Protection And Registration of Trade mark In India

Introduction

The trademarks in India were protected through common law principle and the principle of equity. Gradually with the growth and development in business, service and commerce there was a need for protection and registration of trademarks for the smooth functioning of trade and commerce. The globalization of trade, trade name, mark; invention and other intellectual property are of immense values that require to be protected. TRIPS agreement also obliges to protect trademarks and in India there is a rapid development in the jurisprudence of the trade marks.

The Registrar

The Registrar of the Trade Marks is the Controller-General of Patents, Designs and Trade Marks. The appointment of Registrar is done by the Central Government. Under section 3 of the Trade Marks Act 1999 (the ‘Act’) there are other officers appointed[1] who assist the registrar and discharge their functions under his superintendence and direction. The Registrar has the power to register and certify a trade mark and supervises the functioning of the Trade Marks Registry (the ‘TMR’).

Single Register

Sections 6 and 7 of the Act deal with maintenance of records and stipulates that there has to be a single register of trademarks which is to be kept at the head office of the trademark Registry. The Act also directs to maintain the electronic record of the register either in floppies/ diskettes or in any other form. The register is kept under the management and control of the registrar. Section 7 of the Act mentions the power of the Registrar who in accordance with International classification can classify the goods and services. Section 8 directs the Registrar to publish an alphabetical index of classification of goods and services.

Registration of Trade mark   

The Trade Mark rules deal with the procedure and requisites for registration.[2] The procedure to get a trade mark protected and get exclusive right of representation of such mark is known as registration of the Trade Mark. The registration is to be applied at the office where the principle place of business is located. The application has to be made to the Trademark Registry.

Registration Procedure

The registration application is made according to the territorial jurisdiction of where the principal place of business of applicant is located. The application is made to the registry in the Office of the Controller General of Patents, Designs and Trade Marks. The branches are located in Delhi, Mumbai, Chennai, Kolkata and Ahemdabad. The system is based upon “first file” system i.e. the person filing first holds the right to get its trademark registered therefore, it is important that the application for registration be filed as quickly as possible.

Trade Mark Search

The step prior to filing the application for the trade mark is to ‘inspect’ the already existing and registered trademarks so that our application is not rejected at the first instance. Prior inspection before making any application for registration is necessary, as it provides us an idea of trademarks which may be similar to our trademark.

Who May Apply

Section 18 of the Act explains a claimant and includes “any person” who is claiming to be the proprietor of the mark “used” or is “proposing to use.” The claimant can make an application to the Registry for the registration of the Trademark. The term “any person” is to be read as defined in General Clauses Act [3] and includes a trust, government, HUF, Partnership Firm etc.

• A company can make application in its own corporate name. When the company claiming trade mark is incorporated outside India, the name of the country and the nature of the registration are to be mentioned while making an application for trademark.
• The application if made by a firm, shall have the name of all the partners and in case of a minor, the name of the guardian should be mentioned in the application. If any name is omitted in the application, correction with respect to the name can be made and such addition or correction shall not affect the proprietorship of the mark.
• The application for the mark made by a Trust can be in the name of the trustee or the chairman etc. The Company managed/owned or control by the government can also make the application for the registration of trade mark.

Joint Application

An application made by two or more persons to be registered as a joint proprietor of the trade mark, where the mark is used or proposed to be in relation to goods or services connected with the joint applicants is known as the joint application (section 24 of the Act ).

Filing of Application

The application can be made to any TMR according to the territorial jurisdiction. The jurisdiction is decided by the place of residence where the applicant resides, or where the principal place of business is located. For the purpose of joint application the place is decided by the person whose name is first mentioned in the application. Form TM-1 with the prescribed fee is to be submitted as per the rule 4 to the office of TMR. If the place of business is not located in India, then the application has to be filed in the office in whose jurisdiction address of service is mentioned.[4] Also the trade mark application is to be filed electronically.

After the application is filed, the application number is allotted only after the review of the application is done in all respects. This application number becomes the registration number once the trade mark is registered.

Preliminary Approval and Publication

The preliminary approval of the Registrar is required after the application is made. During this period, it is checked whether the trade mark is barred under section 9 or section 11 i.e. if there exist any ground for the refusal of registration of the trade mark. Thereafter, the examination report is issued to the applicant. The applicant has to respond to the report within 1 month from the date of issuance of the report. The registrar after examining the report and the response determines, if the application should be accepted or rejected. The Registrar can accept the application with certain limitations or it can be put up for show cause hearing. In case the applicant is not satisfied with the order, he can file an appeal in the Intellectual Property Appellate Board.

Registration

The Trade Mark registry provides the certificate of registration within three months from the date of publication of the trade mark in the Trade Marks Journal provided no third party has opposed the same.

