How to Register Trademarks in India?
What is Trade Mark?
Trade mark means
- a mark capable of represented graphically and which is capable of distinguishing the goods or services of one person from choose of others and may include shape of goods, their packaging and combination of colors; and
- in relation to a registered trade mark or mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and
- some person having the right as proprietor to use the mark, and in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate to a connection in the course of trade between the goods or services, as the case may be, and
- some person having the right, either as proprietor or by way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collective mark.
The Trade Mark Registry
It acts as a resource and information Centre and is a facilitator in matters relating to trademarks in the country.
The Trade Marks Registry established in India in 1940 and presently it administers the Trade Marks Act, 1999. The objective of the Trade Marks Act, 1999 is:
- to register trademarks applied for in the country and
- to provide for better protection of trademark for goods and services and also to prevent fraudulent use of the mark.
The main function of the Registry is:
- to register trademarks which qualify for registration as per provisions of the Trade Marks Act and Rules, and
- to maintain the Register of trademarks.
How to Register Trademarks in India?
The registration process in India is a ‘first to file’ basis. Therefore, it is important to apply for registration as soon as possible. A trademark usually takes 2-3 years to get registered, if the trademark is not being opposed by a third party. Trademark applications are handled by the Office of the Controller General of Patents, Trade Marks, Industrial Designs and Geographical Indications. Branches for these offices are available in Mumbai, Kolkata, Ahmedabad, Delhi and Chennai. The application must be filled as per territorial jurisdiction. To register a trademark in India the following steps must be followed:-
Application for registration
Any person desiring to register its business Trade Mark shall apply in writing to Registrar in prescribed manner as given in the Act. A single application can applied for registering different classes of goods and also services and also pay prescribed fees. Every application must filled with the Trade Mark registry having jurisdiction to accept the application. If business situated out of India, application must filled with the Trade mark Registry in whose jurisdiction the place of address of the business mentioned. In the case of a refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal or conditional acceptance and the materials used by him in arriving at his decision.
Withdrawal of acceptance
After the accepting of an application for registration but before its registration, the Registrar satisfies himself that
- the application has accepted in error; or
- the trade mark should not registered or should registered subject to conditions or limitations or to conditions additional to or different from the conditions or limitations subject to which the application has accepted,
the Registrar may, after hearing the applicant if he so desires, withdraw the acceptance and proceed as if the application had rejected.
Advertisement of application
After acceptance of application for registration of a trade mark, whether absolutely or subject to conditions or limitations. The Registrar shall, produce application with the conditions or limitation, if any, advertise it in prescribed manner.
Provided that the Registrar may also advertise the application before acceptance. If it appears to him that it is expedient by reason of any exceptional circumstances so to do.
- Advertisement of application before accepatance or
- after advertisement of an application,—
(i) correction of an error in the application; or
(ii) amendment in the application under section 22, the Registrar may in his discretion advertise the application again, or instead of advertising the application again, notify in the prescribed manner the correction or amendment made in the application.
Opposition to registration
Any person who desires to oppose the registration, shall give notice in writing to the registrar. Such person may give such notice within period of four months from the date of advertisement or re-advertisement.
The registrar shall sent a copy of notice to the applicant of registration. The applicant shall have to submit a counter statement containing the reason on which he relies his application properly executed. The applicant shall submit such statement within period of two months.
The registrar shall sent the copy of counter statement to the person giving notice of opposition. If opponent and the applicant submits any evidence in manner prescribed and also within the prescribed time to the Registrar. The registrar shall give an opportunity to present their sides.
The registrar shall after hearing both the parties, decide whether to permit for registration or not. After taking into account the grounds of objection. The registrar may also require opponent or applicant to give security for the cost of proceeding. The Registrar may also, on request, permit correction of any error in, or any amendment of, a notice of
opposition or a counter-statement on such terms as he thinks just.
After acceptance of application for registration of a trade mark and either the application has :
- not opposed and also the time for doing so has expired; or
- opposed and the registrar decides in favour of the applicant,
the Registrar shall register the said trade mark within eighteen months of the filing of the application. Unless the Central Government otherwise directs. The trade mark when registered shall deemed to be registered on date of application made for registration. Such date known as Date of Registration.
On the registration of a trade mark, the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry.
Where registration of a trade mark is not completed within twelve months from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice. The Registrar may amend the register or a certificate of registration for the purpose of correcting a clerical error or an obvious mistake.