By Ghanavi Umesh
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Part 1 of this article elaborated upon the different types
of trademarks available under Indian law, the kinds of marks that can be
registered or protected in law, the scope of trademark infringement and the
punishment for an infringer. This article will elaborate upon the procedural
and practical aspects of Trademark law in India.
Any person who claims to be a proprietor of a trademark that is in use or is proposed to be used or an agent with a simple executed power of attorney stamped under the Stamp Act 1899, on behalf of the owner of the trademark may apply for the registration of a trademark. The application can either be submitted in writing personally at the front office counter or posted to one of the five trademark offices located in Mumbai, Ahmedabad, Kolkata, New Delhi or Chennai. It is important to apply to the office in whose territorial jurisdiction one’s business operates. The Trademark Registry now also allows e-filing of trademarks online on its website. The official fee and the requisite forms required for filing trademarks are given under Schedule 1 of the Trademark Rules. Further, according to the 2017 notification, the fee for e-filing of a trademark is 10% less than that of the fee for physical filing.
The application for filing a trademark in India must contain the following information and documentation:
- The applicant’s name and address
- The state or country of incorporation
- A description of the trademark
- The trademark representation
- A list of relevant goods and/or services
- Power of Attorney
- The dates of first use along with an affidavit and documentary evidence (if use is claimed)
- A statement of intention of use
- Official filing fee
- Local service address (if applicant is not domiciled in that jurisdiction)
Further, if a person has filed an application for a
trademark in a convention country and within six months applies in India too
and the trademark gets approved in India, then the registration will be
backdated to the date of the application in the convention country. This is
known as a priority right.
It is advisable for persons applying for a trademark to perform a free online trademark search for word marks and device marks on the Trademark Registry’s website before filing the application to prevent repetitions. Once a person files an application, the registration process takes about 8 – 12 months and goes through the following procedures.
- Vienna Codification: An internal process of the Trademarks Registry, the application is given a Vienna code according to the Vienna agreement.
- Formality Check: The Trademarks Registry reviews the preliminary information such as the address and documents attached. If there is no problem with this, the application moves ahead else it is labelled as ‘formality check fail’ and the applicant has 30 days to respond and provide the necessary details.
- Marked for Examination: In this phase, the submitted trademark is checked for compliance with the Trademarks act.
- Objection and Reply: The Trademarks Registry then checks the submitted trademark with other applications and registered trademarks for any similarities. If there are any objections, the applicant is given 30 days’ time to reply and give a personal representation himself or through his attorney failing which the trademark is abandoned. If there are no further objections, the application is accepted and advertised in the trademark journal.
- Opposition: Any other party is welcome to object to the trademark’s registration within 4 months of its publishing in the journal. If an opposition is filed, the applicant must submit a reply to it within 2 months. Both the parties can then submit evidences to prove their claim and are also given a hearing before the officer.
- Registration: If the applicant succeeds in proving that his trademark does not infringe on the party which filed the opposition or if there are no oppositions filed within 4 months of publishing the trademark in the journal, the trademark is registered. Else, it gets rejected.
When examining the application, the Trademarks
registry checks if the trademark applied for has a distinctive character, does
not have words from customary language or other words which describe its
quality or place of origin, does not comprise of obscene matter, does not hurt
the religious sentiments of any group of people or does not cause confusion to
the public.
If the Trademarks Registry rejects a trademark
application, the applicant can appeal against the rejection before the
Intellectual Property Appellate Board within 3 months of the rejection of the
application. If the application succeeds, the applicant need not pay any
registration fees and the trademark is legally protected for a period of 10
years from the date of application and can be renewed every 10 years for a
requisite fee.
Further, a registered trademark can be cancelled for non-use or revoked too. If a trademark had not been registered in a good faith for use in goods and services which the application stated or the trademark has not been in use for at least 3 months before the date of application and up to five years after the date of registration, the trademark can be cancelled according to section 47 (3) of the Trademarks Act, 1999 for non-use. A trademark can also be revoked by application if there is any error, defect, omission or wrong inclusion of an entry in the Trademarks Register or if there has been a failure to observe any condition on the trademark registration. A trademark owner also has the option to surrender his trademark.
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Ghanavi Umesh is a 2nd year student at National Law University Delhi. She has a keen interest in Constitutional law, Environmental law and Intellectual Property law. She is also interested in Economics and Philosophy. One can either find her reading something or bingeing on a TV show in her leisure time. She also loves painting occasionally.
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