This article is written by Vedant Saxena from Rajiv Gandhi National University of Law, Punjab. It is an exhaustive study of trademark prosecution and opposition in India.
A trademark is a logo, which is used by a manufacturer to distinguish his goods or services from other manufacturers. The logo may be in the form of a letter, word, number, symbol or design. Words and pictures are the most common forms of trademark, but other unique signs can be registered, so long as they are capable of being represented graphically. For example, designs that have successfully been protected as trademarks (e.g. the Coca-Cola bottle) are colours (e.g. the yellow colour of Yellow Pages), family names (e.g. Louis Vuitton) and even smells and sound.
The marketplace is crowded and it is hard to distinguish business among competitors. Trademarks are a necessary respite, as they help customers locate their favourite brands. When customers see a trademark they instantly know whom they are allocating with, the reputation of the business and are less likely to look for alternatives. A brand could be an important factor in driving a customer’s purchase decision. In India, trademarks are governed by the Trade Marks Act, 1999.
The process of trademark registration is not a difficult task. A few simple steps, as explained below and the manufacturer would have the indispensable legal protection of his goods or services.
Before filing for trademark registration, a thorough trademark search is extremely important. Uniqueness alone does not guarantee registration. There are a number of essentials that have to be fulfilled. A trademark search would make the manufacturer aware of his mark’s validity, thereby saving out on the unwanted money, time and labour spent in trademark litigation.
Filing a trademark application
After making sure that the mark has not been enlisted in the trademark registry, one could file a trademark application in the trademark registry. Nowadays, filing is mostly done online. Once the application is filed, an official receipt is immediately issued for future reference.
After a trademark application is filed, it is examined by the examiner for any discrepancies. The examination might take around 12-18 months. The examiner might accept the trademark absolutely, conditionally or object to the trademark. If the application is accepted unconditionally, the trademark gets published in the Trademark journal. In the event of a conditional acceptance or objection, the application is notified about the same, and given one month time to satisfy the objections. Once such a response is accepted, the trademark is published. If the response is not accepted, the applicant could request a hearing. If in the hearing, the examiner feels that the trademark should be allowed registration, it proceeds for publication in the Trademark Journal.
Once the application is accepted, it is published in the trademarks journal. After publication, it is open to opposition for a period of 3 months. Therefore, any person, who considers the mark to lack one or more essential characteristics that are required for trademark registration could file for the opposition. This period may be extended by one month, at the discretion of the registrar, provided the opponent files with the extension request. The Act also provides that opposition to registration of a trademark may be filed by any person if he has a personal interest.
Rules 47 to 57 provide for a detailed law and procedure in respect of opposition proceedings and must be kept in mind while dealing with such proceedings. A person may file for opposition under any of the following grounds-
Under Section 9(1), if the trademark lacks distinctiveness, is descriptive or consists of marks that have become common to the trade, their registration shall be denied. Similarly under Section 9(2), if the trademark deceives the public, comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India, comprises of scandalous or obscene matter or is prohibited under the Emblems and Names (Prevention of Improper Use) Act, registration shall not be granted. And finally under Section 9(3), if the trademark consists of a shape of goods mark and the shape of goods results from the nature of the goods themselves, or the mark alleged to be constituted by the shape of goods is necessary to obtain the technical result or the mark alleged to be constituted by the shape of goods gives substantial value to the goods, registration shall not be granted.
However, a trademark that may be initially refused on absolute grounds can be registered if it acquires a distinctive character/secondary significance as a result of extensive and continuous use
Section 11 provides for the relative grounds for refusal of trademark registration. If the applicant’s mark is similar to an earlier trademark or if there exists a likelihood of confusion in the minds of the public regarding the two marks, registration shall be denied. In case the opponent has registered, then details of the registration must be mentioned in the notice of Opposition stating that the trademark is identical or similar to a registered trademark. Even if the opposite party’s trademark is unregistered, he may oppose the registration of the applicant’s mark on the ground of passing off, if the opposite party’s trademark has become well-known.
It is possible that a registered or unregistered mark acquires secondary meaning over time, i.e., the public may begin to associate the mark with the plaintiff’s goods on account of long and continuous use. In such a case, the mark would come to be known as a well-known trademark. There are several benefits of such a status. For instance, a well-known trademark may be protected even if there is a similarity between the goods or services rendered. The provisions relating to well-known trademarks enshrined in section 11 are very relevant for trademark opposition proceedings. According to Section 11(10)(i) of the Act, the registrar, while considering an application for registration, is bound to protect well-known trademarks. However where a mark that is identical or similar to a well-known mark has been used or registered in good faith prior to the commencement of the Act, then nothing in the Act will prejudice such rights acquired in good faith.