Requisites of Registration

There are no specific requisites mentioned in any of the provision of the Act. However, section 9 and section 11 enlist the grounds on which the registration can be refused. The other requisite is that the mark should qualify as a trade mark as defined in section 2(1)(zb). The trade mark should be identified and be distinguished[5] from the other trademarks to qualify for registration.[6] The distinctive character includes also from the words “capable of distinguishing goods of one person from those of others.” Therefore there is no strict rule of perquisites for trademark to be registered. However, the following aspects should be kept in mind, namely the mark-

• Should be in relation to trade,
• Must not violate section 9 and section 11,
• Must not be a unregistrable trademark,
• Should have a distinctive feature,
• Can be represented on paper and graphically and
•  Should not be an already existing or registered mark.

Capable of Distinguishing Goods and Services

The mark is capable of being registered, if it possesses character of being distinguished. The intent behind this legal phrase is that there should be no monopoly of one trader over the goods or services.[7] The mark shall not be the description of the quality of the goods or services.

Duration of Renewal of the Trade Mark

The trade mark registration in India is done perpetually subject to it being renewed every ten years[8]. The application for the renewal can be filed six month before the date of expiry. A grace period of six months after the expiry of registration period with surcharge is also prescribed. If the trademark is not renewed, it is removed from the register. Trade mark unlike patents, copyright etc can be registered in perpetuity.

If the owner of the trade mark comes to know of any mark published or advertised in the journal which is deceptively similar to his own mark, objections to the same can be raised within three months from the date of publication of the journal. The right of property in the mark is acquired by the trader by using it.

The purpose of trade mark is to remove any confusion in the minds of the consumers. If a common form of good originates from two different sources, confusion can be created in the mind of the consumers. It may also lead to commit a fraud on the public.

In case any person other than the authorized person uses the registered trade mark then remedy is available under the Act. Ordinarily two people are not entitled to the same trade mark, unless there exist an express license in that behalf.

Opposition of the Trade Mark

The notice of opposition is filed under section 21 of the Act which states that “any person”[9] can file an opposition application, whether he has or does not have any personal or commercial interest. Any person also includes a customer, purchaser or member from general public.

Requirement for filing the notice of opposition:

• TM-5 form with prescribed fee should be attached.
• The form should be submitted to the appropriate office.
• The address for service shall be mentioned.
• Trademark Rules should be followed while filing the application of opposition which enumerates as follows:

The Notice of opposition shall contain:

1. In respect of an application against which opposition is entered-
2. the application number against which opposition is entered;
3. an indication of the goods or services listed in the trade mark application against which opposition is entered; and
4. The name of the applicant for the trade mark.
5. In respect of the earlier mark or the earlier right on which the opposition is based,-
6. Where the opposition is based on an earlier mark, a statement to that effect and an indication of the status of earlier mark
7. Where available, the application number or registration number and the filing date, including the priority date of the earlier mark;
8. Where the opposition is based on an earlier mark which is alleged to be a well-known trade mark within the meaning of sub-section (2) of section 11, an indication to that effect that an indication of the country or countries in which the earlier mark is recognized to be well known.
9. Where the opposition is based on an earlier trade mark having a reputation within the meaning of paragraph (b) of sub-clause (2) of section 11 of the Act, an indication to that effect and an indication of whether the earlier mark is registered or applied for;
10. A representation of the mark of the opponent and where appropriate, a description of the mark or earlier right, and
11. Where the goods or services in respect of which earlier mark has been registered or applied for an in respect of which the earlier mark is well-known within the meaning of sub-section (2) of section 11 or has a reputation within the meaning of that section, the opponent shall when indicating all the goods or services for which the earlier mark is protected, also indicate those goods or services on which the opposition is based.
12. In respect of the opposing party-
13. Where the opposition is entered by the proprietor of the earlier mark or of the earlier right, his name and address and an indication that he is the proprietor of such mark or right;
14. Where opposition is entered by a licensee and not being a registered user, the name of the licensee and his address and an indication that he has been authorized to enter the opposition.
15. Where the opposition is entered by the successor in title to the registered proprietor of a trade mark who has not yet been registered as new proprietor, an indication to that effect, the name and address of the opposing party and an indication of the date on which the application for registration of the new proprietor was received by the appropriate office or, where this information is not available, was sent to the appropriate office; and
16. Where the opposing party has no place of business in India, the name of the opponents, and his address for service in India.

Grounds for Opposition

Section 21 provides for the filing of registration. There are no specific grounds mentioned in the provision on which the opposition application should be filed. The applicant has the liberty to raise any ground for opposition. The mandatory provision is section 11(5) which state that unless the opposition is not filed on the grounds mention in sub-section (2) and (3), the registration cannot be refused under these subsections.

