Intellectual Property Rights (IPRs) |
A trademark becomes a property the moment it is put to use in the course of trade or when it is registered, whichever is earlier. Under the Trademarks Act, registration of a trademark is not mandatory. However Registration of Trademark gives to the proprietor of the trademark the exclusive right to the use of the trademark in relation to the goods or services in respect of which the trademark is registered. In addition, the registered proprietor enjoys the statutory right to obtain relief in the event of an infringement of the trademark in the manner provided by the Act. [Section 28 of the Trademarks Act, 1999]
The word or words which are supposed to be functioning as a brand for goods or services should be fanciful or arbitrary and by virtue of its quality, reliability, availability, price, packaging, features, utility, value addition, after sales service, the brand shall become popular. If there is any art work involved in the chosen mark or if there are any slogans or jingles, it is advisable to have copyright registration also.
An application for registration should be made to the appropriate Trademarks Registry in the prescribed form with prescribed fee. In India, there are 5 registries. For the western region alone, there is a registry in Mumbai and another in Ahamedabad. For the States of India in the Southern Region, the Registry is in Chennai. For the States in the Eastern Region, the Registry is in Kolkata and for the Northern States, the Trademarks Registry is in New Delhi. The goods and services for which trademarks could be registered are classified into 45 classes. A single application could also be filed for registering a single trademark in several classes or in all classes of goods and services. Such applications are known as multi-class applications. However fees payable will be per class basis only. It is not possible to apply for registration of different trademarks in the same application.
It is advisable to carry out a pre-adoption search in each of the countries in which the proprietor would trade in his branded goods or services.
The official search report obtained from the Trademarks Registry of the respective country would contain a list of identical or similar or deceptively similar marks which have been registered or which are in pre-registration stage. Separate report should be obtained for each class of goods or services. Under the Trademarks Act, there are 42 classes of goods and services. In India, search could be carried out electronically. A lot of care must be taken to ensure that the search covers all possible permutations and combinations and variants of the mark in mind for which an application should be made for registration.
A mere search at the Registrar of trademarks of respective countries is not therefore a comprehensive pre-adoption search. There is nothing known as a comprehensive search which could be done across all countries for all goods and services.
Once an official report is obtained, it is better to seek professional opinion before proceeding to adopt the chosen mark. If there are no conflicting marks or if the marks mentioned in the search report could be differentiated on one or more grounds and if an expert in trademarks law feels that it is possible to apply for registration of the mark and use it in the course of trade without any potential legal issues, it would be safe to apply the same in the course of trade.
When a person makes an application for registration of a trademark, he is crossing the first stage in trademarks registration. His application will be taken up by the Trademarks Registry for examination and the Registry will be issuing a letter pointing out reasons, if any, as to why the application should not be refused. At this second stage, the applicant should file an affidavit setting out the various grounds why the application deserves to be allowed. If necessary the applicant may have to appear before the Registrar in a hearing to argue his case. Thereafter the Registry may direct an advertisement of the mark of the applicant in the trademarks journal either as “accepted before advertisement” or as “advertised before acceptance”.
An arbitrary mark is likely to be "advertised as accepted". |
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| Opposition to Registration |
Any person who has genuine interest in a mark and who may be aggrieved of registration of a mark may oppose the registration if the registration of that mark is liable to be refused on one or more legal grounds under Section 9 or Section 11 of the Trademarks Act, 1999.
Registration of the trademark would be a fait accompli if the statutory time within which the application ought to be opposed has expired and there is no opposition or where there is any opposition and the opposition is decided in favour of the Applicant. [Section 23]. Registration takes effect from the date on which the prescribed application was made.
The Trademarks Act, 1999 (the Act) is the law in India containing absolute and relative grounds for refusal of registration of a trademark. |
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| Absolute Grounds – (Section 9 of the Act) |
The First Rule - [sub-section (1)]
A. The mark lacks distinctiveness;
B. The mark is descriptive of the characteristics of the goods or services;
C. The mark consists exclusively of marks or indications which have become customary or in the bonafide and established practices of the trade.
