Inohelp IP - TM Registration (01-Aug-11)

8/6/2019 Inohelp IP - TM Registration (01-Aug-11)

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TRADEMARK REGISTRATION ENTREPRENUERS GUIDE

With the advent of branding and the increase in value being attached to it, the issue of

protection of consumers from unauthorized violation of brands is gaining importance. Most often than

not, a brand is represented by a mark, called its trademark. The trademark associates a source or quality

or character of a good or service with itself. Accordingly, protecting a trademark from unauthorized use

is highly warranted.

Trademarks are protected in India by the Trademarks Act, 1999 (TM Act). The TM Act defines a

trademark as a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of

goods, packaging or combination of colours or any combination thereof, which is used to distinguish

goods and services provided in the course of trade by a person from the goods and services provided by

other person and should be capable of being graphically represented. The TM Act calls for registration of

trademarks so as to make any likelihood of causing deception in a mark impermissible in law.

A trademark once registered under the act gives the trademark proprietor some very important

legal rights. Firstly, the registration of trademark provides the proprietor of the trademark, exclusive

rights to use the TM in relation to the goods or services. Secondly, the registration of the trademark is a

prima

facie

proof

of

validity

of

the

registered

trademark.

In

any

legal

proceeding,

this

is

highly

important. Thirdly, the registration of trademark allows the proprietor of the mark to license his/her

rights in the trademark to a third party. This acts as a constant source of royalty for trademark

proprietors. All the franchise chains that you find around are a result of licensing of trademarks.

However, most importantly, the registration of trademark provides the proprietor with rights to

prevent unauthorized use of his/her registered trademark. The prevention may be in form of injunctions

(temporary or permanent stays) ordered by a court of law, or in form of damages. This remedy is not

available to unregistered trademarks as section 27 of the TM Act states that no infringement action is

maintainable under the TM Act against an unregistered trade mark.

In a recent case, Mahashian Di Hatti Ltd (MDH) Vs Mr. Raj Niwas, Proprietor Of MHS, the Delhi

High Court restrained MHS from manufacturing and marketing any spices or condiments using the logo

MHS owing to its similarity to MDH. The court held that such use is in violation of the tradeamark held


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by MDH. Interestingly, MDH was also awarded punitive damages amounting to Rs. 1 lakh against MHS.

In another landmark judgment, Hero Honda Motors Ltd. Vs Mr. Laxmikant Patel And Anr., the Delhi High

Court allowed Hero Honda to take infringing goods of the deceiver and destroy those goods. A huge

penalty of Rs. 5 lakh was also charged for the infringement of trademark protected in favour of HERO

HONDA. There are myriad examples in trademark jurisprudence in which the trademark proprietors

have successfully and easily got stays or received punitive damages from courts of laws in case of

violation of their trademark rights. Trademark disputes are treated differently by the courts from

common civil disputes, and the enforcement is relatively easy.

Process of TM registration

1. Who grants trademark registration and under which Act?

A trademark is granted by the Registrar of Trademarks, an appointee under the TM Act. For

getting a trademark granted, an application is made in a prescribed manner. The application is

addressed to the Registrar, and is filed with the office of the Trademark Registry. The Trademark

Registry has its head office at Mumbai and also functions through 4 more offices in Delhi, Kolkata,

Chennai and Ahmadabad. Each office has a specific jurisdiction, and the following table describes their

details:

Trademark Registry

Name

Jurisdiction Location

Trade Marks Registry,

Mumbai (Head Office)

State of Maharashtra,

Madhya Pradesh and Goa

Intellectual Property Bhavan, Near

Antop Hill Head Post Office,

S.M. Road , Antop Hill, Mumbai

400037

Tel: 022 2410 1144, 24101177,

24148251, 24112211

Fax: 24120808, 24132295

Trade Marks

Registry, Delhi

State of Jammu &

Kashmir, Punjab, Haryana,

Uttar

Pradesh, Himachal Prades

Intellectual Property Bhavan, Plot

NO.32, Section 14, Dwarka, Delhi

Tel. 011 28082915/ 16/17


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h, Union Territory of Delhi

and Chandigarh

Trade Marks

Registry, Kolkata

State

of Arunachal Pradesh,

Assam, Bihar, Orissa, West

Bengal,

Manipur, Mizoram, Megh

alaya, Sikkim , Tripura and

Union Territory

of Nagaland, Andaman &

Nicobar Island.

CP 2, Sector V,

5th

floor, I.P.Bhavan, Salt Lake,

Kolkata 700091. Telfax: 033 23677311

Trade Marks

Registry, Ahmadabad

The state of Gujarat and

Rajasthan

and Union Territory ofDa

mman, Diu, Dadra and Na

gar Haveli

15/27 National Chambers, 1st floor,

Ashram road,

Ahmedabad 380 009.

