1. For
a trade mark to be registrable, should the mark be used?
2. Is a statement of use of a trade mark
required at the time of filing an application for registration?
3. At the time of filing the trade mark
application, is “intent to use” the trademark
sufficient?
4. Does the Indian Law permit trade mark
registrations for goods as well as services?
5. How does the trade mark registration
system operate?
6. What is the classification of the goods
adopted in India?
7. Is a three-dimensional mark registrable?
8. Is sound or smell registrable as a mark?
9. If sounds or smells are registrable,
how are these marks specified?
10. Are there any grounds for refusal
of registration of trade marks?
11. Can a Registered Trade mark be amended
at a later date?
12. Is it possible to get an opinion from
the Registrar regarding the registerability of the marks?
13. Can we know whether similar marks
have already been registered in respect of the same
type of goods?
14. What is the procedure adopted by the
Trade Mark Registry for completing the process of registration
of a brand?
15. Is there any opposition system for
third parties?
16. What if the Applicant doesn’t
respond to the First Examination Report within the stipulated
time?
17. What are the ways to overcome the
objection raised in the Examiners Report?
18. What if the Examiner rejects the Application
even after the Applicant had responded to the objection
in the first examination report? Will the Applicant
be heard before the rejection?
19. Is renewal allowed?
20. How long is the term of trade mark
right (registration)?
21. Is a renewal petition (application)
examined?
22. Is the trade mark holder supposed
to use his registered trade mark?
23. Is there any cancellation system on
the ground of non-use of a registered mark?
24. How many years of non-use does causes
cancellation?
25. What are Collective trade marks?
26. What are Certification Trade Marks?
27. Is registration of trade mark compulsory?
What if a person has a mark which is well known and
has been used for a long time and some one else fraudulently
uses the identical or similar mark?
28. Would the subsequent changes in ownership
or right to use of the mark be notified to the Registry?
29. Advice to foreign applicants who are
interested in protecting their mark in India?
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1.
For a trade mark to be registrable, should the mark
be used?
No, for a trade mark to be registrable it is
not necessary that the trade mark must have been in
actual use. Even the marks that are proposed to be used
can be registered.
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2.
Is a statement of use of a trade mark required at the
time of filing an application for registration?
Yes, a statement of use of a trade mark is
required at the time of filing.
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3.
At the time of filing the trade mark application, is
“intent to use” the trademark sufficient?
Yes, at the time of filing the trade mark
application, “intent to use” the trade mark
is sufficient.
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4.
Does the Indian Law permit trade mark registrations
for goods as well as services?
Yes the revised Trademarks Act, 1999 permits
registration of trade marks for goods as well as services.
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5.
How does the trade mark registration system operate?
Under the Trademarks
Act; Goods and Services have been classified into 42
different classes and the applicant will have to ascertain
as to which of the classes their goods fall under. Sometimes,
the business of the applicant may relate to similar
goods but (like tooth paste and tooth brush) under 4th
Schedule of the Trademarks Act, these goods fall under
different categories since 2 applications may be necessary
to secure complete protection.
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6.
What is the classification of the goods adopted in India?
The 7th Edition of International Classification
of goods and services (Nice Classification) is adopted
in India.
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7.
Is a three-dimensional mark registrable?
Yes, a three-dimensional
mark is registrable.
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8.
Is sound or smell registrable as a mark?
Yes, sounds or smells are registrable as a
mark.
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9.
If sounds or smells are registrable, how are these marks
specified?
They should be capable
of being reproduced graphically and should be distinctive.
Sound - musical notations along with
the sound recording
Smell - chemical formula along with
the sample
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10.
Are there any grounds for refusal of registration of
trade marks?
Under the Trademarks
Act, there are 2 grounds for refusal of registration
of trade marks:
(a) Absolute ground for refusal
of registration of trade mark: marks that are devoid
of any distinctive character which in the trade serve
to designate the kind, quality, quantity and geographical
origin will not be registered. However, if it can be
proved that these marks have acquired a distinctive
character prior to application by long continuous and
uninterrupted use of the mark; marks will also not be
registered if they are likely to deceive public or confusion.
