Professional Documents
Culture Documents
Certificate
Course on
Intellectual
Property (IPPro)
TRADEMARKS
MODULE 4
The teaching module provides reasons for seeking trademarks, its importance and
related legal formalities. It covers new Trademarks guidelines and Vienna
codification to facilitate the classification of Trademarks. Focusing on Trademark
filing, search, publication, advertisement, examination, prosecution, opposition,
registration and validity of Trademark, the module also explains amendments after
Trademarks registration.
TRADEMARKS 1.3 1
CHAPTER 1: TRADEMARKS-
IMPORTANCE AND OBTAINMENT
Importance of Trademark
2. Trademarks make it easy for customers to find you. The marketplace is crowded and it
is hard to distinguish business among competitors. Trademarks/brands are an efficient
commercial communication tool to capture customer attention and make business, products
and services stand out. Customers when see a trademark instantly know whom they are
allocating with the reputation of business and are less likely to look for alternatives. A brand
could be the important factor in driving a customer’s purchase decision.
3. Trademarks allow businesses to effectively utilize the Internet and social media. A
brand is the first thing consumers enter into a search engine or social media platform when
looking for certain products and services. Multifaceted traffic on a website or social media
platform interprets into higher grades, bringing even more traffic, more clients and more
brand recognition.
TRADEMARKS 1.3 2
4. Trademarks are a valuable asset. Trademarks can appreciate in value over time. The
more business repute grows the more valuable brand will be.
Trademarks provide value beyond core business. Trademarks can lead the way for extension
from one industry to another, such as from personal care to sartorial. If someone desires it,
the trademark can lead to the acquisition of one’s business by a larger corporation.
Trademarks are a property asset, similar to real estate that can be bought, sold, licensed (like
renting or leasing) or used as a security interest to secure a loan to grow your business.
5. Trademarks can make hiring easier. Brands can stimulate positive feelings in people’s
minds. As a result, employment opportunities are more attractive to candidates. Employee
retaining can be higher if employees have positive feelings for the brand and the products
and services available.
6. Trademarks are a bargain to obtain. The United States Patent and Trademark Office
charges as little as $275 to obtain trademark registration, only a few hundred dollars after
five years and another few hundred dollars every ten years.
7. Trademarks never expire. The trademark will not expire as long as it is being used in the
United States commerce. Some of the most familiar brands in the United States today have
been around for over a hundred years. Mercedes was first registered in 1900 and Pepsi-Cola
was registered in 1896.
Documents required
TRADEMARKS 1.3 3
Requirements for filing a trademark application
A. Requirements (Section 181)- For completing the application form and to be able to decide
the appropriate filing form provided under the second and the third schedule of the Act
(Rule 12)2, the applicant/its agent must make available the following
information/documents:
1. Particulars of the applicant (Rule 16)3 - Name and address of the applicant. In case of
more than one place of business, the principal place of business must be specified. In
the absence of place of business, an address for service in India must be provided.
Address for service may also be provided for an applicant having a principal place of
business in India.
1 https://indiankanoon.org/doc/1587793/
2 https://indiankanoon.org/doc/197444606/
3 https://indiankanoon.org/doc/197444606/
TRADEMARKS 1.3 4
3. Description and Representation of the mark (rule 28)4; word/logo/device mark - The
application must be accompanied with a specimen of the trademark and description
stated therein to specify the nature of mark for which registration is sought i.e.
whether it is a word mark, a logo- comprising word and/or device or other elements, a
device mark per se. If the applicant is desirous of registering a colour mark, three
dimensional marks or shape of goods, the application form must bear a statement to
that effect and comply with other formalities associated with such marks as
prescribed under the Act before submitting the form at the Registry.
4 https://indiankanoon.org/doc/197444606/
5 http://www.wipo.int/wipolex/en/text.jsp?file_id=128107
6 http://www.wipo.int/edocs/lexdocs/laws/en/in/in013en.pdf
TRADEMARKS 1.3 5
India has issued a public notice no. CG/F/PG-II/IPAA/2010/218 dated August
23, 2010, the said Public Notice has implications on the trademarks already
registered in class 42 and the reader is advised to read the public notice
thoroughly for greater appreciation
5. Information pertaining to use of the mark in India (rule 27) - An Application for
registration of a trade mark must contain a statement of the period of use of the mark
and the person who has made the use in respect of the goods and/or services applied
under the mark for registration. Alternatively, it must be stated that the trademark is
proposed to be used. Registrar may call upon the applicant to file evidence of use of
the mark by the way of an affidavit and supporting documents.
6. Authorization of Agent in favor of the trade mark agent to act on behalf of the
applicant (Section 145 r/w Rule 21) - If the applicant has authorized another person to
act on its behalf before the registrar, an authorization of agent in the form prescribed
under the Act must be provided to the agent duly signed by an authorized signatory of
the applicant. The Authorization of agent needs simple execution and
legalization/notarization is not required. If it is taking time for this document to be
executed by the authorized signatory of the applicant, it can be filed subsequently
under cover of a simple letter addressed to the registrar. There is no deadline
stipulated to submit the authorization of agent; however, the sooner it is filed, less
delay will be caused in the prosecution of the application.
7. Details of the Priority claim (section 154 r/w Rule 26) - If an applicant has already
filed an application in a country which is member of the Paris convention, the
applicant is entitled to claim benefit of the filing date of the such an application i.e.
claim priority on the basis of application filed in the convention country. However, to
claim priority, the application in the other convention country must be lodged within
six months form the date of earlier application filed in a Paris convention country.
Where an application has been lodged in a convention country by the applicant and if
TRADEMARKS 1.3 6
the date of filing of the earlier application is prior lodges an application for the same
mark in India within six months from in the convention country, the application in
India will be registered as of the date on which the application was made in the
convention country and that shall be deemed for the purposes of the Act to be the date
of registration.
It is to be noted that the application filed on the basis of the priority claim
must carry particulars that are identical with those covered under the
convention application which is the basis of claiming priority. While
particulars of the applicant and class have to be identical, the goods and/or
services may be slightly different as long as these are not wider in scope from
those covered under the convention application.
9. Completing the Application Form - Upon duly incorporating the above details and
arranging for the documents required to be submitted, the additional documents, fee
calculation, execution and other formalities to complete the documents accompanying
the application form must be complied with before the application can be submitted at
the Registry. This ensure that the application is not kept in abeyance for want of due
compliance of such requirements made obligatory under the Act.
a. Application form in triplicate and Five additional representations (Rule 29)- Every
application for registration of a trade mark shall be made in triplicate and must be
accompanied with five representations of the mark. The representation of the mark on
each of the application form and on all the five additional representations must
correspond exactly with one another. The additional representations that must bear the
following particular and must be signed by the applicant or his agent are:
TRADEMARKS 1.3 7
(i) Name and address of the applicant;
(ii) Name and address of the agent, if any;
(iii) Class/classes of goods and/or services;
(iv) Specification of goods and/or services;
(v) The period of use in India, if any;
(vi) Where an applicant wishes to claim combination of colours a the distinctive element of
the mark, the application must contain a statement and must be accompanied with one
reproduction of the mark in black and white and four reproduction of the mark in colours;
(vii) Where an application contains a statement to the effect that the trade mark is a three
dimensional mark, the reproduction of the mark shall consist of a two dimensional graphic or
photographic reproduction (for details refer to Rule 29 (3));
(viii) Where an application consists of shape of goods or its packaging, the reproduction
furnished must consist of at least five different views of the trade mark and a description by
word of the mark.
b. Size of representations of the mark (Rule 30) - All representations of the mark must be
durable and each additional representation shall be mounted on a sheet of strong paper of
approximately 33 centimeters by 20 centimeters and a margin of not less than 4
centimeters must be left on the left hand part of the sheet. The applicant will be required
to submit further representations of the mark if the above specifications are not complied
with or the Registrar is not satisfied with the representations submitted by the applicant.
