Bad Faith Trademark Law India
Evidence to support a claim under section 11(10) of the Act must be particularly focused as this is a very serious claim. Section 11(10) of the Act states that the registrar shall take into consideration the bad faith involved either of the applicant or the opponent. In Gromax Plasticulture Ltd v. Don & Law Nonwavens Ltd [1999] RPC 367, Lindsay J stated at page 379: “I shall not attempt to define bad faith in this context. Plainly it includes dishonesty and, as I would hold, includes also some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined. Parliament has wisely not attempted to explain in detail what is or is not bad faith in this context; how far a dealing must so fallshort in order to amount to bad faith is a mater best left to be adjudged not by some paraphrase by the court(which leads to the danger of the courts then construing not the Act but the paraphrase) but by reference to the words of the Act and upon a regard to all material surrounding circumstances”. And in Royal Enfield case the Appointed Person, held: “An allegation that a trade mark has been applied for in bad faith is a serious allegation. It is an allegation of a form of commercial fraud. A plea of fraud should not be lightly made (see Lord Denning M.R. in Associated Newspapers (1970)2 QB 450 at 456) and if made should be distinctly alleged and distinctly proved. It is not permissible to leave fraud to be inferred from the facts (see Davy v. Garrett(1878) 7 Ch.D.473 at 489). It should not be made unless it can be fully and properly pleaded and should not be upheld unless it is distinctively proved and this will rarely be possible by a process of inference” Therefore a claim under section 11(10)) must be supported by evidence of dishonest activities or dealings or at the least commercial behaviour or activities below the standard regarded as acceptable by the community at large.
Wednesday, October 1, 2014
Trade Marks application for registration as Series India
Trade Marks application for registration as Series India
Section 15 (3) makes provision for registration of trade mark as series in respect of the same or similar goods /services where the marks, while resembling each other in the material particulars thereof and yet differ in respect of -
1. Statement of goods or services in relation to which they are respectively used or proposed to be used; or
2. Statement of number, price, quality or names of places; or
3. Other matter of a non-distinctive character which does not substantially affect the identity of the trade mark; or
4. Colour It is an essential condition of registration that the differences in the ‘series marks’ should be only in respect of non-distinctive matters, such as size, (8 ½” size), description of the goods, (bleached, khaki shades etc), price , quality etc.
To qualify for registration as series, the mark should resemble each other in the material particulars but differ only in matters of non-distinctive characters which do not substantially affect or alter the identity of the mark.
The test is NOT simply whether the marks in the series would be regarded a confusingly similar to each other if used by unrelated undertakings. Any variation in the non-distinctive features in the marks must leave the visual, aural and conceptual identity of each of the trade marks substantially the same.
Further, it is not enough for marks to share the same conceptual identity if there are substantial differences in the visual or aural identities of the marks. The matter must be assessed by reference to the likely reaction to the marks of an average consumer of the goods/services in question.
Series marks with letters / numerals /colours Marks constituted by three letters or numeral marks consisting of five digits are regarded as capable of distinguishing per se. Accordingly such group of marks is to be registered only as independent marks and not as series.
Each of the trade mark in the series must be in respect of the same goods or description of goods or services. Section 15(3)(d) provides for registration of trade marks in series, where the mark differs only in respect of colours.
