Trademark Law
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This article has been written by Pradhnya Deshmukh, pursuing the Certificate Course in Trademark Licensing, Prosecution and Litigation from LawSIkho.

Introduction

A trademark is the most valuable intangible asset a business has in terms of brand recognition and future of the business. A registered trademark protects a brand more widely than a simple brand name or a domain name. A trademark grants recognition to a brand which helps to distinguish its goods and services from that of competing businesses in the market, thereby assisting in building goodwill and revenue. By acquiring ownership of a trademark via registration, the exclusive, legal right to use your brand is given in order to set apart your business.

Frequently, due to ignorance or some inaccessibility, business-owners fail to value their trademarks appropriately and end-up losing enormous value in intangible assets such as, brand names, slogans, packaging, smell and also goodwill and reputation. Businesses can also gain revenue from selling, licensing or assigning a registered trademark.

This article is meant to bring forth a comprehensive guideline with respect to the various procedures involved in the trademark application process and trademark administration in India. This article touched upon the topics of making the right selection for a trademark and its goods and services, pre-registration due-diligence, parties to an application, documents required, mode of filing, costs, form and content, examination process, time frames, expedited applications and renewal of registrations.

Making the right selection

Due to the implications of future oppositions to application or other disputes, choosing to properly conduct pre-registration due-diligence is the preferred strategic choice.

Which trademarks can be registered?

While everyday language and symbols should remain in public domain for use, granting exclusive rights to frequently seen elements like, descriptive words, surnames, geographical names etc. would derogate others legitimate right to use terms common to in connection with their trade or goods and services.

Under Section 2 (1) (zb) of the Trade Marks Act, 1999 (“the Act”), a ‘trademark’ is defined as a mark which has the capability of distinguishing the goods and services of one person from those of another, being represented graphically and includes the shape, packaging or color combination of goods.

Brand Names, Business or Company Name and Domain Names can be successfully trademarked to protect valuable intellectual property assets.

Trademark choices that may be beneficial:

Here, it must be understood that certain types of trademarks such as arbitrary or fanciful marks give an added advantage to an applicant due to its inherent ability to distinct itself. Trademarks which are invented and novel words having other such meanings in trade or business in relation to the goods or products offered under the mark such as, “FIVER”, “PEPSI” and “CLOROX” also known as Fanciful Marks and trademarks which are Arbitrary Marks in terms of the dictionary meaning of the trademark-ed term in comparison with the type of products or services provided under the said mark such as, the trademark “APPLE” for Mobile Phones, “PENGUIN” for a Book Publishing House.

Bad Trademark choices:

  1. Descriptive words – under Section 9(1)(b) of the Act descriptive words which are generally related to the functionality or description of goods/services are not registrable as trademarks. E.g., “SUGAR FREE” for a sugar substitute product. It must be noted that registration of descriptive marks may be allowed due to acquiring secondary meaning or significance in the course of the business and its use by the trademark owner. This acquired distinctiveness stems from goodwill and reputation that a brand builds in the market by showing prior and continuous use of the trademark and by successfully promoting its products/services amongst the market peers, customer and the public at large.
  2. Geographical Names – Traders are not allowed to name their business after geographical names, especially when the place has a reputation for certain goods or services since, it would be unfair to limit the usage of the geographical name by other traders intending to merely indicate the origin of their goods or services without infringing any trademark.
  3. Acronyms, Numerals, Letters – Short and common abbreviations, such as, “USB” are difficult to register. Certain abbreviations may indicate something entirely different with respect to goods or services emanating from different industries and hence, it may cause confusion amongst the public who are considered as laymen with average memory to recollect trademarks and brand names. E.g., “M” may indicate Mobile Phones and also automobile tire sizes.
  4. Common Surnames – Commons surnames such as, Smith, Patel, etc. are problematic and are generally refused registration due to the volume of the people having same or similar surnames thereby, making such words non-distinctive and hence, not qualified to be registered as trademarks.
  5. Marks containing phrases and words the use of which is prohibited under The Emblems and Names (Prevention of Improper Use) Act, 1950
  6. Immoral words – words that are against the morals and ethics of the Indian community.
  7. Generally same or similar marks to that of previously registered marks and marks misleading the public regarding the nature of the goods or services.