If the representation of the trademarks cannot be given in the manner stated herein above,
a specimen or copy of the trade mark may be sent either in full six or on a reduced scale
and in such form as the Registrar may think most convenient.
c. Forms to be used for filing different applications provided under the Act and signing of
the application (Rule 25)- As the Act provides for filing multi-class applications, which
was not possible under the earlier Act of 1958 and there are provisions for filing
applications for different marks viz. Trade mark (bifurcated into single class and multi-
class applications with or without priority claim), service marks, certification mark,
TRADEMARKS 1.3 8
collective mark, filing of divisional application to separate classes from a multi-class
application different official forms, form for excess space fee to be paid if the characters
included in the specification of goods/services are in excess of 500 (including space),
have been stipulated under rule 25 of the Act and the description of different filing forms
is provided under the second and the third schedule of the Act (Rule 12).
d. Signing of the application (Rule 25(1)- The application for registration of a trade mark
must be signed by the applicant or his agent.
e. Fee Calculation (Rule 11)- The fees to be paid in respect of actions during the course of
prosecution, opposition, post registration changes, recordal of ownership, renewal and
any other matter under the Act and the rules are to be paid in accordance with those
specified in the first schedule of the Act for different actions.
f. Leaving of documents (Rule 8)- The documents to be served or any fees to be paid under
the Act or the rules to the Act shall be made, served, left or sent or paid to the appropriate
office of the trademarks registry.
TRADEMARKS 1.3 9
CHAPTER 2: NEW FORMS AND
GUIDELINES
With the objective of accomplishing a more vigorous, rationalized and user friendly processing
framework in the working of the Trade Marks Office, the new Trade Marks Rules, 2017 7have
been brought into force. The changes are as under:
Increase in official fee: The most conspicuous change brought under the new Rules is
the substantial increase in the official fee for filing forms and applications wherever
applicable such as in the case of filing of trade mark applications (125% increase),
request for renewals (80% increase). However, a considerable rebate for Individuals/
Startups and small Enterprises has been provided to encourage and facilitate them in
protecting their brands.
Going green and digital: In order to promote a rather paperless system in line with the
Digital India campaign and disincentives dependency on paper, any physical filing of an
application or document with the Trade Marks Office shall entail an additional fee of
7 http://www.ipindia.nic.in/writereaddata/Portal/News/312_1_TRADE_MARKS_RULES_2017__English.pdf
TRADEMARKS 1.3 10
approximately 10% and in some cases, physical filings are not even permitted. Thus, the
electronic mode of filing and correspondence will be the call of this era.
New Forms: The 75 separate forms and applications which were employed earlier for
carrying out various tasks have now been replaced by 8 consolidated forms, thereby
streamlining the whole filing and prosecution process.
The previous rules provided for a ginormous number of 74 forms, one for each type of
application. The Trademark Rules 2017 bring this number down to a trivial 8. The following
table provides an understanding into the use of each form.
Form Purpose
TRADEMARKS 1.3 11
TM-O Filing Notice of Opposition with the Registrar of
Trademarks/Applying for Rectification of Register or Invalidation
of a Trademark or a Related Counter-Statement
Reducing the number of Forms is an acclamatory step as it makes the entire process much more
simple and hassle free. Instead of memorizing and filling a different form for each process, it is
easier to file an application for all the different applications related to Trademarks or Copyright.
The forms have been named according to the type of application, this makes the entire process
even pretentious. For example, TM-R stands for Renewal or Restoration application. TM-C
stands for Copyright Search Certificate. TM-U stands for Registered User Applications and so
on.
2. Registration of a trademark
With a single form to apply for all kinds of Trademark Registration applications, the process is
easier than before. The significant changes are the reduction in the amount of forms and increase
in fee. For example, P is an individual who needs to file a Trademark Registration application for
his/her business logo.
8 http://www.pocketlawyer.com/blog/trademark-rules-2017-trademark-fees-forms-other-changes/
TRADEMARKS 1.3 12
TM-1 was filed for a regular application. Power of Attorney is authorizing an agent to file the
application which was filed in form TM-48. There were as many as 18 Forms for filing different
kinds of applications. For example, TM 64 for collective marks and TM 4 for certification
Trademarks and so on.
The Trademark Rules 2017 eliminates the complex procedure, providing a single form TM-A for
all kinds of applications. One major change is the compulsory User Statement or Affidavit which
is explained in more detail below.
As an individual, you don’t have to pay the fee of Rs. 10,000. You can obtain Trademark
Registration for Rs. 5,000 (Rs. 4,500 for E-filing). So, the fee remains more or less the same as
earlier. Other requirements of filing representations of Trademark remain the same. Not
changing the primary requirements is a wise step. A complete face-lift of the existing system
would have caused a lot of confusion and chaos.
3. Well-known trademarks
This is a significant change from the previous rules. Earlier, the judiciary had the power to
decide if a mark is well-known or not. Moreover, such a situation would arise only in cases of
infringement. But, now an applicant can request the Registrar to govern whether a Trademark is
well-known or not by filing Form-M along with the fee of Rs. 1, 00,000.
This step seems to be subjective and may work differently for different parties. It gives virtually
unrestrained power to the Registrar. It also promotes exercise of unencumbered discretion. The
judiciary exercises utmost caution in determining the status of a mark. But, the Registrar may not
do so. It may prove to work to the advantage of persuasive parties and to the disadvantage of
others.
4. Increase in fee
With the enactment of the Trademark Rules 2017, Government fee for almost all kind of
applications has almost doubled. In some cases, the rise is even more than 200 percent. For
TRADEMARKS 1.3 13
instance,
Earlier the application fee for each class was Rs. 4000. Now, the government fee for the
same is Rs. 10,000 (9,000 if the party opts for E-filing).
Earlier, the fee for registering a subsequent proprietor used to start from Rs. 5,000. Now,
the fee is Rs. 10, 000.
Another example is the application for Search Certificate for Copyright Registration. The new
guidelines hike the former fee of Rs. 5,000 to Rs. 10,000.
