Saturday, May 5, 2012

Procedure For Registration Of Trademarks In India

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.