Here it must be noted that not only words, letters and numerals and combinations thereof, phrases, slogans, logos, sound marks (such as, Yahoo Yodel), combination of colours and even smell could be legally registered as trademarks in India.

Goods and services- get it right from the beginning 

During making an application for registration in India, one must provide a list of goods and/or services for which the trademark would be used for. Under Section 7 of the Act, the Registrar must classify based on the International Nice Classification System which is available on the World Intellectual Property Organisation website that separates goods into thirty-four Classes from Class 1 to 35 and services into eleven different classes from Class 35 to 45.

(https://www.wipo.int/classifications/nice/nclpub/en/fr/)

Making the right decision at this stage is of utmost importance since the selection can not be expanded once an application is submitted. However, an Applicant may choose to apply for registration for multiple classes under the same application subject to additional costs for each Class.

Questions to consider while choosing a class:

  • What is the nature of your business?
  • What is your business well-known for amongst the customer or clients?
  • What products or services does (or would) your business provide under the trademark applied for?
  • What products or services is the business income and revenue derived from?

Class Wide Applications

Class wide applications must be avoided with the view to avoid any future trademark opposition based on the same. Specifically mentioning the goods or services the applicant is mainly concerned with is recommended so as to show bona-fide intention to use the desired trademark under the said class.

Conducting a pre-registration trademark search

It is a wrong preconceived notion that a basic public search on government’s website (www.ipindia.nic.in) is sufficient for determining registrability and uniqueness of the desired mark. A rather more in-depth search and investigation is required to be made before drawing conclusions as to registrability in order to prevent any future legal battles/refusal for registration/trademark oppositions or infringements. Moreover, conducting proper pre-registration due diligence would also help to avoid any future costs for rebranding or renaming your business.

Identifying a Key-word 

A trademark may be bifurcated into multiple keywords based on which search can be conducted. For e.g., “BURBERRY” can be split into “BUR” and “BERRY”. Conducting a separate search for each keyword would help to identify same or similar marks which may get missed out by simply conducting a search for the entirety of the desired trademark.

Identifying relevant classes

One must look out for Allied and Cognate goods i.e., goods of the same description or of similar kind. Where the nature of goods is similar or where the trade channels used for selling the goods is same or similar, an application may be refused in favour of the existing trademark. For e.g., goods falling under Class 11 (electrical appliances) and Class 17 (metal parts and accessories for electrical appliances) are allied and cognate.

Conducting a Google Search

The first step would be to conduct a preliminary and general search on Google to check if there is any similar brand or company in existence in the relevant industry. One must make note of the fact that Indian Trademark law allows the registration of marks same or similar to that of a registered trademark if they are meant to be used under a different class of goods or services.

Domain or Website Search

Checking prior-registrations and existing domain names under different domain name extensions such as, .com, .net, .in and more. Cognizance must be given to the fact that prior use is an essential feature used to establish rights in a trademark and that proof of ownership of domain name is identified by the Registrar/IPAB/Court as a proof of Prior use in trademark oppositions, cancellations, and infringement disputes. Hence, conducting a domain name search is just as indispensable as conducting a general trademark search.

Social Media Search

Major social media sites such as LinkedIn, Facebook, Twitter, Instagram, and YouTube must be searched with respect to the identified keywords in order to ascertain if similar marks are currently in use. Just like domain names, social media accounts are accepted proof of trademark use and well-communicated (with the public) trademark. Therefore, conducting a social media search can be divisive in coming up with a strong trademark. 

IP Databases which can be used for trademark search:

  1. IP India Public Search – https://ipindiaonline.gov.in/tmrpublicsearch/frmmain.aspx
  2. Company/LLP name search on MCA website – http://www.mca.gov.in/
  3. European IP Helpdesk Tool – https://www.ediplis.com/indian-trademark-search/
  4. USPTO TESS – http://tess2.uspto.gov/bin/gate.exe?f=tess&state=4803:x7enua.1.1
  5. Common Law Database – for e.g., yellow pages, business directories, search engines etc.