The huge jump in the government fee means shelling out more fees. But, the new rules provide
much-needed relief to entities in need of concession. There is only an increase of Rs. 1,000 for
individuals, startups and small enterprises. This means that the Government fee for these parties
is Rs. 5,000 instead of Rs. 10,000. A further discount of 10 percent on E-filing reduces the fee
even more. With an e-filing fee of Rs. 4,500 there is not much increase in the earlier fee.
6. Promoting e-filing
This rule is in complete synchronization with the Digital India Drive. The fee schedule specifies
a 10 percent discount for E-filing of every kind of application.
Moreover, for some applications, the new rules don’t allow physical filing at all. For instance,
the application for expedited issue of Copyright Search Certificate can only be made online.
Similar is the case with expedited processing of an application for Trademark Registration.
Online filing is also compulsory for determining a well-known Trademark. For certification or
transmission of an international application too, you need to apply online.
Earlier, the Registrar exercised discretion when it came to User Statements in respect of marks
claiming prior use. The applicant only needed to specify two details. First, the date since the
TRADEMARKS 1.3 14
mark was being used. Second, the person using it. Registrar could ask such person for an
affidavit to this effect.
Now, there is no more room for Registrar’s discretion in this matter. If the user is claiming use of
the mark before the date of application, filing an affidavit is compulsory
The Trademark Act consists of provisions concerning Sound Marks. However, the 2002 rules did
not refer them. The Trademark Rules 2017 contain specific mention of these marks. Rule 26
(5) specifies the format for submitting a sound mark for registration.
Guidelines:
Claim of “use” necessitates applicant’s supporting affidavit:
Those trade mark applications which need to be filed with a claim of use are required to be
authenticated by an affirmation verifying such claimed use of the mark with supporting
documents.
Provisions for determining and declaring a trade mark as “well-known” have been
incorporated in the new Rules. More particularly, a proprietor can now submit a request to the
Trade Marks Office along with a statement of case and relevant evidence, which support the
claim of the mark’s well-known status. The official fee for such a request has been fixed at
INR 100,000 (approx. USD 1500). Before determining a trade mark as “well-known”, the
Registrar may invite objections from the general public to be filed within thirty days from the
date of invitation of such objections.
The new Rules have done away with the establishment of allowances in leading evidences in
support of opposition/application for the speedy disposal of opposition proceedings.
TRADEMARKS 1.3 15
Renewals can be filed within one year before the date of expiration:
The Registered administrators can file revitalization requests within one year before the date
of expiration as opposed to six months which was the earlier position.
In order to bring ease and efficiency in official correspondence, the Trade Marks Office is
serving documents electronically via email as opposed to physically serving them. This digital
move is likely to significantly cut down the delay in the prosecution of trade mark
applications by enabling applicants to file their responses without having to wait for long.
The new Rules allow applicants to fast track the processing of their trade mark applications,
which now would not only involve a speedier examination process, but also faster processing
at every subsequent stage until grant of registration, as applicable. Employing such a mode of
indulgence would also necessitate a cost of more than four times the valid filing fee.
Under the new Rules, the earlier requirement of payment of association fee has been done
away with. Furthermore, as opposed to the earlier practice wherein the applicant was required
to pay INR 10 (USD 0.16 approx.) for every additional character, exceeding the prescribed
limit of 500, in each class specification, there is no such stipulation in the new Rules.
The requirement of official service of the Notice of Opposition (NOP) by the Trade Marks
Office stands expressly dispensed with in those cases where a Counterstatement has already
been filed by the applicant in response to the NOP as available on the official online records.
This impedes the dismissal of service of the NOP thus expediting opposition proceedings in
such cases.
TRADEMARKS 1.3 16
Sound Marks:
As per the new Rules there is an express provision for filing applications for sound marks
which must now be submitted in an MP3 format, not exceeding 30 seconds in length. This is
also to be convoyed with a graphical representation of the sound symbolizations. In this
regard, the definition of “graphical representation” has also been revised to include
representation in digitized form.
In the past one year, several initiatives have been introduced to accelerate the trade mark
registration procedure and make it more convenient and user friendly. Further, these
initiatives have also resulted in a marked increment in the effective disposal of pending
matters. Now with the enforcement of the long awaited new Rules, it is expected that robust
and positive notions will be brought about and encourage one and all to seek protection of
their trade marks.
TRADEMARKS 1.3 17
CHAPTER 3: TYPES OF TRADEMARKS,
CLASSES AND VIENNA CODIFICATION
Types of Trademarks
Word marks
A word mark comprises one or more words, for example, Japp or Marco Polo. It can also be an
incorporation of numbers or letters, such as SVT or 3RT. A word mark is always registered in a
standard typeface, which means that you also have to apply for an allegorical mark if the
trademark has a certain shape which you want to protect.
Figurative marks/logos
Figurative marks consist of a figure or a figure combined with a word. This also includes word
marks designed with a particular font, either in black and white or in any colour.
Colours
If you wish to apply for a certain colour for your trademark, you must state that in the
application. You must give a short description of the colour in words, for example, “the mark is
produced in green and red”. The protection is only valid for the colours stated in the application.
If protection for more colours is needed, a new application is needed for each colour.
Attach a reproduction
When applying for a figurative mark, it is required to attach an imitation of the mark. If applying
for protection in a certain colour, the reproduction must be in that colour. The imitation that is
succumbed should be of such high quality that it can be replicated. For example, it can be an
original computer printout. Photocopies are usually unsuitable. Help from a photographer or a
printing service to produce rasterized images can be taken. A suitable raster is 34
lines/centimeters.
TRADEMARKS 1.3 18
Three-dimensional trademarks
When the actual product or its packaging has a particular shape, you can sometimes protect it as
a three-dimensional trademark. For example, it can be a perfume or liqueur bottle. In order for
protection to be approved, the shape must be significantly different from what is common in the
market.
Sound trademarks
A sound can be an idiosyncratic pointer and can also be protected. A sound trademark, therefore,
is a sound or melody with a distinctive recognition effect. In order to able to protect it, the sound
must be reproducible graphically, for example, using notes. A well-known sound trademark is
the Hem glass ice cream van jingle.
The collective, guarantee and control trademarks are not a type of mark, somewhat they can
consist of any type of trademark. A collective trademark can be owned by an association, a
company or another society and can be used by the members of it. Control trademarks can be
recorded by establishments, foundations, associations, companies and other societies which set
requirements for or control goods and services. An example is the International Wool Society's
sign which guarantees wool products. Their symbol can only be used for wool products which
meet certain quality requirements.
Trademark Classifications
Trademark classification is known as classification of services and goods. There are many
categories of trademark that are classified into several classes. It is an orderly arrangement of
documents according to the type and the description the services and goods. There are different
classes for products and services. There are only 34 classes for products out of 45 classes and 11
for services.
Trademark Classes
A trademark classification is the most important classification according to services and goods.
