ARTICLES
Procedural aspects and facets of Trade Mark registration in India - "A birds eye view"
WHAT IS A TRADE MARK :
From morning until bed time we relate to trade marks. Much that is touched, seen, used, eaten, drunk and worn is likely to bear a trademark. In day to day life not a single day passes without coming across trade marks on the products or articles of daily use.
Trade marks are, therefore, considered to be of great commercial importance. If fixed assets are the body of a company, trade marks are its soul, yet people are either ignorant or have hazy ideas of trade marks and trade mark law and practice.
A trade mark can be briefly described as words, letters, numerals, names, shape of goods, packaging or combination of colours or any combination thereof, devices or any combination thereof, i.e. a label depicting pictures of animals, birds, human beings, deities, etc., applied to articles of commerce for the purpose of distinguishing the articles manufactured by one manufacturer from the similar goods manufactured by other manufacturers.
Words like Colgate, Macdonald, Pizza Hut, Coca-Cola, Pepsi, letters like HMT, ICI, ITC, IBM, numerals like 555 for cigarettes, 501 for washing soaps, 22 for bidis, and names like Vimal, Philips, Garware, Kirloskar, Tata, Godrej, are a few examples of trade marks.
STATUTORY PROVISIONS :
The procedure for registration of trade marks is contained in ss.18 to26 of the Act.
WHO MAY APPLY TO REGISTER:
Section 18 [1] & [2] reads as follows:
[1] Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.
[2] A single application may be made for registration of a trade mark for different classes of goods and services and fee payable therefore shall be in respect of each such class of goods or services.
Every application should be filed in the office of the Trade Marks Registry within whose territorial limits the principal place of business of the applicant is situate. In the case of applicants who does not carry of business in India the application should be filed in the office within whose jurisdiction his address of service is situate.
An application can be made in the name of an individual, or partners of a firm, or a corporation. A minor represented by the guardian can also apply. Two or more persons may apply to register a mark as joint proprietors provided the conditions laid down in s. 24 are satisfied.
ARTICULARS TO BE CONTAINED IN AN APPLICATION:
An application should contain the following particulars:
[1] Name and address of the applicant and where applicable an address for service in India. If the applicant has more than one place of business, the principal place of business should be stated. If the applicant has no place of business in India, an address for service in India should be stated. An applicant who has a principal place of business in India may also give an address for service. Names and addresses given should comply with the rules;
[2] the goods or services in respect of which registration is sought and the classes in which they fall;
[3] whether the mark is used or proposed to be used; and if the mark is already in use, the date since when and the person by whom the mark has been continuously used;
[4] any additional matter, if required;
[5] the appropriate office of the Trade Marks Registry; and
[6] where the application is for a series of trade marks, s. 15 should be complied with.
REPRESENTATION OF A MARK:
A specimen of the trade mark should be attached to the application. The application must be accompanied by 5 additional representations of the mark.
EXAMINATION OF APPLICATION:
On receipt of an application for registration it is allotted a serial number which is used as a reference number for the application, and subsequently for the trade mark when registered. The application is examined to see whether it satisfies the requirements of the relevant provisions of the Act and the Rules. Examination of the trade mark is carried out with particular reference to the following sections :
Section 9: Absolute grounds for refusal of registration
Section 11: Relative grounds for refusal of registration
Section 12: Registration in the case of honest concurrent use
Section 13: Prohibition of registration of names of chemical elements or international non-proprietary names
Section 14: Use of names and representations of living persons or persons recently dead.
Section 16: Whether Association with other marks is necessary.
BJECTIONS TO THE APPLICATION:
The following are some of the objections to the application which may be raised by the examiner after examining the application for registration of a trade mark:
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The mark applied for has no trade marks signification or is not a trade mark within the meaning of the statutory definition
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The mark is devoid of distinctive character s.9
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The mark offends against s.11
REPLY TO THE OBJECTIONS:
The objections to the application, if any, are communicated to the applicant who may submit his reply thereto in writing and may also ask for a hearing which will be granted at the office of the Registry where the application was filed. The Trade Mark Rules 2002, provides that a reply to the examination report should be filed within a period of one month from the date of receipt of examination report. In the absence of such response, the mark shall be deemed to have been abandoned.
ACCEPTANCE AND ADVERTISEMENT OF APPLICATION:
If the applicant satisfactorily meets all the objections raised by the office, the application will be advertised in the Trade Marks Journal, either as accepted or before acceptance [s.20].
OPPOSITION TO REGISTRATION:
After the application has been advertised in the Trade Marks Journal any person may, within 3 months from the date of advertisement of application of registration or within such further period, not exceeding one month in the aggregate, file a notice of opposition to the registration of the mark. [s.21]
REGISTRATION OF THE MARK:
Where an application has been advertised as accepted and has not been opposed, or if opposed, the opposition has been decided in favour of the applicant, the mark will be registered.
DATE OF REGISTRATION:
The trade mark will be registered as of the date of making of the application and this date will be deemed to be the date of registration. [s.23 (1)]
DURATION AND RENEWAL OF REGISTRATION:
The registration of a trade mark is for a period of ten years but it may be renewed from time to time by making an application on the prescribed form. Thus the mark may be kept on the register perpetually by renewing the registration at the end of every ten years.
ONCLUSION - PRELIMINARY ADVICE AND SEARCH
The selection of a trade mark and its adoption is, therefore, a matter of utmost importance and should be made not only on the basis of business and commercial requirements but also keeping in view the legal requirements for the purpose of its registration. Indiscriminate selection of a trade mark results in refusal of an application for its registration on one ground or another regardless of the fact that goodwill has been built up and large sums of money have been spent on publicity.
A trade mark must be capable of indicating the source of the goods rather than merely indicate the nature of the goods themselves. The less descriptive the trade mark is, the better chance there is of having it registered. For example, ‘QUICK FREEZ’ in respect of freezers would not currently be registrable as a trade mark and ‘SUPERB’ or ‘BARGAIN’ would not be registrable in respect of any kind of goods.
The trade mark ‘Rasoi’ for edible oils, ‘WAH’ for washing preparations and ‘SHINE IT’ for cleaning preparations have been refused registration as they are laudatory.
Quite often merchants, traders, manufacturers and well known business houses, in all good faith, hit upon a mark which appeals to them and they not only promptly start using the same but also spend considerable sums of money in advertising and popularizing the mark without considering for a moment any necessity for obtaining proper advise about its registrability. These persons cannot be heard to complain later on inasmuch as they had not taken the elementary precaution of making themselves aware by looking at the public record of register as to whether the mark in question is the property of another. If, however, the search is taken, and the person knowing fully well that the mark was the property of another person, continues to use the mark, then he runs the risk of a registered proprietor challenging his action for infringement { 2002 (24) PTC BOM (DB) }.
In the interest of the proprietor of a proposed trade mark, it is always advisable to obtain the expert’s opinion to ensure that the mark which he has selected complies with the requirements of the law and also the necessary information about any conflicting mark or marks in respect of which other persons have already acquired rights. A good trade mark is one which is suitable for use as a trade mark without interference from or without effecting the rights of other persons and is also eligible for its registration.
Send your comments to amits00012002@yahoo.co.in
Mr. Amit Sindhwani
