disclaimer

• A trade mark identifies the source of goods and services and distinguishes the goods and services of one entity from those of others
•  Trade Mark acts as the main instrument for advertising and selling the goods or services
•  A trade mark allows the consumers and purchasers to be aware of the goods they are buying
•  A trade mark allows consumers to develop brand loyalty and affiliation further stimulating sale of such products
•  A trade mark helps in accumulating goodwill which eventually imparts enviable brand value to such trade mark

•  A trade mark must be easy to remember and catchy
• A trade mark must be short and easy to spell
• A trade mark must not be laudatory or descriptive of the goods/services in any sense
• A trade mark must not be identical/deceptively similar to an existing trade mark
• It is always advisable to carry out of search on the official website of the Trade marks Registry before applying for a trade mark to weed out the chances of conflict with prior proprietors of similar/identical marks.
•  It is always advisable to carry out of search on the official website of the Trade marks Registry before applying for a trade mark to weed out the chances of conflict with prior proprietors of similar/identical marks.

•  A trade mark which is devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
•  A trade mark which consists exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services;
•  A trade mark which consists exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, i.e., a trade mark which is common to trade, commonly used dictionary terms, names of places etc.;
• A trade mark which is of such nature as to deceive the public or cause confusion;
•  A trade mark which contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India or comprises scandalous or obscene matter;
•  A trade mark, the use of which is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950 (12 of 1950);
•  A trade mark shall not be registered as a trade mark if it consists exclusively of the shape of goods which results from the nature of the goods themselves; or the shape of goods which is necessary to obtain a technical result; or the shape which gives substantial value to the goods;
•  A trade mark which is similar to a prior adopted/registered/used trade mark of another trader who has been using the trade mark with respect identical/similar goods or services;
•  Some trademarks are prohibited from registration under the directions of the Government. For example – the device or word ASHOK CHAKRA, names like Sai Baba, National etc;
• A trade mark which is similar or identical to well-known or reputed trademarks with respect to similar or dissimilar goods/services. For example: Bajaj, Sony, Infosys, Kit Kat, Amul, Tata etc.;
• A trade mark which is the commonly used and accepted name of any single chemical element or any single chemical compound (as distinguished from a mixture) in respect of a chemical substance or preparation, or which is declared by the World Health Organisation and notified in the prescribed manner by the Registrar from time to time, as an international non-proprietary name or which is deceptively similar to such name;

• Trade mark registration provides exclusive right to use the registered trade mark in respect of the goods or services covered thereunder under the Indian Laws. This is subject to certain exceptions.
• Use of the ® symbol on goods/services adds to the brand value. Instils a sense of faith in the quality in the minds of the consumers.
• Acts as a notice/warning to possible infringers that the trade mark enjoys statutory protection.
• A trade mark registration certificate act as a prima facie proof of the rights vested in the registered proprietor in court proceedings.

• Any person claiming to be the proprietor of a trade mark whether used or proposed to be used can file an application for registration of trade mark before the appropriate Trade Marks Registry office. A trade mark can be registered in the name of an individual, sole proprietor, joint owner or a body incorporate such as an incorporated company, LLP or a partnership firm, society, trust, H.U.F.

• Pre-filing Search
• It is strongly recommended that a trade mark availability search is done prior to filing of any trade mark application(s).
• Requisites:
• Description or copy of the mark;
• Full name, nationality and registered office address of the applicant;
• List of goods/services according to International classification(Nice Classification current edition). One can file a multi class trade mark application;
• Date of first commercial use of the mark in India, if any. It is possible to file a trademark application with “intent to use basis”;
• Power of Attorney.

• India is a ‘first to use’ jurisdiction rather a ‘first to file’ jurisdiction, which means that the prior user of a trade mark has a better proprietary right than a prior registrant.User date of a trade mark refers to the date from which a trade mark is put to commercial use in any form in the market. Mere advertisement and test marketing does not amount to use of trade mark in commerce. It is extremely essential to put in the user date of a trade mark while applying for registration before the Trade Marks Registry which has already been put to use. Such user date may need to be substantiated with relevant documents at the time of prosecution of the trade mark application. A trade mark may be applied as “proposed to used” mark where the mark has not been put to use.

• The goods/services are classified as per the current edition of the International Classification of goods and services (Nice Classification) published by the World Intellectual Property Organization (WIPO). Classification of goods and services comprises of 45 classes. Classes 1-34 classify goods whereas Class 35-45 classifies services.

• The Trade Marks Registry has also published an alphabetical index of goods and services including those of Indian origin. If there is any ambiguity in the classification the decision of the Registrar on the appropriate class is final.

