and services from all other kind of goods and services. Trademarks are business identifiers as goods and services are sold in market under the said trademark and are popularly known as trade name or brand name or logos. For example Apple and Xerox are trademarks for apple computers and photo copy machines respectively.

Trademarks have acquired considerable significance over a period of time. Around the world, trademarks are governed by the territorial law of the nation. In India they are regulated by the Trade Marks Rules, 2002 and the Trade Marks Act, 1999 which makes the registration of trademark mandatory to enforce their rights under the act.

PRE-REQUISITES OF THE TRADE MARKS IN ORDER TO MAKE IT ELIGIBLE FOR REGISTRATION:

A mark in India can be registered as a trademark and such mark has to fulfil certain requirements:

· Distinctive in character that is it is unique.

· It should not describe the good for which it is used.

· It is not similar to registered and well-known trademarks.

· It should not contain word that is commonly used in normal day to day language.

· It should not have shape of goods by virtue of nature necessary to obtain a technical result.

· It must not comprise of or contain obscene or scandalous matter.

· It must not create confusion among the public or deceive them.

If the particular mark which is to be registered fulfils the abovementioned requirements, then it shall be duly registered as a trademark. And if the requirements are not fulfilled, then it becomes ground for refusal (Section 11 of Trademark Act).

In case of Apple Laboratories v. Boots Company,[1] already registered trade mark was BRUFEN and the new trademark which was sought to be registered was in the name of BRUFSRTE. Registration was refused as there was likelihood of causing confusion.

In British Steel Corporation London v. The Registrar of Trade Marks,[2] as distinctiveness is foremost condition of a trade mark. The burden of proof lies on the applicant to prove its distinctiveness so as to claim monopoly of using the mark.

PURPOSE OF REGISTRATION:

· To provide protection of trademark.

· To restrict the use of fraudulent marks.

PROCEDURE FOR REGISTRATION:

The foremost prerequisite during registration process is the desire of person to register and he/she should either be the proprietor of Trademark or the same must be used by him. Section 18 to 23 of the Trade Marks Act, 1999 provides for the complete process of registration. A complete process of registration is as follows:

Appropriate Office of Registry:

The written application should be filed in appropriate office of Trade Marks Registry. The head office and various branches of registry discharge their functions within territorial limits as defined by Central government. The application has to be filed in office within local territorial limit. An application may be made for registration for one or more particular goods included in one or more classes of goods or services. A Joint application can also be filed where none of them is entitled between oneself and others. Section 18(3) of the Act provides that applicant may or may not carry on business in India but an address for service in India must be properly declared. Section 133[3] states that applicant should obtain information by making an application which is given in the prescribed form.

PROCEDURE OF REGISTRATION BY REGISTRAR:

Upon receipt of a written application, the Registrar’s office undertakes an ex-officio examination.

Ex-Officio Examination of Application:

In this, a search is conducted amongst the registered Trade Marks and pending application in order to determine whether there are on record, similar or same goods or services having any mark which are identical with mark sought to be registered.

Acceptance of Application:

Section 18(4) of the Act confers discretion on the Registrar in relation to application. In compliance with previous provisions he may either accept application or he may refuse the application after recording the ground for refusal in writing.

Advertisement of Application:

After acceptance by Registrar, Application is advertised in Trade Mark Journal(Section 20(1)). Incidental power is being vested in Registrar by Section 19[4] and 20[5] to withdraw the acceptance or to advertise before acceptance.

Opposition, Hearing & Evidence:

As per section 21(1) of the Act, within period of 3 months of the advertisement or re-advertisement of acceptance, a written notice is given, of opposition to registration. The Registrar is required to provide a copy of opposition notice to applicant. The applicant then within two months must submit his counter statement of ground on which applicant relies. The copy of it is served on the opponents(Section 21(3)). All the evidences are then submitted(section 21(4)). The Registrar shall decide after hearing and pass a speaking order stating reasons whether registration is to be permitted or not.

If application is in default, the Registrar must give notice to applicant to remedy the default and the application is treated as abandoned, unless default is remedied in proper time.

Grant of Registration:

According to section 23,[6] the Trade Mark registration is completed before the grant of registration i.e. either the opposition of registration application has not been made or if it was opposed the judgment should have been decided in applicant’s favour. The legislation should not have been prohibited by the central government. If the conditions are satisfied, then the trade mark is registered in the register and the Registrar issues a certificate which act as evidence of trademarks registration. The registration comes into effect from the date of application.

RENEWAL PROCESS:

A Trade Mark is registered for a period of ten years. It can be again renewed within proper time (Section 25 of Trademark Act). On expiration of said period, the registered assignee or proprietor can obtain a renewal on payment of fee by making a prescribed application.