TRADEMARKS 1.3 19
Trademark attorneys and trademark auditors understand the trademark classes and arrange
documents, such as trademark and service mark submissions, according to the description and
scope of the types of goods or services to which the trademarks apply.
i. Class 1 (Chemicals)
ii. Class 2 (Paints)
iii. Class 3 (Cosmetics and Cleaning Preparations)
iv. Class 4 (Lubricants and Fuels)
v. Class 5 (Pharmaceuticals)
vi. Class 6 (Metal Goods)
vii. Class 7 (Machinery)
viii. Class 8 (Hand Tools)
ix. Class 9 (Electrical and Scientific Apparatus)
x. Class 10 (Medical Apparatus)
xi. Class 11 (Environmental Control Apparatus)
xii. Class 12 (Vehicles)
xiii. Class 13 (Firearms)
xiv. Class 14 (Jewelry)
xv. Class 15 (Musical Instruments)
xvi. Class 16 (Paper Goods and Printed Matter)
xvii. Class 17 (Rubber Goods)
xviii. Class 18 (Leather Goods)
xix. Class 19 (Non-metallic Building Materials)
xx. Class 20 (Furniture and Articles Not Otherwise Classified)
xxi. Class 21 (Housewares and Glass)
xxii. Class 22 (Cordage and Fibers)
xxiii. Class 23 (Yarns and Threads)
xxiv. Class 24 (Fabrics)
xxv. Class 25 (Clothing)
xxvi. Class 26 (Fancy Goods)
xxvii. Class 27 (Floor Coverings)
TRADEMARKS 1.3 20
xxviii. Class 28 (Toys and Sporting Goods)
xxix. Class 29 (Meats and Processed Foods)
xxx. Class 30 (Staple Foods)
xxxi. Class 31 (Natural Agricultural Products)
xxxii. Class 32 (Light Beverages)
xxxiii. Class 33 (Wines and Spirits)
xxxiv. Class 34 (Smokers' Articles)
xxxv. Services
xxxvi. Class 35 (Advertising and Business)
xxxvii. Class 36 (Insurance and Financial)
xxxviii. Class 37 (Building, Construction and Repair)
xxxix. Class 38 (Telecommunication)
xl. Class 39 (Transportation and Storage)
xli. Class 40 (Treatment of Materials)
xlii. Class 41 (Education and Entertainment)
xliii. Class 42 (Computer, Scientific and Legal)
xliv. Class 43 (Hotels and Restaurants)
xlv. Class 44 (Medical, Beauty, and Agricultural)
Vienna Codification9
An internationally accepted standard has been developed to categorize the design of
trademarks where each graphic element in a trademark design is assigned a numerical
code. This standard is referred to as a "Vienna Code Classification”. It was recognized in
1973.
The trade mark status in the Indian Trade Mark Registry website shows as “Send to
Vienna Codification” when the trademark comprises figurative elements/logo and is
being assigned a Vienna Code by the Indian Trade Mark Registry. Once a new trade
mark application is filed, a Vienna Code is allocated if the trade mark comprises
9 http://www.wipo.int/classifications/nivilo/vienna/index.htm#
TRADEMARKS 1.3 21
figurative elements/logo. The Vienna code is assigned based on the nature of the
figurative element/logo. Such figurative elements/logos are codified according to the
Vienna Agreement as per the link below:
Vienna codification is completed by the Registry so that trademark searches can be
conducted for artworks/logos.
TRADEMARKS 1.3 22
CHAPTER 4: TRADEMARK FILING,
SEARCHING, PUBLICATION AND
EXAMINATION
FILING10:
Forum & Jurisdiction: Application for registration of trademarks is filed with the office
of the trademarks registry within the local jurisdiction of which the applicant is situated.
The application must state the principal place of business of the applicant. As there are
five offices of the trademarks registry, an applicant must choose the right office to file its
application for registration of trade marks. The appropriate jurisdiction (Rule 4) for
lodging an application for registration of a trade mark is that office of the trademarks
registry within the territorial jurisdiction of which either the principal place of business of
the applicant (rule 3) is located or, in the absence of a principal office in India
(particularly, for overseas applicant), within the territorial jurisdiction of which the
address for service in India (rule 18) is located. An overseas proprietor may designate an
address for service in India, usually the agent’s office.
Most functions of the trademarks registry, except- publication of trade marks journals,
issuance of registration certificate and post registration functions, including renewal, are
decentralized and executed by respective offices.
Filing Process: The Act provides that any person claiming to be the proprietor of a mark
that is used or proposed to be used by him may apply to the Registrar of Trade Marks for
registration of the mark. An agent or representative is expressly barred from registering a
trademark in his own name without authority.
10 http://www.ipindia.nic.in/writereaddata/Portal/News/312_1_TRADE_MARKS_RULES_2017__English.pdf
TRADEMARKS 1.3 23
1. Requirements (Section 18)- For completing the application form and to be able to
decide the appropriate filing form provided under the second and the third schedule
of the Act (Rule 12), the applicant/its agent must make available the following
information/documents:
i. Particulars of the applicant (Rule 16) - Name and address of the applicant.
In case of more than one place of business, the principal place of business
must be specified. In the absence of place of business, an address for
service in India must be provided. Address for service may also be
provided for an applicant having a principal place of business in India.
section 18(1)
ii. Trade Description of the applicant (Manufacturer/Merchant or Service
provider) (Rule 16) - This information must be incorporated in the
application to indicate the nature of the applicant’s business.
iii. Description and Representation of the mark (rule 28); word/logo/device
mark - The application must be accompanied with a specimen of the
trademark and description stated therein to specify the nature of mark for
which registration is sought i.e. whether it is a word mark, a logo-
comprising word and/or device or other elements, a device mark per se. If
the applicant is desirous of registering a colour mark, three dimensional
mark or shape of goods, the application form must bear a statement to that
effect and comply with other formalities associated with such marks as
prescribed under the Act before submitting the form at the Registry.
iv. Goods and/or Services for which registration is sought and classification
of goods/services under the relevant class(es) specified in the fourth
schedule of the Act (rule 22).
The Goods and/or services in respect of which the mark is sought to be registered must be
identified in the application form and classified under the corresponding classes provided in the
fourth schedule of the Act. Mere class headings are not allowed and the application must specify
the correct goods or services of interest.
TRADEMARKS 1.3 24
It is relevant to know that India is a party to the Nice Agreement Concerning the
International Classification of Goods and Services for the Purposes of the Registration of Marks
(1957). At the time of enforcement of the Trade Marks Act 1999, the Fourth Schedule to the
Trade Marks Rules 2002 provisioned for Classification of Goods and Services as per the 7th
Edition of the Nice International Classification of Goods and Services. Consequently service
marks could be registered in classes 35 to 42 only and the services registrable in classes 43 to 45
(of the 9th Edition) could be filed and registered in India in class 42. However, The Trade Marks
Rules 2002 has been amended and the amendment has been notified on May 20, 2010. India now
follows the Ninth Edition of the International Classification of Goods and Services. The
amended Rules have expanded the services classes and added classes 43 to 45 in the Fourth
Schedule. To give effect to the amendment the Government of India has issued a public notice
no. CG/F/PG-II/IPAA/2010/218 dated August 23, 2010. The said Public Notice has implications
on the trademarks already registered in class 42 and the reader is advised to read the public
notice thoroughly for greater appreciation
TRADEMARKS 1.3 25
vi. Authorization of Agent in favor of the trade mark agent to act on behalf
of the applicant (Section 145 r/w Rule 21) - If the applicant has
authorized another person to act on its behalf before the registrar, an
authorization of agent in the form prescribed under the Act must be
provided to the agent duly signed by an authorized signatory of the
applicant. The Authorization of agent needs simple execution and
legalization/notarization is not required. If it is taking time for this
document to be executed by the authorized signatory of the applicant, it
can be filed subsequently under cover of a simple letter addressed to the
registrar. There is no deadline stipulated to submit the authorization of
agent; however, the sooner it is filed, less delay will be caused in the
prosecution of the application for want of the document.
