Basics of Trademark

 

Basics of Trademark

 

Preface

 

Trade mark is an important form of Industrial Property Rights. It plays a key role in a consumer economy. As in the case of other forms of Intellectual Property Rights, trade marks also exhibit the dialectics between public and private interests. As a source identifier, a trade mark enables the consumers to identify the origin of the goods/services. The consumer thus gets the goods/services of his/her choice. On the other hand, the originator of the goods (for example the company that manufactures the goods) gets protection for the mark. Most national laws on trade marks are designed to balance this duality of interests. Further, the national laws define the legal rights of the owners of trade marks and prescribe the boundaries of such legal rights. Unregistered trade marks are protected under the principles of common law in many countries.

 

What Marks are Registrable

 

All marks are not registrable. For a Mark to be registrable, it must conform to certain statutory prescriptions. One such fundamental prescription is that a mark to be registrable must be "distinctive". The quality of distinctiveness, distinctive character, or capable of distinguishing is a basic principle that finds place in most national laws. A word having a direct reference to the character or quality of goods is not registrable. However a word having direct reference to the character or quality of goods is registrable if it has acquired distinctiveness through long and continuous use. There are several other principles, all tested by a number of judicial decisions, elaborating the registrability of trade marks.

 

Trade Marks Administration System

 

The trade marks registration systems in most countries forms part of unified intellectual property administration system. An application for the registration of trade marks must be filed at the office designated for purposes of granting trade marks registration. Ordinarily this function is performed by the national IP Offices. The trade marks office will conduct an examination of the application, conduct a search to identify if there exist prior registrations and advertise the trade marks before accepting the application. Once the application is accepted, the mark will be registered in the national trade marks register and a certificate of registration will be issued. Typically one term of registration is 10 years, which is extendible from time to time.

 

Trademark Prosecution in India

 

Registrable Marks

 

The new law on trademarks that came into force on September 15, 2003 permits the registration of Service Marks. Till then only trade marks used in respect of goods were registrable in India. Collective Marks and Well Known Marks are also now recognized in India. 
The scope of registrable Marks has been expanded to include shape of goods, packaging or combination of colors.

 

The Application

 

Application for registration of an ordinary trademark (including a service mark) must be filed in Form TM-1. The Form must be filed in triplicate accompanied by 5 additional representations of the Mark. Apart from this, 1 representation must be affixed to the Form itself. 
Application for registration of a trademark claiming Convention Priority must be filed in Form TM-2. To register a Collective Mark the application must be filed in Form TM-3 and for Certification Marks the application must be filed in Form TM-4. 

All applications must be accompanied by the prescribed official fee and a Power of Attorney, if filed through an agent. The Power of Attorney must be made in the prescribed form, Form TM-48. It must be signed by the Applicant and duly stamped. The Power of Attorney can be filed subsequent to the filing of the application but within a period of preferably 3 (three) months from the date of filing of the application.

 

The Trade Marks Registry Having Jurisdiction

 

There are 5 Trade Marks Registries in India. These Registries are located in Delhi, Mumbai, Chennai, Calcutta and Ahmedabad. An application must be filed at the Trade Marks registry within whose territorial jurisdiction the Applicant is located. For applications originating from outside India, (and if the Applicant does not have a place of business in India) the appropriate Registry is the one in whose jurisdiction the principal place of business of the agent in India is located.

 

Priority Claim

 

India ratified the Paris Convention in December, 1998. An application for registration of a trade Mark claiming convention priority can be filed within 6 (six) months from the date of filing of corresponding application in the respective jurisdiction. To claim priority, a certified copy of the convention application is required.

 

User

 

Intent to use applications can be filed in India.

 

Trade Mark Search

 

It is desirable to conduct a Trade Mark search to ascertain the existence of prior registrations of identical marks. Thus far it has been rather cumbersome to conduct trademark searches in India because it was to be done manually. The digital database of registered and advertised trademarks is now available. This has made trademark search easy and expeditious. 

A Trade Marks search can be conducted by making a formal request for search in Form TM-54. Each such request must confine to a given class. The Search Report will be made available within 30 days from the date of request. 

