In this article Perry4Law
and Perry4Law Techno Legal Base (PTLB)
would discuss the required documents
and formalities for trademark registration in India.
The
trademark
law of India is incorporated in the Trade Marks
Act 1999.
Applications for registration of trade
marks are to
be filed in the prescribed manner. 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.
An application to the Registrar for the
registration
of a trade mark shall be signed by the applicant or his agent. An
application to register a trade mark for a specification of goods or
services included in any one class shall be made in Form TM-1. An
application to register a trade mark for a specification of goods or
services included in any one class from a convention country shall be
made in Form TM-2. A single application for the registration of a
trade mark for different classes of goods or services from convention
country shall be made in Form TM-52. An application to register a
textile trade mark (other than a collective mark or a certification
trade mark) consisting exclusively of numerals or letters or any
combination thereof for a specification of goods included in one item
of the Fifth Schedule shall be made in Form TM-22. An application to
register of a textile trade mark other than a collective mark or a
certification trade mark) consisting exclusively of numerals or
letters or any combination thereof for a specification of goods
included in one item of the Fifth Schedule from a convention country
under shall be made in form TM-45.
An application to register a collective
trade mark
for a specification of goods or services in any one class shall be
made in Form TM-3. An application to register a collective trade mark
for a specification of goods or services in any one class from a
convention country shall be made in Form Tm-64. An application under
section 71 to register a certification trade mark for a specification
of goods or services included in any one class shall be made in form
TM-4. An application under section 71 to register a certification
trade mark for a specification of goods or services in any one class
from a convention country shall be made in Form TM-65. A single
application for the registration of a trade mark for different
classes of goods or services shall be made in Form TM-51.
An application to register a series
trade marks for
a specification of goods or services included in a class or for
different classes shall be made in form TM-8. An application to
register a series trade mark for a specification of goods or services
included in a class or different classes from a convention country
shall be made in Form TM-37.
An application for the registration of
a trade mark
for goods or services shall -
(a) Explain with sufficient precision,
a description
by words, of the trade mark if necessary, to determine the right of
the application;
(b) Be able to depict the graphical
representation
of the trade mark;
(c) Be considered as a three
dimensional trade mark
only if the application contains a statement to that effect;
(d) Be considered as a trade mark
consisting of a
combination of colours only if the application contains a statement
to that effect;
An amendment to divide an application
under proviso
to section 22 shall be made in Form TM-53. An application, not being
a series trade mark shall be in respect of one trade mark only for as
many class or classes of goods or services as may be made. In the
case of an application for registration in respect of all the goods
or services included in a class or of a large variety of goods or
services in a class, the Registrar may refuse to accept the
application unless he is satisfied that the specification is
justified by the use of the mark which the applicant has made or
intends to make if and when it is registered.
The specification of goods or services
shall not
ordinarily exceed five hundred characters for each class. An excess
space fee as prescribed in the First Schedule is payable with each
application in Form TM-61.
A single application for the
registration of a
collective mark -
(a) In different classes shall be made
in Form
TM-66;
(b) In different classes from a
convention country
shall be made in Form TM-67.
A single application for the
registration of
certification trade mark –
(a) In different classes shall be made
in form
TM-68;
(b) In different classes from a
convention country
shall be made in Form TM-69.
Where an applicant files a single
application for
more classes than one and the Registrar determines that the goods or
services applied for fall in class or classes in addition to those
applied for, the applicant may restrict the specification of goods or
services to the class applied for or amend the application to add
additional class or classes on payment of the appropriate class fee
and the divisional fee. The new class created through a division
retains the benefit of the original filing date or in the case of an
application from a convention country the convention application date
provided the claim was otherwise properly asserted in the initial
application.
An application to register a trade mark
shall,
unless the trade mark is proposed to be used, contain a statement of
the period during which, and the person by whom it has been used in
respect of the goods or services mentioned in the application. The
Registrar may require the applicant to file an affidavit testifying
to such user with exhibits showing the mark as used.
Every application for registration of a
trade mark
shall, except as hereinafter provided, be made in triplicate and
shall be accompanied by five additional representations of the mark.
The representations of the mark on the application and each of its
copies and the additional representations shall correspond exactly
with one another. The additional representations shall in all cases
be noted with the specification and class or classes of goods or
services for which registration is sought, the name and address of
the applicant, together with the name and address of his agent, if
any, the period of use, if any, and such other particulars as may
from time to time be required by the Registrar and shall be signed by
the applicant or his agent.
At any time before the publication of
the
application in the journal, the applicant may request in Form TM-53
for the division of the application into separate application or
applications, as the case may be, in respect of one or more marks in
that series and the Registrar shall, if he is satisfied with the
division requested conforms with sub-section (3) of section 15,
divide the application or applications accordingly.
Where the name or description of any
goods or
services appears on a trade mark, the Registrar may refuse to
register such mark in respect of any goods or services other than the
goods or services so named or described. Where the name or
description of any goods or services appear on a trade mark, which
name or description in use varies, the Registrar may permit the
registration of the mark for those and other goods or services on the
applicant giving an undertaking that the name or description will be
varied when the trade mark is used upon goods or services covered by
the specification other than the named or described goods or
services. The undertaking so given shall be included in the
advertisement of the application in the Journal under Section 20.
A trade mark application is to be filed
at the
“appropriate office” of the Registry within whose territorial
limits, the principal place of business in India of the applicant is
situate. In the case of joint applicants, the principal place of
business in India of the applicant will be that of the person whose
name is first mentioned as having a place of business. If the
applicant has no principal place of business in India, he should file
the application at that office within whose territorial jurisdiction,
the address for service in India given by him is located. No change
in the principal place of business in India or in the address for
service in India shall affect the jurisdiction of the appropriate
office once entered.
Where the trade mark contains a word or
words in
scripts other than Hindi or English, a transliteration and
translation of each word in English or in Hindi should be given
indicating the language to which the word belongs, at the time of
filing the application to facilitate completion of data entry at the
initial stage itself. An endorsement must be entered on the Register
for all trade marks containing words in a language other than
English/Hindi and/or characters other than Roman/Devnagiri characters
Where an applicant has given the translation/transliteration, an
endorsement will be entered on the system. Where no
translation/transliteration has been provided, the Examiner should
request one and enter the appropriate endorsement on the system when
the information has been received. Where Chinese or Japanese
characters appear in the trade mark the applicant should be requested
to provide their transliteration in the Pinyin system in the case of
Chinese characters and the Hepburn system in the case of Japanese
characters as per UK practice.
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 as 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.