Types of Trademark Searches under IP India Public Search tool:

  • Wordmark – a basic search of the bare wordings of a trademark must be conducted. The IP India Public Search tool offers to search marks which starts with, matches with or contains the wordmark/device mark/label name.
  • Start with – This feature fetches search results which only start with the keyword that has been entered. If there are no similar results, further breakdown of keywords (if possible) may be useful. For e.g., The word “LOVEKART” under Class 25 does not show any results whereas, the word “LOVE” under the same class shows upwards of 200 results.
  • Contains – This allows us to fetch all results that may start with, end with or contain the keyword anywhere. For e.g., the word “LOVE” under Class 25 provides upwards of 450 results. As we can see, this is a rather wider search option which may be preferred.
  • Match With – This fetches results that are only an exact match to the keyword that is benign searched. For e.g., for the word “LOVEKART” under Class 25 there were no results but exact matches for the word “LOVE” under Class 25 showed 4 results. This is a good tool for those who already know a trademark and want to search it as fast as possible.
  • Phonetic Search – Albeit the trademark office website offers no information as to how the phonetic search system works at the backend, the phonetic search interface is useful to search similar sounding marks which have different spellings to that of the identified keywords. For e.g., a phonetic search for the word “LOVEKART” under Class 25 shows 20 results. Majority of the results may not be relevant yet, in terms of trademark applications, prevention is better than cure.
  • Vienna Code Search – For trademarks containing visual elements such as, logos this feature may be used. A search for similar trademarks having visual elements must be accompanied with the Vienna code along with the class of goods or services.

 

Trademark Status

At this stage, along with observing same or similar trademarks, due attention must be given to the status of such trademarks. Finding a similar ‘Registered’ trademark would mean the chances of registering the desired trademark is slim, finding a similar ‘Objected’ trademark would mean that its prior-existence may or may not be an issue depending on the outcome of the opposition proceedings, and, finding a similar ‘Abandoned’ trademark would mean that its existence in the trademark registry would have no effect on application for the desired trademark.

Consolidate and Review the shortlisted results

Evaluation of the shortlisted trademarks on a scale of 1 to 5 from no similarity, not very similar, similar, very similar, to exact match. Smaller the number, higher are the chances of getting the trademark registered.

Searching Other Databases – MCA, EU IP, Common Law

To perform a thorough search for your trademark/client, searching international databases is imperative. Some similar trademarks may not be registered in India but may be well-known amongst the masses in another nation(s). Therefore, a holistic search on other databases is recommended before making a final decision on selecting a trademark.

Who can apply for trademark registration?

Section 18 (1) of the Act, Rule(s) 4, 8 and 15 of the Trade Marks Rules, 2017 (“Trademark Rule”)

  • An individual 
  • A Company 
  • An Association (Incorporated or not)
  • A trust
  • A Society
  • A Government Authority/Undertaking
  • A combination of the above-mentioned entities
  • Authorised Agent/Attorney of the above-mentioned entities

Under Section 24 of the Act, a trademark can be jointly owned by two or more persons.

Governing body

The Office of the Controller General of Patents, Designs and Trademarks which reports to the Department of Industrial Policy and Promotion, under the Ministry of Commerce and Industry. A TM-A form must be submitted along with applicable fees to the office of Trade Marks Registry at Mumbai (Head Office) or its branch offices at Ahmedabad, Chennai, Delhi and Kolkata.

Certain documents may be required to be filed only at the Head Office under Section 8(2)(c) of the Act.