RIGHTS CONFERRED BY TRADE MARK REGISTRATION:

1. It guarantees exclusive rights to the sole proprietor of registred trademark.

2. It provides a remedy to proprietor when any infringement of Trade Mark takes place.

3. After registration, no similar or same marks shall be registered.

4. There is right to restrict the import of those goods and services that are marked with trademarks.

5. A right is conferred to prohibit the use of the Trademark as Trade mark or any part of it of business concerns.

ASSIGNMENT AND TRANSMISSION OF TRADE MARK:

Section 37 to 45 provides for the assignment and transmission of trademark i.e. the registered proprietor can assign as well as can transmit trademark with or without the good will of the business.

INFRINGEMENT OF TRADEMARK:

Trademark infringement in India is a cognizable offence and court may pass award like permanent or temporary injunction, damages, etc. If anyone found guilty of infringement in criminal proceeding, the convicted person will be liable to the imprisonment for a term that may extend up to 3 years and shall also be liable to fine which may extend to two lakh.

DISPUTES RELATING TO TRADEMARK REGISTRATION:

In the case of M/s R.J. Components and Shafts v. M/s Deepak Industries Limited,[7] the Delhi High Court ruled that prior user of a trademark will overrule the subsequent user. This principle will be applicable even if trademark has been registered by the subsequent user.

In the case of Mattel, Inc. & Anr. v. MS. Aman Bijal Mehta & Ors.,[8] plaintiff claim was that one of his registered trademark “BARBIE” was being misused by the defendant in their upcoming bollywood song in ‘Tera Inntezaar’ movie. The plaintiff claimed relief of restraining defendant for not using his trademark. The Court denied his prayer because imposing irrational and arbitrary prior restrain would cause substantial injury to the right of freedom and expression.

The Supreme Court in the case of Patel Field Marshal Agencies and Anr. v. P.M. Diesels Ltd. and Ors.,[9] has said that if rectification proceeding of the trademark in question is pending before the High Court or the Registrar, and at the same time a suit is filed for infringement, then such suit will be stayed.

In the case of Makemytrip (India) Private Limited v. Orbit Corporate Leisure Travels,[10] the plaintiff was knowing about the fact that defendant was using mark ‘GETMYTRIP’ that was deceptively similar to his mark ‘MAKEMYTRIP’ and then also he didn’t took any action for the infringement. The Court did not retrained defendant as proprietor was ignoring the infringement on the repeated basis. The Court also referred to the law of aquiescence while pronouncing decision.

In the case of Lal Babu Priyadarshi v. Amritpal Singh[11], the appellant filed an application for registering ‘RAMAYAYAN’ as his trademark but registrar his application. Aggrieved by the order, the appellant approached Supreme Court. The Supreme Court has held clearly that the in no manner anyone can monopolize the name of holy or religious books as a trademark.

In the case of KRBL Ltd v. Lal Mahal Ltd and Ors,[12] the Court gave its view that the court may provide injunction in case if the delay in filing suit is not substantial and is not explained sufficiently, but if the action is substantially important and has not been explained sufficiently, then the court may deny to restrain the respondent.

LACUNAS IN TRADEMARK REGISTRATION:

1. Territorial Limitation: If any trademark is being registered in India, the it will be valid only in India and for the protection in other foreign nations, an international application has to be filed compulsorily in that country.

2. Import Limitation: Indian trademark law provides safeguard to parallel import of those goods and services without the prior consent of proprietor. This creates a problem as in this case owner of the goods has no right to restrain the importation of goods.

3. Limitation in Fair Use Principle: According to the doctrine of fair use, any third party can use the trademark of others when it is used in distinct context and in this case proprietor is being exempted from claiming exclusive right over his own mark or words.

CONCLUSION:

The best way to protect a mark is the registration of a trademark. Registration of trademark in India is regulated by the Trade Mark Act, 1999. Pre-requisites of a mark must be fulfilled in order to register it. A trademark is registered for a term of about ten years from the date of filing of application and can be renewed after the expiry of said period. Thus, a trademark is secured by the law of the nation where rich trademark exist.

REFERENCES:

Journals & Articles:

· Advocate Amarjeet Kumar, A Holistic Compendium: Indian Trademark Cases Summary, 2015

· Asst. Prof. Eisha Vashistha, Registration of Trademarks in India, 2018

· Chandrakanthi L., Protection of Trade marks: An overview of Trade marks Law in India, pg. 133.

· Intepat Team, Trademark Registration in India, March 10, 2016

· Sudhir Kumar Aswal, Trade Mark Law in India, 2007 pg 288-260.

[1] (29) PTC 265 IPAB (2004). [2] PTC 148 (SOSFT) (UK, 1991). [3] Section 133- Preliminary advice by the Registrar as to distinctiveness [4] Section 19- Withdrawal of acceptance [5] Section 20- Advertisement of application [6] Section 23- Registration [7] CS (OS) No. 900 of 2002 & CC No. 26 of 2003. [8]CS (COMM) 803/2017. [9] Civil Appeal Nos. 4767-4769 (2001) [10] CS (COMM) 643/2017 [11] AIR 461 SC (2016) [12] (62) PTC 82 (Del.) (2015)