vii. Details of the Priority claim (section 154 r/w Rule 26) - If an applicant
has already filed an application in a country which is member of the Paris
convention, the applicant is entitled to claim benefit of the filing date of
the such an application i.e. claim priority on the basis of application filed
in the convention country. However, to claim priority, the application in
the other convention country must be lodged within six months form the
date of earlier application filed in a Paris convention country. Where an
application has been lodged in a convention country by the applicant and
if the applicant lodges an application for the same mark in India within
six months from the date of filing of the earlier application in the
convention country, the application in India will be registered as of the
date on which the application was made in the convention country and
that shall be deemed for the purposes of the Act to be the date of
registration.
It is to be noted that the application filed on the basis of the priority claim must carry
particulars that are identical with those covered under the convention application which is the
basis of claiming priority. While particulars of the applicant and class have to be identical, the
goods and/or services may be slightly different as long as these are not wider in scope from those
TRADEMARKS 1.3 26
covered under the convention application.
TRADEMARKS 1.3 27
(vii) Where an application contains a statement to the effect that the trade mark
is a three dimensional mark, the reproduction of the mark shall consist of a two
dimensional graphic or photographic reproduction (for details refer to Rule 29
(3));
(viii) Where an application consists of shape of goods or its packaging, the
reproduction furnished must consist of at least five different views of the trade
mark and a description by word of the mark;
b. Size of representations of the mark (Rule 30)- All representations of the mark
must be durable and each additional representation shall be mounted on a sheet of
strong paper of approximately 33 centimeters by 20 centimeters and a margin of
not less than 4 centimeters must be left on the left hand part of the sheet. The
applicant will be required to submit further representations of the mark if the
above specifications are not complied with or, the Registrar is not satisfied with
the representations submitted by the applicant. If the representation of a trade
marks cannot be given in the manner stated herein above, a specimen or copy of
the trade mark may be sent either in full size or on a reduced scale and in such
form as the Registrar may think most convenient.
c. Forms to be used for filing different applications provided under the Act and
signing of the application (Rule 25)- As the Act provides for filing multi-class
applications, which was not possible under the earlier Act of 1958 and there are
provisions for filing applications for different marks viz. Trade mark (bifurcated
into single class and multi-class applications with or without priority claim),
series marks, certification mark, collective mark, filing of divisional application to
separate classes from a multi-class application different official forms, form for
excess space fee to be paid if the characters included in the specification of
goods/services are in excess of 500 (including space), have been stipulated under
rule 25 of the Act and the description of different filing forms is provided under
the second and the third schedule of the Act (Rule 12).
d. Signing of the application (Rule 25(1)- The application for registration of a trade
mark must be signed by the applicant or his agent.
TRADEMARKS 1.3 28
e. Fee Calculation (Rule 11)- The fees to be paid in respect of actions during the
course of prosecution, opposition, post registration changes, recordal of
ownership, renewal and any other matter under the Act and the rules are to be
paid in accordance with those specified in the first schedule of the Act for
different actions.
f. Leaving of documents (Rule 8)- The documents to be served or any fees to be
paid under the Act or the rules to the Act shall be made, served, left or sent or
paid to the appropriate office of the trademarks registry.
B. Leaving the completed application at the filing counter of the registry, Issuance of the
filing receipt and Endorsed additional representation sheet - Once the application is
finalized, the following steps are taken to lodge the application at the at the appropriate
office of the trademarks Registry, which is normally the principal place of business or the
address for service:
1. Leaving of documents (Rule 8)- The application completed as per procedure
described above is left at the fee counter of the registry along with the prescribed
fee.
2. Issuance of Fee receipt-Either on the same day or, in case of backlog at the
counter, fee receipt is issued by the clerks at the filing counter. The fee receipt
bears the particulars of the filing form, fee, applicant, date of filing and the
application number. This is an important document as a proof of the filing and
must be saved to be produced if called for by the Registry during the course of
prosecution or, even otherwise submitted with the letters addressed to the Registry
for inquiring about the status of the matter.
3. Return of the additional representation (Rule 37)-After a month or two of filing
the application, an additional representation submitted along with the filing form
is returned by the registry to the applicant or, its agent with the official number
and date allotted to the application. This number and date becomes the primary
identity of the application and must be quoted on all correspondence with the
registry. The endorsed representation must also be shared with the applicant by
the agent filing the application as it is also an official proof of filing bearing the
TRADEMARKS 1.3 29
primary details of the application.
4. Deficiencies (Rule 36)- If there are deficiencies in the application filed for
registration of a trade mark, the Registrar shall send a notice to the applicant to
remedy the deficiencies. Upon notification, if the applicant fails to remedy the
deficiencies within month of receipt of the notice, the application may be treated
as abandoned.
C. Searches to ascertain identical and/or deceptively similar trade marks for identical or
similar Goods in the name of third parties
Procedural Search caused by the Registrar (Rule 37)-After receiving the application the
Registrar must cause a search to be made amongst the registered as well as pending trademarks
to ascertain whether any identical or deceptively similar marks exist on the record in respect of
same or similar goods and/or services. The Registrar can cause the search to be renewed any
time before the acceptance of the application but is not bound to do so.
Trademark Registry Official Database- Searches are carried out through the Registry’s
website, which, amongst other modules, provides for an online search module. The online search
which was a paid service to begin with has now been made free of cost. Searches are carried out
using few criterions using effective combinations and permutations to fetch phonetically and
structurally pertinent marks.
Although numbers of languages are spoken in India, English is one the official language of
the Registry. Thus most of the marks are filed in English. If they are filed in a regional language
TRADEMARKS 1.3 30
then the applicant is required to state the meaning in English or Hindi. The challenge during
search comes from how the marks in regional language are logged in the TM Registry database.
In some cases they are scanned as a device mark and in some cases the English transliteration is
fed to describe the mark. The Registry does not follow a uniform procedure for entering such
marks in the official database. Thus, such marks may not be fetched during the search. Although
a lot can be covered through a combination of search criterions, the results cannot be foolproof
as a lot is dependent upon the accuracy with which marks are fed in the database as well as the
search strings or key words used by the owners or their agents to carry out the searches. Both
word mark and device mark searches are possible on the official database.
