TRADE MARKS IN INDIA

Trade Marks in India are governed by The Trade Marks Act, 1999 which is to be read with The Trade Marks Rules, 2002 and/or with any other respective amendment/law/rule followed thereby. The Trade Marks Act, 1999 provides for means to register a trade mark in India by the virtue of five different trade mark registries situated in Delhi, Mumbai, Chennai, Kolkata, Ahmedabad and any one can apply for registration of his/its trade mark in the trade marks registry of his appropriate jurisdiction.

TRADE MARK

A Trade Mark means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours.

TRADE MARK APPLICATION

Any person/entity Indian of any other national can apply for registration of a trade mark in respect of specific goods or services for the purpose of which the respective trade mark is being used or is intended to be used.

TYPE OF TRADE MARK APPLICATIONS

• Ordinary Application– This means an application wherein no conventional priority is claimed.
• Conventional Application– This mean an application wherein conventional priority is claimed by the applicant which can be claimed by the applicant only if he/it files a conventional application in India within six months from the date of filing the trade mark application in any of the conventional country. The certified copies of priority documents, along with English translation of same, if the priority documents are in language other than English language, should either be submitted along with filing the application in India or within 2 months from the date of filing the application in India by paying prescribed fee.

CLASSES OF GOODS/SERVICES

Every good and service is codified to fall in a particular class, for the purpose of which, India follows NICE CLASSIFICATION OF GOODS/SERVICES. There are total 45 classes in which all the goods and services have been classified

TRADE MARK REGISTRATION PROCESS

Once a trade mark application in filed in respective trade mark registry it takes near about 12-18 months from the date of application to get a mark registered if it is a smooth case/application (a smooth case/application means a trade mark application which the trade marks registry considers fit for registration. In other words, a mark, which is not devoid of any distinctive character and/or which is not same or deceptively similar to any other mark pre -existing in the register of trade marks, is a smooth case/application.

• OBJECTIONS– If the registry considers a trade mark misfit for registration, it generates an examination report containing the objections on the basis of which the trade mark application is objected. Thereafter, a detailed response negating the objections along with supportive submission, is to be submitted before the trade marks registry within 30 days from the date of receipt of the examination report. If no response of the objections is filed within 30 days then the respective trade mark application shall be held ABANDONED by the trade marks registry.
• ADVERTISEMENT– If the examiner is satisfied with the answer, then the trade mark is published in the TM Journal for a period of 4 months and if no one opposes said mark then registry issues Registration Certificate of the trade mark to the applicant or his attorney.

NEW INCORPORATIONS (MADRID PROTOCOL)

Earlier a person desirous of obtaining registration of his trade mark in various countries has to make separate applications in different languages and pay different fees in the respective countries. There was no provision under the Trade Marks Act, 1999 (hereinafter referred to as the Trade Marks Act) to facilitate Indian nationals as well as foreign but now India has also become the member country of the Madrid Protocol which is administered by the International Bureau of the World Intellectual Property Organization, a specialized agency of the United Nations, was adopted in 1989 and accordingly special provisions relating to protection of trademarks through International Registration under Madrid Protocol have been incorporated in the Trade Marks Act, 1999 by The Trade Marks (Amendment) Act, 2010 envisaged in Chapter IVA under sections 36A-36G, which is sought to empower the Registrar of Trade Marks to deal with international applications originating from India as well as those received from the International Bureau and maintain record of international registrations.