Procedure relating to series registration – Application for registration of series
Trademark of Letters and Numerals India
Trademark of Letters and Numerals India
In section 2(1)(m) the definition of the expression “mark” includes inter alia “letter” and “numeral”. The definition of “trade mark” means “a mark capable of distinction” The law therefore recognizes a trade mark may be constituted by a letter or letters or a numeral or numerals. Whether a letter or numeral mark can be registered prima facie will depend upon whether the average consumer of the goods/services at issue would expect all such goods/services offered for sale under the sign to originate from a single undertaking. If the sign does not possess the character necessary to perform this essential function of a trade mark it is “devoid of any distinctive character.” Marks consisting of single letters or two letters will be generally regarded as “devoid of distinctive character” for goods because of tendency in trade to use letters as models or catalogue references unless otherwise shown as evidence of the trade practice. Two letter marks may be acceptable in respect of services having regard to the trade practice. Four digit numbers per se which are current such as 2007 or shortly forth coming dates such as 2008 or 2009 etc signifying a year of production or their expiry period will be considered as devoid of distinctive character. See AD 2000 TM cases (1997 RPC 168) The mark consisting of letters “P.R.E.P.A.R.E. was refused registration as being devoid of distinctive character and appeal was dismissed. (1997 RPC 884)
Combination of letters and numerals: Combination of letters and numerals will be considered differently as a composite mark and such unique combination may qualify for registration. The registration of such marks would give right only for the use of composite mark and not for separate integers. See Section 17 (2). letters and numerals presented with additional features or which are intertwined, conjoined etc having a trade mark character , may qualify for acceptance. The distinctiveness of the mark must be assessed with reference to the goods /service in issue.
Secondary trade mark India
Secondary trade mark India
Where a trade mark consists of several features, the exclusive right of registration is in respect of the mark as a whole. (Section 17). However, a mark may acquire a distinctive character as a result of its being used as part of, or in conjunction with, another mark. There is no requirement for a non-distinctive mark to have been used alone before it can be registered on the basis of acquired distinctiveness, but where such a mark is used alongside another distinctive sign, the burden on the applicant to show that the non-distinctive mark has come to be seen as a secondary trade mark will be greater. See TREAT case, [1997] E.T.M.R. 118. Non-traditional marks, particularly colours and the appearance of the goods or their packaging, often pose particular problems. Such marks are seldom used as theprincipal means of distinguishing the trade source of the goods or services. Nevertheless, they are capable of being used as secondary trade marks.
Where a trade mark consists of several features, the exclusive right of registration is in respect of the mark as a whole. (Section 17). However, a mark may acquire a distinctive character as a result of its being used as part of, or in conjunction with, another mark. There is no requirement for a non-distinctive mark to have been used alone before it can be registered on the basis of acquired distinctiveness, but where such a mark is used alongside another distinctive sign, the burden on the applicant to show that the non-distinctive mark has come to be seen as a secondary trade mark will be greater. See TREAT case, [1997] E.T.M.R. 118. Non-traditional marks, particularly colours and the appearance of the goods or their packaging, often pose particular problems. Such marks are seldom used as theprincipal means of distinguishing the trade source of the goods or services. Nevertheless, they are capable of being used as secondary trade marks.
Removal of registered trade mark for non-use in India
Removal of registered trade mark for non-use in India
A trade mark which is not used within five years of its registration becomes liable for removal either completely or in respect of those goods or services for which the mark has not been used. The object of this provision in section 47 is that a person cannot be permitted to register a trade mark when he has not used it in relation to the goods or services in respect of which it is sought to be registered or does not intend to use it in relation to those goods or services, as the registration confers valuable rights upon the registered proprietor. This is borne out of section 18 of the Act which enables a trade mark to be registered by “any person claiming to be the proprietor of the trade mark used or proposed to be used by him”. The only two exceptions which are contained in section 46 providing for application for registration to be made by a person who does not use or propose to use the mark are – a) A company which is about to be formed and registered under the Companies Act and the applicant intends to assign the trade mark to that company; or b) Proprietor intends it to be used by a person to be registered as the registered user, after the registration of the mark. An application for removal of registered mark under section 47 may be made to the Registrar or to the Appellate Board . The procedure before the Registrar in such cases is prescribed in rule 92. Application will be made on form TM-26 together with prescribed fees and accompanied by a statement in triplicate setting out fully the nature of applicant’s interest (viz. demonstrating as to how the applicant claims to be an “aggrieved person”), the facts upon which he bases his case and the relief which he seeks. Where there are registered users, such application and statements shall be accompanied by as many copies thereof as there are registered users. Under rule 92, a copy of each of the application and statement of case will be transmitted by the Registrar to the Registered Proprietor and to the registered users and any other person who appears from the register to have an interest in the trade mark. Thereafter within two months from the date of receipt by the registered proprietor of the copy of the application, the Registered proprietor will send his counterstatement on form TM-6 in triplicate setting out the grounds on which the application is contested. The Registrar will serve the copy of the counterstatement on the applicant. Thereafter, the provisions of rule 50 to 57 will apply mutatis mutandis to the further proceedings on the application. Rule 93 clearly lays down that the Registrar will not however remove the mark merely because the registered proprietor has not filed the counterstatement, unless he is satisfied that the delay in filing the counterstatement is willful and is not justified by the circumstance of the case.
