A TRADEMARK is any word, phrase, symbol, or design that is used in the course of commerce to identify and distinguish the source of the goods or services of one firm from those of competitors. The only difference between a service mark and a trademark is that a service mark indicates and differentiates the source of a service as opposed to a product.
Any substance/matter for being a trademark shall fulfil the following conditions
- It has to be a mark as that term is used in section 2(1)(m).
- It must be “capable of being depicted graphically” for such a mark.
- A Trademark must be able to “distinguish the goods or services of one person from those of others,”
- The trademark must be used or contemplated for use in connection with certain products or services.
Legislation
The Trade Marks Act of 1999 regulates trademark law. The Act aims to make it possible to register trademarks for goods and services in India.
Who can Apply?
Anyone may submit an application for the registration of a trademark to the Trademark Registry whose jurisdiction includes the applicant’s principal place of business in India. Anyone may submit an application in his name for a subsequent assignment of the registration in the favour of a company that is intended to be established.
Trademark Search
It is advisable to review the list of already registered trademarks before submitting an application for registration to guarantee that registration won’t be rejected due to the proposed mark’s similarity to an already registered or forbidden mark.
How to acquire a right in a trademark?
A person may acquire a right of property in a trademark in the following modes:
- Using the mark in connection with specific items
- Through the Act’s registration process;
- Through the transfer of the right from one person to another.
Filing and Objection of Trademark
Depending on where the applicant resides or has his primary place of business, a trademark application may be submitted using Form TM-1 at one of the five Trade Marks Registry offices, which are located in Mumbai, Delhi, Kolkata, Chennai, and Ahmedabad. If it is deemed to be acceptable, it is then published in the Trade Marks Journal for opposition. The mark is registered and a certificate of registration is granted if there is no opposition or if the opposition is upheld in the applicant’s favour. In the event that the applicant’s response is not sufficient to satisfy all objections, the Registrar will issue a final denial. At that point, the applicant may file an appeal with the Intellectual Property Appellate Board.
Stages involved for obtaining registration of a trademark:
- Allotment of application number
An application for registration is given a serial number upon receipt, which is then used as a reference number for future applications. If the mark is registered, the same number is used as the trademark registration number.
- Preliminary Examination Report
The Registry reviews the application and provides the applicant a Preliminary Examination Report (oePER) and Formalities Check Report (FCR), in which the Registrar requests that they address any faults and departmental objections. Within a month, the applicant must respond to the PER and FCR.
- Hearing
If the applicant sought a hearing in his reply and the Registrar is not pleased with the application and PER’s response, the Registrar may call the applicant for the hearing. The Registrar would order an advertisement if the hearing satisfied him.
- Advertisement in Trademark Journal
The application should be announced as accepted in the trademark journal by the Registrar after it has been approved, together with any terms and limits that may have been included.
- Objections, hearing and registration
Any individual may object to the registration in the required manner (Form TM 5) within three months of the date of the initial or subsequent advertisement by paying the prescribed fees, which are $2500. The applicant must submit a counter statement using Form TM 6 and pay the required fees, which amount to $1,000. Any party who wants to be heard must submit an application in the proper format (Form TM 7) and pay the required fees ($500). The Registrar decides on the claims of the applicant and the opponent after reviewing the written averments and holding any necessary hearings. If the decision is in the applicant’s favour, the trademark is then registered. The Registrar must issue a registration certificate in the appropriate format following trademark registration.
Grounds Of Refusal
The absolute grounds for refusing to register any mark are listed in Section 9 while the related grounds are listed in Section 11. The rejection order is typically issued due to the attraction of section 9 or section 11 provisions.
Duration Of a Trademark
The duration of a trademark registration is ten years. Renewal is allowed for further 10-year periods. In contrast to patents, copyrights, or industrial designs, trademark rights can continue to exist for as long as the mark is used by the owner.
Conclusion
The Ministry of Industry and Commerce of India’s Comptroller General of Patents, Designs and Trademarks, which registers trademarks, is responsible for this task. The Trademark Act of 1999 governs online trademark registration. The corporation has the right to file a complaint or bring legal action against any other organisation or individual that uses, copies, or abuses your brand.