If the mark comprises scandalous or obscene matter or
if the mark is likely to offend the religious sensibilities
of the people the same cannot be registered. In addition,
if the mark registration is prohibited under the Emblems
and Names (Prevention of Improper Use) Act, it will
not be registered. Normally, if the shape of the goods
is necessary to obtain a technical result or the shape
that adds substantial value to the goods it will not
be registered.
(b) Relative ground for refusal
of registration of trade mark: when the proposed
mark for registration is in conflict with the identity
of an earlier registered trade mark in respect of the
same or similar goods or services or if it conflicts
with the internationally well-known trade mark even
if it is not registered in India.
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11.
Can a Registered Trade mark be amended at a later date?
Yes, the filed mark
is allowed to be amended as per the provision of Section
22 of the Trademarks Act, which allows the amendment
of the mark provided it does not amount to a substantial
change in the character of the mark as such. It is practice
of the Registrar of Trade Marks that if the mark applied
as a label mark, any superficial or insignificant character
or feature of the said mark, is allowed to be amended,
if a request filed in the prescribed format along with
16 copies of the amended label mark.
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12.
Is it possible to get an opinion from the Registrar
regarding the registerability of the marks?
Yes, any person by
applying in Form 55 and payment of an official prescribed
fee can get an opinion from the registrar as to the
distinctiveness of the proposed mark by mentioning the
mark as well as the goods or services with which the
marks are proposed to be used.
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13.
Can we know whether similar marks have already been
registered in respect of the same type of goods?
Yes, it is possible to make a request for search.
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14.
What is the procedure adopted by the Trade Mark Registry
for completing the process of registration of a brand?
The Trade Mark Office requires that an application
for registration must be made in Form 1
in triplicate along with a prescribed fee of Rs. 2,500/-
per application per class. Form 1 should be accompanied
by five representations of the brand in the prescribed
manner.
On receipt of the Application, the Trade Mark Registry
will issue an Examination Report and the Applicant will
have to comply with the requirements of the report within
a month of receiving the report.
On compliantion of these requirements, the mark will
be advertised in the Trade Mark Office Journal prior
to the acceptance. If there is no opposition, the mark
will proceed towards acceptance.
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15.
Is there any opposition system for third parties?
Yes, there is an opposition system for third
parties wherein within three months after the publication
of the mark in the Trade Marks Journal and from the
date of publication (the same being extendable by another
one month). Soon after the receipt of Notice of Opposition,
the Applicant for Registration must file Counter Statement
against Opposition. There after, the Opponent will be
allowed to file Evidence in Support of Opposition. The
Applicant would also be given an opportunity to rebut
the Evidence filed by the Opponent. If the Applicant
fails to lodge the Counter Statement against the Opposition,
then the Application will be deemed to be abandoned.
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16.
What if the Applicant doesn’t respond to the First
Examination Report within the stipulated time?
It is imperative that the Applicant must respond
to the requirements of the Examination Report within
30 days. If the Applicant either does not respond to
the Examination Report or fail to comply with the requirements
of the Report, the Application shall be deemed to be
abandoned. In such a case, the Applicant does not have
a right of Appeal any where. However, the Applicant
can file a Writ Petition.
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17.
What are the ways to overcome the objection raised in
the Examiners Report?
The Applicant can produce evidence to the Examiner
that the mark had over a period of time acquired distinctiveness
and the consumers associate the brand only with the
Applicant and none else. For this purpose, the Applicant
can file an Affidavit along with evidence to show the
amount of money spent on advertisements, produce publicity
brochures and the other hand bills to popularize the
brand.
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18.
What if the Examiner rejects the Application even after
the Applicant had responded to the objection in the
first examination report? Will the Applicant be heard
before the rejection?
There is no automatic right of hearing before
rejection of a trade mark Application. If the Applicant
is so particular, the Applicant has to request for hearing
while responding to the first examination report.
Despite the hearing and the response given by the Applicant
or in pursuant of a opposition logged by a third party,
if the Trade Mark Registry rejects the Application the
aggrieved Applicant can file an Appeal to the Intellectual
Property Appellate Tribunal within 90 days of the receipt
of the order.
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19.
Is renewal allowed?
Yes, renewal of a trade mark is allowed. Renewal
must be applied for in Form 12 along with a prescribed
fee of Rs. 5,000/-.