A trade mark which is not used within five years of its registration becomes liable for removal either completely or in respect of those goods or services for which the mark has not been used. The object of this provision in section 47 is that a person cannot be permitted to register a trade mark when he has not used it in relation to the goods or services in respect of which it is sought to be registered or does not intend to use it in relation to those goods or services, as the registration confers valuable rights upon the registered proprietor. This is borne out of section 18 of the Act which enables a trade mark to be registered by “any person claiming to be the proprietor of the trade mark used or proposed to be used by him”. The only two exceptions which are contained in section 46 providing for application for registration to be made by a person who does not use or propose to use the mark are – a) A company which is about to be formed and registered under the Companies Act and the applicant intends to assign the trade mark to that company; or b) Proprietor intends it to be used by a person to be registered as the registered user, after the registration of the mark. An application for removal of registered mark under section 47 may be made to the Registrar or to the Appellate Board . The procedure before the Registrar in such cases is prescribed in rule 92. Application will be made on form TM-26 together with prescribed fees and accompanied by a statement in triplicate setting out fully the nature of applicant’s interest (viz. demonstrating as to how the applicant claims to be an “aggrieved person”), the facts upon which he bases his case and the relief which he seeks. Where there are registered users, such application and statements shall be accompanied by as many copies thereof as there are registered users. Under rule 92, a copy of each of the application and statement of case will be transmitted by the Registrar to the Registered Proprietor and to the registered users and any other person who appears from the register to have an interest in the trade mark. Thereafter within two months from the date of receipt by the registered proprietor of the copy of the application, the Registered proprietor will send his counterstatement on form TM-6 in triplicate setting out the grounds on which the application is contested. The Registrar will serve the copy of the counterstatement on the applicant. Thereafter, the provisions of rule 50 to 57 will apply mutatis mutandis to the further proceedings on the application. Rule 93 clearly lays down that the Registrar will not however remove the mark merely because the registered proprietor has not filed the counterstatement, unless he is satisfied that the delay in filing the counterstatement is willful and is not justified by the circumstance of the case.
