In India, the right to proprietorship of a trade mark may be acquired by either registration under the Trade Marks Act, 1999 or by use in relation to particular goods or service.
PROCEDURE for TRADEMARK REGISTRATION
If it is a word mark, or if it is a mark containing at least in part a word, then that word ought to be easy to speak, spell and remember.
● Invented words or coined words that cannot be found in a dictionary as such form the best trade marks of all, since they can seldom be used as a generic word for any purpose.
● One should always be careful to avoid selection of a geographical name precisely for the same reason.
● It is in the best interest of a person not to select as marks descriptive or generic names or names that describes quality of a good such as best, perfect etc., or marks which have become customary in the current language or in the established practices of related trade.
● The mark should not consist exclusively of the shape of goods which results from the nature of the goods themselves, or the shape of goods which necessary to obtain a technical result or the shape which gives substantial value to the goods.
● If the mark is of such a nature as to deceive the public or cause confusion or contains any matter likely to hurt the religious susceptibilities of any class of Indian citizens or any scandalous or obscene matter, it may be refused registration.
● An action that will always satisfy the combined tests of both prudence and sound business sense will be to conduct a thorough market survey and a search at the Trade Mark Office before seeking to get a mark registered, so as to know whether similar mark or marks have already been registered or filed for registration.
THE PROCEDURAL FORMS FOR MAJOR TRADEMARK TRANSACTIONS
The First Schedule to the Trademark Rules, 2002 prescribes the different procedural forms and
necessary amounts of fees required for all trademark-related transactions, of which some
examples have been given below:
For filing new applications- There are prescribed forms depending on the nature of application such as Form TM-1, TM-2, TM-3, TM-8, TM-51 etc.
To file a Notice of Opposition to oppose an application published in the Trade Marks Journal- (FormTM 5).
For Renewal of a Regd. Trademark- (Form TM-12).
Surcharge for belated renewal – (Form -10)
Restoration of removed mark – (Form TM-13)
Application for rectification of a registered trade mark – (Form TM-26)
Legal Certificate – (Form TM-46)
Official search request for trademark – (Form TM-54)
Preliminary advice of the Registrar as to the registrability of a mark – (Form TM-55).
Copyright search request and issuance of certificate – (Form TM-60)
MARKS THAT CAN BE ADOPTED AS TRADE MARK
● Any name (including personal or surname of the applicant or predecessor in business or the signature of the person), which is not unusual for related trade to adopt as a mark.
● An invented word or any arbitrary dictionary word or words, not being directly descriptive of the character or quality of the goods/service.
● Letters or numerals or any combination thereof.
● Devices, including fancy devices or symbols
● Combination of colors or even a single color in combination with a word or device
● Shape of goods or their packaging
● Marks constituting a 3- dimensional sign.
● Sound marks when represented in conventional notation or described in words by being graphically represented.
● All of the aforesaid marks have to be sufficient for the purpose of identification of and distinguishing the goods, in relation to which they are being used, from other goods.
DURATION OF TRADE MARK PROTECTION AVAILABLE IN INDIA
Term of registration of a trademark is ten years, which may be renewed for a further period of ten years on payment of prescribed renewal fees.
However, non-usage of a registered trademark for a continuous period of five years is a valid ground for cancellation of registration of such trademark at the behest of any aggrieved party
NECESSARY SPECIAL DOCUMENTS FOR TRADE MARK REGISTRATION
Proprietorship concern: Full name and address of the proprietor and true copy of identity and address proof.
Partnership concern: Full name and address of all partners and true copy of related documents.
Company concern: full name and address of all directors and true copy of related documents.
If one has claimed that the proposed mark is used since before application in another country, then evidence for such claim has to be provided.
Label of the proposed Trade Mark (Standard Label size 9cm x 5 cm) has to be provided.
WHERE TO FILE FOR REGISTRATION OF TRADEMARK
The application must be filed at the office of the Trademark Registry which jurisdiction to deal
with it. So far, there are six registry offices, as per the official website of the Registrar of Trade
Marks, mentioned as follows:
|Trade Marks Registry MumbaiIntellectual Property Office, Antop Hill Post Office, S.M.Road, Antop Hill, Mumbai-400037||Maharashtra, Madhya Pradesh and Goa|
|Trade Marks Registry, DelhiDelhi Intellectual Property Office Plot NO.32, Sector 14, Dwarka, New Delhi-110075||Jammu & Kashmir, Punjab, Haryana, Uttar Pradesh, Himachal Pradesh, Delhi and Chandigarh|
|Trade Marks Registry, KolkataKolkata Intellectual Property, Office CP-2, Sector V, Salt Lake City, Kolkata-70009||Arunachal Pradesh, Assam, Bihar, Orissa, West Bengal,Manipur, Mizoram,Meghalaya, Sikkim, Tripura,Nagaland, Andaman & NicobarIslands|
|Trade Marks Registry, ChennaiIntellectual Property Office G.S.T. Road, GuindyChennai-600 032||Andhra Pradesh, Kerala, Tamil Nadu, Karnataka, Pondicherry, Lakshadweep|
|Trade Marks Registry,AhmedabadAhmedabad National Chambers, 15/27, 1st floor, Ashram road, Ahmedabad- 380 009||Gujarat, Rajasthan,Damman, Diu, Dadra and Nagar Haveli|