TRADEMARKS 1.3 31
(iv) Substantive Examination – the examination report may also have objections under
Sections 9 and 11 of the Act which enumerate absolute and relative grounds of refusal of
registration. “Absolute Grounds of Refusal” pertain to objectionable characteristics that
are inherent in the mark itself, whereas the “Relative Grounds of Refusal” arise from
similarity of a mark with earlier trademarks and any prior rights.
a) Absolute grounds for refusal of registration (Section 9)- The section provides that
trademarks will not be registered under the following circumstances:
i. if they are ‘devoid of distinctive character’- 9(1)(a)
ii. if they serve to ‘designate the kind, quality, quantity, intended purpose,
values, geographical origin, time of production/rendering of service or other
characteristics of goods or services’- 9(1)(b)
iii. if they consist of elements ‘which have become customary in the current
language or in the bona fide and established practices of the trade’- 9(1)(c)
The Act imposes the requirement that a mark be capable of distinguishing the goods or
services of one trader from those of others in the definition of a trademark itself. Section 9 of the
Act lays down three categories of grounds on which registration of a trademark is barred. The
first category pertains to lack of distinctiveness, the second to public policy grounds and the last
is confined to marks comprising exclusively of shape of goods.
An exception to the above rule has been made where a mark has through use, before the date
of application, acquired a distinctive character or where the mark applied for is a well-known
mark.
2. Public Policy: An application for registration of a trade mark is also barred from
registration if:
a. The mark is of such a nature as to deceive or cause confusion
TRADEMARKS 1.3 32
b. The mark contains matter that offends religious susceptibilities of any section of India, or
matter that is scandalous or obscene; or
c. If use of the mark is prohibited under the Emblems & Names (Prevention of Improper
Use) Act, 195011
There is no exception to the above grounds and an inherently distinctive mark or a mark that
has acquired distinctiveness will be refused registration if it falls foul of any of the above.
3. Shape of Goods: The third and last category of grounds on which a trademark
may be refused registration applies only to those marks, which are exclusively
comprised of the shape of goods. The following are barred from registration:
a. Shape of goods that result from the nature of the goods themselves; or
b. Shape is necessary to obtain a technical result; or
c. Shape adds substantial value to the goods.
Once again there is no exception to the above grounds and hence even an inherently
distinctive shape mark or a shape mark that has acquired distinctiveness will be refused
registration if any one of the above grounds is applicable.
b) Relative grounds for refusal (Section 11) - The relative grounds of refusal, contained in
Section 11 of the current act, pertain to objections to registration of a mark on account of
prior conflicting trademarks. A mark may be refused registration under this section if it is
identical or similar to a registered mark or a convention application whose priority date is
earlier than the date of application of the trade mark in question provided that the
registered mark or the convention application is in respect of identical or similar goods or
services and where owing to such identity or similarity there is a likelihood of the public
being confused. The law also stipulates that a mark conflicting with a well-known mark
will be refused registration under certain circumstances.
Another circumstance in which a trademark may be refused registration under this section is
where its use is liable to be restrained under the law of passing off or owing to the provisions of
the law of copyright. The registrar is however obliged not to raise this as an objection to
11 http://lawmin.nic.in/ld/P-ACT/1950/A1950-12.pdf
TRADEMARKS 1.3 33
registration of a mark as this ground can only be taken an in opposition proceedings by an
opponent.
Honest concurrent use: The circumstances which the Registrar may take into
consideration at the time of deciding whether a particular case falls within the realm of
honest concurrent use include nature and extent of concurrent use; honesty of adoption
and concurrent use; the quantity and area off trade; the degree of confusion likely to
ensue from the resemblance of the marks; whether any instances of confusion have been
proved.
The burden of establishing a case for honest concurrent use is on the applicant of the trade
mark under opposition. The expression honest has been interpreted to mean “commercial
honesty” and the circumstances attending adoption of the trade mark are of considerable
importance while determining the issue of honest use. While considering the question of
registration of a mark under section 12 the Registrar must consider in whose favor the balance of
convenience lies taking into account the hardship that is likely to be caused to the applicant if
registration is refused and weighing it against the hardship to the opponent or harm to the public
interest if registration is allowed.
Deceptive similarity - Under the provisions of the Act “a mark shall be deemed to be
deceptively similar to another mark if it so nearly resembles that other mark as to be
likely to deceive or cause confusion”. It has been held that the question of whether one
mark is deceptively similar to another is a question of first impression and a question for
the court (or tribunal) to decide. Over the years, through case law, the courts have
developed principles and factors to be applied to determine the question of deceptive
similarity between marks. The criteria for a court of law or tribunal is concerned with the
following factors at the time of determining deceptive similarity and likelihood of
confusion between marks in question that have evolved over the years through precedents
TRADEMARKS 1.3 34
are as follows:
(i) The nature of the marks, whether the marks are words,
labels or composite marks;
(ii) The degree of resemblance between the marks, phonetic or
visual or similarity in idea;
(iii) The nature of goods or services in respect of which they
are used as trademarks;
(iv) The similarity in the nature, character and performance of
the goods/services of the rival traders/service providers;
(v) The class of purchasers/customers who are likely to buy
the goods or avail the services, on their education and
intelligence and a degree of care they are likely to exercise
in purchasing and/or using the goods;
(vi) The mode of purchasing in the trading channels that the
goods/services traverse in the course of business or placing
order for the goods;
The above factors are not exhaustive but only illustrative. It is not necessary that all the
factors are considered while determining similarity of marks. Where a totality of circumstances
indicate deceptive similarity of the trade marks, it may be sufficient.
Rules for comparison of word marks - Courts in India have followed precedents from the
English Courts and laid down rules for comparison of marks including word marks and
label marks. The following passage from the decision in an English case has been quoted
with approval by the Supreme Court of India and forms the touchstone for comparing
word marks:
“You must take the two words. You must judge of them, both by their look and by their sound.
You must consider the goods to which they are to be applied. You must consider the nature and
kind of customer who would be likely to buy those goods. In fact, you must consider all the
surrounding circumstances; and you must further consider what is likely to happen if each of
those trademarks is used in a normal way as a trademark for the goods of the respective owners
TRADEMARKS 1.3 35
of the marks. If, considering all those circumstances, you come to the conclusion that there will
be confusion – that is to say, not necessarily that one man will be injured and the other will gain
illicit benefit, but that there will be confusion in the mind of the public which will lead to
confusion in the goods – then you may refuse the registration, or rather you must refuse the
registration in that case.”
It has further been held by the Supreme Court that marks must be compared as a whole and it
would not be open to the court (or tribunal) to split up the marks and then compare them. Other
considerations that have been held relevant while comparing word marks include idea conveyed
by the marks; phonetic similarity to be given prominence when the goods or services are ordered
over the phone; structural resemblance; slurring of syllables; tendency to abbreviate word marks;
where what is common between two marks are common to the English language or in common
usage then regard to be given to the dissimilar portions; whether common part descriptive or
distinctive etc.
c) Other Prohibitions – There are a few other provisions which also prohibit registration of a
word on various grounds. Section 13 prohibits registration of words 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 Organization 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. Section 14 prohibits false use of use
of name and representations of living persons or person recently dead, or a person whose
death took place within twenty years prior to the date of the application for registration of
the trade mark. A written consent of the living person or the legal representative of the
deceased person is required to be furnished to obtain such registration.
