TRADE MARK PROCESS IN INDIA AND ACROSS THE GLOBE

A trademark is the sign capable of distinguishing between the goods & services of one enterprise
to from those of other enterprises. Trademarks are fully protected under the intellectual property
rights.1 The trade mark registry was established in India in 1940s. Presently it administer the
Trade Marks Act, 1999. It serves as a resource and information center and is a facilitator on
issues related to trademarks in the country. The purpose of the Trademarks Act, 1999 is to
register trademarks applied for in the country and to provide better protection of the trademark of
goods and services and to prevent fraudulent use of the trademark. The main function of the
Registry is to register the relevant trading marks to obtain registration under the Acts and the
Rules.2

Before 1940 there was no trademark law in India. Many problems have arisen with the violation
of registered and unregistered trademarks which were resolved under section 54 of the Specific
Assistance Act, 1877 and registration was sentenced under the Indian Registration Act, 1908. To
overcome this difficulty, the law of India Trademark was enacted in 1940. After the application
of the trademark law, the need for trademark protection increased as there was a significant
growth in trade and commerce.3

Trademark is designated by:

 ™ (™ is used for an unregistered trade mark. It is used to promote the brand goods).
 ℠  ( used for any unregistered service mark. It is used to promote any brand services).
 R (letter R is surrounded by a circle and used for registered trademark only).

The Trade Marks Act provides, inter alia, for registration of service marks, filing of multiclass
applications, increasing in the terms of registration of a trademark to ten years as well as
recognition of the concept of well known trade marks & etc. The Indian judiciary has been
proactive in the protecting all kind of trademarks, and it has extended the protection under the

1
Trademarks, https://www.wipo.int/trademarks/en/
2
Brief Background, http://ipindia.nic.in/trade-marks.htm
3
About Us, http://www.ipindia.nic.in/about-us-tm.htm
trademarks law to Domain Names as demonstrated in landmark cases of Tata Sons Ltd. v Manu
Kosuri & Ors4 and Yahoo Inc. v Akash Arora.5

In Bhavnesh Mohanlal Amin v. Nirma chemicals Works Ltd 6 the Supreme Court held that the
trademark NIMA is deceptively similar to the registered trademark NIRMA in appearance as
well as pronunciation and hence amounts to infringement and hence upheld the decision of the
trial court of granting injunction46 against the Bhavnesh Mohanlal Amin for using the trademark
“NIMA”.

Registration process of trade mark in India.

 Select an authorize the trademark agent or attorney to represent you.

 Trademark attorney conduct the Search.
 Depending on the search results, a trademark attorney will write your trademark
application. In the event that someone has the same or similar trademark, you may need
to change your own.
 The Trademark Attorney will submit your trademark application to the Trademark Office
and send you a receipt.
 After a few days, the trademark will send you the Original Representation Sheet for your
trademark as it is filed with the Trade Office.

It may take between 18 months to 2 years for the Trademark Office to decide whether or not to
allow you to give you a trademark; if there is a dispute from the trading office or someone else, it
can take a long time. And the trademark will published in the Trademark Journal.7

In, M/s Marvel Tea Estate India Ltd v. M/s Nusun Genetic Research Ltd.8 the Delhi high court
passed an interim order and restrained the defendant from using the plaintiffs trademark
‘MARVEL’ and also ordered to dispose of whatever materials are left by the name ‘NUSUN
MARVEL’ within six month time as the defendant used a identical trademark and this amounted
to infringement and passing off of the Plaintiff’s trademark.
4
90 (2001) DLT 659
5
MANU/DE/0120/1999
6
(2006)1 SCC 185.
7
Trademark Registration in India, http://www.ipindia.nic.in/writereaddata/images/pdf/trade-marks-registration-in-
india.pdf
8
I. A. No. 5464/2010 in CS (OS) No. 803/2010.
Trademark owner or the registered user9 gets the right to use it legally or assignee always has and
gets a legal Right as to its usage10. Provided such proprietor is prior to use such trademark or
service mark. Once the proprietor of such trademark is a registered® trademark owner under the
trademark Act then such proprietor gets statutory right as to its exclusive usage and protection
under the act subject to certain provisions of the Act. If the trademark is unregistered™ then
trademark is protected by the common law action of passing off. The trademark act too has
recognized and protected the rights of unregistered prior user to an extent that even the registered
trademark cannot stop the usage of unregistered prior user. In Ramdev Foods Products Pvt. Ltd.
v. Arvind bai Rambai Patel Pvt. Ltd11 the Supreme Court made an observation that Section 28 of
the trademark Act gives exclusive right as to its usage to whoever registers the trademark under
the Act.

Trade law passed by the Indian government operates within the territory of India. Registered
trade trips only work in India, as protecting a foreign trade mark requires registration in another
country. Each country has a trademark law with its own rules and regulations for the registration
of trademarks in that country. In other words, if a person wishes to obtain a trademark register in
any particular country a separate system must be used in all parts of the world. Before the end of
2013, the Indian government approved a convention in Madrid setting the stage for the
submission of international applications for contracts from India through the work of the
Registrar of Trademark. For example - mobile phone production in India “Micromax” has
received $ 1.25 billion trademark registration to protect the “MICROMAX” trademark in more
than 110 countries. Registration of the Micromax international trademark affiliated with the
Madrid Protocol, under the trademark may be protected from further breach by simply applying
for international registration.12

9
Sec. 48 ,Trademark Act 1999 , ‘Registered user is a person other than the registered proprietor of the trademark
may be registered as registered user thereof in respect of any or all of the goods or services in respect of which the
trademark is registered ‘
10
S.S. Rana & Co. ‘Trademark Rights and Protection in India.’ The Ownership of trademark in India is determined
on a first to use basis, the first to use rule over first to file. https://www.lexology.com
11
Appeal (Civil) 8815-8816 of 3003. Civil Appeal no. 8817 of 2003 SCC
12
Madrid Protocol, https://www.uspto.gov/trademark/laws-regulations/madrid-protocol
There are two methods by which an international application can be filed:-

 International application in each foreign country: To protect a trademark in any

foreign country, an international application must be submitted to the trade office in
accordance with the laws and regulations of that country. For this purpose the applicant
must hire a foreign trade registration company, applications to countries that are not part
of the Madrid protocol.
 The international application under the Madrid system: The trademark registration
can also be initiated by means of an international application under the Madrid protocol
before the Registrar of Trademark. India’s trade office collects an international trade
application and upon receipt of it agrees with the Madrid agreement and submits an
international application to WIPO (World Intellectual Property Organization), which
transfers it overseas. The entire software is processed in a national and international
manner and all communications are conducted by the Indian executives.13

Intellectual Property indicates that the lower body of a product is a mental or intellectual product.
As it is a product of a creative and creative concept, it can be sold, purchased, donated and
stored. All of this can be done but there are related issues that need to be addressed. Trademarks
are a very important feature of Intellectual Property Property, therefore, trademark protection has
become important in this day and age, everyone who creates a good product or service will want
its brand unique, eye-catching and should be easily distinguished from others.

Intellectual Property is not a unwanted concept, in fact, it is a concept which is discussed in

everyday life whether a movie, book, plant variety, food items, cosmetics, electrical gadgets,
vehicles etc.. It has emerge as a concept of pervasiveness in everyday life. The World Intellectual
Property Day on 26th April every year.

13
THE MADRID PROTOCOL: A ROUTE TO GLOBAL BRANDING, (JANUARY 2018),
http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_93_1_THE_MADRID_PROTOCOL.pdf