Under Section 18, if the applicant’s claim to proprietorship of the mark is false, or the applicant’s claim to a user is false or the applicant has no bona fide intention to use the mark in respect of all or some of the goods/services for which registration is sought, registration shall be denied.
Procedure for opposition proceedings
Notice of opposition
An opposition proceeding is initiated by the filing of a notice of opposition on a prescribed form TM-5 within the stipulated period. The notice must set out the grounds on which the opponent bases his opposition. The Rules stipulate that a notice of opposition contains details of the trademark being opposed, the earlier trademark or right on which the opposition is based, details of the opponent and the grounds on which the opposition is based.
A notice of opposition is also to be verified and the person verifying the notice is to state as to what is verified on his knowledge and what is verified based upon information received and believed by him to be true. Rule 47(6) provides that an application for extension of time to oppose a trademark should be made in Form TM-44 before the expiry of three months after publication of the mark in the Journal.
Once the notice of opposition is generated, the trademark registry notifies the applicant regarding the same. The applicant is given a period of 2 months to file his counterstatement. The counter-statement is filed on the prescribed form TM-6. Through the counterstatement, the applicant is expected to verify the validity of his mark and respond to grounds of opposition. Under Section 21(2) of the Act, if the counterstatement is not filed within 2 months, the application shall be abandoned. Just like the notice of opposition, the counterstatement shall also be verified.
Evidence in support of opposition
Once the counterstatement is filed, the registry provides a notice to the opposition regarding the same. The opposition could either notify the registrar of his satisfaction with regards to the applicant’s mark or file additional evidence in support of his claims within a period of 2 months. This period of two months may be extended by one more month, provided the opponent seeks such extension before the stipulated two months period. The evidence is to be filed by way of affidavit and a copy served on the applicant. In the event of the applicant failing to intimate the registrar of his intention not to file any further claims, or to generate any evidence within the prescribed period, the registrar shall presume that the opposition is satisfied.
Evidence in support of the applicant
After the filing of additional evidence by the opposition, the registry gives the applicant 2 months’ time to file evidence approving the validity of his mark, or intimate the registrar of his intention not to file any further evidence. This period may be extended by one more month, provided the applicant seeks such extension before the stipulated two months period. The evidence is to be filed by way of an affidavit and a copy is served on the opponent.
After the applicant has filed evidence in support of his mark, the opposition is given another two months to file his evidence. However, at this stage, the opposition can only file evidence strictly in response to the applicant’s evidence. The period for filing this evidence, which is also by the way of affidavit, is two months. This period could be extended by one month.
All evidence must essentially be filed by way of an affidavit on Rs. 100 non-judicial stamp paper and a copy must be served on the other side. If the opponent is based in India, the affidavit is required to be simply notarized by a public notary and filed at the registry. However, if the opponent is based overseas, the affidavit is required to be notarized in the country where the deponent is present and once the executed document is received in India, it needs to be appropriately stamped as per Indian laws. All the principles and requirements of the Evidence Act, 1972 and the Code of Civil Procedure, 1908 are required to be followed in this regard. The Affidavit submitted as evidence may also be accompanied by any documents that the party wishes to rely on which establish the use, distinctiveness, goodwill and reputation of the trademark.
As per the procedure, if the prescribed period of two months and the extended period of one month has passed, evidence shall have to be filed along with an interlocutory petition. The interlocutory petition shall consist of the reasons for which the evidence could not be filed within time, and a prayer to the registrar to pardon the delay. A copy of the interlocutory petition is served on the other side and the Registrar may call for a hearing thereon. If the registrar considers the reasons to be reasonable enough, he may approve the petition in the interests of justice.
There have been a number of cases when the delay in filing evidence has been pardoned. In Hastimal Jain trading as Oswal Industries vs. Registrar of Trademarks, it has been held that relevant provisions of the law are merely directory in nature and not mandatory. Further, it is a settled principle of law that procedural rules, even in civil cases are hand-maidens of justice that cannot be allowed to obstruct the course of justice.
If the deadline for submission of any evidence falls on a non-working day of the registry or a holiday, the date of submission is passed on to the next working day.
The registrar has the power to permit either party to submit additional evidence in support of their respective claims. More often than not the registrar permits additional evidence, even if that may mean a delay in the proceedings.
The Act mandates that the registrar give both parties an opportunity to be heard prior to deciding the opposition proceeding.
After the application conquers the above, it proceeds to registration. In case there has been no objection against the registration of the trademark during the advertisement/publication period of four months, then the trademark is issued an auto-generated registration certificate within one week’s time. Once the registration is complete, it is valid for a period of 10 years after which it would be required to be renewed within a prescribed time period.
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