TRADEMARKS 1.3 36
deemed to have been abandoned.
The deadline of one month is extendible by the Registrar in exercise of the discretionary
powers vested in him, on an application made to him in the prescribed matter and
accompanied by the prescribed fee. Such a request for extension of time is made on Form
56.
Practice: The above being the procedural guidelines applicable to dealing with
examination of the application, the practical side of the examination is as under:
The registry examines the Applications in serial order and examined on the basis of the
grounds discussed herein. Upon examination, currently the Official Examination Report
(OER) is uploaded on the online record of the application together with the official search
report annexed thereto in case of Section 11 objection citing earlier marks as being in
conflict. The Registry must also dispatch the original OER to the applicant/its agent,
failing which the term of one month to reply to the OER does not come into operation.
Upon receipt of the OER, the applicant/its agent after reviewing its contents must deal
with the procedural requisitions and/or substantive objections raised within one month
form the date of receipt of the original OER. If the applicant/its agent is unable to file the
reply within a month, a request for extension of time must be filed to the time to reply by
another month. It may be noted that each request for extension can be filed only for a
month and not more on the prescribed form. Normally several months extensions, at least
5-6 months, are allowed by the Registrar in exercise of the discretionary powers vested in
him. It is, however, in the interest of the applicant, to lodge the response as soon as
practicable so as not to risk abandonment of the application for the delay caused in
prosecution, which can be caused by the Registrar in exercise of his discretionary powers.
Use of the mark prior to the date of application- Distinctiveness is not always an innate
quality, it can also be acquired. An applicant can prove acquired distinctiveness of the
trade mark by virtue of use of the mark made prior to the date of application. This applies
to objections on account of inherent distinctiveness stipulated under section 9. It can be
established that the trade mark which originally may have been descriptive or devoid of
distinctive character on different scores, has lost its primary descriptive significance and
through extensive use prior to the date of application has acquired a secondary
TRADEMARKS 1.3 37
significance with respect to the trade mark of the applicant. In other words, if it can be
established that a non-distinctive trade mark by virtue of use has acquired goodwill and
has come to be associated exclusively with the applicant by the trade and public in the
sense of a trade mark for goods/services being sold by the applicant, the objection of non-
distinctiveness can be overcome on such basis. The extent/quantum of use required to
establish distinctive character will vary for different categories of marks and the degree
of descriptiveness/non-distinctiveness.
Every application filed goes through the examination process. Upon filing written
submissions to overcome any ground for refusal raised in the report, the registrar may
either accept them and send the application for publication or call the applicant or his
agent for a hearing. At the hearing the registrar may accept the application entirely as it is
or subject to conditions or limitations or reject it.
Once an application is accepted, it is advertised in the Trade Marks Journal for opposition
by third parties. The Registrar may also advertise a trademark application before
acceptance.
The opposition period is three months from the date of publication extendible by one
more month at request and at the Registrar’s discretion. In case during this period, a third
party opposes the application, then the applicant has to go through the adversarial
opposition proceedings and only after the decision on the opposition the applicant can
receive the registration if successful.
TRADEMARKS 1.3 38
CHAPTER 5: PROSECUTION AND
OPPOSITION
OPPOSITION PROCEEDINGS
Upon publication of the trademark application in the Trademarks Journal, the application
is open for opposition by third parties. Opposition to registration of a trademark may be
filed by any person within a period of three months from the date of such publication of
the trademark in the journal. This period may be extended by one month, at the discretion
of the Registrar, provided the opponent files the extension request. The Act also provides
that an opposition to registration of a trademark may be filed by any person whether he
has a personal interest.
Rules 47 to 57 provide for detailed law and procedure in respect of opposition
proceedings and must be kept in mind while dealing with such proceedings. The
opponent must set out a case on the basis of grounds for opposing the trademark
application. The opponent is at liberty to set up any ground to support his opposition,
provided that such ground is based on a provision of law. Grounds that may be taken in
an opposition proceeding includes:
1. Grounds under Section 9 – An opponent can on the basis of the facts of the case take any
of the grounds enumerated in section 9. Some of the grounds are that the mark is not
capable of being represented graphically or is devoid of distinctive character or
descriptive or common to the trade or that the mark is of such nature as to deceive the
public or cause confusion or the mark contains or comprises matter, which hurts religious
susceptibilities or comprises of scandalous or obscene matter or its use is prohibited
under the Emblems Act. If the mark is exclusively a shape of goods mark then the shape
of goods results from the nature of the goods themselves or the mark alleged to be
constituted by the shape of goods is necessary to obtain the technical result or the mark
alleged to be constituted by the shape of goods gives substantial value to the goods.
2. Section 11 – The ground under section 11 is based mostly upon the prior rights of the
TRADEMARKS 1.3 39
opponents In case the opponent has registrations, then details of the registration must be
mentioned in the Notice of Opposition stating that the trademark is identical or similar to
a registered trademark and in respect of identical or similar goods/services or it is
identical or similar to a well-known mark and in respect of dissimilar goods/services or
that its use will lead to passing off or violate copyright
3. Section 18 - That the applicant’s claim to proprietorship of the mark is false or
applicant’s claim to user is false or the applicant has no bona fide intention to use the
mark in respect of all or some of the goods/services for which registration is sought.
4. A number of other grounds may also be taken which are subject of absolute refusal.
Procedure
TRADEMARKS 1.3 40
opposition. Like the notice of opposition, the counterstatement is also to be verified.
Evidence in support of opposition: Once the counterstatement is filed, the Trade Marks
Registry serves a copy of the counterstatement on the opponent calling upon him to file
his evidence in support of opposition within two months of receipt of the letter or else
intimate the Registrar that he does not intend to file any evidence. This period of two
months may be extended by one more month, provided the opponent seeks such
extension before the stipulated two months period. The evidence is to be filed by way of
affidavit and a copy served on the applicant. If an opponent fails to file his evidence in
time or fails to intimate the Registrar that he does not desire to adduce any evidence but
intends to rely on the facts stated in the notice of opposition, the opposition shall be
deemed to be abandoned.
Evidence in support of application: The applicant, on being served with a copy of the
evidence filed by the opponent or on receiving the intimation that the opponent does not
desire to adduce any evidence, shall file his evidence in support of the application within
two months or intimate the Registrar that he does not desire to adduce any evidence. This
period may be extended by one more month, provided the applicant seeks such extension
before the stipulated two months period. The evidence is to be filed by way of affidavit
and a copy served on the opponent.
Evidence in reply by opponent: The opponent on being served with a copy of the
applicant’s evidence has an opportunity to file his evidence in reply. The evidence filed at
this stage is to be strictly in reply to the applicant’s evidence. The period for filing this
evidence, which is also by way of affidavit, is two months, extendible by upto another
month. All evidences must be filed by way of an affidavit on Rs. 100 non-judicial stamp
paper and a copy must be served on the other side. If the opponent is based in India, the
affidavit is required to be simply notarized by a notary public and filed at the Registry.