Grounds of Opposition of Trademark India
Grounds of Opposition of Trademark India
Grounds of opposition: Section 21, which provides for filing Notice of Opposition, does not refer to any ground on which the opposition may be filed. The opponent is thus at liberty to set up any ground which may support his opposition against the registration of the trade mark under any of the provisions of the Trade Marks Act, 1999 and the Rules prescribed there under. However, under section 11(5), a trade mark shall not be refused registration on the grounds specified in sub-section (2) and (3), unless objection on any one or more of those
grounds is raised in opposition proceedings by the proprietor of the earlier trade mark. In this connection, it is to be noted that section 9 contains ‘absolute grounds for refusal of registration’ and section 11 contains provision for ‘relative grounds for refusal of registration’. [See also section 12, section 13, section 14 and section 18, which may form grounds of opposition]. The following is a list of possible grounds for opposition to the registration. (1) That the trade mark advertised is not registrable in that it is neither distinctive nor capable of distinguishing or that it does not satisfy the requirements of the Act as to registrability; (2) The essential part of the said trade mark is a word in ordinary use, descriptive of the character or quality of the goods and the applicant is not entitled to acquire an exclusive right therein by registration; (3) That the trade mark is not capable of being represented graphically; (4) That the trade mark is devoid of distinctive character, that is to say, not capable of distinguishing the goods, or services of one person from those of another person; (5) That the trade mark consists exclusively of marks of indication which may serve to designate the kind, quality, intended purpose, values, geographical origin or the time of production of the goods or rendering of the services or other characteristics of the goods or services (mark which is directly descriptive of the character or quality of the goods or services or indicating geographical origin); (6) That the trade mark consists exclusively of marks or indications which have become in the current language or in the bona fide and established practice of the trade (may refer to generic names or marks common to the trade); (7) That the trade mark is of such a nature as to deceive the public or cause confusion; (8) That the trade mark contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; (9) That the trade mark comprises or contains scandalous or obscene matter; (10) That the use of which is prohibited under the Emblems and Names (the Prevention of Improper Use) Act, 1950; (11) That the trade mark consists exclusively of the shape of goods : (a) which results from the nature of the goods themselves, or (b) which is necessary to obtain a technical result, or (c) which gives substantial value to the goods. (The above grounds are based on the definition of trade mark and the provisions of S. 9 of the Act); (12) That the trade mark is by virtue of : (a) its identity with an earlier trade mark and similarity of goods and services covered by the trade mark, or (b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark; (13) That the trade mark is : (a) identical with or similar to an earlier trade mark, and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, and the earlier trade mark is a well known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark; (14) That the use of the applicant’s mark would be an infringement of the opponent’s registration which could be restrained by the Court and the mark is therefore disentitled to protection in a Court; (15) That the applicants are not entitled to registration under s. 12 of the Act; (16) That the user claimed in the application for registration is not true; (17) That the opponents are the prior adopters and application for the registration of the same/similar mark for the same/similar goods, vide their application No. …………… dt. ………………… in class ……………. which is registered under Trade Mark No. ……………….. and/or still pending; (18) That the applicants are not the proprietors of the mark.
Grounds of opposition: Section 21, which provides for filing Notice of Opposition, does not refer to any ground on which the opposition may be filed. The opponent is thus at liberty to set up any ground which may support his opposition against the registration of the trade mark under any of the provisions of the Trade Marks Act, 1999 and the Rules prescribed there under. However, under section 11(5), a trade mark shall not be refused registration on the grounds specified in sub-section (2) and (3), unless objection on any one or more of those
grounds is raised in opposition proceedings by the proprietor of the earlier trade mark. In this connection, it is to be noted that section 9 contains ‘absolute grounds for refusal of registration’ and section 11 contains provision for ‘relative grounds for refusal of registration’. [See also section 12, section 13, section 14 and section 18, which may form grounds of opposition]. The following is a list of possible grounds for opposition to the registration. (1) That the trade mark advertised is not registrable in that it is neither distinctive nor capable of distinguishing or that it does not satisfy the requirements of the Act as to registrability; (2) The essential part of the said trade mark is a word in ordinary use, descriptive of the character or quality of the goods and the applicant is not entitled to acquire an exclusive right therein by registration; (3) That the trade mark is not capable of being represented graphically; (4) That the trade mark is devoid of distinctive character, that is to say, not capable of distinguishing the goods, or services of one person from those of another person; (5) That the trade mark consists exclusively of marks of indication which may serve to designate the kind, quality, intended purpose, values, geographical origin or the time of production of the goods or rendering of the services or other characteristics of the goods or services (mark which is directly descriptive of the character or quality of the goods or services or indicating geographical origin); (6) That the trade mark consists exclusively of marks or indications which have become in the current language or in the bona fide and established practice of the trade (may refer to generic names or marks common to the trade); (7) That the trade mark is of such a nature as to deceive the public or cause confusion; (8) That the trade mark contains or comprises of any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; (9) That the trade mark comprises or contains scandalous or obscene matter; (10) That the use of which is prohibited under the Emblems and Names (the Prevention of Improper Use) Act, 1950; (11) That the trade mark consists exclusively of the shape of goods : (a) which results from the nature of the goods themselves, or (b) which is necessary to obtain a technical result, or (c) which gives substantial value to the goods. (The above grounds are based on the definition of trade mark and the provisions of S. 9 of the Act); (12) That the trade mark is by virtue of : (a) its identity with an earlier trade mark and similarity of goods and services covered by the trade mark, or (b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark; (13) That the trade mark is : (a) identical with or similar to an earlier trade mark, and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, and the earlier trade mark is a well known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark; (14) That the use of the applicant’s mark would be an infringement of the opponent’s registration which could be restrained by the Court and the mark is therefore disentitled to protection in a Court; (15) That the applicants are not entitled to registration under s. 12 of the Act; (16) That the user claimed in the application for registration is not true; (17) That the opponents are the prior adopters and application for the registration of the same/similar mark for the same/similar goods, vide their application No. …………… dt. ………………… in class ……………. which is registered under Trade Mark No. ……………….. and/or still pending; (18) That the applicants are not the proprietors of the mark.
