This article is written by K C Maseefa. This article provides a comprehensive overview of the trademark registration process in India. It further addresses the procedure for trademark opposition with particular reference to Rule 46 of Trade Marks Rules, 2017.
Table of Contents
Introduction
A trademark is a word, name, symbol, or device that identifies and differentiates goods or services to designate the origin of it. Trademarks are often used to create and build credibility for the owner of the mark and, in addition to this, to differentiate the products’ origin and quality. Trademarks are important for any business since trademarks are considered assets. Although it is not legally mandatory to register them, it would be beneficial since unregistered trademarks offer limited protection against infringement. It will be a proper legal procedure to prevent the use of the same or similar mark by another business upon registration. Trademarking protects the image of the proprietor and his goods and services from being tarnished by counterfeit goods; it distinguishes all the proprietor’s goods and services from all other businesses.
The legal framework for the protection of trademarks that characterise products and services in the market is provided by the Indian trademark law that is primarily governed by the Trade Marks Act, 1999 (hereinafter referred to as “the Act”) and the Trade Marks Rules, 2017 (hereinafter referred to as “the Rules”). The aim of this legislative framework is to safeguard both businesses and customers’ best interests by halting fraudulent activities. India notably requires the Rules to bring trademark registration essential for modernisation and simplification. These regulations superseded the Trade Marks Rules, 2002 and introduced several amendments designed to facilitate and declutter, among other things. A structured fee schedule depending on the applicant’s category and kind of application, electronic filing and communication, and a decline in the number of forms needed for different trademark-related processes are among the key features. These amendments not only result in helping to increase the speed and efficient processing of the trademark applications but they also align Indian trademark procedures with the international standards that are needed to enhance investor credibility and strengthen intellectual property rights protection.
Application for registration of trademark
In India, the application for registration of the trademark can be made by the owners of the trademark themselves. A trademark is actually a property belonging to the trademark owner, who in this case is the owner of the created symbol or phrase used to label his or her commodities or services. If a firm or other entity uses a trademark to represent its products or services, that company will be the trademark owner. Thus, a firm or a person can apply for registration of a trademark.
Procedure of application for registration
The trademark registration involves the following procedure:
Determine trademark validity
Any individual intending to apply for a trademark registration must ensure that the trademark being sought does not violate the Act. Trademarks may violate the Act, if they lack uniqueness, are descriptive, or are frequently used in trade, rendering them unsuitable for distinguishing one person’s products or services from another’s under Section 9. Trademarks that are confusingly similar or identical to an existing mark cannot be registered under Section 11, especially if the resemblance might cause confusion or association with an existing mark among the public. These provisions restrict the usage of non-distinctive or possibly misleading trademarks. Applicants must also verify the distinctive character and the novelty of the trademark or a risk of trademark infringement. To guarantee eligibility and prevent disputes, one must do a comprehensive search on the official website of Intellectual Property India.
Trademark application
The next step for obtaining a trademark is to file a trademark application if all the criteria have been met. According to Section 18 of the Act, a single application may be filed for registration of a trade mark for various classes of goods and services and the fee payable shall be in respect of each such class of goods or services. The applicant has to fill out Form TM-A and this can be submitted either online or offline (to the Trademark Registry). The application can be filed to the relevant intellectual property office, requesting that the mark be examined and approved. It must contain all the details of the applicant, as well as the graphic or textual description of the mark, along with the class of goods or services as per the NICE classification.
Examination by the Registrar
When the application is received, whether online or offline, the Registrar will examine it to determine whether the trademark adheres with the Act and its regulations. The applicant will be notified by the Registrar of any objections to the application. The application must be amended or updated and submitted to the Registrar. The procedure for the examination of the trademark application involves the determination by the Registrar of either procedural shortcomings or any potential issues with existing trademarks.
Publication of trademarks
In accordance with Section 20 of the Act, the Registrar will, as soon as is practical, set up for the acceptance of the application and any applicable restrictions or conditions to be published upon acceptance of an application for trademark registration, whether unconditionally or with restrictions. The authorised trademark application advances to the next step for publication after the objections have been solved. The trademark is then published in the trademark journal–an openly available publication that invites objections from possible third parties. The public has the right to object to a proposed trademark if it seems to be limitating an already-existing one.
Trademark opposition
Trademark opposition is a legal procedure that enables one to challenge a certain pending trademark application. This usually occurs when the trademark Registrar has reviewed and published the trademark application. In case an entity comes across an identical or similar trademark in the trademark journal, then it can file an opposition against the registration. This is governed under the Act and Rules, which include grounds for opposition such as similarities to a registered trademark, descriptiveness, being non-distinctive or the potential to be confused with another trademark. Trademark opposition in India is an opposition procedure of an administrative nature in which one person attempts to prevent another person from registering a trademark. The country’s trademark law is designed to ensure the uniqueness of registered marks and protect creators’ rights.
