Trademark Registration in India
Author: Karnika Seth
TRADEMARK REGISTRATION IN INDIA
TRADE MARK PROTECTION:
The Trademarks Act, 1999 provides protection to the owner of a trademark and imposes criminal liabilities for the infringement of the trademark owner's rights. To enjoy protection, the owner of a trademark must apply for registration with the Trademark Registrar of the Registry of Trademarks, India. The Trademarks Act is also applicable to the protection of service marks, certificate marks and collective marks. The Trade Mark Registry Office performs the statutory duties in connection with the registration of Trade mark and other activities related thereto. Trade Mark offices are located in Ahmadabad, Chennai, Kolkata, Mumbai and New Delhi.
TRADEMARK REGISTRATION VALIDITY
owner is required to apply for the renewal after this time-period. Date of registration of the Trade Mark is the date on which the application for Trade Mark is filed.
WHAT MARKS ARE REGISTRABLE AS TRADEMARKS?
A trademark is a “mark” used or proposed to be used for or in connection with goods or services to distinguish such goods or services from other goods or services. A Mark can be a) any brand, heading, label, ticket, name, sign letter, text, word, numeral, slogan, base line, shape, colour or combination of any of these.
To register the mark as a trademark, the mark must meet the following requirements:
1. It must be distinctive
2. It must not be identical or similar to a mark already registered or any pending prior application for registration;
3. It must not be prohibited by the Trademarks Act
4. It must be owned by the applicant
SELECTING A SUITABLE TRADE MARK-10 POINTS TO REMEMBER.
1. A trade mark may be a word, letter, a device or numeral or signature, shape of goods, packaging or combination of colours or any combination thereof. It is better if it is simple in design.
2. If it is word it should be easy to speak, spell and remember
3. An ideal trade mark is an invented or coined word
4. Word which are laudatory or which directly refers to the character or quality of the goods or services should not be adopted.
5. Geographical names connected with the reputation or quality of the goods or services for which registration is sought should not be adopted.
6. It is advisable to conduct a market survey to ascertain whether any identical or deceptively similar mark is used for the same goods or services by any other person in the market.
7. It is advisable not to imitate another person's trade mark or any other well known trade mark even if the goods or services are different.
8. Before applying for registration it is advisable to obtain preliminary advice regarding the distinctiveness of your mark from the Registrar by making a request on from TM-55 with a prescribed fee.
9. Further a request can be made on Form TM-54 with a prescribed fee to obtain an official report to ascertain whether any identical or deceptively similar trade mark exists on the Register or is pending for registration for the same or similar goods or services.
10. Moreover, a personal inspection or search of the Register of Trade Marks on payment of a prescribed fee may be done.
OUTLINE OF THE TRADEMARK REGISTRATION PROCEDURE:
1. Trademark Search: It is advisable to conduct a trademark search for the relevant classes before filing the application to register a trademark in order to make sure that there is no identical or similar trademark already registered or for which an application for registration has been submitted.
2. Filing Application: The application to register the trademark is filed with the Registrar of Trademarks.
3. Publication in the Trademark Gazette: If after a preliminary examination, the Trademark Registrar considers the mark to be distinctive, it orders the publication of the mark in the Trademark Gazette. If no opposition to the mark is filed within 90 days from the date of publication, or 120 days if request for extension of time is given by an opponent and opposition is refused, mark proceeds for grant of registration certificate.
4. Trademark Registration: The trademark is registered and the trademark registration certificate is issued by the Registrar of Trademarks.
5. If there is no objection and /or opposition raised, the process of registration of trademark usually takes 1-1.5 years and incase of any objection/opposition proceedings it usually takes approx 2 years.