Trademark not registrable in India
Trademark not registrable in India
Section 9(1) of the Act enacts as follows which sets down the following absolute grounds for refusal of registration:
(a) trade marks which are devoid of any distinctive character; that is to say, not capable of distinguishing the goods or services of one person from those of another person; (b) trade marks which consist exclusively of marks or indications which may serve in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin ,or the time of production of goods or of rendering of services, or other characteristics of goods or service, (c) trade marks which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade: Provided that, a trade mark shall not be refused registration if, before the date of application for registration, it has acquired a distinctive character as a result of the use made of it or is a well known trade mark.”
Section 9(1) – The basis of section 9(1) is that a trader should not obtain a statutory monopoly through registration in a word which another trader might legitimately wish to use. A competitor should be of course be entitled to make bonafide use of the word , to describe his goods or the place of manufacture. Section 9(1) is thus to be read with section 30 , (Limits on effect of registered trade mark) Section 34 ,(Saving for vested right), Section 35 (saving for use of name, address or description of goods or services) and section 36(saving for words used as name or description of an article or substance or service) of the Act. If a word, however, through use has become clearly associated in public mind with the goods/service of a particular trader, then it could not be legitimately used as a trade mark by a competitor. For this purpose the onus is on the applicant to show by cogent evidence that the trade mark, by reason of use has acquired distinctiveness in relation to his goods or services.
Section 9(1)(a) Section 9(1)(a) prohibits (prima facie) the registration of trade marks which are devoid of any distinctive character. Unlike Sections 9(1)(b) and (c), it does not give any clear definition as to the nature of the objection. Its purpose is to prohibit generally registration of marks which do not fall foul of the definition of ‘trade mark’ but does not fulfil the function of a trade mark; that is, they do not identify and distinguish goods or services of one person from those of others. Devoid of distinctive character – In the TREAT case (1996) RPC 28] Mr. Justice Jacob provided a definition of what is “devoid of any distinctive character” He said:- What does devoid of any distinctive character mean? I think the phrase requires consideration of the mark on its own, assuming no use. Is it the sort of word (or other mark) which cannot do the job of distinguishing without first educating the public that it is a trade mark?
A Section 9(1)(a) objection may arise when the mark consists of, for example: a) a description of the goods/services combined with some other noticeable but on-distinctive element; e.g. words ending with “master” eg. “Lawn Master” for lawn mover; “Cold master” for refrigerators etc. However, where the word is deemed to have no direct reference (including a covert and skilful allusion) it may be acceptable – eg. “Globe master” for cycles. b) a mark which appears to serve a merely decorative purpose in relation to the goods/services concerned; c) the shape of goods which does not stand out sufficiently from the norm to be distinctive, or does so in a way which fails to counter on the mark with a trade mark character, e.g. because the unusual features of the shape serve an aesthetic or functional purpose; d) a mark which is simply too insignificant to constitute or be taken to be a trade mark for the goods/services concerned, eg colours, very simple geometrical shapes, such as a circle; e) a description or slogan of an undertaking or its policies which could equally apply to any undertaking in the field, eg “The ones you want to do business with”; f) a description of goods/services not included in the application but which are so similar to the goods/services covered by the application as to deprive the trade mark of any distinctive character for those goods/services. g) A word, which according to its ordinary significance, is a surname or a personal name Where the word has a better known meaning, other than as a surname (eg. “Bull”, “Jury” etc) it may be regarded as a non-ordinary one for being accepted for registration as a trade mark.