Any person may, within a period of three months from the date of publication (which can extend to four months), file an opposition against the trademark. Section 21 of the Act indicates that “any person” may oppose a trademark, however, the targeted party is the proprietor of the trademark. In accordance with the standards set forth in Prem N. Mayor And Ors. vs. Registrar Of Trade Marks And Ors. (1969), “any person” need not necessarily have to be the previous owner of the trademark; customers, buyers or members of the public who are likely to come across the goods or services may oppose the registration of a trademark on grounds of confusion or deceit. Therefore, anyone can oppose a trademark application; the Registrar does not consider the opponent’s intention but the grounds presented.
The trademark application, once opposed, is changed to “Opposed” and the Registrar scrutinises the files and hears the arguments from both sides. Ultimately, a trademark becomes registered if it is not opposed within four months of publication in the journal. Only rectification proceedings may be applied to post-registration challenges in order to amend or revoke the registration.
The procedure for opposing a trademark registration is clearly provided under the Rules. As provided in Rule 42, the notice of opposition should be done within four months from the date the trademark application’s publication in the trademark journal using Form TM-O. If various classes are opposed, separate fees must be paid for each class. Form TM-M must be filed to request separation of this application for any of the classes that are not opposed.
A notice of opposition, according to Rule 43, must include information relating to the trademark application being opposed, including the applicant’s name and application number and a list of the goods and/or services that the application has specified. This ensures that it is apparent which application is opposed, or at the least that the move against an application is well anchored legally. The notice must set out every aspect and it must contain every detail of the prior trademark, such as application or registration number, filing date, priority date and status as the case may be. The notice needs to be verified, and this includes information regarding what is known directly and what is based on information deemed reliable. The verification has to be dated, signed by the person who made the verification, and have the place of this signature. Following that, the applicant has two months from the date of the notice of opposition to file the counterstatement using Form TM-O as per Rule 44.
According to Rule 45, the opponent has 2 months’ time from the receipt of counterstatement to file an affidavit in support of the opposition or give a written notice to the Registrar and the applicant stating that they will rely on the notice of opposition and the facts stated therein without submitting further evidence. Any piece of evidence produced has to be delivered to the applicant and the Registrar must be informed in writing that the said evidence has been delivered. If no action is taken by the opponent within the mentioned time, it will be determined that the opposition has been abandoned.
Evidence in support of trademark application
Rule 46 states that the applicant has two months to respond after receiving copies of the opposition’s affidavits or notice that the opponent intends to not submit any further evidence. There are two possible responses available for the applicant:
Evidence submission by affidavit
The applicant may use written evidence, such as an affidavit, to support his/her application. Copies of this evidence shall have to be delivered to the opponent and filed with the Registrar. The applicant needs to assess their case carefully after obtaining the opponent’s evidence. In the event that they decide to provide additional evidence, an affidavit is required. By addressing the issues brought forth in the opposition, this affidavit should firmly support the application. To support the case initiated by the applicant, the applicant should ensure that all records, exhibits and such other documents are provided. When responding to the basis of opposition in a trademark application, the applicant may submit a written response to remediate the claims of the opponent. This response should be delivered along with supporting documents, such as evidence of prior use of the trademark, including invoices, advertising materials, product packaging and proof of the distinctiveness of the trademark. Furthermore, they shall provide an affidavit signed by the applicant or an authorised representative, attesting to the facts that support the application. Taken in combination, these documents of evidence establish the validity of the trademark and therewith effectively respond to the opposition.
Notice of reliance on pre-existing evidence
In the event that new and fresh evidence is not required, the applicant may desire to give a notice to the opponent and the Registrar. Alternatively, they might rely on the evidence that was filed in the counterstatement or any other earlier evidence that may have been filed in relation to the application. Failure to produce additional evidence may be a strategic move. The applicant might decide not to present any further evidence if they feel that the counterstatement and the already-present evidence are sufficiently compelling. Thus, this strategy requires belief in the sufficiency of the initial submissions.
When submitting the evidence, it’s not sufficient that the documents are just filed with the Registrar. The applicant must also ensure that copies of the evidence, which includes any exhibits, are delivered to the opponent. It improves transparency and allows the opponent to be entirely informed of all the documents supporting the applicant. In addition, it is necessary for the applicant to notify the Registrar, in writing, about the delivery of evidence to the opponent. This rule ensures that the Registrar is completely aware with respect to the exchange of documents between the parties so as to make the proceeding more effective and transparent.
Time limit for filing evidence
Rule 46 establishes strict timeframes, emphasising the significance of meeting deadlines in legal procedures. The two months’ time for providing evidence or making the required intimation starts from the time the applicant receives the affidavits of the opponent or notices that no further evidence will be filed. The failure to respond to this time frame has a lot of implications. If the applicant fails to respond the same with evidence or he/she has failed to give the required notice within two months, the application is considered as having been abandoned. This emphasises how crucial it is that the applicant responds promptly and diligently.