The new law provides for expedited search. An application for expedited search must be filed in Form TM-71 and a report will be issued within 7 days from the date of request. The fee for expedited search is 5 (five) times the ordinary fee.

 

Company Name Search

 

As per the new law (Rule 32) a request can be made to the Registrar of trademarks (in Form TM-11) to cause a search and issuance of a certificate to the effect that no trade mark identical to the name of a company has been registered or is pending for registration with the Registrar.

 

Distinctiveness Opinion From The Registrar

 

One of the important features of the Indian trademarks law is that the Registrar’s opinion can be sought as to the distinctiveness of a trademark. A request to this effect can be made in Form TM-55. The Registrar will advise on whether the Mark proposed to be registered is prima facie distinctive. The Registrar will give his advice ordinarily within 7 days of filing this request.

 

Prosecution Of Application

 

Upon filing a trademark application, the Trade Marks Registry will issue cash receipt bearing the Indian trademark application number. Ordinarily within 30 days from the date of filing, the Trade Marks Registry will issue a copy of the Additional Representation bearing the Application Number and Date of Filing.

As per the new law, an Applicant for registration of a trademark is entitled to make a Request for Expedited Examination. This request, to be filed in Form TM-63, must be filed along with a declaration stating the reason for such request. The official fee for an expedited examination is 5 times the application fee. In the event an applicant files a request for expedited examination, the Registrar will issue the examination report within 3 months from the date of request. 

The specification of goods or services if exceeds more than 500 characters, the prescribed fee must be paid for each additional character. Also an Application in Form TM-61 must be filed along with the application for registration of the mark, if the number of characters in the goods/service specification exceeds 500. 

Typically the office action will set out various objections concerning the registrability of the Mark. If citation objections are raised, the Examiner will append a search report mentioning the particulars of the prior registrations. The applicant is required to reply to the First Office Action within three (3) months from its date of communication. 

The applicant, if complies with the requirements of the Trade Marks law, the Mark will be accepted in due course. The Trade Marks Registry thereafter advertises the Mark in the Trade Marks Journal.

 

Opposition

 

The Mark remains open to opposition for three (3) months, which is extendible for a further 1 month upon request, in the prescribed form, by a person interested to enter opposition. If a Notice of Opposition is filed within this period, the application enters the opposition proceedings which involves serving a copy of the Notice of Opposition by Registrar on the Applicant, the Applicant’s counter statement within [2 months from the date of receipt of Notice of Opposition], the evidence by opponent, the further evidence by the Applicant, and hearing, if any and the Registrar’s Decision allowing or rejecting the opposition.

 

Grant

 

If there is no opposition against the proposed registration or the opposition proceedings have been decided in favor of the Applicant, the Trade Marks Registry will proceed to grant the Registration.

 

Term Of Registration & Renewal

 

The Mark upon registration will be in force for a term of Ten (10) years. It must be renewed every Ten (10) years thereafter.

 

Trademark Filing Requirements - India

 

The Details of the Applicant

 

·         Name ·         Address ·         Citizenship ·         Legal status and country of incorporation (if the applicant is a company)

 

Specimen of the Mark

 

·         Five (5) printed specimen of the Mark, if the Mark is in Black & White. ·         Ten (10) printed specimen of the Mark, if the Mark is in Color ·         Three to Five different views (2 Dimensional views or photographs of the Mark, if the Mark is a 3 D Mark ·         In the case of shape of goods or packaging, five (5) different views (2 Dimensional views or photographs)

 

Specification of Goods or Services

 

The total number of characters in the specification of goods or services if exceeds 500, additional fee must be paid.

 

User

 

The law requires the applicant to specify whether the Mark is in use in India. If in use, then the date of user is required to be specified.

 

Priority details

 

Priority can be claimed if the Indian application is filed within 6 months from the date of filing of the basic application. We require the following to claim priority:

 

·         Priority application number ·         Priority country ·         Priority date ·         Certified priority document (may be submitted later)

 

Power of Attorney

 

A Power of Attorney is required to be filed with the application for registration, if it is being filed through an Agent. A Power of Attorney needs to be stamped appropriately. It is also possible to file the Power of Attorney subsequent to the filing of the Application.