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| Exception to the above Rule – the Proviso to sub-section (1) |
Before the date of application for registration, if the mark has acquired a distinctive character as a result of the use made of it or if the mark is a well-known mark, the mark shall not be refused registration.
In ELGI Ultra Industries Limited v The Assistant Registrar of Trade Marks, the Intellectual Property Appellate Board [IPAB], MANU/IC/0062/2008, the IPAB held that the words 'ultra' and 'perfect' are highly descriptive and laudatory.
In Imperial Tobacco Company of India Ltd v. Registrar of Trademarks, AIR 1968 Cal 582, the Calcutta High Court held that the trade mark "Simla" with the label is composite in character. It is a well known hill-station of India. Its geographical signification is, therefore, plain and unequivocal. |
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| Second Rule – [sub-section (2)] |
A. The mark is of such nature as to deceive the public or cause confusion;
B. The mark is likely to hurt religious sentiments;
C. The mark comprises scandalous or obscene matter;
D. The use of the mark is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950; |
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| The Third Rule – [sub-section (3)] |
| If the mark consists exclusively the shape of the goods (i) resulting from nature of the goods; or (ii) which is necessary to obtain a technical result; or (iii) which gives substantial value to the goods. |
| Relative Grounds (Section 11 of the Act) |
| The First Rule - [sub-section (1)] |
| The mark is identical or similar to an earlier trademark and the goods are identical or similar to the goods of the earlier trademark. |
| The Second Rule - [sub-section (2)] |
The mark is identical or similar to an earlier trademark and use of such a mark would allow the applicant to gain unfair advantage of or damage the reputation of the earlier trademark though goods may not be similar.
Note: For the First and Second Rule, 'Earlier Trademark' means a 'registered mark' or a 'well known mark'. |
| The Third Rule - [sub-section (3)] |
The use of the mark in India should be prevented by virtue of any law in particular the law of passing off protecting an unregistered trademark or by virtue of the law of copyright.
The Supreme Court in Parle Products (P) Ltd. v. J.P. & Co. Mysore AIR1972SC1359 held that “in order to ascertain whether one mark is deceptively similar to another, the broad and essential features of the two marks have to be considered. It would be enough if the impugned mark bears an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one, to accept the other if offered to him.
Of course, Honesty is an Exception – [sub-section (4) of Section 11 read with Section 12! In other words, if a person had adopted a mark honestly, despite the adopted mark being similar or deceptively similar to another mark and despite opposition, the Trademarks Tribunal may permit the registration of the mark that faced the opposition.
[Section 23] The registration of a trademark shall be for a period of ten years. Registration may be renewed from time to time. [Section 25]. When a trademark consists of several matters, its registration confers on the proprietor exclusive right to the use of the trademark taken as a whole [Section 17].
In all legal proceedings relating to a trademark, the original registration of the trademark and all subsequent assignments and transmissions shall be prima facie evidence of the validity thereof. [Section 31] For the purpose of use in legal proceedings, a party may apply to the Registrar of Trademarks for obtaining a certified copy of the entire entries in the Register in relation to a registered trademark. A copy of an entry in the register duly certified by the Registrar of Trademarks and sealed with the seal of the Registry shall be admitted in evidence in all Courts and in all proceedings without further proof or production of the original Registration Certificate. [Section 137]
We, at Liza Sahni & Co., specialize in all trademark related matters. We have handled all types of registry works, oppositions, countering oppositions, appeals against decisions of Registrars and Trademarks Tribunals and also we have handled several passing off and infringement suits. We have issued hundreds of caution notices against uses which are considered by proprietors of marks as dishonest use entitling the aggrieved proprietors to commence a passing off or infringement suit. We also practice registration works in more than 75 countries including the United States of America and CTM Countries which have advanced IPR laws and Ethiopia where there is no formal law as of now relating to registration and protection of trademarks. |