This article written by Sheetal Bhadoriya, provides a detailed analysis of Section 18(1) of Trade Marks Act, 1999. The article deals with the application application procedure for trade mark registration, the grounds for its rejection, opposition to the trade mark, as well the process of renewal of the trade mark along with relevant case laws. 

This article has been published by Shashwat Kaushik.

Introduction

Have you noticed the logo of your favourite brand? If yes, then you might have also noticed that there are completely unique and different logos, which represent a brand’s identity. However, have you ever thought how hundreds of brands ensure that their logo (a type of trade mark) is unique and different from other brands? Here, the concept of trade mark registration comes into play. 

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Section 18(1) of the Trade Marks Act, 1999, is one of the significant provisions connected to the application for trade mark registration in India. Section 18(1) offers that a person who is supposed to be the owner of a trade mark which will be used by him can file a written request for registering of the trade mark. A trade mark consists of any sign, word, symbol, or design that helps distinguish one entity’s goods or services from another.

Trade mark registration not only extends legal protection, but also subjects the owner to the limited right of using the mark in connection with his customers. What do these all mean to you, your business, and how might you apply trade mark registration for avoiding expensive disputes or helping you build a brand legacy that lasts long? Let us explore it in this article. 

Registration of trade mark as prescribed under section 18(1) of the Trade Marks Act, 1999

If a person claims to be the owner of a trade mark that he is now intending to use, he must register the trade mark. For this, he is required to make an application which shall be made in writing to the registrar only by following the procedure prescribed. 

Let us now look at the detailed procedure for registration of a trade mark.

Application procedure

Following is the way for applying for the registration of a trade mark: 

  • The registration application should be filled in the trade mark office. 
  • The legal requirements will be analysed.
  • If there is no objection to the legal requirements, the trade mark is published in the trade mark journal and allows the public to object to it. 
  • If there is no objection or a settlement of objection, then the trade mark is registered.

Documents for registration of trade mark

Following are the documents required to be produced while applying for the registration of a trade mark: 

  • Logo
  • PAN card of authorised signatory 
  • Certificate of registration of the company
  • Legal proof of business registration
  • A power of attorney which gives a trade mark agent or attorney, the authority to file application on behalf of the applicant 
  • Signed Form-48 and user affidavit 
  • ID of authorised signatory 

Grounds for rejecting a trade mark application

A trade mark application could be rejected due to the following reasons:

Absence of distinctiveness

The mark is unable to distinguish the goods or services in question.

Resemblance with pre-existing marks

The mark is either a fake or almost similar to an already existent mark.

Prohibited or misleading markings

The mark contains markings which are deceptive or barred in any manner, such as using fake geographic origin, misleading the material originality, falsely using terms like “FDA approved” or “scientifically approved”. 

Descriptiveness

Descriptive marks refer to those marks which merely describe the commodity, but have no independent capabilities. This makes it ineligible for registration. An example of such a term would be- Fresh Coffee.

The case of Marcio Limited vs. Agro Tech Foods ltd(2010) Marcio argued Agro tech use of the term “Low Absorb Technology” on the sundrop oil label infringed its trade marks LOSORB and LO-SORB over oils with low absorb properties. The Delhi High court held that terms inherently describing the quality of the product, such as “low absorb,” are commonly not registrable as a trade mark unless they have otherwise become distinctive. Descriptive words cannot be monopolised, as they indicate something common to the products by the consumers. Hence, Agro Tech’s using the same words was also rejected, and the requisite distinction was lacking in the marks that would prevent other brands from the same descriptive phrases for promoting them.

In Wockhardt Limited vs. Mahesh Medical And General Store (2002), it was argued that the concerned mark was deemed  to look very similar to another in a manner which would cause confusion among the consumers. This court gave elaborate guidelines with a lot of emphasis on substantial evidence brought forward in the course of the hearing. This case established that irrespective of whether the trade mark was actually used, it is how consumers perceive it that should determine the dispute over the trade mark.  

Opposition to the trade mark 

In case of any objection to the trade mark by any person, the aggrieved party can oppose the registration process. It encompasses the following procedure:

Filing of notice of opposition

Urging that, within 4 months from the advertisement of the trade mark in the Trade Marks Journal, any person having a legitimate interest can oppose the registration, setting out the grounds of objection.

Written statements

The respondent and the applicant can submit their stand and plead their respective cases, with evidence, in the form of written statements

Hearing

A formal case hearing is held, wherein both parties present their respective cases before the Registrar, or chosen a hearing officer, so that the arguments and evidence put forth by the parties can be thoroughly scrutinised.

Acceptance or rejection

After giving both parties the opportunity to be heard, the Registrar decides on whether to accept or reject the application for the registration of the trade mark.

Renewal of trade mark

The date the application is made will determine its protection for ten years. The owner has an obligation of renewing that registration due and to remit such renewal fees specified by the Registry. After making the renewals of his mark, his owner may make a repeated exercise of all rights accruing to it for another ten years. And in failure to renew his trade mark, or renew the same after the cancellation.