Sr No

Trademark Registry

Contact Details

Jurisdiction

1

Mumbai TM Office

Trade Mark Registry Mumbai

Boudhik Sampada Bhavan,

Antop Hill, S.M. Road, Mumbai – 400037

Phone: 022-24137701

Fax: 022-24140808

Email: [email protected]

Maharashtra, Madhya Pradesh, Chhattisgarh and Goa including Mumbai, Pune, Nagpur, Thane, Nasik, Solapur, Indore, Gwalior, Raipur

2

Delhi TM Office

Trademarks Registry, New Delhi

Boudhik Sampada Bhawan, Plot No. 32,

Sector 14, Dwarka, New Delhi – 110075

Phone: 011-28032406 /100, 011-28032382

Fax: 011-28032381

Email: [email protected]

Delhi, Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Uttarakhand, and Union Territories of Chandigarh including New Delhi, Kanpur, Noida, Srinagar

3

Ahmedabad TM Office

Trade Marks Registry, Ahmedabad

Boudhik Sampada Bhawan,

Near Chanakyapuri overbridge,

Besides AMC City Civic Centre,

Ghatlodia, Ahmedabad – 380061

Phone: 079-27601782

Fax: 079-27601779

Email: [email protected]

Gujarat and Rajasthan and Union Territories of Daman, Diu, Dadra and Nagar Haveli from Ahmedabad, Surat, Jaipur

4

Chennai TM Office

Trade Mark Registry Chennai

Boudhik Sampada Bhawan,

G.S.T. Road, Guindy,

Chennai-600032

Phone: 044-22502044

Fax: 044-22502046

Email: [email protected]

Tamil Nadu, Andhra Pradesh, Telangana, Kerala, Karnataka and Union Territories of Pondicherry and Lakshadweep Island including Chennai, Bangalore, Hyderabad, Mysore, Amravati, Guntur, Coimbatore, Madurai, Salem, Tirupur

5

Kolkata TM Office

Trade Marks office Kolkata

Boudhik Sampada Bhawan,

CP-2 Sector V, Salt Lake City,

Kolkata-700091

Phone: 033-23677307

Email: [email protected]

West Bengal, Arunachal Pradesh, Assam, Bihar, Orissa, Manipur, Mizoram, Meghalaya, Sikkim, Tripura, Jharkhand and Union Territories of Nagaland, Andaman &Nicobar Islands including Kolkata, Shillong, Ranchi, Patna

 

Documents required for filing

Along with the TM-A form (available at www.ipindia.nic.in/FORM-TM-A.pdf) the following documents are required to be submitted:

  • Soft copy of the Logo
  • Authorisation Letter/Power of Attorney in Form TM-48 (if filed by an Agent/Attorney)
  • User Affidavit showing continued use of the Trademark
  • PAN Card copy of the Applicant
  • Board Resolution of the Company, if the trademark is to be registered in favour of a Company
  • MSMED Certificate, if applicable, for special concession in fees

Mode of application

Applications for registrations would be accepted by post or online via the official website i.e., www.ipindia.nic.in

Documents are accepted by the Offices between 10AM and 3:30PM, on all working days. Electronic filing is accepted at any time (24×7).

Bona-fide Intention – Proposed to be Used

Any trademark application filed on “Proposed-to-be-Used” basis is liable to be cancelled on the grounds of non-use after 5 years of the date of registration after which a third party may file for Cancellation provided that the 5 years have expired up to 3 months before making any Cancellation application. Therefore, applications under Proposed to be Used basis must be strictly done with bona-fide intentions. Here it must be noted that the trademark is not mandatorily to be used commercially before making an application and hence, the intent to use may be used to make an application under “Proposed to be Used” grounds.

Costs for application

Rule(s) 10 and 11 of the Trademark Rule govern the fees and forms for trademark application, registration and prosecution in India.

Form and content of the trademark application

Under Rule(s) 8, 13, 14 and 15 of the Trademark Rules following particulars are mandatorily mentioned:

  1. Trademark Applicant’s Name and Address – the Applicant must be the owner of the trademark and not its authorised representative unless otherwise agreed upon.
  2. Nature of the Applicant Entity – For e.g., individual, corporation etc.
  3. Name and Address for Correspondence – The details of the Agent or the Attorney must be mentioned here unless the client wished to mention their personal details herein.
  4. Drawing/Audio Clipping of the Mark – In case the desired mark is a standard character mark meaning that it is merely a word or a phrase, then you would need to simply type in the letters of the words or the phrase. In case the desired mark has other design elements, then drawing of the logo/mark depicting the design elements such as the colour, font, style etc. must be attached. In case the desired mark is a phonetic mark then an audio clipping of the same must be attached.
  5. Description of the Mark – The various elements of a mark and stylish representation of the same must be described in the application to emphasize upon the uniqueness and distinctiveness of the desired mark.
  6. List of goods or services – Every good or service the mark is being used for or would be used for. 
  7. The date of first use of the mark and a specimen of use of the mark – with User Affidavit
  8. A verified statement or declaration – The Applicant or the authorised representative of the Applicant must sign a dated declaration which attests to the truth of the application submitted.

Trademark application process flowchart

Examination process

Relative Examination

Under Section 11 of the Act, a trademark application is examined on relative grounds for refusal which are:

  • Mark(s) similar or identical to an earlier trademark for same or similar goods or services; (note – not just the class) or
  • Mark(s) similar or identical to an earlier trademark for different goods or services.

Absolute Grounds for Refusal

Under Section 12 of the Act, a trademark application is examined on the absolute grounds for refusal which are:

  • Mark devoid of distinctive character;
  • Mark contains exclusively of marks which may service in course of trade to indicate or designate the kind, quantity, intended purpose, values, geographical origins or the time of production or other characteristics of the goods or services;
  • Mark contains exclusively the shape of goods which stems from the nature of the goods or which is necessary to obtain a technical result or gives substantial value to the goods.

Other grounds for Refusal

Under Section 9 of the Act, a trademark application is examined on the following grounds (other than genericness and descriptiveness)

  • Mark may cause confusion amongst the public consisting of laymen with average memory.
  • Mark may hurt sentiments of a religious group or any other class or section of the Indian public.
  • Scandalous, Obscene Marks and marks prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950.

Responding to office actions

Office actions are either “non-final” in which case it raises a legal problem with an application or “final” in which it raises a legal problem with an application for the last time. Responding to the same without stipulated time is imperative failing which the trademark is deemed to be Abandoned by the Applicant. 

Time frame of the trademark application process

Typically, the entirety of the trademark application process from the date of filing to final registration (if approved) takes 10 to 12 months for completion. The first office action from filing an application is issued within the first 2 months.

Expedited application

The Applicant has the option to prefer expedited processing of a trademark application by filing TM-M from and paying Rs 30,000 towards fees for each class as fees for the same. Such an application is examined within three months from the date of submission of the application. The following procedures such as scheduling a show cause hearing, publication, opposition etc until final disposal shall be dealt with expeditiously subject to such guidelines as may be published by the Registry. Before Amendment of the Trademark Rules (2002 Rules), the Trademark Registrar had the discretion to allow an expedition request which has now been removed under the new Trademark Rules (2017 Amendment). While this provision has been introduced, the Trademark Rules do not prescribe any specific time period within which the entire process would be carried out. 

Renewal of a trademark application

An Application for renewal of trademark registration can be made by filing the TM-R Form with the fees of Rs. 9000 per class six months prior to the expiry of the registration of the mark. If no such application is made, a notice would be sent to the trademark owner by the Registrar informing about the renewal deadline and prescribed fees. Removal of a trademark from the registry can be done only after service of such a notice by the Registrar. Trademarks due to renewal under the Indian Trademarks Registry can be found here (Renewal) and the User Manual for Form TM-R can be found here (User Manual). 

Conclusion

In order to successfully register a trademark, the tedious and hectic process of the same must not be allowed to daunt upon effective approach towards the same. Making amendments and asking for extensions is possible in the trademark application process in India subject to additional costs. Hence, following guidelines, keeping one’s eyes peeled for possible difficulties, oppositions and infringements, and respecting timelines as prescribed by the Act or the Trademark Rules is imperative to smoothly sail through this year long process without emptying one’s pockets. 

References

  1. Manual of Trademarks available at http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf
  2. Guidelines available at http://www.ipindia.nic.in/guidelines-tm.htm
  3. First Schedule of Trade Mark Rules, 2017 available at http://www.ipindia.nic.in/form-and-fees-tm.htm

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