Trademark Registration India
Trademark Registration India
Once the data entry (including scanning & Vienna codification of non-text trademarks) of application for registration of a trademark is complete the same is sent for examination. Examination of Trade Mark application will cover examination as to compliance with–
Filing requirements governed by procedure prescribed under the Trade Marks Act and Trade Marks Rules Substantive requirements for registrability of the mark In particular, the official assigned examination duties will scrutinize the application as to- Whether the application has been filed in the manner as prescribed in the Trade Marks Rules 2002, Whether any same/similar mark in respect of same/similar goods/services is there on record, Whether the trademark applied for registration can be accepted for registration under the Trade Marks Act 1999, Whether any restriction, condition or limitation is required to be imposed.
The Examiner will give a consolidated ‘Examination Report’ mentioning the objections (if any) as to the acceptance of application for registration; or as the case may be, forward a proposal to accept the application with or without any restriction, condition or limitation on the use of trademark. Examination report is to provide the list of conflicting marks on record.
The examiner will mention all deficiencies in the application and will raise all applicable objections to the acceptance of application for registration of trademark. The applicant is required to respond to the examiner’s objection(s) within a period of one month from the date of receipt of Examination Report. The reply to the Examination Report together with evidence of use of the trademark in India and other documents attached with the reply will be duly considered. In case the objections cannot be waived an opportunity of a Hearing will be given to the applicant. The application will thereafter be accepted with or without any restriction, condition or limitation on the use of trademark; or as the case may be, it will be refused for registration. The decision as to acceptance or refusal of the application will be communicated to the applicant. The accepted application will thereafter be advertised in the Trade Mark Journal.
Relevant laws or provisions to be referred to during Examination
The development of law as reported in recognized international law reports such as Reports of Patent Cases (RPCs), European Trade Mark Reports (ETMRs), Fleet Street Reports (FSRs) the US Trade Marks Reports will continue to be followed as being only of persuasive value. To a large extent the practice of the Registry in India broadly corresponds with the practice prevailing in the U.K.
The examiner will mention all deficiencies in the application and will raise all applicable objections to the acceptance of application for registration of trademark. The applicant is required to respond to the examiner’s objection(s) within a period of one month from the date of receipt of Examination Report. The reply to the Examination Report together with evidence of use of the trademark in India and other documents attached with the reply will be duly considered. In case the objections cannot be waived an opportunity of a Hearing will be given to the applicant. The application will thereafter be accepted with or without any restriction, condition or limitation on the use of trademark; or as the case may be, it will be refused for registration. The decision as to acceptance or refusal of the application will be communicated to the applicant. The accepted application will thereafter be advertised in the Trade Mark Journal.
Relevant laws or provisions to be referred to during Examination
The development of law as reported in recognized international law reports such as Reports of Patent Cases (RPCs), European Trade Mark Reports (ETMRs), Fleet Street Reports (FSRs) the US Trade Marks Reports will continue to be followed as being only of persuasive value. To a large extent the practice of the Registry in India broadly corresponds with the practice prevailing in the U.K.