In the case of D. Baskaran vs. The Deputy Registrar of Trade Marks (2019), the High Court of Madras observed the process for regeneration of a trade mark. It was of the belief that regeneration of a trade mark is a legal right. The Registrar is required to notify the owner of the trade mark about any expiration, before the renewal period ends. If the Registrar fails to do so, the owner shall be permitted to apply for renewal even after the relevant period has passed.

Requirements for trade mark registration

For effective registration of a trade mark under Section 18(1), it is necessary to meet the following requirements:

Public search

A major step before registering a trade mark is to conduct a public search. It helps to confirm that one does not invade an already existing trade mark by being alike or undistinguishable to it. This can be realized by searching through the database of trade marks.

Coined mark

A coined mark refers to a coined or newly framed word, which has no dictionary meaning and, therefore is more likely to be distinguishable and easier to register, since it is not likely to cause any confusion within existing trade marks.

Uniqueness or proof of distinctiveness

The mark should be such that it is capable of distinguishing the goods or services of one with those of others. A unique trade mark inherently stands the best chance of protection and is least likely to face objections during the registration process. However, if the mark is not inherently distinctive, the applicant has to prove acquired distinctiveness through demonstrating that the mark acquired identification by the public for the applicant’s goods or services through extensive use, advertising and consumer recognition.

In the case of American Home Products Corporation vs. Mac Laboratories Pvt. Ltd (1985), the court considered the question of whether the trade mark “Paracetamol” had acquired distinctiveness on account of extensive use in the market. It, however, explained that where a mark is not inherently distinctive, there must be proper evidence relating to such distinctiveness, such as consumer surveys, advertising expenses, time duration of use and volume of sales. The case brings out the importance of proof of distinctiveness as a condition to trade mark protection. 

Non-offensive

Registered trade marks should respect public morality and avoid being offensive in nature. Trade mark officers have the authority to reject the application of an offensive trade mark.   

Non-descriptive

The mark cannot be descriptive of the goods or services that it represents. Descriptive marks are generally not eligible for registration, unless they have acquired some kind of distinctiveness.

No similarity with already registered marks

The mark should not be identical or deceptively similar to an already existing registered mark, in a manner which could cause confusion.

Non-misleading

The mark should not result in misleading the public with respect to nature, quality, or source of the goods or services sold. This guarantees trustful and transparent interactions among consumers and businesses.

Significance of trade mark registration

Legal defence

A registered trade mark provides the owner a right to enjoy private use of the mark and stops others from using the similar mark, then it could cause confusion among consumers. This legal right stretches the brand to an intelligence of uniqueness. 

Brand identity

A registered brand greatly helps in establishing a brand identity which is different from others. This is important in marketing and enabling recognition by the customers. Brands hold this responsibility towards consumers. 

Resolution of disputes

Registered trade marks aid in resolving the disputes with regard to trade mark infringement, by providing legal ownership with the help of specific rights and asserting any violations of their trade mark’s identity.

Investors

Registration enhances the monetary value of the trade mark, which sends a strong, positive signal to investors.

National and international protection

Registered trade marks provide the brand with protection both at the national and international level. 

In the landmark case which highlights the importance of registration of a trade mark, is Cadila Healthcare Ltd. vs. Cadila Pharmaceuticals Ltd. (2001). Herein, the Delhi High Court pointed out that the most significant variable, is the registration of the trade mark, which involves preventing the brand identity from becoming misunderstood by the public or the consumer point of view. Delhi High Court ruled in favour of Cadila Healthcare that Cadila Pharmaceuticals used similar marks thereby Indians being confused between one another and thus tarnishing the Cadila Healthcare brand. The case emphasized the essential to make and protect legal rights through the registration of trade marks through the deterrence of the illegal use of similar marks.

Conclusion

The trade mark registration is providing by the delivery limited in Section 18(1) of the Trade Marks Act 1999. It allows trade mark owners to properly protection their brand identities. As businesses pursue to make a competitive advantage through trade mark registration, grasping the details behind these processes is important for protecting their intellectual property. Such protection is provided under section 18(1) protecting the business to ensure progress in growth and having the business in the market.

A trade mark is extremely valuable to a business, in addition to providing legal protection. It assumes an important place from which growth can be compelled through marketing efforts and even becomes a selling argument for potential investors or buyers. In the pursuit of long-term business success, it is what makes the difference between winning and losing in a busy marketplace. 

How safe is your brand identity today? Have you taken the measures to protect your business from such potential infringements or even future legal challenges?  Now is the time. Registration of your trade mark doesn’t just guard your business but invests in its future, securing all the hard work put into it and helping it stay safe to continue to grow within that ever-changing market. Is it time to take that momentous step into securing your brand’s image?

Frequently Asked Questions (FAQs)

Who can apply for a trade mark? 

A person who is the owner of a trade mark or the person whose name is mentioned as the applicant will be the owner of the trade mark and once the trade mark is successfully registered, an individual or a company can be applicant and may file the application for the registration of the particular trade mark.

What are the requirements for trade mark registration?

A trade mark must be special unique signs that are used to identify goods or services from a certain company, it is important because of the difference of your products from the other.

What is the period of a registered trade mark?

A trade mark is initially registered for ten years and after the completion of this period, the registration can be renewed for another ten years.

References

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