The Trade Marks Act, 1999
The Trade Marks Act, 1999 (hereinafter referred to as ‘the Act’) functions as the leading legislation in India which governs and regulates the qualifications and procedure of registration of trade marks and the associated rights and liabilities of their holders.
A trademark is symbol, word, configuration, shape or combination of colours giving distinctive identity to products or services represented graphically and capable of distinguishing the goods or services of two separate persons, as defined under Section 2(1)(zb). The ‘mark’ includes a brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging, or combination of colours, etc. Hence, the conditions to qualify as registered trade mark includes graphical representation and acquired distinctiveness.
Trademark Registration Process:
Trademark registration can be obtained for words, logo, numerals, slogan, device and more in India. Trademark registration provides legal right of exclusivity for use of the mark to the owner of the trademark.
A unique brand name cannot undermine the importance of trade mark search. The search helps one to find the existence of similar trade marks and gives a picture where the trade mark stands, sometimes giving forewarning of the possibility of trademark litigation. Before beginning the trademark registration process, the entrepreneur or a trademark professional must conduct a trademark search of the trademark database. A trademark search will provide information about identical or similar trademark that has already been filed with the trademark registry. A trademark search can be conducted by visiting the Trademark Registrar Website.
Trademark Application and Examination by expert:
After making sure that the chosen brand name or logo is not listed with Trade mark Registry India, one can register the same. The first step is filing a trade mark application at the Trade mark Registry India, for which an official receipt is generated for future reference.
After filing of the trade mark application, it is examined by examiner for any discrepancies who may take around 12-18 months. He might accept the trade mark completely, conditionally or raise objection based on the provisions of law. The examiner may refiuse the registration of trademark either on absolute or relative grounds. Absolute grounds for refusal has been mentioned under Section 9 in accordance with which trademarks are not if they cannot distinguish goods or services of the applicant from others or if it consists of marks related to quality, geographical origin, production, characteristics of goods or services. Further Section 9(2) states that any marks that are deceptively similarl;y to any existing marks which leads to a confusion among the public at large.
Relative grounds for refusal have been provided under Section 11 which states that identical to earlier registered trade mark, and goods or services of two marks are comparable. Further the Section also states that any marks that takes unfair advantages of well known trademark or amounts to passing off or its use is prohibited by Copyright Act, 1957.
If the trade mark gets accepted unconditionally, it gets published in the Trade mark journal. To the contrary if not accepted unconditionally, the objections and conditions to be fulfilled for registration is mentioned in the examination report with a month’s time to resolve the lacunae or respond to the objections. Subsequently, if the response is not accepted, the applicant can request a hearing before the examiner who has discretion to allow trade mark registration after the hearing.
Publication and Registration Certificate:
The step of publication is incorporated in the trade mark registration process, so that anyone from public who has objection to the registration of trade mark is given time and opportunity to oppose the same. If after publication for 3-4 months there is no opposition, the trade mark proceeds for registration. When there is opposition, there is provision of fair hearing and the decisions is given by registrar.
Once the application proceeds for registration following the publication in Trade mark journal, a registration certificate under the seal of trade mark office is issued.
Renewal of trademark:
The trademark can be renewed after every 10 years. Hence, the logo or brand name registration can be protected perpetually. Trade mark registration is a simple process in India and important for brand name registration, protection of legal rights, interests, and reputation of any owner’s brand.
Trademark Registration Flow-chart:
It is pertinent to state that the certificate of registration granted after completion of the steps mentioned herein above cannot be used in any legal proceedings as per Rule 56 of the Trademark Rules, 2017. Any person who desires to submit evidence of registration of trademark in any judicial proceeedings shall be required to obtain a certificate under Section 137 of the Trademarks Act, 1999.