However, if the opponent is based overseas, the affidavit is required to be notarized in the
country where the deponent is present and once the executed document is received in
India it needs to be appropriately stamped as per Indian laws. All the principles and
requirements of the Evidence Act, 197212 and the Code of Civil Procedure 190813 are
12 https://indiankanoon.org/doc/1953529/
13 http://ecourts.gov.in/sites/default/files/The%20Code%20of%20Civil%20Procedure_0_0.pdf
TRADEMARKS 1.3 41
required to be followed in this regard. The Affidavit submitted as evidence may also be
accompanied by any documents that the party wishes to rely on which establish the use,
distinctiveness, goodwill and reputation of the trade mark.
As per procedure, any evidence filed beyond the statutory period of two months and the
extended period of one month has to be filed along with an Interlocutory Petition praying
for the condonation of the delay in filing the Evidence and taking the same on record. A
copy of the Interlocutory Petition is served on the other side and the Registrar may call
for a hearing thereon. Normally, Interlocutory Petitions are accepted in the interest of
justice if the delay is not substantial and reasonable grounds for such delay have been
mentioned in the Petition. There are ample judicial precedents when the extra time taken
has been condoned. In Hastimal Jain trading as Oswal Industries vs. Registrar of Trade
Marks 2000 PTC 24 Del it has been held that relevant provisions of law are merely
directory in nature and not mandatory. Further, it is a settled principle of law that
Procedural rules, even in civil cases are hand-maidens of justice which cannot be allowed
to obstruct the course of justice.
If the deadline to file any of the aforesaid pleading(s) falls on a holiday or non-working
day at the Registry, such date is legally extended to the next working day.
Further Evidence: The Registrar has the power to permit either party to file additional
evidence. It has been the practice of the Registrar not to shut out evidence, even if it
means delay of proceedings.
Hearing: The Act mandates that the Registrar give both parties an opportunity to be heard
prior to deciding the opposition proceeding.
Once the evidence stage is complete the Registrar is to fix the opposition proceeding for a
hearing. On receipt of the hearing notice both parties are to intimate the Registrar of their
intention to attend the hearing. A party that fails to intimate the Registrar may be treated
as not desiring to be heard and the Registrar may act accordingly. After hearing both
sides the Registrar passes an order and communicates it to the parties. Either party has a
TRADEMARKS 1.3 42
right to appeal against that order.
The Indian law has elaborate provisions in section 11 relating to well-known trademark.
A well-known trademark is protected from imitation by third parties even in respect of
goods or services that are other that the goods or services in respect of which the well-
known mark are used. The Act confers protection to well-known marks in questions
involving registrability of the mark and third party registration of the well-known mark or
a mark similar to a well-known mark. The provisions relating to well-known trademarks
enshrined in section 11 are very relevant for trademark opposition proceedings. Section
11(10) (i) of the Act mandates that the Registrar while considering an application for
registration of a mark or an opposition proceeding has to protect a well-known mark
against identical or similar marks. However where a mark that is identical or similar to a
well-known mark has been used or registered in good faith prior to the commencement of
the Act, then nothing in the Act will prejudice such rights acquired in good faith.
Article 6bis of the Paris Convention 14
and the provisions of the TRIPS Agreement
required member countries to provide protection to well-known trademarks. Accordingly,
to comply with its international obligations India introduced the concept of statutory
protection of well-known trade marks in the Act by means of sections 11 in the Act.
Well-known trademarks are defined under section 2 (1)(zg) of the Act which is as
follows: “well-known trade mark”, in relation to any goods or services, means a mark
which has become so to the substantial segment of the public which uses such goods or
receives such services that the use of such mark in relation to other goods or services
would be likely to be taken as indicating a connection in the course of trade or rendering
of services between those goods or services and a person using the mark in relation to the
first-mentioned goods or services.”
Section 11 of the Act lays down the requirements which are to be kept in mind by the
Registrar of Trade Marks while accepting or rejecting a mark for registration. A thorough
reading of section 11 is required to fully appreciate the extent of protection to well-
known marks conferred by the Act. While sub-sections (6), (7) and (8) of section 11
14 http://www.wipo.int/treaties/en/text.jsp?file_id=288514
TRADEMARKS 1.3 43
clearly provide the factors to be kept in mind by the Registrar in deciding whether a mark
falls within the category of well-known marks, sub-section (9) states the factors which
should not be taken into consideration to arrive at the conclusion that a mark is well-
known. Sub-section (10) places an obligation on the Registrar to protect a well-known
mark against identical or similar trademarks.
TRADEMARKS 1.3 44
CHAPTER 6: REGISTRATION AND
VALIDITY OF TRADEMARK
15
An application for registering a trademark in India is filed online or by paper at the trademark
offices in Mumbai, Chennai, Kolkata, New Delhi or Ahmedabad. The Indian trademark office
15 https://www.indiafilings.com/learn/trademark-registration-process/
TRADEMARKS 1.3 45
follows the 10th edition of the NICE Classification in addition to a list of goods and services
maintained by the Indian Trademarks Office.
One can file convention applications claiming priority in India, being a signatory of the
Paris Convention for the Protection of Industrial Property. A certified copy of the
priority document is necessary for claiming priority. The same can be filed within 2
months from the date of filing the application in India.
India acceded to the Madrid Protocol. This effected from July 8, 2013 it was possible to
designate India in an international application. It is also possible to file online an
international application under the Madrid Protocol through the Indian trademark office.
An application in India can be filed on intent to use basis or by claiming use of the
trademark in India.
The registration of the trademark is valid for a period of 10 years and renewable every 10
years. An application for renewing a trademark registration can be filed at any time,
during the 6 months prior to the expiration of the registration renewal validity. Late
renewal is also possible after the expiry and within 6 months from the validity date. The
restoration of the registration is possible after 6 months but before 1 year from the
validity date of the registration.
TRADEMARKS 1.3 46
Recordal of the assignment of trademarks with or without the goodwill of the business,
change of name and/or address of the applicant/proprietor, registered user agreements are
possible. An amendment to the registered trademark without substantially altering the
identity of the mark or the specification of goods and services covered by the registration
of the trademark is also possible.
Fact Sheet:
Application
Renewal
TRADEMARKS 1.3 47
Renewal Valid for 10 years
Examination
Deadline to respond to
30 days
examination report
Publication in the
Yes
trademarks journal
Publication fees No
Registration fee No
Cancellation
TRADEMARKS 1.3 48
CHAPTER 7: AMENDMENTS POST
REGISTRATION
The amendments of the trademark application are effected either before or after the Registrar has
accepted the application. The constitutional provision for amendment or correction of a
trademark application is Section 22 of the Trademarks Act, 1999 and Rule 41 of the Trademark
Rules, 2002.
Disclaimer: The study material mentioned in the module is for academics purpose to
provide information and understanding; it should not be interpreted as a legal advice or opinion.
16 http://www.ipindia.nic.in/writereaddata/Portal/News/312_1_TRADE_MARKS_RULES_2017__English.pdf
TRADEMARKS 1.3 49