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20.
How long is the term of trade mark right (registration)?
The trade mark right
can be perpetual (provided it is renewed after every
10 years).
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21.
Is a renewal petition (application) examined?
Yes, usually the examination includes whether
the renewal application is in time, the same is filed
along with the prescribed fees and the same is filed
by the proprietor of the mark on record.
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22.
Is the trade mark holder supposed to use his registered
trade mark?
Yes, the trade mark holder is supposed to use
his registered trade mark. But if the Law prohibits
the employment of the mark in Indian market by the Registered
Owner, in such a case, the non-use of the mark by the
owner can be condoned.
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23.
Is there any cancellation system on the ground of non-use
of a registered mark?
Yes, there is a cancellation system on the
ground of non-use of a registered mark or fraudulent
obtaining of the trade mark by filing petition for rectification
of the trade mark under Section 92 of the Trademarks
Act.
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24.
How many years of non-use does causes cancellation?
5 years of non use
causes cancellation.
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25.
What are Collective trade marks?
A collective trade mark can be obtained by
an organization which can permit the members to use
the mark. The association has to prepare and file a
regulation with the Trade Mark Registry setting out
the rules specifying standards and criteria for membership.
Collective trade mark cannot be owned by individuals
or a body corporate. It has to be a registered association
or Trust having many members or beneficiaries.
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26.
What are Certification Trade Marks?
Certification trade marks guarantee that the
goods or services that use the mark have been certified
by to have been made of a particular material, method
of manufacture, quality, accuracy or origin. This can
be owned by individuals or a corporate body. Regulation
governing the Certification would have to be logged
with the Trade Mark Registry along with the application.
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27.
Is registration of trade mark compulsory? What if a
person has a mark which is well known and has been used
for a long time and some one else fraudulently uses
the identical or similar mark?
Registration of a trade mark is not compulsory.
However, the Registration of the trade mark establishes
that the registered owner is the proprietor of the mark
covered by the registration. Obtaining registration
is like having a reserved ticket for a journey even
though Law doesn’t compel you to reserve a ticket
for traveling.
In the case unregistered yet well known brands, the
owner of the brand can initiate a passing off action.
Differences between Passing Off action and trade mark
infringement are given as under:
| |
Trade
Mark Infringement |
Passing
Off |
|
1 |
Mere possibility
of confusion is enough for getting interim and
final relief. |
Actual deception
has to be proved for any relief. |
|
2 |
Trade Mark
infringement is actionable per se and the Registered
Owner need not prove specific monetary damage
because of the infringement. |
In a Passing
Off case, the owner of the unregistered brand
has to prove actual damage because of the wrongful
adoption. |
|
3 |
Trade Mark
registration is prima facie proof of ownership
of the mark. |
In a Passing
off case, the Plaintiff has to lead evidence showing
long uninterrupted use of the brand and the fact
that the infringer adopted the mark knowing the
goodwill of the Plaintiff’s mark |
|
4 |
Registered
owner can initiate proceedings within the Jurisdiction
of a Court where the Owner / Plaintiff resides
or carries on business. |
Passing Off
case can only be initiated in a place where the
Defendant resides or carries on business or where
any part of the cause of action arose. |
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28.
Would the subsequent changes in ownership or right to
use of the mark be notified to the Registry?
Trade Marks can be either assigned in full
of transmitted in part. All transmissions or assignments
must be registered with the Registrar of Trade Marks
on Form 23 or 24 of the Trade Marks. Under the Act there
is a classification if the owners delay the registration
of the transmission or assignment, the Applicants will
have to increased registration fee. The Trade Mark Rules
make a classification between assignment of a trade
mark with goodwill and assignment of a trade mark without
goodwill. In case of Assignment without goodwill the
Registry would insist on Advertisement in Newspapers
and permit assignment only after ensuring that interest
of the third party would not be affected.
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29.
Advice to foreign applicants who are interested in protecting
their mark in India?
Indian Law has been
harmonized and the same have now become TRIPS compliant.
Further, the Indian Law now protects a well-known and
famous mark irrespective of the facts as to whether
the same is used and/or registered in India. Moreover,
it also provides for claiming priority based upon an
earlier application made in a convention country.
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