Procedure for filing a trademark under the Trademark Act, 1999

Introduction

• The registration of trademarks has a long history, beginning in 1876 with some of the earliest marks, such as the iconic Bass Red Triangle, still in use today. Trademarks are valuable assets that protect the identity of goods and services by preventing unauthorized use.
• Under the Trade Marks Act, any unauthorized application of a registered trade mark, especially on goods or services outside its intended scope, constitutes infringement. In such cases, the proprietor of the trade mark has the legal right to file a suit to protect their intellectual property, whether for infringement or against the practice of “passing off” where others seek to gain undue advantage by using the registered mark.
• Not all trademarks, however, are eligible for registration. To be registered under the Trade Marks Act, 1999, a trade mark must meet certain criteria, such as being graphically representable and able to distinguish the goods or services of one entity from those of another. Moreover, the trade mark must not fall within the “absolute or relative grounds for refusal”.
• Trademarks are registered in specific classes, ensuring protection for particular types of goods or services. The Act provides a structured framework for the registration and protection of trademarks with the Registrar of TradeMarks, safeguarding the rights of the holders and ensuring legal recourse in cases of infringement.

Procedure for Registration of a Trade Mark

The procedure for the registration of a trademark in India is governed by Sections 18 to 23 of the Trade Marks Act, 1999, and Rules 25 to 62 of the Trade Marks Rules, 2002. Below is a step-by-step outline of the procedure:

1. Application for Registration [Section 18][1]

• According to section 18 (1) of the act[2], any person claiming to be the proprietor of a trade mark can apply for its registration to the Registrar of trademarks. This application can be filed by individuals, firms, corporations, government departments, trusts, or joint applicants.
• A single application can be made for different classes of goods or services, and a separate fee is payable for each class.[3]
• The application must be submitted in the prescribed form to the office of Trade Marks Registry, where the applicant’s principal place of business is located. Various forms, such as TM-1, TM-2, TM-22, and others as provided in schedules of Trade Marks Rules, 2002[4], are used based on the type of registration sought.
• The application must include a clear representation of the trade mark, with five additional representations of mark need to be supplied. The Registrar will classify the goods and services according to the international classification system, and the classification will be final.

2. Acceptance of Application [Section 18][5]

Once the application is submitted, the Registrar examines it and may:

• Accept the application unconditionally;
• Accept it with certain conditions or amendments;
• Reject the application.

If accepted subject to amendments, the applicant must comply with the Registrar’s requirements.

3. Withdrawal of Application [Section 19][6]

If an application is accepted in error or the applicant does not comply with the required amendments, the Registrar may notify the applicant within two months. The applicant may amend the application or request a hearing. If no action is taken, the application is considered withdrawn.

4. Advertisement of Application [Section 20][7]

• Once a trade mark application is accepted, it is advertised in the Trade Marks Journal to provide third parties an opportunity to oppose the registration. Under Rule 43[8], the application for registration is ordinarily advertised within six months of acceptance or after the expiration of the period specified under Section 154(2)[9], whichever is later.
• If the trade mark applied for is not a word (such as a logo or device), the Registrar may request the applicant to submit a camera-ready copy of the mark. This copy will be uploaded on the Internet for public viewing.
• The Registrar has the authority to make these applications, once published in the Trade Marks Journal, available to the public via the Internet, website, or any other electronic medium. Additionally, the Registrar may provide the Trade Marks Journal in CD-ROM format, available to the public upon payment of the applicable cost.
• In cases where the application pertains to a series of trade marks that differ from one another as described under Section 15(3)[10], the Registrar may include a statement in the advertisement specifying the differences between the marks. This ensures clarity and transparency in the public record.

5. Opposition to Registration [Section 21][11]

• Any person may oppose the registration of the trade mark by filing Form TM-5 within three months of the advertisement date. A copy of the opposition is sent to the applicant, who must file a counter-statement in Form TM-6 within two months.[12]
• As per Rule 56, a hearing may be called if necessary, during which both parties present their evidence. If the opposition is dismissed, the trade mark is registered. If the opposition is upheld, the applicant may appeal the decision to the High Court.[13]
• The High Court may uphold or modify or strike down the decision of the Registrar.

6. Correction and Amendment of Application [Section 22][14]

The Registrar may correct clerical errors or obvious mistakes in the application or registration of the trade mark. These corrections may be initiated by the Registrar or upon request from the applicant.

7. Registration of TradeMarks [Section 23][15]

• If no opposition is filed within the specified period, or if any opposition is dismissed, the Registrar will register the trade mark.[16]
• The registration is valid for ten years from the date of application and may be renewed indefinitely upon payment of renewal fees.

8. Rectification of Register[17]

According to Section 57(1)[18] of the Act, an aggrieved person may apply for the rectification of the trade marks register either to the Appellate Board or the Registrar of Trade Marks.

Grounds of Rectification [Section 57(2)][19]

An application for rectification may be made on the following grounds:

• Contravention or Failure to Observe a Condition: If any condition entered in the register in relation to the trade mark is not complied with or violated.
• Absence or Omission of an Entry: If any entry that should have been included in the register is absent or omitted.
• Entry Made Without Sufficient Cause: If an entry has been made in the register without proper justification or sufficient cause.
• Wrongly Remaining Entry: If an entry that no longer serves a valid purpose remains on the register.
• Error or Defect in an Entry: If any error or defect is present in an entry on the register.

If none of these grounds are proven, the application for rectification will be rejected.

Procedure for Rectification

Upon receiving an application for rectification, the Appellate Board or Registrar may issue an order to cancel, vary, or rectify the registration of the trade mark as they deem appropriate. The decision of the Appellate Board may also include an order to rectify the register of trademarks. In such cases, the Registrar is served notice of the rectification order and is required to amend the register accordingly.

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[1] The Trade Marks Act, 1999, s. 18.

[2] Id. at s. 18(1).

[3] Id. at s. 18(2).

[4] Trade Marks Rules, 2002

[5] Supra at 1.

[6] Id. at s. 19.

[7] Id. at s. 20.

[8] Rule 43 of the Trade Marks Rules, 2002

[9] Supra note 1 at s. 154(2).

[10] Id. at s. 15(3).

[11] Id. at s. 21.

[12] Rule 49 of the Trade Marks Rules, 2002

[13] Rule 56 of the Trade Marks Rules, 2002

[14] Supra note 1 at s. 22.

[15] Id. at s. 23.

[16] Id. at ss. 19 and 23(1).

[17] Id. at s. 57.

[18] Id. at s. 57(1).

[19] Id. at s. 57(2).