The issue of time extensions in trademark opposition proceedings was discussed by the Delhi High Court in the case Sun Pharma Laboratories Ltd vs. Dabur India Ltd & Anr (2024) . It focused on whether a one-day delay in serving evidence may result in the abandonment of an opposition. The matter arose when Sun Pharma’s evidence was filed with the registry on time but served to Dabur a day late. The court reviewed the history of trademark rules from 1959 to 2017, noting that recent amendments removed the possibilities for time extensions formerly available to Registrars. The court found that trademark Registrars no longer have the discretionary authority to extend the time frame for filing evidence beyond the statutorily allowed two months, citing prior rulings and considering the legislative intent behind these amendments.
In order to avoid delays in the registration process, this decision places a strong emphasis on the necessity of adhering to rigorous schedules in trademark opposition processes. The Court further concluded that there was only a delay in delivering the copy of evidence to the Applicant (Dabur), and so an opposition cannot be abandoned merely because of a delay in serving of evidence that was otherwise filed at the registry on time. This decision has a considerable influence on the procedural features of trademark oppositions in India, emphasising the necessity of meeting filing deadlines and perhaps expediting the opposition process.
Relevance of Rule 46
A thorough set of rules is in place to assure speed, fairness, and transparency in the trademark registration procedure in India. One critical aspect of this process is dealing with opposition to a trademark application. In this regard, Rule 46 of the Trade Marks Rules, 2017 is important as it outlines the process for providing evidence of the trademark application in the situation where it has been opposed. Rule 46 highlights the significance of appropriate documentation, which not only speeds up the registration procedure but also reduces the possibility of opposition resulting from inaccurate or incomplete documents.
Hearing and decision
The hearing process is stated under Rule 50, according to which the Registrar is required to notify the parties and the date of the hearing shall be mentioned, which should be at least one month after the notice. Parties may request a hearing adjournment for legitimate reasons, but no more than two adjournments of up to 30 days each are permitted. Failure to attend the hearing could lead to the applicant’s application being abandoned, whereas failure by the opponent could lead to the opposition being withdrawn. Written arguments may be considered, and the Registrar’s decision will be notified in writing.
Conclusion
A systematic procedure for registering a trademark in India is governed by the Trade Marks Act, 1999, and Trade Marks Rules, 2017. Trademarks are essential in product/service differentiation, to create brand recognition, and to protect intellectual property. Registration is not legally mandatory, but having a trademark registered confers certain benefits, such as better protection from infringement and a more transparent legal framework for settling disputes.
Rule 46 is an extremely important component of the trademark registration process in India. The rule empathises with steps and timeframes that applicants have to provide evidence in response to opposition. It ensures adjudication of disputes with speed, justice, and transparency between the parties concerned with the trademark. Notwithstanding the stringent time limits and verification standards under the provisions of the rule, such steps are mandatorily enforced to ensure an effective and expeditious procedure for opposition. Rule 46 emphasises on applicants the significance of being proactive and well-prepared while obtaining evidence and handling oppositions. It guarantees that opponents are kept up to date on all of the applicant’s supporting evidence. Finally, Rule 46 is essential in ensuring the effectiveness and integrity of the trademark registration process in India and protecting the rights and interests of all concerned parties.
Frequently Asked Questions (FAQs)
What laws regulate trademark registration in India?
The Trade Marks Act, 1999 and Trade Marks Rules, 2017 govern the legislation on the protection of trademarks and a structured procedure on how the registration process is to be carried out.
Is it mandatory to register a trademark in India?
The trademark is not legally required to be registered. However, registration of the trademark bestows a number of benefits, including protection against infringement and dispute resolution with clearer legal procedures.
Who can apply for an opposition?
According to Section 21 of the Trade Marks Act, 1999, “any person” may oppose a trademark. The customers, buyers, or users that will use the goods or services can oppose the registration of a trademark on the basis of confusion and deception; “any person” need not necessarily be the prior owner of a registered trademark.
References
- https://blog.ipleaders.in/overview-of-trademark-registration-in-india/
- https://www.intepat.com/blog/a-comprehensive-guide-on-how-to-file-trademark-oppositions/#:~:text=Evidence%20in%20Support%20of%20Trade,of%20opposition%20by%20the%20Opponent.
- https://selvams.com/india/trademarks/opposition/
- https://ipindia.gov.in/Rules-trademark.htm
- https://www.mondaq.com/india/intellectual-property/788896/trademarks-at
Students of Lawsikho courses regularly produce writing assignments and work on practical exercises as a part of their coursework and develop themselves in real-life practical skills.
LawSikho has created a telegram group for exchanging legal knowledge, referrals, and various opportunities. You can click on this link and join:
Follow us on Instagram and subscribe to our YouTube channel for more amazing legal content.