Tel: 079 26580567

Trade Marks Registry,

Chennai The state of Andhra

Pradesh, Kerala,

Tamil Nadu, Karnataka

and Union Territory of Pon

dicherry and Lakshadweep

Island

IP building, GST Road, Guindy

Chennai 600032

Tele: 044 22502041, Fax: 044

22502042

For registration an application is required to be made to the Registrar. For filing new

applications there are prescribed forms depending on the nature of the application such as Form TM 1,

TM 2, TM 3, TM 8, and TM 51 etc.


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2. What happens after submitting a trademark application?

An application can be filed for as many numbers of goods and services as mentioned in schedule

IV of the Trademark Rules. These are called classes and the trademark register with the registrar notes

under which class/classes a trademark has been registered.

After submission of an application the various stages it goes through are as follows

Acceptance

Advertisement

Opposition, if any

Correction and amendment, if opposed

Registration

3. How long does it take for TM registration?

From start to finish, the time taken for registration of a trademark is normally 12 18 months.

Whereas if an application is rejected at any stage within registration viz acceptance and opposition, an

appeal to the Intellectual Property Appellate Board which is constituted at Chennai. Further from

decisions of the appeal revision is possible in the High Court/Supreme Court.

4. How to get international protection for a trademark? Protection of trademarks internationally is done with the aid of the Madrid Protocol. A

protection can be availed in all those countries to whose citizens India also provides protection. The

Protocol is managed by the World Intellectual Property Organization (WIPO) and offers a trademark

proprietor the possibility of having a mark protected in up to 77 countries and the European Community

(EC) by filing one application, in one language (English, French or Spanish), with one set of fees, in one

currency (Swiss Francs). The proprietors wishing to use the Madrid system must apply for trademark

protection

in

a

relevant

national

or

regional

trademark

office

before

seeking

international

protection.

Thereafter, the international registration can be maintained and renewed through a single procedure at

WIPO.

5. Cost for Protection


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The government fees for filing a trademark application in one class of goods or services is `

3,500/ . For each extra class added in the application an additional fee of ` 3,500/ per class is to be paid

to the government. Thus if an application is filed for 10 classes of goods/services the government fee

will be ` 3,500 X 10 = ` 35,000/ .

Professionals charge for the entire process or with breakup i.e. for different stages. The typical charges are around ` 4,000 7,500/ till the filing stage, or minimum ` 20,000/ for the entire process of

registration, which means from filing stage to the registration of trademark.

Issues in trademark protection

While applying for trademark registration, one should be aware of some issues which are

essential to be complied with for registration. Knowledge about such issues may help you in

understanding whether your trademark is protectable under the TM Act. This will in turn help you in

deciding whether to go ahead with the registration process.

Generally, there are two kinds of grounds for refusal suggested by the trademark Act The

Absolute Grounds (section 9) and The Relative Grounds (section 11). Based on an understanding of

these grounds, the following marks may not be able to get registration under the Trade Marks Act:

1. A Mark which is devoid of any distinctive character ( which is incapable of distinguishing the goods or services of one person from that of another),

2. A Mark which is likely to deceive or cause confusion,

3. A Mark which is contrary to any law for the time being in force,

4. A Mark which is phonetically similar to any existing registered mark,

5. A Mark which is deceptively similar to any existing registered mark,

6. A Mark which is identical to any existing registered mark,

7. A Mark which contains scandalous or obscene matter,

8. A Mark which is likely to hurt the religious sentiments of a particular class of the society,

9. A Mark which is disentitled to protection in court, and

10. A Mark whose use is prohibited under the Emblems and names (Prevention of Improper Use) Act, 1950.

For more details on how to register your trademark, please feel free to contact us at [email protected].


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About Us

We are an emerging Intellectual Property (IP) service company that specializes in serving the IP

needs of inventors, technology entrepreneurs and business owners by protecting inventions, designs,

trademarks, copyrights, trade secrets, and other valuable intellectual property assets. We also work

closely in association with foreign IP attorneys, who help us in securing our clients IP in their respective

jurisdictions at an affordable cost. We strongly believe in providing service to all, irrespective of their

size. We encourage academics, individual scientists and entrepreneurs who are starting from scratch, to

approach us. We understand the constraint and limitations of each client and customize our fee

structure accordingly.

Inohelp IPHelping you with your IP

Phone: +91-11-43614903Fax: +91-11-43614903Email: [email protected]

Primary (Delhi) Contact Info:310, Sector 18 B,Dwarka, New Delhi - 110075,India

Inohelp IP - TM Registration (01-Aug-11)

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