• For obtaining registration in India it generally takes approximately 8-10 months from the date of filing application in a straight forward case (where there are no objections by the Trade Marks Registry nor any opposition filed thereto). This would however depend entirely on the facts of the case. Where there are objections/oppositions time lines would vary on a case to case basis.

• A request for expedited examination of atrade mark application may be filed in the prescribed form on payment of the prescribed fees along with a statement comprising cogent reasons for filing such request. However, once such examination report is issued the application follows the normal time lines and no special priority is accorded to such application.

Once a Trade Mark application is notified in the Trade MarksJournal, a trade mark application may be opposed within four months from the date of such publication by any person. In case a trade mark application is opposed, the opposition proceedings would take place, after which, the mark would either be allowed or rejected by the Registrar of Trade Marks based upon the merits of the case.An appeal may be filed against the decision of the Registrar before the Appellate Board. If no opposition is filed within such four-monthperiod, the trade mark application would proceed to registration.

• Initially a trademark is registered for 10 years and it has to be renewed every 10 years upon the payment of the renewal fee within the date of validity. A trademark can last perpetually.
• However, if one fails to pay the renewal fee within such date of validity the Registry may restore the trade mark subject to payment of additional fee/surcharge within a period of 1 year from the end of the date of validity. Failure to pay the renewal fee on time will lead to removal of the trade mark from the register of trade marks.

• A rectification application can be filed before the Trade Marks Registry or the Intellectual Property Appellate Board for the removal of a registered trade mark from the Register of Trade Marks on the various grounds as contained in the Trade Marks Act, 1999.
• A rectification application can be filed before the Trade Marks Registry or the Intellectual Property Appellate Board for the removal of a registered trade mark from the Register of Trade Marks on the various grounds as contained in the Trade Marks Act, 1999.
• The owner of a registered trade mark can take civil action against any person who infringes the trademark by way of filing an infringement law suit. An infringement suit for statutory remedies can be filed only on the basis on a registered trade mark. A passing off suit against third parties may, however, be filed by the owner of a registered or an unregistered trade mark underthe common law rights. The trademark owner is entitled to remedies by way of injunctions, damages and accounts. No court below that of the District Court has the jurisdiction in civil suits regarding trademark infringement.

The owner of a registered trade mark can take civil action against any person who infringes the trademark by way of filing an infringement law suit. An infringement suit for statutory remedies can be filed only on the basis on a registered trade mark. A passing off suit against third parties may, however, be filed by the owner of a registered or an unregistered trade mark underthe common law rights. The trademark owner is entitled to remedies by way of injunctions, damages and accounts. No court below that of the District Court has the jurisdiction in civil suits regarding trademark infringement.

• The Madrid Protocol came into effect in July, 2013. The Madrid Protocol is a gateway to protect trade marks in countries who are members of the Madrid Protocol. It aims to provide a cost-effective and efficient way for trademark holders, individuals and businesses to ensure protection for their trade marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency.
• For Indian trade mark owners/applicants one can file an international application with the Trade Marks Registry, India based on a basic application/basic registration and designate the countries in which they seek protection of the concerned trade mark. The Trade Marks Registry will charge a handling fee to conduct an eligibility check and certify the contents and forward the international application to the International Bureau of the WIPO within a period of 2 months. The International Bureau upon receipt of the application and the requisite fee (which will depend on the countries designated) will conduct a formality check. Once a formality check is successful the International Bureau will proceed to register the mark in the international register thereby leading to an international registration. The International Bureau will also publish the mark in a periodical gazette(WIPO Gazette of International Marks) issued by the International Bureau.
• Request for designation (territorial extension) can also be made after the filing of the international application and subsequent to the international registration. Once an International registration has been issued the International Bureau shall immediately notify the Trade Marks Office of concerned designated country of such designation. The concerned designated countries will examine the trade mark application under their own national law and rules and within a fixed time line (which will vary for each country that is designated) notify its acceptance and/or refusal and/or objection by way of an opposition to the said application to the International Bureau. As far as India is concerned a foreign national/body incorporate filing in India through the Madrid Protocol upon acceptance of the application(subject to no opposition) by the Trade Marks Registry, India will grant a status reflecting that the trade mark is ‘PROTECTED’ in India. No separate registration certificate will be granted to such foreign national/body incorporate. The registration of an international application happens at the International Bureau and not at the individual designated countries. The individual designated countries accord PROTECTION as per their national trade mark law.
• Some countries additionally issue registration certificates as a matter of procedure or on request, as the case may be.In particular, the United States issues a registration certificate with a United States registration number, whereas India will not. An international registration certificate is issued by the International Bureau.