It is interesting to note that the law of trade mark; practically all over the world is based on three broad concepts-
- Distinctiveness or distinctive character, or capable of distinguishing
- Deceptive similarity or similarity or near resemblance of the marks
- Same description or similarity of goods.
The purpose of the Act, as stated in the preamble, is to provide for registration and better protection of trade marks for goods and services and to prevent the use of fraudulent marks. In fact, the whole idea behind the law of registration of trademarks is to prevent fraudulent user of the marks of one proprietor by another proprietor. The registration of trade mark grants exclusive right to its registered proprietor.
The legal requirements to register a trade mark under the Act are:
- The selected mark should be capable of being represented graphically (that is in the paper form).
- It should be capable of distinguishing the goods or services of one undertaking from those of others.
- It should be used or proposed to be used mark in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services and some person have the right to use the mark with or without identity of that person
The procedure for obtaining registration of a trade mark is discussed below.
- An application for trademark may be made on Form TM-1 with prescribed fee of Rs. 2500/- at one of the five office of the Trade Marks Registry located at Mumbai, Delhi, Kolkata, Chennai and Ahmadabad depending on the place where the applicant resides or has his principle place of business.
- Registrar office will send the Examination Report mentioning the reasons of refusals.
- The Applicant will be given a month time to make the submission.
- If the registrar Office is not satisfied with the submission then the Applicant will be called for hearing.
- Once the applicant has overcome all objections raised by the registrar, the application proceeds to publication in the Indian Trade Marks Journal, with an endorsement stating either that it has been accepted or that it is being published before acceptance.
- After publication in the Trade Marks Journal, anyone has three months (which may be extended by up to a further month at the registrar's discretion) to file a notice of opposition to registration.
- The question of acceptance or refusal of the trademark application will be considered only once the opposition proceedings have been completed. The onus is on the applicant to establish that it is entitled to registration of the trademark as applied for.
- If an application has been published as accepted and is not opposed, or if any oppositions are decided in favor of the applicant, the mark will proceed to registration. If the application has been published before acceptance and is not opposed during the opposition period, the registrar will then consider afresh whether to accept the application; if he decides in the affirmative, the mark will be registered.
- The fact of registration must be published in the Trade Marks Journal.
- Once an application has been accepted for registration and any opposition have been decided in favor of the applicant, certificate of registration is issued. If the applicant's response does not overcome all objections, the Registrar will issue a final refusal. The applicant may then appeal to the Intellectual Property Appellate Board, an administrative tribunal.
- The registration when granted is valid for a period of ten years from the date of registration (i.e. the date of application). The request for renewal of a trademark can be filed six months prior to the expiry of the validity of registration. The law also permits renewal and restoration of lapsed trademark provided such a request is made within the maximum period of one year after the expiry of the validity.
It is pertinent to mention here that since registration confers on the proprietor a kind of monopoly right over the use of the mark, which may consist of a word or symbol legitimately required by other traders for bona fide trading or business purpose, certain restriction are necessary on the class of words or symbols over which such monopoly right may be granted. This principle is recognized in the qualifications for registration laid down in Section 9, absolute grounds for refusal of registration.
Syed Burhanur Rahman, Attorney,New Delhi
Syed Burhanur Rahman is an alumnus of St. Stephen's College and Campus Law Center,Delhi University.A Quiz aficionado,he has featured in premier T.V Quiz shows including Mastermind India(BBC),University Challenge Quiz(BBC) and Nat Geo Genius(National Geographic Channel).An Attorney working with INDUS G & D Law(Delhi),his practice areas include Corporate Law,IPR and Taxation Law