Trademark Registration: The need of an ERA
(Procedure of Registration of Trade Mark, Its Benefit and Applicability)
Today is the era of competition. In such competitive world, the only way to sell the goods in the market is the Brand Value or the Brand Name of the Product or the Company. Many a times, it has been seen among various business houses that the two businessman using the same name or the same logo or the same brand. In such condition, the only loss is to the customer who buys the product of that company which is just a fake one using the name/ logo/ brand of the reputed company. In such a condition, it becomes difficult for the reputed company to keep the faith and trust of the public over their product. To ensure that no loss should be encountered by the Real owner, the concept of TRADE MARK came into existence.
The Trade Marks Registry was established in India in 1940 and presently it administers the Trade Marks Act, 1999 and the rules there under. It acts as a resource and information centre and is a facilitator in matters relating to trade marks in the country. The objective of the Trade Marks Act, 1999 is to register trademarks applied for in the country and to provide for better protection of trade mark for goods and services and also to prevent fraudulent use of the mark. The main function of the Registry is to register a trademark which qualifies for registration under the Act and Rules.
A trade mark (popularly known as brand name is a visual symbol which may be a word, signature, name, device, label, numerals or combination of colors used by one undertaking on goods or services or other articles of commerce to distinguish it from other similar goods or services originating from a different undertaking.
Any organization that is planning its entry into the market should definitely keep IPR in mind. Because the benefits will not just make you richer but can far outweigh the other tangible benefits you get from your business.
Legal requirements for registration of trademark:-
- 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.
Procedure of Registration of Trademark of product label/ company name/ logo/ trade name etc.
Any person claiming to be the proprietor of a trade mark used or proposed to be used by him may apply in writing in prescribed manner for registration. The application should contain the trade mark, the goods/services, name and address of applicant and agent (if any) with power of attorney, period of use of the mark and signature. The application should be in English or Hindi. It should be filed at the appropriate office. Following is the described procedure for applying of the Trademark:
1. Search and decide for the Name, Device, logo, Label intended to be applied as Trademark. It may be any name of the product/ goods/ or of the company in whose name the trade mark can be applied. Be noted that the name/ o the label etc you are going to apply for should be unique one and should not match with the already existing product/ trade name otherwise the name applied by the applicant will get rejected and whole fees deposited by the applicant will go waste. For this the applicant should check on the site of Trade Mark about the class of product whether any name/ label, he intends to apply is existing or not.
Trademark classes: There are totally 45 classes listed in Fourth Schedule of the Trademarks Act. Each class provides a list of goods and services and a trademark that is intended to be used for any goods or services has to be registered under the class that lists such goods or services. Registration of a trademark in one class gives rights to the owner to prevent others from using the same or similar trademark with any goods or services relating to entries under that class. Registration of trademark in one class does not prohibit others to use or register the mark for entries in other classes. If any goods or services are not specified in any of the classes, the Registrar will have to discretion to determine the class under which a trademark used for such goods or services can be registered.
2. Filing an Application: Any person claiming to be the proprietor of the trademark used or proposed to be used by him can apply. The application may be made in the name of an individual, partners of a firm, a Corporation, any Government Department, a Trust or joint applicants. The proposal to use the trademark may be by a Company to be formed or by an individual.
A Trademark application has to be made on TM1 in triplicate along with five additional representations of the Trademark for registration of single mark in single class by paying a stipulated fees as may described by the Department from time to time. In order to apply for more than one class, a Single application can be made on TM51 in triplicate along with five additional representations by paying prescribed fee per class. To apply for more than one trademark (Series of Marks) for same class of goods, a single application can be made on TM8 in triplicate along with five additional representations by paying the prescribed fee per mark per class.
An agent/ advocate can file application on behalf of his client who empowers him through a power of attorney (Form TM-48) on Rs.100 Stamp Paper.
Documents Required are:
1. The self attested Identity Proof and Address proof of the Applicant i.e. Proprietor/ Partners/ Directors
2. Proof of business establishment
3. The logo/ label to be registered
4. Letter head of the firm along with stamp and sign
Examination
The application is examined within one month from the date of application to check if it meets the requirements of the Trademarks Act 1999.
Requirements provided under Section 9 & 11 are as follows: The trademark,
1. Should be distinctive;
2. Should not be descripttive;
3. Should not be generic;
4. Should not be deceptive;
5. Should not hurt the religious sentiments of any class or section of the citizens of India;
6. Should not contain scandalous or obscene matter;
7. Should not contain marks prohibited by Emblems and names (prevention of improper use) Act, 1950;
8. Should not be the shape of goods which results from the nature of the goods;
9. Should not be identical with an earlier trademark;
10. Should not be prevented by virtue of any law and in particular the law of passing off; and
11. Should not be a well known trademark.
If the trademark meets all requirements of the Act, the trademark will be accepted for registration. If there are any objections, the registry will send an examination report stating the reasons for objection. The response to the objections can be filed within one month from the date of receipt of the examination report. The response can be sent by way of an affidavit and a hearing can be requested if necessary.
Publication
If the trademark is accepted for registration, the details of the application will be advertised in the Official Journal of trademarks within six months from the date of acceptance of application.
Opposition
On advertisement, any person who believes that a trademark should not be registered may oppose its registration within three months from the advertisement date stating the grounds of opposition. The opposition process is important as it prevents others from acquiring a trademark in respect of an already existing brand name. For company managers, strategists and advisors, it is a useful legal tool to avoid risk of brand dilution, and hence an aspect of legal liability management. All the requirements of the Trademark Registration are valid grounds for opposition. If no opposition is filed against the application, or if opposition is unsuccessful, the trademark will be registered.
Note that a trademark can be revoked even after it is granted, if somebody successfully challenges it on the ground that it is confusingly similar to an already registered trademark.
Registration
Trademarks Registry of India will then send a Certificate of Registration and record the details of the trademark in the Register of trademarks. The trademark will be registered from the date of filing of application, not from the date it was examined or accepted.
FORMS USED 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)
Renewal of Trade Mark: The term of protection of a trademark is unlimited. However, it has to be renewed every ten years from the date of filing to keep it alive. Non-use of the trademark for a period of five years would result in loss of the trademark. 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
Conclusion: Registration of a trademark is not compulsory. However, registered trademarks have additional benefits when compared to unregistered trademarks. Registration of trademarks allows the Owner of the trademarks to file infringement suits for violation of his rights whereas the unregistered user has to search remedies in common law.
CS Mohit Saluja
Whole Time Practicing Company Secretary
B. Com (Prof.), M. Com, ACS
Jalandhar, Punjab, India
Ph. No. 9914558709
Email id: csmohitsaluja @ gmail.com
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