Some of the possible grounds for the oppositions could be that the trademark:

1. Is not distinctive and not registrable;
2. Is an ordinary word and the applicant is not entitled to acquire an exclusive right;[10]
3. Cannot be graphically represented;
4. Consists the kind, quality, intended purpose, values, geographical origin or the time of production of the goods or rendering of the services or other characteristics of the goods or services (mark which is directly descriptive of the character or quality of the goods or services or indicating geographical origin);
5. Consists of mark and indications that are generic in language and trade;
6. Is of such a nature as to deceive the public or cause confusion;
7. Contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India;[11]
8.  Is identical with or similar to an earlier trade mark.[12]
9. The user claimed for registration is false.
10. That use of applicants mark would be an infringement of the one raising objection.[13]

Grounds for Refusal Of Registration

There are two grounds for the refusal of registration of trade mark:

Absolute Grounds (Section 9) 

The registration can be refused if:

•           They lack any distinctive character or misleading or are confusing;

•           The exclusive mark or indication that designates the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services; or

•           The marks are customary in the current language or in the bona fide and established practice of the trade.

Words not known earlier but if they possess common suffix can be registered.  The other instances can be found in F. Hoffmann La Roche and Co. Ltd. v. Geoffrey Manners and Co. Pvt. Ltd AIR 1970 SC 2062. the Supreme Court held that if the word DROPOVIT is not a descriptive word it must be an invented word and a newly coined word which does not remind an ordinary person knowing English of the original words out of which it is coined unless he is so told or unless at least he devotes some thought is entitled to be registered as a trade mark

According to section 9(2) if the confusion is caused from any factor it may result in refusal of registration of trademark.  Section 9(3) protects any personal monopoly over goods giving the proprietor a permanent and substantial advantage over his competitors.

Relative Grounds

Section 11 provides that a mark shall not be registered:

•           If the mark causes confusion i.e. likelihood of association with the earlier trademark;

•           If the mark is identical to a well-known trademark in India and use of the later mark may be detrimental to the distinctive character of the well-known trademark; i.e. known to the public and possess high reputation.

•           If the mark use in India is liable to be prevented by law of passing off or copyright law.

Section 12 is an exception i.e. honest concurrent use, or of other special circumstances which make it proper so to do.

Rights Conferred By Registration

Section 28 of the Act, confers the right to the registered proprietor of the trademark The proprietor of the trademark has the exclusive right to use the mark in relation to the goods or services in respect to which the mark was registered. The registration of trademark is not mandatory to use the mark but it provides better legal position in several instances.

Some of the rights are as follows:

1. There is exclusive right of the proprietor over the use of the trademark.
2. There is a remedial right conferred to the registered proprietor in the event of infringement.
3. The registered trademark forbids all other person to use the trademark or register the trade mark or any deceptively similar mark in relation to the same goods or services or description of same goods or services.
4. The registered trademark is protected of dissimilar goods and services in case of well-known trademarks.
5. The registered trademark shall not be used by any unauthorized person for advertisement and such trademarks are protected from any undue advantage of the trade mark.
6. There is a right of the proprietor of the trademark that the import of the goods or services marked with a similar trademark is restricted. Moreover, there is a right to restrain others from using the registered trademark as a trade name or part of trade name or concerning the goods and services.

Therefore, these are the right conferred upon the proprietor of the trademark. The rights are almost similar for an unregistered trademark but after registration proprietor is the owner of the registered mark thus making a strong legal position against others.

References :

[1]The Trade Marks Act, 1999, Act 47, Acts of Parliament, 1999, §3(2).

[2]Trade Marks Rule, 2017, Rule 25-31 & Rule 33-36.

[3]General Clauses Act, 1897, Act 10 of 1897, §3(42).

[4] Trade Marks Rule, 2017, Rule 18.

[5] Pioneer Nuts & Bolts Pvt. Ltd. v. M/s Goodwill Enterprises, FAO (OS) 334/2008.

[6] Rich Products Corp v. Indo Nippon Food Ltd., CS (OS) 246/2004.

[7] U S Trade Mark Act, FSR 101 (1982).

[8] The Trade Marks Act, 1999, Act 47, Acts of Parliament, 1999, §25.

[9] General Clauses Act, 1897, Act 10 of 1897.

[10] M/S  Nandhini Deluxe v. M/S Karnataka Co – Operative Milk Producers Federation Ltd, (2018) 9 SCC 183.

[11] Lal Babu Priyadarshi v. Amritpal Singh, AIR 2016 SC 461.

[12] Pharmaceutical Industries Ltd. v. Anglo French Drugs & Industries Ltd., 2015(63) PTC 580 (Del).

[13] Larsen & Toubro Ltd. v. Lachmi Narain Trades, 2015(64) PTC 386 (Del).