Trademark Application Examination Law India
Trademark Application Examination Law India
Once the data entry (including scanning & Vienna codification of non-text trademarks) of application for registration of a trademark is complete the same is sent for examination. Examination of Trade Mark application will cover examination as to compliance with–
Filing requirements governed by procedure prescribed under the Trade Marks Act and Trade Marks Rules Substantive requirements for registrability of the mark In particular, the official assigned examination duties will scrutinize the application as to- Whether the application has been filed in the manner as prescribed in the Trade Marks Rules 2002, Whether any same/similar mark in respect of same/similar goods/services is there on record, Whether the trademark applied for registration can be accepted for registration under the Trade Marks Act 1999, Whether any restriction, condition or limitation is required to be imposed.
The Examiner will give a consolidated ‘Examination Report’ mentioning the objections (if any) as to the acceptance of application for registration; or as the case may be, forward a proposal to accept the application with or without any restriction, condition or limitation on the use of trademark. Examination report is to provide the list of conflicting marks on record.
The examiner will mention all deficiencies in the application and will raise all applicable objections to the acceptance of application for registration of trademark. The applicant is required to respond to the examiner’s objection(s) within a period of one month from the date of receipt of Examination Report. The reply to the Examination Report together with evidence of use of the trademark in India and other documents attached with the reply will be duly considered. In case the objections cannot be waived an opportunity of a Hearing will be given to the applicant. The application will thereafter be accepted with or without any restriction, condition or limitation on the use of trademark; or as the case may be, it will be refused for registration. The decision as to acceptance or refusal of the application will be communicated to the applicant. The accepted application will thereafter be advertised in the Trade Mark Journal.
Relevant laws or provisions to be referred to during Examination
The development of law as reported in recognized international law reports such as Reports of Patent Cases (RPCs), European Trade Mark Reports (ETMRs), Fleet Street Reports (FSRs) the US Trade Marks Reports will continue to be followed as being only of persuasive value. To a large extent the practice of the Registry in India broadly corresponds with the practice prevailing in the U.K.
The examiner will mention all deficiencies in the application and will raise all applicable objections to the acceptance of application for registration of trademark. The applicant is required to respond to the examiner’s objection(s) within a period of one month from the date of receipt of Examination Report. The reply to the Examination Report together with evidence of use of the trademark in India and other documents attached with the reply will be duly considered. In case the objections cannot be waived an opportunity of a Hearing will be given to the applicant. The application will thereafter be accepted with or without any restriction, condition or limitation on the use of trademark; or as the case may be, it will be refused for registration. The decision as to acceptance or refusal of the application will be communicated to the applicant. The accepted application will thereafter be advertised in the Trade Mark Journal.
Relevant laws or provisions to be referred to during Examination
The development of law as reported in recognized international law reports such as Reports of Patent Cases (RPCs), European Trade Mark Reports (ETMRs), Fleet Street Reports (FSRs) the US Trade Marks Reports will continue to be followed as being only of persuasive value. To a large extent the practice of the Registry in India broadly corresponds with the practice prevailing in the U.K.
Trademark Application Filing Law India
Trademark Application Filing Law India
Applications for registration of trade marks are to be filed in the prescribed manner, either in paper form or in an electronic form. Pursuant to sub-section (3) of section 6 which enables the maintenance of Register of Trade Marks wholly or partly on computer, the Register of Trade Marks is now being maintained only on computer in an electronic format. The detailed procedure for filing of trade mark applications is explained herein below:
Section 18(1) enacts that – “any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark.”
The provisions contained in rules 25 to 31 and 33 to 36 of the Trade Marks Rules, 2002 prescribe the procedure in this behalf. These are as follows:
Rule 25. Form and signing of application:- (1) An application to the Registrar for the registration of a trade mark shall be signed by the applicant or his agent. (2) An application to register a trade mark under sub-section (2) of section 154 for a specification of goods or services included in any one class shall be made in Form TM-1. (3) An application to register a trade mark under sub-section (2) of section 154 for a specification of goods or services included in any one class from a convention country shall be made in Form TM-2. (4) A single application for the registration of a trade mark for different classes of goods or services from convention country under sub-section (2) of section 154 shall be made in Form TM-52.
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